Saturday, May 15, 2021

CAFC works through "personal jurisdiction" issues in Trimble; ND Cal holding of "no jurisdiction" reversed

The outcome was a finding of personal jurisdiction:

Trimble Inc. and Innovative Software Engineering, LLC (“ISE”) appeal a judgment dismissing their declaratory judgment noninfringement action against PerDiemCo LLC for lack of personal jurisdiction. PerDiemCo is the owner of eleven patents that it accused Trimble and ISE of infringing in letters and other communications sent to Trimble, a California resident. Relying on this court’s decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998), the United States District Court for the Northern District of California held that it would be unreasonable to assert personal jurisdiction over PerDiemCo based on its communications to Trimble in California. We conclude that Red Wing does not preclude personal jurisdiction on the facts of this case and that the district court had personal jurisdiction over PerDiemCo.

Appeal from the United States District Court for the Northern District of California in No. 4:19-cv-00526-JSW, Judge Jeffrey S. White.

Uniloc loses appeal of PTAB ruling at CAFC

The outcome:

Uniloc 2017 LLC appeals from a decision of the Patent Trial and Appeal Board in an inter partes review of Uniloc’s U.S. Patent No. 8,539,552 (“the ’552 patent”). The Board held claims 1–17 and 23–25 of the ’552 patent invalid for obviousness in view of U.S. Patent No. 6,324,279 to Kalmanek et al. (“Kalmanek”). Uniloc argues that the Board’s decision as to those claims resulted from an erroneous construction of a claim term. In its cross-appeal, Apple Inc. argues that the Board erred by holding that Apple failed to show that the remaining claims of the ’552 patent, claims 18–22, would have been obvious in view of Kalmanek. We affirm.

Uniloc relies on an analogy to football:

Uniloc argues that under the plain and ordinary meaning of “intercepting,” the entity that “intercepts” a message cannot be an intended recipient of the message. To support that argument, Uniloc cites various dictionary definitions and relies on the following analogy: A player making an interception in football is not the intended receiver of the ball but instead seizes the ball on its way to the intended receiver. Uniloc contends that the Board’s construction improperly permits the network entity intercepting the signaling message to be an intended recipient of the message even if there is an additional intended recipient downstream. Uniloc is correct that the signaling message can have only one true “intended recipient,” as the claims of the ’552 patent use that term. Claim 1 specifies that the intercepted signaling message is “associated with a call between a sender device of the message and an intended recipient device.” Claim 1 later refers to “the intended recipient,” making clear that the client device on the other end of the impending call is the one true “intended recipient.” However, just because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity. To the contrary, the patent contemplates that the sending client device will purposely direct the message through an intermediate recipient. For example, in one embodiment, the patent describes “a caller send[ing] an INVITE message to a callee by way of a proxy server,” ’552 patent, col. 6, ll. 1–2 (emphasis added), where the proxy server effectively performs the intercepting, determining, and filtering steps recited by the claims, see id. at col. 6, ll. 17–25.

Footnote 4 contains an item of interest:

Uniloc also relies on statements from its expert witness, Dr. William C. Easttom, II, in support of its claim construction position. The Board, however, declined to credit that testimony over the intrinsic evidence in the record, both because Dr. Easttom failed to consider the full disclosure and prosecution history of the ’552 patent and because Uniloc hindered or prevented Apple from cross-examining him. See Apple, 2019 WL 4492895, at *5 n.9. We uphold the Board’s decision not to give substantial weight to Dr. Easttom’s declaration for those reasons.

There is text about the distinction between RECOUNTING an argument and ENDORSING the argument:

According to Apple, that statement reflects that the Board endorsed Apple’s theory that the gate controller’s handling of the SETUP message satisfies the step of determining an authorization relating to codec specification. We disagree. As a preliminary matter, in the cited passage the Board was merely recounting Apple’s assertions, not endorsing them. See id. Moreover, the most reasonable reading of pages 36 through 38 of Apple’s petition is that the gate controllers of Kalmanek cannot determine an authorization of codec level using just the SETUP message. Supporting that interpretation is Apple’s statement in that section of its petition that “the [called party] sends a SETUPACK message that includes an acceptable CODING parameter,” followed by the statement that the “service provider then authorizes the requested quality of service for the call.” Petition for IPR, at 37 (emphasis added).

Separately, from blawgsearch:

Friday, May 14, 2021

Arthrex matter in New Vision case

New Vision won on an Arthrex matter:

New Vision has not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court. See C.A. Casyso GmbH v. HemoSonics LLC, No. 20-1444 (Oct. 27, 2020) (non-precedential order) (vacating and remanding in analogous circumstances). Thus, we vacate and remand for further proceedings consistent with Arthrex, and we need not reach any other issue presented in this case.

[Interesting that the CAFC relies on a NON-PRECEDENTIAL order to establish a precedential case !]

But Judge Newman observed that a forum-selection clause controlled here and wrote:

My colleagues decline to reach this question, and simply hold that Arthrex requires vacatur and remand. However, the question of forum selection is not thereby resolved; it is merely postponed to determination by a new, constitutionally organized Board. It is both inefficient and unnecessary to require replacement PTAB proceedings if the new PTAB does not have jurisdiction to proceed.

Thus, while I agree that the Board’s decision must be vacated under Arthrex, I respectfully dissent from our remand without resolving the issue of forum selection.

What is at stake in this case is a bit MORE than inefficiency.

Both sides have briefed the forum selection question in this administrative context. New Vision cites Dodocase VR, Inc. v. MerchSource, LLC, 767 F. App’x 930 (Fed. Cir. 2019) to illustrate removal from the PTAB based on an agreed choice of forum. SG Gaming states that the Board’s rejection of the choice of forum is an unreviewable “institution” decision, citing Thryv, Inc. v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020). These aspects require resolution now, rather than after a full PTAB proceeding on remand.

The Director of the Patent and Trademark Office has intervened in this appeal to argue that this court has no jurisdiction to review this action because it is “final and nonappealable” under 35 U.S.C. § 324(e). However, the Board’s rejection of the parties’ choice of forum is indeed subject to judicial review, for § 324(e) does not bar review of Board decisions “separate . . . to the in[stitu]tion decision.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Appeal is barred as to “a determination ‘whether a substantial new question of patentability affecting any claim of the patent is raised,’” Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1382 (Fed. Cir. 2012), but not as to “the Board’s ‘conduct’ of the review.” St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375 (Fed. Cir. 2014).

Judge Newman makes strong points about forum selection clauses:

New Vision states that forum selection was a contract condition, as is understandable, for it affects the standard of proof of invalidity. See O’Gorman & Young, Inc. v. Hartford Fire Ins. Co., 282 U.S. 251, 267 (1931) (“That the right to contract about one’s affairs is a part of the liberty of the individual protected by [the Constitution] is settled by the decisions of this court and is no longer open to question.”); Gen. Protecht Grp., Inc. v. Leviton Mfg. Co., 651 F.3d 1355, 1359 (Fed. Cir. 2011) (“[S]uch a forum selection clause would be meaningless because . . . the merits would have been litigated in a forum other than that which was bargained for.”).

Separately, note that IPBiz was in the top twenty of blawgs.

Monday, May 10, 2021

Rule 11 motion denied in Fireblok case

Hilti asserts that the district court improperly denied its Rule 11 Motion. Hilti argues that FireBlok’s case was weak and frivolous and that FireBlok lacked a good faith basis for the allegations in its complaint. In response, FireBlok argues that the court acted within its discretion in denying Hilti’s motion. FireBlok asserts that Hilti’s Rule 11 Motion failed procedurally and substantively by failing to identify specific conduct that allegedly violates Rule 11. See Fed. R. Civ. P. 11(c)(2). The court properly evaluated FireBlok’s conduct under an objective standard in determining that FireBlok had an objectively reasonable basis to pursue its claims based on the facts available to FireBlok before filing suit. See Memorandum Order at *3, *5. We discern no abuse of discretion in the court’s analysis.

CAFC affirms obviousness determination of PTAB in Votel case

The outcome:

The Board, for its part, noted that the ’584 application does not define or limit the term “vent,” and explained that “it is common knowledge that vents often have filters located therein or even covers/shutters.” J.A. 4. The Board further determined that the foam float pads in Bonacci would still likely allow some airflow when fitted into the openings. And the Board observed that the “vents” in the ’584 application are themselves designed to have a clip key inserted into them, thereby obstructing airflow. The Board thus concluded that the openings in Bonacci constitute “vents” within the meaning of claim 1. Appellants concede that “there is no evidence of record” that “closed cell foam” would not allow airflow and rely only on “the somewhat obvious implication” of the term. Appellants’ Br. at 7. We see no error in the Board’s determination. As to Wang, Appellants concede that Wang discloses a clip key structure for attaching an accessory to the frame but argue that the clip key in Wang is not configured to be inserted into a vent. The Board explained that the openings of Bonacci may be of any number and shape and that not all of the openings need be filled with buoyant material. The Board concluded that a person of ordinary skill “would have readily inferred that openings in Bonacci may also be configured to receive a key of a clip for an eyewear accessory, as Wang exemplifies.” J.A. 5–6. We see no error in the Board’s determination that this combination is within the scope of “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int’l Co v. Teleflex Inc., 550 U.S. 398, 418 (2007). We affirm the Board’s decision that claim 1 would have been obvious over the combined teachings of Bonacci and Wang.

Gree loses at CAFC in 101 case

There was no reprieve for Gree in Alice Step 2:

Turning to Alice step 2, we agree with the Board that nothing in the claims constitute an inventive step. As the Board correctly held, each of the limitations separately and in their ordered combination were routine and conventional. GREE argues that the input face has the capacity to distinguish between different types of operations; to wit, the “syntax of touches, swipes, and their combination to particular semantics, or the meaning of such operations.” Appellant’s Br. at 54. We see no error in the Board’s conclusion that swipe operations were conventional, as disclosed in the specification’s discussion of the prior art. ’799 patent, col. 1, ll. 8–28. The Board also correctly explained that none of the syntax of touches and swipes that GREE cites as its inventive step are captured in any of the elements of the claims. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). Moreover, the claims do not recite the ability to move multiple objects simultaneously; rather, the claims call for moving “one or more of the plurality of associated objects as a group” (emphasis added)

Wednesday, May 05, 2021

CAFC analyzes FRCP 60(b)(3) in CAP Export

The outcome was affirmance:

Zinus, Inc. (“Zinus”) appeals the decision of the United States District Court for the Central District of California setting aside a judgment and injunction pursuant to Federal Rule of Civil Procedure 60(b)(3). We affirm.

Before turning to the law of Rule 60(b)(3), it is important to understand the basis of the 60(b)(3) motion. In patent cases, “[a] person shall be entitled to a patent unless . . . the claimed invention was . . . on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1) (emphasis added). This is referred to as the “on-sale bar” provision, which defines a type of “prior art.” Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 139 S. Ct. 628, 631–32 (2019). Prior art under the on-sale bar can support a determination that a patent claim is invalid as anticipated or obvious. 35 U.S.C. §§ 102(a), 103.8

As to Rule 60(b)

Rule 60(b) provides:

(b) Grounds for Relief from a Final Judgment, Order, or Proceeding. On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for the following reasons: . . . (3) fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party[.] Fed. R. Civ. P. 60(b). A motion under Rule 60(b)(3) “must be made within a reasonable time,” and “no more than a year after the entry of the judgment or order or the date of the proceeding.” Fed. R. Civ. P. 60(c)(1). The motion here satisfied the one-year requirement. “Relief under [Rule 60(b)(3)] is a procedural issue on which we apply regional circuit law.” Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1204–05 (Fed. Cir. 2005). “Motions for relief from judgment pursuant to Rule 60(b) are addressed to the sound discretion of the district court and will not be reversed absent an abuse of discretion.” Casey v. Albertson’s Inc., 362 F.3d 1254, 1257 (9th Cir. 2004). “A district court abuses its discretion if it does not apply the correct law or if it rests its decision on a clearly erroneous finding of material fact.” Id. “To prevail [under Rule 60(b)(3)], the moving party must prove by clear and convincing evidence that the verdict was obtained through fraud, misrepresentation, or other misconduct and the conduct complained of prevented the losing party from fully and fairly presenting the defense.” De Saracho v. Custom Food Mach., Inc., 206 F.3d 874, 880 (9th Cir. 2000). The Ninth Circuit has held that “Federal Rule of Civil Procedure 60(b)(3) require[s] that fraud . . . not be discoverable by due diligence before or during the proceedings.” Casey, 362 F.3d at 1260 (alterations in original) (quoting Pac. & Arctic Ry. & Navigation Co. v. United Transp. Union, 952 F.2d 1144, 1148 (9th Cir. 1991)). The Ninth Circuit’s additional due diligence requirement appears contrary to the text of Rule 60(b)(3), which does not mention diligence.10 The parties cite no cases from other courts of appeals adopting this additional requirement, nor are we aware of any other courts of appeals that have adopted it.11


On appeal here, Zinus contests the district court’s determination that Cap Export “met its burden of establishing by clear and convincing evidence that it [was] entitled to relief under Rule 60(b)(3).” J.A. 21. Zinus focuses primarily on the due diligence requirement, seeming to blame the victim’s so-called “incompetent lawyers” for the adverse consequences it suffered as a result of the fraud. Appellant’s Br. 33. Zinus argues that “emails relating to the Woody shipments would have been discovered if Cap Export’s lawyers had exercised due diligence and propounded standard document production requests for a patent case.” Id. at 38.12 Cap Export does not dispute that its written discovery served on Zinus did not specifically seek prior art; that it did not depose the inventor of the ’123 patent; and that although a deposition of Lawrie was taken, it was not taken under Federal Rule of Civil Procedure 30(b)(6). Even though the Ninth Circuit’s requirement for Rule 60(b)(3) that the “fraud” not be discoverable through due diligence seems questionable, we follow it here. Casey, 362 F.3d at 1260. The question is what constitutes due diligence in discovering fraud. Ninth Circuit cases applying Rule 60(b)(3) do not elaborate on the due diligence requirement, but Ninth Circuit decisions in other contexts provide guidance

US average Covid falls to 100.4 new cases per 100K on 5 May 2021. New Jersey falls to 14th worse at 123.7

Within the CNBC post titled CDC projects a surge in U.S. Covid cases through May due to variants before vaccinations drive a ‘sharp decline’ , one has text

Covid-19 cases will likely surge again in the U.S. as the highly contagious B.1.1.7 variant takes hold across the country, peaking in May before sharply declining by July, according to new data released Wednesday from the Centers for Disease Control and Prevention. The rise in Covid cases is expected as states relax pandemic prevention strategies for businesses, large-scale gatherings and schools, and the B.1.1.7 variant, first identified in the U.K., spreads more rapidly throughout the country, the CDC said in the report. The agency projected the trajectory of the pandemic based on four different scenarios of vaccination rates and state reopenings. While the case numbers differed in each scenario, the general direction of the outbreak remained mostly the same in all four forecasts with cases surging in May before falling in July.

One notes the trend of the last week or so has been downward, with May 5 showing 100.4 new Covid cases per 100K people for the US as a whole.

Tuesday, April 27, 2021

New Jersey at 189.8 new Covid cases per 100k drops to 6th worst state; national average is 116.4

Although Michigan at 360.6 new Covid cases per 100K population remains the worst state in the nation, New Jersey has fallen to number 6, trailing Mich, Colorado, Pa, Minnesota and Delaware.Governor Murphy announced easing of restrictions on outdoor events.

Sunday, April 25, 2021

Proposed explanation for "how" Michigan became #1 in new Covid cases per 100,000

From Michigan became hotspot as variants rose and vigilance fell

Doctors, medical professionals and public health officials point to a number of factors that explain how the situation has gotten so bad in Michigan. More contagious variants, especially the mutation first discovered in Britain, have taken root here with greater prevalence than other states. Residents have emerged from harsh, lengthy state restrictions on dining and crowd sizes and abandoned mask wearing and social distancing, especially in rural, northern parts of the state that had largely avoided severe outbreaks. The state has also had average vaccine compliance. Michigan has recorded a highest-in-the-nation 91,000 new COVID-19 cases over the last two weeks, despite improvements in the numbers in recent days. By comparison, that is more cases than California and Texas had combined in the same period.


Dr. Mark Hamed, medical director in the emergency department at McKenzie Hospital in Sandusky, Michigan, and for several counties in the state’s northern region, says the area was spared from rampant COVID-19 last year and that may have created a false sense of security, especially among the region’s farmers and blue-collar workers who suffered economically from the pandemic and already were feeling COVID fatigue. ‘’Businesses weren’t really enforcing mask-wearing,’’ and many people in the region shunned them anyway, he said. Now, with variants spreading and many people still unvaccinated, his area “is being hit pretty hard,’’ Hamed said. "Our ER is absolutely swamped beyond belief.’’

Query: are these factors sufficient to differentiate Michigan's numbers from those of states below the national average?

New Jersey, at 230.7 cases per 100,000 is still second worst Covid state in nation, with the national average at 120.4

The number of new Covid cases is going down in New Jersey. BUT, as of Sunday, April 25, 2021, New Jersey is at 230.7 per 100,000 people, second only to Michigan ( 381.5 ) as the worst state in the nation. New cases in New Jersey are NOT randomly distributed, with three counties especially bad [map below].

The Covid cases per 100k data is obtained from the CDC site.

CDC link:


Saturday, April 24, 2021

Thinking about In re Hall, 781 F.2d 897 (CAFC 1986)

On the matter of printed publications, patent law students get exposed to In re Hall early in their careers. A reference indexed in one library was deemed available and thus a printed publication for 102 purposes.
Casebriefs describes the facts:

Hall’s application for a patent was rejected because a doctoral thesis was available as a "œprinted publication" more than one year prior to the application’s effective date. Hall appealed, claiming that there was no evidence that the dissertation was indexed properly in the library catalog before the critical date and that, even if it were, the presence of a single catalogued thesis in one university library does not establish sufficient accessibility of the publication’s teachings to those interested in the art and who practice reasonable diligence.

Hall's argument was rejected.

Of details, “‘[P]ublic accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication . . . .’” In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence [] can locate it.” Medtronic, 891 F.3d at 1380 (alteration in original) (internal quotation marks omitted). “Whether a reference is publicly accessible is determined on a case-by-case basis based on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).

Let's change the facts a bit. There is information in a government document that is relevant to a patent application. The document was never published, in the sense that nothing has been presented to the public about its contents. HOWEVER, if a FOIA request is made (such cannot be too general), one MIGHT obtain the document, or perhaps information leading to obtaining the document.

Is the "hidden" document a "printed publication"? See also VidStream loses at CAFC: matters of "what is" prior art. In re Hall revisited.

Dunst review of Seidule book on Robert E. Lee way off base

In Stars, Bars, and Memoirs, Robert Dunst of the Los Angeles Review of Books writes about the book Robert E. Lee and Me by Ty Seidule and states the following:

Second, Seidule shows that the myth hinges on the obviously false portrayal of the “obedient servant” or “happy slave.” It is telling, he notes, somewhat angrily, that literally zero enslaved Blacks fought as Confederate soldiers.

Although basically a correct factual observation, the inference drawn is incorrect. Confederate leaders absolutely,positively did not want to have African Americans as fighting soldiers. This was most vividly demonstrated by the Cleburne proposal (to have black soldiers), which not only was rejected but also effectively buried from further discussion. Refer to the article "That Extraordinary Document" by Steve Davis in Civil War Times Illustrated, page 14 (December 1977). link:
See also IPBiz Were there African American soldiers for the Confederacy?

The Dunst book review also contains the text:

The next tenet of the “Lost Cause” argues that the Confederacy was doomed from the start because the Northerners simply had more materiel — that the Yankees’ might had triumphed over the Southerners’ right. This is not true, as Seidule points out in prosaic terms: both armies saw desertion rates of over 10 percent. The South was not physically outmatched; they were just beaten.

While believing that the Civil War was about slavery, IPBiz also believes that the Confederacy "was doomed from the start." The only hope the Confederacy had was foreign recognition (which became unlikely after the Emancipation Proclamation) or Northern disallusionment. In the planning for the Gettysburg campaign, Lee was relying on the latter, and recognized that failure at Gettysburg would lead to a drawn out, losing situation for the Confederacy because of lack of resources. Cleburne, in his document of January 1863, recognized that the deficiency of resources would lead to defeat. An argument about "desertion rates" does not negate this reality. Moreover, even if the "desertion rate percentage" argument were valid, it would more adversely impact the Confederacy, which had fewer soldiers in uniform. That is merely the war of attrition thought attributed to Grant's Overland Campaign, or later to airplane fighting in World War I or II.

In passing, note the post on "alternate histories" of the American Civil War. Yes, "the" Winston Churchill did write one (a different Winston Churchill wrote a Civil War novel).

Divided We Stand: “Confederate” and Civil War Alternate Histories

New Jersey remains the second worst state in new Covid infections per capita; more than twice the national average

An April 23 article in Statnews by Andrew Joseph titled States with springtime Covid-19 surges appear to have turned a corner contains text:

Trends can also be moving in the right direction when, in raw numbers, infections are still high. Cases may be coming down in Michigan, but they’re still higher than they were there at just about at any other point in the pandemic. National case counts in the 60,000 range as opposed to the, say, 20,000 range mean that many more people will suffer severe outcomes from the coronavirus. And while death counts have dropped dramatically from the more than 3,000 people taken daily in the United States in stretches of January and February, the progress has been stalled at more than 700 deaths per day. The hope is that if case counts continue to fall over the coming weeks, deaths will follow in turn.

But there was an intermediate hurdle: In some states, cases started rising again this spring, as politicians eased restrictions and individuals grew more relaxed. More transmissible variants of the coronavirus pushed cases up or slowed progress — most notably B.1.1.7, which ignited major outbreaks in the United Kingdom (where it first emerged) and then in other European countries. Some recent transmission in New York and New Jersey also seems to have been driven by another variant, B.1.526. The declining case counts in Michigan and other states suggest we may be back on track. “I’m hopeful for that,” epidemiologist Stephen Kissler of Harvard’s T.H. Chan School of Public Health said about the U.S. dodging the full brunt of B.1.1.7. “I’m cautiously optimistic.”

A list of the "bad" states for new Covid cases follows. With the national average 129.3 new Covid cases per 100,000 people, Michigan (432.4) and New Jersey ( 261 ) remain numbers one and two as being the worst, both being at a level more than twice the national average. As to easing of restrictions, New Jersey did very little in the time period preceding and during the spring 2021 increase. Separately, there is no evidence that the five worst states [Mich, NJ, Del., PA, Minnesota ] had unusual levels of B.1.1.7 relative to states with lower levels of covid per 100,000. The situation in Michigan remains largely unexplained.