Friday, December 19, 2014

Pro mega hoisted on its own petard by the CAFC

Lack of enablement doomed the claims, and statements during prosecution were part of the problem.

CAFC reverses willful infringement in Stryker v. Zimmer

The CAFC illustrated the difficulty the patentee faces in meeting the objective prong of Seagate.

Thursday, December 18, 2014

"Patent Reform that only China Would Want": right conclusion; wrong arguments


One finds in the post Congress is Pushing Patent Reform That Only China Would Want , the text



Patent reform is seen as legislative low-hanging fruit that can be resurrected to rise above our partisan squabbling.


The law now known as AIA passed the House with significant votes from both Democrata and Republicans, and is hardly emblematic of "partisan squabbling."

From IPBiz in 2008


What may have started as some academic thoughts from Cecil Quillen, later pushed by Mark Lemley (and others), ended up being mainlined to foster the economic interests of those in the "Coalition for Patent Fairness." Chisum got it right in his law review article. As the vote in the House on HR 1908 illustrated, patent reform (at least this version) is NOT a Democrat/Republican issue. In New Jersey, Rush Holt voted AGAINST 1908 and Chris Smith voted for it; go figure.



AND

from
House passes H.R. 1908 225 [220]-175 on Sept. 7, 2007
:



Although PCMag had reported the vote as 225-175, the actual vote was 220-175.
A detailed breakdown of how each Congressman voted may be found at GovTrack.US.

The Democrats voted 160-58 in favor and the Republicans voted 60-117 against. One notes that some GOP IP heavyweights voted in favor of HR 1908, including Coble and Sensenbrenner. Within New Jersey, Republican Chris Smith voted in favor of HR 1908 (?!).


**Elsewhere in the "China" article


Carly Fiorina, a former chairman of Hewlett Packard who understands the importance of patents as well as anyone, has warned against the current push for overhauling the patent system. She notes that the proposed new rules would put patent holders at a greater disadvantage in court, and they would thus have a harder time preventing others from misappropriating their inventions and that the legislation would help big and powerful corporations at the expense of individual inventors and small companies.


Of Fiorina's tenure at HP, wikipedia notes


In early January 2005, the Hewlett-Packard board of directors discussed with Fiorina a list of issues that the board had regarding the company's performance.[43] The board proposed a plan to shift her authority to HP division heads, which Fiorina resisted.[44] A week after the meeting, the confidential plan was leaked to the Wall Street Journal.[45] Less than a month later, the board brought back Tom Perkins and forced Fiorina to resign as chairman and chief executive officer of the company.[46] The company's stock jumped on news of Fiorina's departure.[47] Under the company's agreement with Fiorina, which was characterized as a golden parachute by some[by whom?], she was paid slightly more than $20 million in severance.[48]

Judgments on Fiorina's tenure at HP are mixed. In 2008, Infoworld grouped her with a list of products and ideas as flops, declaring her to be the "anti-Steve Jobs" for reversing the goodwill of American engineers and for alienating existing customers.



Prior to joining HP in 1999, Fiorina was at Lucent. The case -- Lucent Technologies, Inc. v. Gateway,Inc. --, concerning a patent filed by Lucent in 1994, was not exactly a model of Lucent understanding patents.

See 8 JMRIPL 80, 88 (2008)

So author Erik Telford may have reached the right conclusion, but might want to present better analysis. There is no evidence that patent reform is a party-line issue
[recall Democrat Harry Reid deep-sixed the last big effort]. There is no evidence that Carly Fiorina understands the importance of patents as well as anyone.

Court of Justice of the European Union rules that parthenogenetic cells are not embryos; ok for patenting



From EconomicTimes


An organism incapable of developing into a human being is not a human embryo and may be patented, the European Union's top court said on Thursday[18 Dec 2014], opening the door to certain stem cell patents in the European Union.

The court made this judgement following a case brought by US company International Stem Cell Corporation in Britain over whether it could patent processes covering the use of human egg cells





The San Diego Union - Times wrote


The decision allows the biotech company to get patents for its stem cells made from unfertilized, or parthenogenetic, human egg cells.


In related news, the company said Thursday it plans to apply by the end of the year to do a clinical trial of a Parkinson's treatment derived from its parthenogenetic cells.

The trial should begin in a couple of months, said Simon Craw, the company's executive vice president of business development. The company will need to raise about $5 million for the trial, he said.

International Stem Cell is developing these cells as an alternative to human embryonic stem cells, which many regard as morally wrong.



Lisa Haile of DLA Piper noted that the UK and other individual governments have the legal right to make their own decision.

Myriad loses at CAFC

IN RE BRCA1 - AND BRCA2-BASED HEREDITARY CANCER TEST PATENT LITIGATION


The claims on appeal are directed to ineligible subject matter
in violation of 35 U.S.C. § 101


Of separate note is the text


The Supreme Court ap-
proved of Judge Bryson’s general suggestion,
directly quoting him for the propositions
that “[a]s the first party
with knowledge of the BRCA1 and BRCA2 sequences,
Myriad was in an excellent position to claim applications
of that knowledge,” and that “[m]any of its unchallenged
claims are limited to such applications.” Myriad , 133 S.
Ct. at 2120. But, nowhere in the opinion did the Court
express approval of the individual claims identified by
Judge Bryson, much less of claim 21 in particular. In-
deed, no method claim was even before the Supreme Court.
Id. at 2119.

CAFC tackles Florida trade secret law in ABB Turbo v. TURBOUSA


Note the text below taken from the
case ABB Turbo v. TURBOUSA decided by the Court of Appeals for the Federal Circuit on 17 Dec. 2014:
--
A plaintiff claiming misappropriation
of trade secrets under Florida law must
allege facts giving rise to a reasonable inference that

(1)“the plaintiff possessed secret information and took
reasonable steps to protect its secrecy,”Medimport S.R.L
v. Cabreja, 929 F. Supp. 2d 1302, 1322 (S.D.
Fla. 2013)(quotation marks and citation omitted);
(2) “the secret it possessed was misappropriated, either by one who knew
or had reason to know that the secret was improperly
obtained or by one who used improper means to obtain it,”
id.;see Fla. Stat. §688.002; and
(3) the secret “[d]erives independent economic value” from not being generally known or ascertainable through proper means, Fla. Stat.
§688.002(4)(a).

--

Monday, December 15, 2014

CBS Sunday Morning on December 14, 2014

Charles Osgood introduced the stories for December 14, 2014. The cover story was "Game On," done by John Blackstone on people treating "E-sports" as spectator sports. Second was Anthony Mason on Misty Copeland.

Almanac was on Nostradamus, Dec. 14, 1503.

Anticipation is not the epitome of obviousness


Within a PTAB decision from 2013, one has the text


The same issues are dispositive of each obviousness rejection on appeal. First, each of the rejections for obviousness relies on the Examiner‟s
finding that Surjadi, as evidence by Stammer, identically discloses the apparatus of claim 36. “It is well settled that „anticipation is the epitome of obviousness.‟” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Accordingly, Surjadi also renders claim 36 obvious. Claims 37-69 fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii).

See IPBiz post "Anticipation is the epitome of obviousness"?

from COHESIVE TECHNOLOGIES v. WATERS, 543 F.3d 1351 (CAFC 2008) :


Despite the often quoted maxim that anticipation is the
"epitome of obviousness,"
In re Kalm, 378 F.2d 959, 962, 54 C.C.P.A. 1466 (CCPA
1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103
are separate conditions of patentability and therefore separate defenses
available in an infringement action. See 35 U.S.C. § 282 (2000); Jones v. Hardy,
727 F.2d 1524, 1529 (Fed. Cir. 1984) ("[T]hough anticipation is the epitome of
obviousness, [they] are separate and distinct concepts."); see also Mendenhall
v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) [p. 1364] (holding that
verdict of nonobviousness was not inconsistent with verdict of anticipation by
prior public use, despite "legal homily" that anticipation is the epitome of
obviousness)
; In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (holding that
rejection under § 102 was new ground following previous rejection under § 103,
despite maxim that "anticipation is the epitome of obviousness").

While it is commonly understood that prior art references that anticipate
a claim will usually render that claim obvious, it is not necessarily
true that a verdict of nonobviousness forecloses anticipation. The tests for
anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom
Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) ("Succinctly put, the
various unenforceability and invalidity defenses that may be raised by a
defendant--inequitable conduct, the several forms of anticipation and loss of
right under § 102, and obviousness under § 103--require different elements of
proof.")

(...)

This is precisely why our precedent has rejected reliance on the "legal homily"
that "anticipation is the epitome of obviousness." Mendenhall, 5 F.3d at 1563.

We have expressly upheld a jury verdict of anticipation under § 102(b),
even when the same jury found the patent nonobvious under § 103. Id. Though the
dissent argues that a "long line of precedent" supports its argument that every
anticipated claim is obvious, not a single one of the cases it cites actually
holds that the "epitome" maxim precludes a jury from finding a patent invalid
under § 102, simply because it is nonobvious under § 103.



See earlier IPBiz post: PTAB repeats “anticipation is the epitome of obviousness.”

Saturday, December 13, 2014

Allen West matter: not such a bombshell

In a post titled Updated: Allen West plagiarism bombshell: Tea Party hero lifted passages from viral Internet post , Salon savages West for copying, without attribution, from a "viral internet post" relating to President Obama's silence on shootings of white police officers.

The Salon post began with the text After the New York Times revealed that Montana Democratic Sen. John Walsh had plagiarized his master’s thesis for the U.S. Army War College, Allen West brought the knives out. Apart from getting facts wrong [it was not a Master's thesis, but rather a paper for a Master's degree at the War College; certain text was copied without attribution, but the whole paper was not copied], the implication by Salon that the copying was uncovered in a political context is correct. The assertion about West is also politically-motivated. So also were charges about Glenn Poshard.

But the underlying "bad act" is different as between John Walsh and Adam West. Walsh was getting a degree for academic work, which was represented to be original to the granting institution. West was not.

The response was different. Walsh blamed stress. West immediately corrected the problem.

In the ongoing discussion of the Malcolm Gladwell copying, Gladwell's allusion to his earlier essay amounts to "who cares".
In Walsh's case, the answer is --the War College does.-- Gladwell's essay alluded to the Laurence Tribe incident, but conveniently ignored the ghost writing aspect. Indeed, legal scholarship is a culture of copying. But the War College should be different, and the outcome of the Walsh matter in Carlisle suggests it is.

Friday, December 12, 2014

Some of Judge Sleet's reasoning in Cubist v. Hospira, D. Delaware, C.A. No. 12-367-GMS


Judge Sleet found issues with four of the five Cubist patents related to daptomycin.

As to the '967 patent:


The court notes initially that several of Cubist's counterarguments as to why
the Woodworm article does not anticipate are more appropriately directed at an
obviousness inquiry. Questions concerning the motivations of one skilled in the
art, or whether the Woodworm article teaches away from the '967 Patent do not
weigh on anticipation. See Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc.,
246 F.3d 1368,1378 (Fed. Cir. 2001) ("[A] reference is no less anticipatory if,
after disclosing the invention, the reference then disparages it. Thus, the
question whether a reference 'teaches away' from the invention is inapplicable
to an anticipation analysis." (quoting Celeritas Techs., Ltd. v. Rockwell Int'l
Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998))); see also Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) ("The tests for anticipation
and obviousness are different. . . . [O]bviousness requires analysis of
secondary considerations of nonobviousness, while secondary considerations are
not an element of a claim of anticipation.").



AND


Turning first to the question of whether the Woodworm article discloses all of
the claimed elements, the court notes that Cubist also spends considerable time
discussing the experiments conducted in the Woodworm article, rather than
focusing on the particular disclosure at issue, which was a prediction or
suggestion for future study.
But Hospira is correct that "anticipation
does not require actual performance of suggestions in a disclosure." See
Bristol-Myers Squibb, 246 F.3d at 1379. Thus, the only element Cubist contests
is whether the Woodworm article inherently discloses "minimizing skeletal muscle
toxicity." The court finds that it does. Regardless of whether one skilled in
the art would be aware of it, following the suggestion disclosed by the
Woodworth article (4-6 mg/kg/day) would have the physiological effect of
minimizing skeletal muscle toxicity. (Tr. at 1028 (Guglielmo).) This
cause-and-effect was the same at the time of the '967 priority date as it was
when the Woodworth article was published. Cubist's expert Dr. Guglielmo conceded
that he had difficulty grasping the concept of inherent disclosures when
multiple suggestions are offered in the prior art reference. (Id. at 1028-32.)
Nonetheless, the law is clear that the "disclosure of multiple examples" does
not "render[] one example less anticipatory." Leggett & Platt, Inc. v. VUTEk,
Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008). "Under the principles of inherency,
if the prior art necessarily functions in accordance with, or includes, the
claimed limitations, it anticipates." In re Cruciferous SproutLitig., 301 F.3d
1343,1349 (Fed. Cir. 2002). The court finds that minimizing skeletal muscle
toxicity was a necessary accompaniment to the other disclosed claimed
limitations and therefore was inherently disclosed by the Woodworm article.




As to enablement


Cubist's primary argument, however, is that, even if Woodworm discloses the
necessary elements of the '967 Patent claims, they are not enabled by the
disclosure. "An anticipating reference must be enabling; that is, the
description must be such that a person of ordinary skill in the field of the
invention can practice the subject matter based on the reference, without undue
experimentation." Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.
Cir. 2008). The patentee, however, bears the burden of overcoming the
presumption of prior art enablement by a preponderance of the evidence. See
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355-56 (Fed. Cir.
2003).10 In overcoming this presumption, the patent holder should address
several factors: the quantity of experimentation that was actually needed, the
amount of guidance provided in the reference, the presence or absence of actual
examples of the experimental procedure, the state of the knowledge already
available concerning the subject matter at issue, and the predictability or
unpredictability in the specific area of science or technology. See id. at 1085.

10 Although it concedes that prior art patents have a presumption of enablement,
Cubist argues there should be no presumption of [*36] enablement for prior art
printed publications. (D.I. 126 at 8 n.7.) The Federal Circuit in Amgen never
squarely addressed this question, although it indicated that there should be no
distinction between patents and printed publications. See Amgen, 314 F.3d at
1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we
need not and do not so decide today."). The court finds this logical extension
appropriate. Whereas the claims of a valid patent must be enabling by statute,
35 U.S.C. § 112, the additional disclosures in the specification need not. Amgen
nonetheless held that both the claimed and unclaimed disclosures are presumed
enabling. Id. at 1355. The court finds that printed publications should receive
the same treatment as unclaimed disclosures. Moreover, patent examiners already
apply a presumption of enablement to printed publications during the prosecution
process. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).
10 Although it concedes that prior art patents have a presumption of enablement,
Cubist argues there should be no presumption of [*36] enablement for prior art
printed publications. (D.I. 126 at 8 n.7.) The Federal Circuit in Amgen never
squarely addressed this question, although it indicated that there should be no
distinction between patents and printed publications. See Amgen, 314 F.3d at
1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we
need not and do not so decide today."). The court finds this logical extension
appropriate. Whereas the claims of a valid patent must be enabling by statute,
35 U.S.C. § 112, the additional disclosures in the specification need not. Amgen
nonetheless held that both the claimed and unclaimed disclosures are presumed
enabling. Id. at 1355. The court finds that printed publications should receive
the same treatment as unclaimed disclosures. Moreover, patent examiners already
apply a presumption of enablement to printed publications during the prosecution
process. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).


10 Although it concedes that prior art patents have a presumption of enablement,
Cubist argues there should be no presumption of [*36] enablement for prior art
printed publications. (D.I. 126 at 8 n.7.) The Federal Circuit in Amgen never
squarely addressed this question, although it indicated that there should be no
distinction between patents and printed publications. See Amgen, 314 F.3d at
1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we
need not and do not so decide today."). The court finds this logical extension
appropriate. Whereas the claims of a valid patent must be enabling by statute,
35 U.S.C. § 112, the additional disclosures in the specification need not. Amgen
nonetheless held that both the claimed and unclaimed disclosures are presumed
enabling. Id. at 1355. The court finds that printed publications should receive
the same treatment as unclaimed disclosures. Moreover, patent examiners already
apply a presumption of enablement to printed publications during the prosecution
process. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).



Bottom line as to the '967 patent


The novelty requirement of patent law embodies the policy that private entities
should not be able to obtain patents "whose effects are to remove existent
knowledge from the public domain, or to restrict free access to materials
already available." See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 146, 109 S. Ct. 971, 103 L. Ed. 2d 118 (1989) (quoting Graham v. John
Deere Co. of Kan. City, 383 U.S. 1, 6, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966)).
The court finds that Hospira has demonstrated by clear and convincing evidence
that the Woodworth article disclosed each of the elements of the claims of the
'967 Patent, expressly or inherently. Cubist has not shown by a preponderance of
the evidence that the Woodworth article was not enabling. Thus, Woodworth
anticipates the '967 Patent and renders it invalid, pursuant to 35 U.S.C. § 102.



As a point of law, anticipation is not the epitome of obviousness:


A finding that a patent is anticipated under § 102 often--but not
necessarily--indicates that the patent is obvious under § 103. Cohesive Techs.,
543 F.3d at 1364 & n.2 (Fed. Cir. 2008) ("[O]ur precedent has rejected reliance
on the 'legal homily' that 'anticipation is the epitome of obviousness.'"
(quoting Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993))).



The tests for anticipation and obviousness are different. Obviousness
can be proven by combining existing prior art references, while
anticipation requires all elements of a claim to be disclosed within a
single reference. Moreover, obviousness requires analysis of secondary
considerations of nonobviousness, while secondary considerations are
not an element of a claim of anticipation. And although anticipation
can be proven inherently, proof of inherent anticipation is not the
same as proof of obviousness.


Id. at 1364 (internal citations omitted). Therefore, although the court found
the '967 Patent to be anticipated, a separate obviousness analysis is still
required.




As to secondary considerations:


As Hospira points out, however, the claims of the '967 and '689 Patents are not
truly commensurate with the long-felt need Cubist puts forth--treatment of
serious infections like SAE. The claims cover bacterial infections generally. As
Cubist's [*50] expert testified, Eli Lilly had previously been successful using
daptomycin to treat some infections. (Id.) Moreover, vancomycin was the standard
treatment for many of these same infections. (Tr. at 949-50 (Guglielmo).) Thus,
for much of what the dosing patents claim, there was no long-felt need. See
Muniauction, 532 F.3d at 1328 n.4 ("[C]laims which are broad enough to read on
obvious subject matter are unpatentable even though they also read on nonobvious
subject matter." (quoting In re Lintner, 458 F.2d 1013, 1015, 59 C.C.P.A. 1004
(C.C.P.A. 1972))).

(...)

Thus, there is a disconnect between what the dosing patents actually claim and
the secondary considerations Cubist offers. The court is not convinced that the
objective indicia cited by Cubist are entitled to significant weight; and any
weight certain factors may have does not overcome Hospira's prima facie showing
of obviousness. See Muniauction, 532 F.3d at 1327 ("[T]o the extent that some of
the factors arguably meet the nexus requirement, their relationship to the
claims is simply too attenuated to overcome the strong prima facie demonstration
by Thomson that the claims are obvious."); see also Pfizer, 480 F.3d at 1372
("Even if Pfizer showed that amlodipine besylate exhibits unexpectedly superior
results, this secondary consideration does not overcome the strong showing of
obviousness in this case."). Hospira has shown by clear and convincing evidence
that the '967 and '689 Patents are obvious and therefore invalid under 35 U.S.C.
§ 103.


Independent and parallel inventions:


Finally, Hospira asserts Eli Lilly's ability to produce 98% pure daptomycin over
a decade before the priority date of Cubist's purity patents weighs in favor of
an obviousness finding. See Geo. M. Martin Co. v. Alliance Mach. Sys. Int'l LLC,
618 F.3d 1294, 1305 (Fed. Cir. 2010) ("Independently made, simultaneous
inventions, made 'within a comparatively short space of time,' are persuasive
evidence that the claimed apparatus 'was the product only of ordinary mechanical
or engineering skill.'" (quoting Concrete Appliances Co. v. Gomery, 269 U.S.
177, 184, 46 S. Ct. 42, 70 L. Ed. 222, 1926 Dec. Comm'r Pat. 284 (1925))). The
clinical studies conducted by Eli Lilly (discussed in the previous section) used
daptomycin batches with purity levels reaching upwards of 98%. (DTX-079.) The
court agrees with Hospira that Eli Lilly's production of similarly pure
daptomycin lots--not just simultaneous with, but considerably prior to Cubist's
patented invention--is objective support for an obviousness determination.

Ultimately, the court finds that secondary considerations do not upset Hospira's
prima facie showing that the asserted claims of the purity patents are obvious.
Hospira has made this showing by clear and convincing evidence. The '238 and
'342 Patents are invalid as obvious under § 103.



The bottom line


For the reasons stated above, the court concludes that: (1) the [*72]
Certificate of Correction issued for the RE'071 Patent is not invalid, and
therefore Hospira's products infringe the RE'071 Patent; (2) the RE'071 Patent
is not invalid for lack of written description; (3) the RE'071 Patent is not
invalid for improper recapture; (4) a revision to the court's claim construction
of the term "daptomycin" in the '967, '689, '238, and '342 Patents is not
warranted, and therefore Hospira's products infringe the '967, '689, '238, and
'342 Patents; (5) the '967, '689, '238, and '342 Patents are not invalid for
lack of written description; (6) the asserted claims of the '967 Patent are
invalid due to anticipation; (7) the asserted claims of the '967 and '689
Patents are invalid due to obviousness; (8) claim 98 of the '238 Patent is
invalid as anticipated; (9) the asserted claims of the '238 and '342 Patents are
invalid due to obviousness; (10) Hospira's § 102(f) derivation defense is
untimely and precluded; and (11) each of the parties' Rule 52(c) motions are
granted in part and denied in part.

The Economist discusses the "patent fiction" of increased Chinese filings.


From the Economist in post Patent fiction discussing the Thomson Reuters report titled “China’s IQ (Innovation Quotient),” which highlights the astonishing increase in patents filed in China:




That is why it is useful to see what percentage of Chinese invention patents are also filed at foreign patent offices, which tend to be more rigorous and transparent. (When a firm goes to the trouble of filing for patents globally, it is usually a sign that it believes its invention to be genuinely valuable.) Only about 5% of patents filed by local firms in China last year were also filed abroad, whereas over a third of patents originally filed by local firms in Japan were also filed elsewhere.

Almost all of the growth in China’s invention patents over the past three years has come from local firms, not from the Chinese divisions of multinationals. That suggests that the bureaucrats’ orders are responsible, rather than the emergence of a local ecosystem of innovation as seen in Silicon Valley. Intellectual-property rights do matter, but merely churning out patents does little to advance innovation.

In re Franciscan Vineyards

The opposer lost in this trademark appeal at the CAFC.



Domaines Pinnacle, a Canadian corporation and pro- ducer of alcoholic ice apple wines, filed an intent-to-use application at the PTO, seeking to register a DOMAINE PINNACLE mark for “apple juices and apple-based non- alcoholic beverages.” Opinion at *1. Franciscan opposed the registration, alleging that Domaines Pinnacle’s mark would likely cause confusion with Franciscan’s previously registered and used marks PINNACLES for “wine” and PINNACLES RANCHES for “wines.” Id.
The Board evaluated the following DuPont factors: (1) the similarity or dissimilarity of the marks in their entireties (“the first DuPont factor”); (2) the similarity or dissimilarity and nature of the goods or services as de- scribed in an application or registration or in connection with which a prior mark is in use (“the second DuPont factor”); (3) the similarity or dissimilarity of established, likely-to-continue trade channels (“the third DuPont factor”); (4) the conditions under which and the buyers to whom sales are made (“the fourth DuPont factor”); (5) the fame of the prior mark (“the fifth DuPont factor”); (6) the number and nature of similar marks in use on similar goods (“the sixth DuPont factor”); and (7) the market interface between the applicant and the owner of a prior mark (“the tenth DuPont factor”). Id. at *3–8; see also In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (listing factors relevant to likelihood of confusion determination).

Wednesday, December 10, 2014

USPTO says no to Comfyballs

Cubist patent invalidation: a very tough start to a relatively sound strategic deal of Merck


U.S. District Judge Gregory Sleet in D. Del. [ Wilmington, Delaware], ruled Dec. 8. that claims of four patents of Cubist Pharma are invalid. Cubist is being bought by Merck & Co. (MRK) for $8.4 billion.

Link: http://www.bloomberg.com/news/2014-12-10/cubist-hunter-douglas-champagne-intellectual-property.html
and
http://www.reuters.com/article/2014/12/09/us-cubist-pharm-m-a-merck-co-idUSKBN0JN1K820141209

Looking at the court filings, one might infer that Monday's outcome was foreseeable.

Tuesday, December 09, 2014

The Patent Office wins in CAFC case, JAPANESE FOUNDATION FOR CANCER RESEARCH vs. Lee

JAPANESE FOUNDATION FOR CANCER RESEARCH vs. Lee is an appeal by the USPTO of a decision by the ED Va that
the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal
disclaimer on U.S. Patent No. 6,194,187 (“’187 patent”).

The USPTO wins.


Footnote 6:



The district court suggests that the “PTO is the
Foundation’s only source of adequate relief.”
District Court Op., 2013 WL 3894156, at *9.
We note that in circumstances where a client may be deprived of a claim
based on its attorney’s conduct, and the fa
cts indicate that the “attorney’s conduct falls substantially below what is
reasonable under the circumstances, the client’s remedy is
against the attorney in a suit for malpractice.” Link v.Wabash R.R.
Co., 370 U.S. 626, 634, n.10(1962)
.