Thursday, June 08, 2023

CAFC does secondary considerations in Yita v. MacNeil

The coutccome:

MacNeil IP LLC is the assignee of two U.S. patents, Nos. 8,382,186 and 8,833,834, that were the subject of decisions by the Patent Trial and Appeal Board in inter partes reviews (IPRs) of challenges to all claims of the patents on obviousness grounds presented in petitions filed by Yita LLC. In IPR 2020-01139, the Board rejected Yita’s challenge to all claims (1–7) of the ’186 patent, concluding that—although a relevant artisan would have been motivated to combine, and had a reasonable expectation of success in combining, the teachings of the asserted prior-art references to arrive at each challenged claim—“[MacNeil’s] evidence of secondary considerations [was] compelling and indicative of non-obviousness.” J.A. 81. Yita appeals that ruling. In IPR 2020-01142, the Board, while agreeing with Yita’s challenge to claims 13–15 of the ’834 patent (a ruling that MacNeil does not appeal), rejected Yita’s challenge to claims 1–12. Yita appeals that ruling. For the reasons below, we reverse the Board’s judgment in the ’1139 IPR and affirm its judgment in the ’1142 IPR.

Some law

“Obviousness is a question of law based on underlying facts, including the scope and content of the prior art, differences between the prior art and the claims at issue, the level of ordinary skill, and relevant evidence of secondary considerations.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)); see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406– 07, 427 (2007); Intercontinental Great Brands LLC v. Kellogg North America Co., 869 F.3d 1336, 1343–44, 1347 (Fed. Cir. 2017). Secondary considerations include whether the claimed invention has been commercially successful, whether it solved a long-felt but unsolved need in the art, and whether the relevant industry praised it. See Graham, 383 U.S. at 17–18. To be relevant, such a secondary consideration must have a “legally and factually sufficient connection” (nexus) to the claimed invention. Fox Factory, 944 F.3d at 1373. A nexus is presumed when a commercial product (if relevantly successful, for example) “is the invention disclosed and claimed in the patent.” Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 1067 (Fed. Cir. 2020) (quoting WBIP, 829 F.3d at 1329).

But our case law makes clear that “objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art’”—not necessarily well-known. Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013) (emphasis added) (quoting Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)); see also Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016) (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.” (quoting Ormco, 463 F.3d at 1312)). Where prior art teaches a feature and a relevant artisan would have been motivated to use it in combination with other prior-art teachings with a reasonable expectation of success to arrive at the claimed invention—as the Board here found—a secondary consideration related exclusively to that feature does not logically undermine the inference from those premises that the claimed invention would have been obvious from the full body of prior art just because the feature was not well known.

Second, the Board, citing WBIP, stated that “[t]he Federal Circuit instructs that ‘it is the claimed combination as a whole that serves as a nexus for objective evidence; proof of nexus is not limited to only when objective evidence is tied to the supposedly “new” feature(s).’” J.A. 75 (quoting and citing WBIP, 829 F.3d at 1330). But in WBIP we recognized that secondary-consideration evidence “may be linked to an individual element” of the claimed invention or “to the inventive combination of known elements” in the prior art. 829 F.3d at 1332. It was for the latter circumstance, which was the circumstance present in WBIP, that this court in WBIP made the point relied on by the Board here. But that rationale, applicable when no single feature (but only the combination) is responsible for the secondaryconsideration evidence, does not undermine our case law, just discussed, denying force to a secondary consideration that is exclusively related to a single feature that is in the prior art.

Thursday, April 13, 2023

CAFC does trademarks

The outcome

Charger Ventures LLC appeals from a Trademark Trial and Appeal Board decision that denied registration of Charger’s trademark SPARK LIVING on grounds of likelihood of confusion with an earlier registered trademark, SPARK. On appeal, Charger challenges the Board’s likelihood of confusion determination. Because the Board’s determination is supported by substantial evidence, we affirm.

Some text

Third, Charger argues that the Board’s finding on the class of purchasers was improper because the consumers of Charger’s services are substantially different from registrant’s services. Appellant’s Br. 28–29. Charger argues that “[p]eople looking to buy a home or a condominium are likely to take their time and make an educated decision before entering into these purchases because of the important impact these decisions can have on their lives . . .”. Id. at 29. The Director asserts that Charger fails to identify where, in the record, it has demonstrated that residential property owners are distinct consumers from commercial owners. Appellee’s Br. 21. Indeed, the Director argues that “people who seek commercial real estate services live somewhere.” Id. (emphasis in original). As the Board explained, careful or sophisticated consumers are not immune from source confusion. J.A. 12 (citing In re Rsch. and Trading Corp., 793 F.2d at 1279 (“That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods.”)). Paired with the potential overlap of consumers, substantial evidence supports the Board’s determination on this factor. Fourth, as for the factor regarding the number and nature of similar marks in use on similar goods, Charger reiterates its evidence of third-party use showing variations of the term SPARK in trademarks as evidence of weakness. Charger argues that weakness of the mark “is paramount in the likelihood of confusion analysis.” Appellant’s Br. 20. The Director argues that all marks on the principal register are presumed valid and distinctive and that even weak marks are entitled to protection. Appellee’s Br. 23 (citing Conde Nast Publ’ns, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 1406 (CCPA 1975)).

Wednesday, April 12, 2023

Sanderling loses at CAFC

The outcome"

Sanderling Management Ltd. (“Sanderling”) appeals from the district court’s dismissal of Sanderling’s patent infringement suit against Snap Inc. (“Snap”) due to the asserted claims’ lack of patent-eligible subject matter under 35 U.S.C. § 101 (“Section 101”). Sanderling also asks us to review the district court’s denial of its motion for leave to amend its complaint. We affirm.

Footnote 6: It is within a district court’s discretion to require a party opposing a Rule 12 motion based on Section 101 to identify, and articulate the significance of, specific fact disputes that purportedly make granting the motion improper. A patentee’s failure to do so should, as here, preclude the court from denying the motion simply based on a vague pronouncement to the effect that “a factual dispute exists.”

Sequoia v. Dell: mixed decision

The outcome:

Sequoia Technology, LLC appeals from a stipulated judgment of noninfringement and invalidity of U.S. Patent No. 6,718,436 following an adverse claim construction ruling from the United States District Court for the District of Delaware. For the reasons below, we disagree with the district court’s claim construction for “computer-readable recording medium,” and thus we reverse the district court’s ineligibility determination under 35 U.S.C. § 101. In addition, we agree with the district court’s claim construction for “disk partition” and “logical volume,” and thus we affirm the district court’s noninfringement determination.

Factual details

The technology at issue is digital storage. The ’436 patent explains that servers with important data can use “Redundant Array of Independent Disks” (RAID) to store the same data on multiple hard disks. See ’436 patent col. 1 ll. 26–32. The specification further notes how a virtual disk drive—also known as a logical volume—can encompass multiple physical disk drives. Id. at col. 1 ll. 24–28. A logical volume manager can implement the RAID technique with software to construct a logical volume. Id. The specification teaches that these advances were known, but “conventional logical volume managers ha[d] problems in that metadata is too large to manage in huge storage


In its preliminary response to Red Hat’s IPR petition, ETRI distinguished two prior art references, Bridge and Williams, by highlighting that instead of disk partitions, “extents in Bridge or physical partitions in Williams, both subsets of disk drives[,] . . . are gathered to form a logical volume.” J.A. 1027 (quoting D.I. 178, Ex. K, at 2); see J.A. 936 (similarly explaining that “the extents of Bridge or the physical partitions of Williams,” not disk partitions, are gathered to form the logical volume). Separately, ETRI stated that “[w]hile the logical volume [in the ’436 patent] is formed from extents, extents are added or removed from the logical volume at the level of the disk partitions.” J.A. 921 (emphasis added). These statements are consistent with the understanding that a logical volume in the present invention is only constructed at the level of disk partitions, not sub-portions of disk partitions. Sequoia disagrees. It argues that the distinction ETRI drew between the prior art and the claimed invention was that Bridges and Williams lack any disk partitions (a necessary component of the claim). Appellant’s Br. 38–40. We disagree. ETRI’s statements during prosecution distinguish the prior art based on what element is removed or added to form the logical volume—either disk partitions or subparts of disk partitions. Sequoia argues that ETRI’s second statement above is consistent with “permit[ting] extents to be individually allocated (or not) to the logical volume.” Id. at 38. But ETRI’s reference to removing or adding extents “at the level of the disk partitions” is clear. See J.A. 921. It does not reasonably support a construction that would allow extents—which are sub-portions of disk partitions—to build logical volumes. Finally, Sequoia argues that another limitation in claim 1, directed to an “extent allocation table for indicating whether each extent in the disk is used or not used,” supports its construction of disk partition and logical volume. Appellant’s Br. 27–29. According to Sequoia, “used or not used” in the extent allocation table means used or not used for constructing the logical volume. Accordingly, if Sequoia is correct, then extents—not partitions—are the minimum unit forming the logical volume, and the district court’s construction of “disk partition” and “logical volume” are incorrect. Red Hat, on the other hand, contends that “used or not used” means used or not used for storage. As such, under Red Hat’s construction, this claim language does not undermine the district court’s construction of “disk partition” and “logical volume.” The claim language read in isolation does not clearly support either parties’ construction. Rather, the plain language of the claim limitation “used or not used” begs the question—used for what? Here, in light of the intrinsic evidence that logical volumes are constructed from entire disk partitions, the extent allocation table must point to whether extents are used or not used for storage.


This suggests that “used” does not mean used in the logical volume; rather, it means used for storage. Were it otherwise, the extent allocation table in the preferred embodiment would be superfluous.6 While not dispositive, we find it unlikely that an inventor would define an invention such that an element of a preferred embodiment is superfluous. Cf. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (explaining that interpreting a claim such that a preferred embodiment is excluded is “rarely, if ever, correct” because it is unlikely an inventor would define the invention in such a way).

Tuesday, April 11, 2023

Arbutus case affirmed. Inherent anticipation found.

The outcome:

Appellant Arbutus Biopharma Corporation appeals a final written decision in an inter partes proceeding of the Patent Trial and Appeal Board that found claims 1–22 of U.S. Patent No. 9,404,127 invalid as anticipated. On appeal, Arbutus Biopharma Corporation challenges the Board’s anticipation finding. We affirm.


The Patent Trial and Appeal Board (“Board”) instituted the IPR and issued a final written decision (“FWD”) finding all 22 claims anticipated by the ’069 patent (“’069 patent” or “prior art patent”). Id. at *1. In doing so, it found the ’069 patent to be prior art to the ’127 patent.1 Id. at *9, 12. The Board then found several of the same components between the two patents. Both patents: are directed to the same purpose (providing SNALP, methods of making and delivering SNALP); disclose at least the 1:57 and 1:62 formulations; explain that SNALP can be formed by any method in the art including direct dilution, and direct the reader to rely on the ’031 publication for details on using DDM. Id. at *7–8; ’069 patent, col. 57 ll. 50–55.


The main issue before the Board was whether claim 1(d) of the ’127 patent—wherein at least about 95% of the particles in the plurality of particles have a non-lamellar morphology (the “Morphology Limitation”)—is inherently disclosed in the ’069 patent. Id. at *9. Moderna argued that the Morphology Limitation, while not expressly mentioned in the prior art, is an “inherent natural property” resulting from the lipid composition of the formulation and formation process. Id. at *11. Arbutus disagreed, arguing that there was no presumption of inherency and that there was no evidence (such as testing or reasoning) showing that the ’069 patent and its formulations would necessarily have the same morphology as disclosed by the ’127 patent. Id. at *12. Arbutus also submitted experimental evidence from its expert, who prepared two 2:30 lipid formulations from the ’069 patent, to demonstrate that the Morphology Limitation was not met. Id. at *17. After weighing the evidence, the Board found Arbutus’s arguments unavailing.


A limitation is inherent if it is the “natural result flowing from” the prior art’s explicit disclosure. Id. at 1379. A patent “can be invalid based on inherency when the patent itself makes clear that a limitation is ‘not an additional requirement imposed by the claims . . . but rather a property necessarily present’.” Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1332 (Fed. Cir. 2020) (quoting In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)). Thus, inherent anticipation requires “merely that the disclosure of the prior art is sufficient to show that the natural result flowing from the operation as taught in the prior art would result in the claimed product.” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343–44 (Fed. Cir. 2005) (internal quotation marks omitted) (modifications in the original). We have also explained that “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” Bristol–Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). “Insufficient prior understanding of the inherent properties of a known composition does not defeat a finding of anticipation.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1349 (Fed. Cir. 1999).

Incorporation by reference

This court has also discussed the effect of incorporated references. When a reference or material from various documents is incorporated, they are “effectively part of the host document as if [they] were explicitly contained therein.” Advanced Display Sys., Inc., 212 F.3d at 1282.

We have explained that the “critical question” for inherent anticipation is “whether the [prior art] patent sufficiently describes and enables one or more embodiments— whatever the settings of their operational features—that necessarily include or result in the subject matter of [the] limitation. . . .” See Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004). Here, because there is no error in the Board’s determinations that the prior art teaches the We have explained that the “critical question” for inherent anticipation is “whether the [prior art] patent sufficiently describes and enables one or more embodiments— whatever the settings of their operational features—that necessarily include or result in the subject matter of [the] limitation. . . .” See Toro Co. v. Deere & Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004). Here, because there is no error in the Board’s determinations that the prior art teaches the

Sunday, April 09, 2023

A Civil War national holiday? Not on April 9.

Steve Phillips wrote an article in the Guardian titled: The American civil war ended on this day. It should be a national holiday, which argued April 9 should be a national holiday.

On April 9, 1865, Lee surrendered to Grant. The Civil War did not end. Johnston's army was roaming North Carolina.

Lincoln's position in the 1860 election was against the EXPANSION of slavery, not about the elimination of slavery (recall the proposed Corwin amendment).

The significant positive event was the passage of the 13th Amendment, as opposed to the "might have been" Corwin version of the 13th Amendment.

link to Phillips article

"Fake news" isn't new

In a Google search for "sermon walking," one can find the following:

Reporters and city officials gathered at a Chicago railroad station one afternoon in 1953. The person they were meeting was the 1952 Nobel Peace Prize winner. A few minutes after the train came to a stop, a giant of a man - six feet four inches with bushy hair and a large mustache stepped from the train. Cameras flashed. City officials approached him with hands outstretched. Various people began telling him how honored they were to meet him. The man politely thanked them and then, looking over their heads, asked if he could be excused for a moment. He quickly walked through the crowd until he reached the side of an elderly black woman who was struggling with two large suitcases. He picked up the bags and with a smile, escorted the woman to a bus. After helping her aboard, he wished her a safe journey. As he returned to the greeting party he apologized, "Sorry to have kept you waiting." The man was Dr. Albert Schweitzer, the famous missionary doctor who had spent his life helping the poor in Africa. In response to Schweitzer’s action, one member of the reception committee said with great admiration to the reporter standing next to him, “That’s the first time I ever saw a sermon walking.”

link:, which link states "author unknown"

A different variant appears on :

Albert Schweitzer was acclaimed in his day as one of the greatest men on earth. He was a missionary in the heart of Africa. He won more honors than any living man at that time. He won the Nobel prize in 1952. On one occasion, when he came to Chicago, a group of prominent citizens came to welcome him. They gathered around him, gave him the key to the city, and told him that they were greatly honored by his visit. The reporters took notes and the photographers were getting many pictures. Suddenly the great man excused himself. He rushed over to a little woman who was struggling with a heavy suitcase and several packages. He picked these things up and told the woman to follow him. He literally ran interference for her through the crowded station, put her on the train, and wished her a pleasant journey. When he returned to the committee, he said, “I am sorry to keep you gentlemen waiting, I was just having my daily fun.” And one of the reporters said, “That is the first time I ever saw a big sermon walking.” 1 1W. Herschel Ford, Sermons You Can Preach on John, (Grand Rapids, MI: Zondervan Publishing House, 1958), p. 273-4.

The problem with these accounts, however uplifting they are, is that they never happened. Schweitzer only visited the United States once, to appear at Aspen, Colorado giving a talk on Goethe, and to accept an honorary degree from the University of Chicago, The year was 1949, years prior to his receipt of the Nobel Prize.


Albert Schweitzer made only a single trip to the United States. It was during the summer of 1949, when America was enjoying mounting prosperity, Europe was struggling to recover from the devastation of World War II, and Africa was about to shed its colonial past. He came to speak in Aspen, Colorado, at a festival celebrating the bicentennial of Goethe's birth, to earn funds for a leprosy clinic at Lambarene, and to meet with American drug manufacturers about modern leprosy treatments. Acclaimed everywhere he went and invited to speak at countless dinners and assemblies, Schweitzer stuck to his original schedule, traveling relentlessly and returning to Europe after only 25 days.

Compare to text in the article -- Can We No Longer Believe Anything We See? -- URL:

Last month, some people fell for images showing Pope Francis donning a puffy Balenciaga jacket and an earthquake devastating the Pacific Northwest, even though neither of those events had occurred. The images had been created using Midjourney, a popular image generator.

People figured out the fake jacket photo very quickly. In 2023, people repeat the Schweitzer story and listeners accept the truth of it without question.

Saturday, April 01, 2023

The ITC and RAI prevail in appeal to the CAFC

The outcome

RAI Strategic Holdings, Inc., R.J. Reynolds Vapor Company, and R.J. Reynolds Tobacco Company (collectively “Reynolds”) filed a complaint at the International Trade Commission alleging that respondents Philip Morris Products S.A., Philip Morris USA, Inc., and Altria Client Services LLC (collectively “Philip Morris”) violated Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, through the importation and sale of tobacco products that infringed certain claims of U.S. Patent Nos. 9,901,123 and 9,930,915. After conducting a Section 337 investigation, the Commission barred Philip Morris and its affiliates from importing products infringing the asserted patents. Philip Morris appeals, contending that the Commission failed to “consult with, and seek advice and information from” the Department of Health and Human Services (HHS) as required by Section 337. In addition, Philip Morris challenges the Commission’s determinations on public interest, domestic industry, patent validity, and infringement. For the reasons set forth below, we affirm the Commission’s decision in full.

Judge Newman dissents in Roku case

The outcome:

Roku, Inc. appeals the Patent Trial and Appeal Board’s final written decision holding that claims 1, 3, 5, and 7 of U.S. Patent No. 9,716,853 had not been proven unpatentable as obvious. This case turns on a single question— whether a person of ordinary skill in the art would have understood the prior art’s disclosure of a listing of remote command codes formatted for transmission via two different communication methods to be a listing comprised of at least a first communication method and a second communication method different than the first communication method. Because the question presented involved the scope and content of the prior art, the Board resolved this dispute as a purely factual question, which we review for substantial evidence. The Board thoroughly considered the evidence of record and found in its final written decision that the skilled artisan would not have understood the prior patent’s listing of remote command codes to correspond to the claim limitation at issue. Because the Board’s finding in this close factual dispute is supported by substantial evidence, we affirm the Board’s final written decision.

Judge Newman, in dissent

I respectfully dissent, for I have concerns as to both procedural and substantive aspects of the court’s ruling.


The decision on appeal is “that Petitioner has not established by a preponderance of the evidence that any of claims 1, 3, 5, or 7 of the ’853 patent are unpatentable.” J.A. 24. My concern is with the majority’s implicit holding that if the underlying findings of fact are supported by substantial evidence, then we do not review the ultimate legal question of non-obviousness. I believe that de novo review is appropriate for the questions of law presented herein, along with review of any underlying facts for support by substantial evidence.


An example is that for selecting the communications method, the ’853 patent shows use of a “matrix” in Figure 7, and states that the matrix contains the “form of command/transmission to be used and a pointer to the required data value and formatting information for the specific command,” Roku Reply Br. 10 (quoting the ’853 patent col. 7 ll. 26–29), while Chardon lists “both CEC-formatted command codes and a parallel set of IR-formatted command codes.” Id. (citing Chardon, ¶¶ [0008], [0039], [0044]). However, any difference in the selection method does not appear in the claims. Applying the requisite analysis of law and fact, I conclude that the ’853 patent claims at issue would have been obvious in view of Chardon, because the methods described in the claims and the prior art are substantially identical and serve the same purpose and use. I respectfully dissent from my colleagues’ contrary ruling.

Monday, March 20, 2023

Hantz software; claims not asserted are not part of judgment

The conclusion:

Because, in view of the foregoing, we agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents. We therefore vacate the district court’s judgment insofar as it held any claim other than claims 1 and 31–33 of each asserted patent ineligible and affirm in all other respects.