Thursday, October 12, 2017

Biogen and Roche on MS drug Ocrevus [ocrelizumab ]

From a post at Reuters :

U.S.-based Biogen is entitled to between 13.5 and 24 percent of U.S. sales and 3 percent of sales elsewhere from Roche’s new multiple sclerosis drug Ocrevus, whose annual revenue may hit $4 billion by 2022.

from Double Whammy for Roche

See also previous IPBiz post:

Lipoic acid and secondary progressive multiple sclerosis

“Inadvertent repetition of biographical boilerplate was not an egregious theft intentionally performed?”.

A post at the Guardian on the Bialosky matter begins:

More than 70 authors, including Pulitzer prize winners Jennifer Egan and Louise Glück, have come to the defence of the editor and poet Jill Bialosky after she was accused of plagiarism, saying that Bialosky’s “inadvertent repetition of biographical boilerplate was not an egregious theft intentionally performed”.

The problem with the word "inadvertent" is that there was a deliberate substitution of certain words to avoid explicit word-for-word plagiarism; as noted in the Guardian:

Logan provided examples of Bialosky’s writing and the passages from Wikipedia, adding that “many of Bialosky’s changes here and elsewhere – ‘barely’ for ‘seldom’, ‘verse’ for ‘poetry’, ‘unleashed’ for ‘gave rise to’, ‘total’ for ‘complete’ – are the slight, guilty revisions of the serial plagiarist”.


Owens Corning wins at CAFC

Fast Felt Corporation owns U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material. Fast Felt sued Owens Corning for infringement, and Owens Corning then filed a petition with the Patent and Trademark Office (PTO) seeking an inter partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C. §§ 311–19. The Patent Trial and Appeal Board, acting as the delegate of the PTO’s Director under 37 C.F.R. § 42.4(a), instituted a review of all of the challenged claims on grounds of obviousness. Institution of Inter Partes Review at 26, Owens Corning v. Fast Felt Corp., No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9 (Institution Decision). After conducting the review, the Board concluded that Owens Corning had failed to show obviousness of any of the challenged claims. Final Written Decision, Owens Corning v. Fast Felt Corp., No. IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug. 11, 2016) (Final Decision).

Owens Corning appeals from the Board’s decision. It contends that, once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness. We agree, and we reverse the Board’s decision.


Owens Corning first argues that the Board, when evaluating obviousness in light of the prior art, at least implicitly adopted an erroneous claim construction. Specifically, it contends that the Board effectively treated the “roofing or building cover material” as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix. And it contends that such a construction is legally incorrect under the broadest-reasonable-interpretation standard applicable in the IPR. We agree as to both parts of this contention


In this case, it is not necessary or appropriate to remand for the Board to reassess the evidence in light of the correct claim construction. On the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction is employed, is not supported by substantial evidence. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077, 1082 (Fed. Cir. 2015) (reversing rejection of IPR challenge). Moreover, in this court, after Owens Corning sought outright reversal on this ground in its opening brief, Fast Felt in its responsive brief did not ask for a remand if this court adopted a claim interpretation not limited by any requirement of asphalt coating or saturation.


Owens Corning’s petition did not restrict the claim scope based on coating or saturation; the Institution Decision did not adopt such a limiting construction, Institution Decision at 5; and when Fast Felt relied on a limitation based on asphalt coating or saturation in its Patent Owner’s Response, Owens Corning clearly asserted in its Reply that “Asphalt Saturated Substrates Cannot Be Used To Distinguish The Prior Art Because No Such Limitation Is Recited In The Claims,” J.A. 339. In these circumstances, where only one answer is supported by substantial evidence and there is neither a request nor an apparent reason to grant a second record-making opportunity, reversal is warranted.

The CAFC addresses Grammatical Ambiguity in Organik Khimya

Grammatical Ambiguity

Organik also argues that the ’435 specification provides an open-ended definition of “swelling agent,” and that the Board improperly adopted the narrower of two possible constructions of a “grammatically ambiguous passage.” Organik Br. 34. Organik argues that the broader construction of any ambiguity is required by law, citing In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015), aff’d sub nom. Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), as authorizing the broadest reasonable construction in PTO examination practice. The asserted ambiguity is in the following passage in the specification:

Suitable swelling agents include, are those which, in the presence of the multistage emulsion polymer and monomer, are capable of permeating the shell and swelling the core. Swelling agents may be aqueous or gaseous, volatile or fixed bases or combinations thereof.

Thursday, October 05, 2017

CAFC in Amgen v. Sanofi

Appellants Sanofi, Aventisub LLC, Regeneron Pharmaceuticals
Inc., and Sanofi-Aventis U.S., LLC (collectively,
“Appellants”) appeal from a final judgment of the
district court holding U.S. Patent Nos. 8,829,165 (“’165
patent”) and 8,859,741 (“’741 patent”) not invalid and
granting a permanent injunction enjoining sales of Appellants’
Praluent® alirocumab (“Praluent”).1 In particular,
Appellants argue that the district court improperly excluded
evidence regarding written description and enablement,
improperly instructed the jury on written
description, improperly denied Appellants’ motion seeking
JMOL of no written description and no enablement,
improperly granted Appellees’ motion seeking JMOL of
non-obviousness, and improperly issued the permanent
injunction. Appellants’ Br. 1. Because we conclude that
the district court (i) erred by excluding Appellants’ evidence
regarding written description and enablement, and
(ii) improperly instructed the jury on written description,
we reverse-in-part and remand for a new trial on written
description and enablement. We also conclude that
Appellants are not entitled to JMOL of no written description
and no enablement. We affirm the district
court’s grant of Appellees’ JMOL of non-obviousness.
Finally, we vacate the district court’s permanent injunction.

En banc CAFC in Aqua: very little but cogitations and academic exercises?

The en banc CAFC in Aqua v. Matal noted:

Upon review of the statutory scheme, we believe that
§ 316(e) unambiguously requires the petitioner to prove
all propositions of unpatentability, including for amended
claims. This conclusion is dictated by the plain language
of § 316(e), is supported by the entirety of the statutory
scheme of which it is a part, and is reaffirmed by reference
to relevant legislative history. Because a majority of
the judges participating in this en banc proceeding believe
the statute is ambiguous on this point, we conclude in the
alternative that there is no interpretation of the statute
by the Director of the Patent and Trademark Office
(“PTO”) to which this court must defer under Chevron,
U.S.A. Inc. v. Natural Resources Defense Council, Inc.,
467 U.S. 837 (1984). And we believe that, in the absence
of any required deference, the most reasonable reading of
the AIA is one that places the burden of persuasion with
respect to the patentability of amended claims on the
petitioner.1 Finally, we believe that the Board must
consider the entirety of the record before it when assessing
the patentability of amended claims under
§ 318(a) and must justify any conclusions of unpatentability
with respect to amended claims based on that record.

Because the participating judges have different
views—both as to the judgment we should reach and as to
the rationale we should employ in support of that judgment,
as explained below, today’s judgment is narrow.
The final written decision of the Board in this case is
vacated insofar as it denied the patent owner’s motion to
amend the patent. The matter is remanded for the Board
to issue a final decision under § 318(a) assessing the
patentability of the proposed substitute claims without
placing the burden of persuasion on the patent owner.

Footnote 1 notes:

To the extent our prior decisions in Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015);
Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed.
Cir. 2015), petition for reh’g pending; Synopsys, Inc. v.
Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016);
and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir.
2016), are inconsistent with this conclusion, we overrule
those decisions.

Within the conclusion

This process has not been easy. We are proceeding
without a full court, and those judges who are participating
disagree over a host of issues. As frustrating as it is
for all who put so much thought and effort into this matter,
very little said over the course of the many pages that
form the five opinions in this case has precedential
weight. The only legal conclusions that support and
define the judgment of the court are: (1) the PTO has not
adopted a rule placing the burden of persuasion with
respect to the patentability of amended claims on the
patent owner that is entitled to deference; and (2) in the
absence of anything that might be entitled deference, the
PTO may not place that burden on the patentee. All the
rest of our cogitations, whatever label we have placed on
them, are just that—cogitations. Even our discussions on
whether the statute is ambiguous are mere academic

Saturday, September 30, 2017

Benzinga on Tesla patent applications

The patents [sic: patent applications ] included safety mechanisms, communication redundancies and a replacement technique for lithium-ion batteries; weight-supporting structures, fluid-directing valves, auto-configured seat belts, air conditioning vents and traction control systems for Tesla’s all-wheel-drive electric vehicles; and a heat-recovering industrial oven for materials treatment.


Dr. Jang loses ensnarement argument at CAFC

The complicated issue in the case pertained to "doctrine of equivalents":

Dr. Jang also challenges the district court’s vacatur of the jury’s finding that the Express stent infringed the asserted claims under the doctrine of equivalents, as well as the entry of judgment of non-infringement in favor of BSC, on the ground that the district court incorrectly held that he failed to provide an acceptable hypothetical claim for an ensnarement analysis, and thereby failed to prove that his doctrine of equivalents theory did not ensnare the prior art.

Of burdens in this case as to direct infringement, the CAFC noted:

The Ninth Circuit reviews the denial of a motion for a new trial for abuse of discretion. Incalza v. Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007). It reverses the denial only if the record lacks any evidence supporting the verdict or if the district court made a mistake of law. Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

Here, as to the verdict of no literal infringement, there was evidence and the CAFC quickly dealt with the matter:

In sum, a reasonable jury could have returned a verdict of no literal infringement based on the evidence presented at trial. We consequently have no basis to order a new trial.

The doctrine of equivalents issue was more complicated:

In an appeal relating to the doctrine of equivalents, a party often challenges the fact finding made below of infringement (or no infringement) under that doctrine, which is usually analyzed under the well-established “substantially the same function-way-result” or “insubstantial differences” inquiry. Here, however, the jury’s finding that the Express stent satisfies each claim element of the asserted claims under the doctrine of equivalents is not on appeal. Instead, this appeal centers on the district court’s application of a limitation on the reach of the doctrine, known as “ensnarement.”

A doctrine of equivalents theory cannot be asserted if it will encompass or “ensnare” the prior art. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1322 (Fed. Cir. 2009). “This limitation is imposed even if a jury has found equivalence as to each claim element.” Id. at 1323 (citing Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 683, 687 (Fed. Cir. 1990), overruled in part on other grounds, Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 92 n.12 (1993)).


We have explained: Hypothetical claim analysis is a two-step process. The first step is “to construct a hypothetical claim that literally covers the accused device.” Next, prior art introduced by the accused infringer is assessed to “determine whether the patentee has carried its burden of persuading the court that the hypothetical claim is patentable over the prior art.” In short, [the court] ask[s] if a hypothetical claim can be crafted, which contains both the literal claim scope and the accused device, without ensnaring the prior art. Id. at 1363 (quoting DePuy, 567 F.3d at 1324, 1325); see also Ultra-Tex Surfaces, 204 F.3d at 1364–65 (“Under a hypothetical claim analysis, a patentee proposes a hypothetical claim that is sufficiently broad in scope to literally encompass the accused product or process. If that claim would have been allowed by the PTO over the prior art, then the prior art does not bar the application of the doctrine of equivalents.” (citations omitted)).

Footnote 5:

We have described the ensnarement inquiry as one of determining the patentability of the hypothetical claim, rather than its validity. That is because “[t]he pertinent question” is “whether that hypothetical claim could have been allowed by the PTO over the prior art” as the PTO has never actually issued it. Wilson Sporting Goods, 904 F.2d at 684.


Following Dr. Jang’s troubles in drafting a proper hypothetical claim that encompassed the Express stent yet was also patentable in the face of seemingly crowded prior art (a venture that began with generating approximately ten different hypothetical claims), the district court was under no obligation to undertake a hypothetical claim analysis on his behalf. A patentee, like Dr. Jang, bears the burden of proving that it is entitled to “the range of equivalents which it seeks.” Wilson Sporting Goods, 904 F.2d at 685. And, when utilizing the hypothetical claim tool, that burden starts with proposing a proper hypothetical claim that only broadens the issued
asserted claims. See Streamfeeder, 175 F.3d at 983. Dr. Jang cannot effectively transfer the responsibility of defining the range of equivalents to which he is entitled to the district court.7 See Ultra-Tex Surfaces, 204 F.3d at 1364 (“Under a hypothetical claim analysis, a patentee proposes a hypothetical claim . . . .” (emphasis added)). Because, as a threshold matter, Dr. Jang failed to submit a proper hypothetical claim for consideration, he was unable to meet his burden of proving that his doctrine of equivalents theory did not ensnare the prior art. The district court thus correctly vacated the jury verdict of infringement under the doctrine of equivalents.

Of procedure:

We are unpersuaded by Dr. Jang’s attempt to conflate two different concepts. We have explained before that “[t]he ensnarement inquiry . . . has no bearing on the validity of the actual claims” asserted in a case. DePuy, 567 F.3d at 1323 (citing Wilson Sporting Goods, 904 F.2d at 685). And that is because ensnarement concerns patentability with respect to a hypothetical patent claim as opposed to the validity of an actual patent claim. See Wilson Sporting Goods, 904 F.2d at 685 (“Leaving this burden [of proving that the range of equivalents sought does not ensnare the prior art] on [the patentee] does not, of course, in any way undermine the presumed validity of [its] actual patent claims.

Sunday, September 24, 2017

Nothing is really original in a strong sense?

In passing, on the subject of plagiarism, note
There is no such thing as plagiarism so you can’t possibly be guilty of it
which includes the text:

Nothing is really original in a strong sense, everything is derivative, recycled or upcycled. Harold Bloom, in the The Anxiety of Influence, argued that the key to understanding any great artist is the struggle (or “agon”) that is going on between the new woman and her precursor, that shadowy presence/absence that you love and hate, Oedipally, and must ultimately overcome.

CBS Sunday Morning starts new season on Sept. 24, 2017

Jane Pauley, in a green dress, started the new season in the old set, but quickly appeared on the new set, marking the first change of set in the history of "CBS Sunday Morning."

The cover story by Susan Spencer, titled -- What's in a name? Plenty -- was a vacuous puff piece, beginning and ending with one "Billion Ayer," a resident of Northport, NY and affiliated with the North Shore Country Club. In the story was the concept of "nominative determinism," a theme of "the name makes the man," illustrated by among others Usain Bolt. If such were to be believed, the person known to us as Ty Hardin ("Bronco" of Warner Brothers TV), actually born as Orison Whipple Hungerford Jr. would never have been an actor in Westerns.

Lee Cowan did a piece on Shania Twain, which obliquely related to "what's in a name": Twain grew up Eileen Edwards in Ontario, Canada. There is uncertainty as to the origin of the name "Shania."

The Almanac feature was a plug for CBS's "60 Minutes," which first appeared on September 24, 1968, 49 years ago.

There was a piece on Iain Armitage of the CBS show "Young Sheldon."

The Nature segment was a reprise: Whooping cranes in South Texas, which first aired on February 25, 1979. Sunday Morning itself launched on January 28, 1979.

Wikipedia notes of CBS Sunday Morning:

Despite the stereotype of the program appealing primarily to senior citizens, Sunday Morning actually placed first in its time slot in the key demographic of adults 25–54, beating all of the political discussion-driven Sunday morning talk shows.

BroadwayWorld in June 2017 wrote:

CBS SUNDAY MORNING, the nation's #1 Sunday morning news program, posted year-to-year audience gains, according to Nielsen live plus same day ratings for June 11. CBS SUNDAY MORNING delivered 5.20 million viewers (up +7% from 4.85m the same week a year ago) and a 1.0/07 with adults 25-54, the demographic that matters most to those who advertise in news. Broadcast year-to-date, CBS SUNDAY MORNING is the #1 Sunday morning news program with viewers (5.94m) and adults 25-54 (1.2/07).

On January 20, 2017, AdWeek wrote:

CBS Sunday Morning with Jane Pauley continues its lead as the most-watched morning TV show, drawing more than 6 million viewers last Sunday.

UPDATE on Pauley interview of Clinton on "deplorables":

Marc Thiessen of the Washington Post News Service on September 17, 2017 began

Hillary Clinton's new memoir of her failed presidential campaign is titled "What Happened." A better title would be "What Happened?" because Clinton apparently has no idea.

(and continued)

One problem with her analysis: Millions of those white people who voted for Donald Trump also proudly voted for Barack Obama. There are nearly 700 counties in the United States that voted twice for Barack Obama, one-third of which flipped to Trump in 2016. According to Nate Cohn of the New York Times, "almost one in four of President Obama's 2012 white working-class supporters defected from the Democrats in 2016, either supporting Mr. Trump or voting for a third-party candidate." Are all those Trump-Obama voters bigots? Millions of once reliably Democratic voters pulled the lever for the first black president, yet they were suddenly whipped up into a racist furor by Trump's "racial and ethnic and sexist appeals"?

Saturday, September 23, 2017

Inequitable conduct case in ND Ill

The outcome in Felt v. Beacon, 2017 U.S. Dist. LEXIS 154714 (DJ SHARON JOHNSON COLEMAN) :

Based on the foregoing, this Court again finds that Feit fails to meet its burden to show that Nilssen made a materially false misrepresentation to the U.S. Patent Office with the intent to deceive. Feit's motion for summary judgment is denied.

A law review with an interesting title is cited:

Moreover, it appears in the '887 application's "Description of Prior Art" that Nilssen identified the '107 application as the "original-in-part progenitor," filed on August 14, 1980, of the invention described [*16] in the '887 application. Dkt. 7903 at FEIT_012774. "'Progenitor applications' are applications unrelated to any previously filed U.S. patent application." Michael Carley, Deepak Hedge, & Alan Marco, What is the Probability of Receiving a U.S. Patent?, 17 Yale J. L. & Tech 203 (2015). Thus, it seems that Nilssen may have disclaimed any filing date earlier than August 14, 1980, on the face of the '887 application. Accordingly, there is insufficient evidence from which to conclude as the only reasonable inference that Nilssen intended to deceive the U.S. Patent Office by claiming an earlier effective filing date to which the '140 patent was not entitled.

ED Wisc discusses "a sandbox for gratuitous sniping" in case about lithium-ion batteries used in power tools

Of the case, MILWAUKEE ELECTRIC TOOL v. Snap-on, 2017 U.S. Dist. LEXIS 155132 :

Plaintiffs [ MILWAUKEE ELECTRIC TOOL et al] assert infringement of the following claims against Snap-on:

claims 1 and 8-10 of U.S. Patent No. 7,554,290 (the "'290 Patent"), claims 1, 4, 5, 7-13, and 16-19 of U.S. Patent No. 7,999,510 (the "'510 Patent"), and claims 1, 8-10, 12, and 13 of U.S. Patent No. 7,944,173 (the "'173 Patent"). Independent claim 1 of the '290 Patent, which is representative of its counterparts, recites
a battery [*2] pack for power a hand held power tool, the battery pack comprising:
a housing connectable to and supportable by the hand held power tool; and
a plurality of battery cells supported by the housing, the battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps, the battery cells having a lithium-based chemistry.

(Docket #187-1 at 77). Further, later claims provide, in relevant part, that the pack's battery cells each have "a nominal voltage of 4.2 volts" and that they have "a capacity of approximately 3.0 ampere-hours [("Ah")]." Id.

Because of the vast factual record presented, the Court will provide here a broad overview of the relevant background and timeline. Facts pertinent only to one narrow argument or another will be discussed at the appropriate juncture. This may lead to some repetition, but the Court has found no better way to fully and fairly treat each matter for decision.1

1 The Court pauses here to note that the parties often treated their factual briefing as a sandbox for gratuitous sniping at each other. Even when the core, material fact at issue could not be disputed, they rarely overlooked a chance to disagree over minutiae. Additionally, in stating the facts, they often included their own interpretive gloss on the document or testimony in question, which invited

Of claim constructiuon:

Tethering construction to a person of ordinary skill in the art is critical, teaches the Federal Circuit, because such a person reads the words of the claims against the context of their meaning in the relevant field of study, including any special meanings or usages, and in light of closely related documents such as the specification and the prosecution history. Id. at 1313. Because of the sometimes specialized meanings attributed to terms based on the field in question, general-purpose dictionaries are not always useful. See id. Before resorting to such a resource, courts should begin with the materials that a person of skill in the art would use: "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the [*19] meaning of technical terms, and the state of the art." Id.
After evaluating the claim language itself, the Federal Circuit instructs that the specification "is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. Although the patent specification may not be used to rewrite the claim language, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004), the specification may be used to interpret what the patent holder meant by a word or phrase in the claim,
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
After considering the claim language and the specification, a court may consult the final piece of intrinsic evidence: the patent's prosecution history. Vitronics, 90 F.3d at 1582. "[S]tatements made during the prosecution of a patent may affect the scope of the invention." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001). This is especially true if a particular interpretation of the claim was considered and specifically disclaimed during the prosecution of the patent. Warner-Jenkinson Co., Inc.
v. Hilton Davis Chem. Co., 520 U.S. 17, 30 (1997); Vitronics, 90 F.3d at 1582- 83.
Generally, the body of intrinsic evidence will eliminate any ambiguity in the claim terms, rendering unnecessary any reference to extrinsic evidence. Vitronics, 90 F.3d at 1583. Yet, if needed, a court may consider extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." [*20] Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art, and how the invention works, but it may not be used in derogation of the intrinsic evidence. Id.

Of the argument by Snap-on:

Snap-On asks the Court to engraft an additional limitation onto the 20 Amp Limitation out of practicality-that is, because tools in the field are not routinely turned on and their batteries run down completely without pause. See (Docket #201 ¶¶ 5, 12-13). Snap-On reasons that "the word 'average' in the 20 Amp Limitation implies that the discharge current may drop well below 20 amps so long as the average current remains above 20 amps." (Docket #207 ¶ 127). According to Snap-On, it is unlikely that any power too would have to deliver a constant current discharge reasonably close to 20 amps for its entire rated capacity in any real-life application. (Docket #201 ¶ 12).

But the standard of review is not what a person of skill in the art would find realistic; it is instead what a person of skill in the art would understand. There is no question that, [*26] putting aside matters of practicality, a person of ordinary skill in the art would comprehend the meaning of the 20 Amp Limitation, including the requirement that 20 amps be continuously delivered during the entire rated capacity of the battery pack. Such a person would understand that the limitation describes the capability, not the potential real-world use, of the invention. See Hitachi, 2012 WL 10161527, at *4 ("[T]he fact remains that the capacity of a battery is normally measured by discharging at a constant current until the battery has reached its terminal voltage, consistent with Metco's construction."). This is true notwithstanding the fact that even Plaintiffs concede that tool simulations are an important part of assessing the real-world functionality of the ultimate product.5

5Snap-On claims that Plaintiffs' construction reads the word "average" out of the claim language, (Docket #205 at 13), but the Court does not agree. Plaintiffs' construction incorporates the concept of "average" as meaning "reasonably close to" the required discharge current. Snap-On rightly notes that there are other senses of the word "average," including averaging a discharge current over a specified interval, but Snap-On's belief that its interpretation of the word is the only reasonable one does not make it so. Moreover, the deposition testimony of the named inventors on this point cannot undermine the clarity of the intrinsic [*28] record, which supports Plaintiffs' interpretation. See Kara Tech. Inc. v. Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (finding that "extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence").

Finally, the Court rejects Snap-On's suggestion that the 20 Amp Limitation is indefinite and therefore invalid. A patent must "conclude with one or more claims particularly pointing out and distinctly [*27] claiming the subject matter which the applicant regards as [the] invention" 35 U.S.C. § 112, ¶ 2 (emphasis added).6If, when "read in light of the specification delineating the patent, and the prosecution history, [a patent claim] fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention," the claim is invalid as indefinite under Section 112. Nautilus, Inc. v. Biosig Instrums., Inc., 134 S. Ct. 2120, 2124 (2014). A claim "must be precise enough to afford clear notice of what is claimed, thereby appris[ing] the public of what is still open to them." Id. at 2129; see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Moreover, a reviewing court must remember that "[i]t cannot be sufficient that a court can ascribe some meaning to a patent's claim; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc." Nautilus, 134 S. Ct. at 2130.

Of indefiniteness:

A claim is indefinite where it can be measured in several ways and the claim language, considered against the specification and prosecution history, do not provide adequate guidance on which method to use. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1344-45 (Fed. Cir. 2015); Eli Lilly, 845 F.3d at 1370. Put differently, "the patent and prosecution history must disclose a single known approach or establish that, where multiple known approaches exist, a person having ordinary skill in the art would know which approach to select." Dow Chem. Co. v. Nova Chems. Corp., 803 F.3d 620, 634-35 (Fed. Cir. 2015).
However, "a patentee need not define his invention with mathematical precision." Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005). Instead, "[t]he definiteness requirement mandates clarity, while recognizing that absolute precision is unattainable." Apple Inc. v. Samsung Elecs., Co., 786 F.3d 983, 1002-03 (Fed. Cir. 2015) (quotations and alterations omitted), rev'd on other grounds in 137 S. Ct. 429 (2016); Nautilus, 134 S. Ct. at 2128 (recognizing that "[s]ome modicum of [*29] uncertainty" may be tolerated). Indefiniteness is a question of law and must, like any other invalidity defense, be proven by clear and convincing evidence. Sonix Tech. Co., Ltd. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017); Teva, 789 F.3d at 1345.
Snap-On's indefiniteness objection has two aspects. First, it says that Plaintiffs conveniently used functional language-the requirement for a 20-amp discharge current-just at the point of novelty from prior art, which is not permitted under General Electric Co. v. Wabash Co., 304 U.S. 364, 371 (1938). However, the Federal Circuit has explained that functional language, standing alone, is not sufficient to render a claim indefinite.
Application of Swinehart, 439 F.2d 210, 213 (C.C.P.A. 1971); Cox Commc'ns,
Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224, 1232 (Fed. Cir. 2016). Although neither expressly considered the matter, is it worth noting that neither Magistrate Callahan nor the PTAB had difficulty in construing the 20 Amp Limitation, much less such insurmountable difficulty as to render the limitation indefinite. Rather, the relevant materials provide a skilled artisan with sufficient information to describe the claimed subject matter and distinguish it from prior art, which is all that is required. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Snap-On devotes little space to this argument and does no more than point out the functional language, expecting that effort to carry the day, and so the Court need not address the point further. See Hardrick v. City of Bolingbrook, 522 F.3d 758, 762 (7th Cir. 2008); United States v. Berkowitz, 927 F.2d 1376, 1384 (7th Cir. 1991) [*30] .
The second aspect of the indefiniteness challenge is more involved. According to Snap-On, the 20 Amp Limitation is fraught with uncertainty as to how to test the "average discharge current" of the battery pack which a person of ordinary skill in the art could not unravel, including in relation to "how long the battery is used, the application or task for which the tool is used, the acceptable voltage performance, and even the ambient temperature." (Docket #182 at 7). Put simply, Snap-On claims that a pack might not be able to produce a constant 20-amp discharge current over its entire rated capacity but could do so on average if used intermittently. (Docket #187-5 ¶ 32). In light of this, one of its experts, Yet-Ming Chiang ("Chiang"), opines that a pack must be tested in various ways that simulate real-world applications. Id. ¶ 34. This makes Meyer's 2001 cutting test and pulse test at least as relevant-indeed more so-that the constant-current test he performed. Id. ¶ 39; see also (Docket #187-13 163:6-23) (Reimers
testifying that average discharge current denotes averaging the discharge produced during pulse or profile tests). On this point, Snap-On asserts that Magistrate Callahan failed to [*31] consider the issue of indefiniteness as reinvented by the Supreme Court in Nautilus, rendering his opinion less persuasive. See Dow, 803 F.3d at 630 ("[T]here can be no serious question that Nautilus changed the law of indefiniteness.").

The district court referenced the Teva/copaxone case

Plaintiffs admit that tool simulation profiles are among the tests used to assess the performance of Li-ion battery packs. (Docket #201 ¶¶ 14-15). Moreover, other witnesses, include two of the named inventors, testified that a battery pack could be run both intermittently and constantly to ascertain an average discharge current. See id. ¶¶ 24-26. Because of the diversity of potential testing conditions and applications, Chiang concludes that skilled artisans could reasonably differ in how they assess whether the 20 Amp Limitation is met and that the patents-in-suit, even when considered alongside the specification and prosecution history, do not provide adequate instruction on which test should be used. (Docket #187-5 ¶¶ 45-47); see also (Docket #187-10 47:19-48:18) (testimony of Plaintiffs' expert during IPR, opining that continuously running a power tool until its battery runs out is not a "typical" way such tools are operated).

The Court does not agree. The Federal Circuit [*32] has found indefinite patent claims that do not teach how they are to be measured. For instance, in Teva, a patent claim prescribed a particular "molecular weight" of a product but did not specify which of three methods should be used to measure it. Teva, 789 F.3d at 1345. Neither the claims nor the specification provided guidance, and the prosecution history contained inconsistent statements by the patentee about which measure was correct. Id. at 1344- 45.

After lengthy discussion, the outcome:

For the reasons stated above, the Court adopts Plaintiffs' proposed
construction of the disputed claim terms. The Court further finds that Snap-On's motion for summary judgment should be denied in its entirety, and
that Plaintiffs' motion should be denied as to assignor estoppel, granted in part as to IPR estoppel, and granted in full as to Snap-On's anticipation, derivation, invalidity, and inequitable conduct defenses.
IT IS ORDERED that Plaintiffs' motion for summary judgment (Docket #185) be and the same is hereby GRANTED IN PART and DENIED IN PART as stated herein;
IT IS FURTHER ORDERED that Defendant's motion for summary judgment (Docket #183) be and the same is hereby DENIED;
IT IS FURTHER ORDERED that Plaintiffs' motion for leave to file its opening claim construction [*115] brief (Docket #177) be and the same is hereby

Friday, September 22, 2017

CAFC discusses venue issues in In re Cray

This petition arises from a patent infringement action
filed by Raytheon against Cray in the Eastern District of
Texas. Cray sells advanced supercomputers that Raytheon
accuses of infringement. Cray is a Washington corporation
with its principal place of business located there.
It also maintains facilities in Bloomington, Minnesota;
Chippewa Falls, Wisconsin; Pleasanton and San Jose,
California; and Austin and Houston, Texas.
Although Cray does not rent or own an office or any
property in the Eastern District of Texas, it allowed Mr.
Douglas Harless and Mr. Troy Testa to work remotely
from their respective homes in that district. Transfer
Order, 2017 WL 2813896, at *1–2 & n.1. Mr. Testa
worked for Cray as a senior territory manager while
residing in the district from 2010 to 2011 before the
underlying suit was filed. Id. at *1 n.1

Mr. Harless worked as a “sales executive” for approximately
seven years with associated sales of Cray systems
in excess of $345 million. Id. at *1. Mr. Harless’s responsibilities
also included “new sales and new account development
in [the] Central U.S.” and “management of key
accounts within the Financial, Biomedical and Petroleum
Industries.” Id. (alteration in original) (quotation marks
omitted). Cray’s “Americas Sales Territories” map, an
internal document, identified Mr. Harless as a “Named
Account Manager” and his location at his Eastern District
of Texas personal home. Id. Mr. Harless received reimbursement
for his cell phone usage for business purposes,
internet fees, and mileage or “other costs” for business
travel. Id. Cray provided Mr. Harless with “administrative
support” from its Minnesota office. Id.


Cray moved to transfer this suit under 28 U.S.C.
§ 1406(a), which provides that “[t]he district court of a
district in which is filed a case laying venue in the wrong
division or district shall dismiss, or if it be in the interest
of justice, transfer such case to any district or division in
which it could have been brought.” Cray argued that it
does not “reside” in the Eastern District of Texas in light
of the Supreme Court’s decision in TC Heartland LLC v.
Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).
The district court agreed that Cray does not reside in the
district. Transfer Order, 2017 WL 2813896, at *4.

Cray further argued that venue was improper in the
Eastern District of Texas because Cray had neither
committed acts of infringement, nor maintained a regular
and established place of business within that district.
The district court, however, rejected that argument. The
court found that Mr. Harless’s activities were factually
similar to the activities performed by the representatives
in In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985), in
which this court rejected a mandamus request to reverse
an order denying transfer for improper venue. See Transfer
Order, 2017 WL 2813896, at *8–10. The court did not
rely on Mr. Testa’s activities in determining that venue
was proper.

The CAFC noted:

We recognize that the world has changed since 1985
when the Cordis decision issued. In this new era, not all
corporations operate under a brick-and-mortar model.
Business can be conducted virtually. Employees increasingly
telecommute. Products may not as a rule be warehoused
by retailers, and the just-in-time delivery
paradigm has eliminated the need for storing some inventory.
But, notwithstanding these changes, in the wake of
the Supreme Court’s holding in TC Heartland, effectively
reviving Section 1400(b) as the focus of venue in patent
cases, we must focus on the full and unchanged language
of the statute, as Cordis did not consider itself obliged to
Moreover, district courts, including the trial court in
this case, have noted the uncertainty surrounding and the
need for greater uniformity on this issue, see, e.g., Transfer
Order, 2017 WL 2813896, at *10 (explaining there is
“uncertainty among the litigants regarding the scope of
the phrase ‘regular and established place of business’”
and “the appropriate scope of such venue discovery”);
Regenlab, 2017 WL 3601304, at *2 (S.D.N.Y. Aug. 17,
2017) (“Substantial confusion exists regarding the circumstances
in which an entity will be found to have a
‘regular and established place of business’ in the dis-

trict.”); Johnston v. IVAC Corp., 681 F. Supp. 959, 962–63
(D. Mass. 1987) (collecting cases with a more “restrictive
reading” of the statute and those with a more “‘liberal’
construction” (citation omitted)); Brunswick Corp. v.
Suzuki Motor Co., 575 F. Supp. 1412, 1424 n.5 (E.D. Wis.
1983) (noting that § 1400(b) “demonstrates . . . a need for
nationwide uniformity” offered by the Federal Circuit),
and this court “has a mandate to achieve uniformity in
patent matters,” Panduit Corp. v. All States Plastic Mfg.
Co., 744 F.2d 1564, 1574 (Fed. Cir. 1984). We conclude
that mandamus here will further “supervisory or instructional
goals” on an “unsettled and important” issue, an
appropriate basis upon which to grant the mandamus
petition. In re Queen’s Univ. at Kingston, 820 F.3d 1287,
1291 (Fed. Cir. 2016) (quoting In re Nintendo Co., Ltd.,
544 F. App’x 934, 936 (Fed. Cir. 2013)); see also BP Lubricants,
637 F.3d at 1313. Although the law was unclear
and the error understandable, the district court abused its
discretion by applying an incorrect legal standard, which
we now clarify in this opinion.


As discussed in greater detail below, our analysis of
the case law and statute reveal three general requirements
relevant to the inquiry: (1) there must be a physical
place in the district; (2) it must be a regular and
established place of business; and (3) it must be the place
of the defendant. If any statutory requirement is not
satisfied, venue is improper under § 1400(b).

The issue in this case:

The parties’ primary dispute concerns
whether Mr. Harless’s home, located in the Eastern
District of Texas, constitutes “a regular and established
place of business” of Cray.

Wednesday, September 20, 2017

CAFC discusses inurement in NFC case

The CAFC noted in NFC v. Matal, 2017 U.S. App. LEXIS 18164

We note that the foregoing analysis assumes that conception is relevant under the present circumstances. Our cases that the Board read as establishing that proof of conception is relevant to inurement involved third-party recognition during testing that the invention would work for its intended purpose. See Cooper II, 240 F.3d at 1380-86; Genentech, 220 F.3d 1352-54; Cooper I, 154 F.3d at 1331-33. Here, there is no evidence that CE did anything other than fabricate the prototype. Although NFC appears to recognize this distinction, see NFC Br. 40-42, NFC only uses it to argue that interference law should not be applied to this case. As NFC has not challenged whether and to what extent conception must be shown to establish inurement under interference law in the present circumstances, we leave that question for another day.

The determination that fabrication of the prototype inures to Charrat's benefit does not resolve this case. As explained previously, the Board assumed, but did not decide, that the prototype embodied the claimed invention. That issue must be decided in order to determine whether Sears can be antedated. Thus, we remand the case for that determination in the first instance. Fortunately, whether the prototype embodied the claimed invention was a disputed issue between HTC and NFC during the initial IPR. See J.A. 455-66. Accordingly, the Board may decide the case on the briefing previously submitted.