Monday, May 22, 2017

Patent venue restricted in Supreme Court TC Heartland case by 8-0 vote

Reuters noted: The justices ruled 8-0 that patent suits can be filed only in courts located in the jurisdiction where the targeted company is incorporated.

Sunday, May 21, 2017

The CAFC works through a chemical doctrine of equivalents case in Mylan v. Aurobindo

The first paragraph of Mylan v. Aurobindo:

Aurobindo Pharma Ltd., Aurobindo Pharma USA Inc.,
and Auromedics Pharma LLC (together, “Aurobindo”)
appeal from a decision of the United States District Court
for the Eastern District of Texas granting Mylan Institutional
LLC’s (“Mylan Inst.”) and Apicore US LLC’s
(“Apicore”) (together, “Mylan”) motion for a preliminary
injunction precluding Aurobindo from making, using,
selling, offering to sell, and importing the accused isosulfan
blue (“ISB”) product that allegedly infringes three of
Apicore’s patents—U.S. Patent 7,622,992 (“the ’992 patent”),
U.S. Patent 8,969,616 (“the ’616 patent”), and U.S.
Patent 9,353,050 (“the ’050 patent”). See Mylan Institutional
LLC v. Aurobindo Pharma Ltd., No. 2:16-cv-00491,
2017 WL 497593 (E.D. Tex. Feb. 7, 2017) (“Order Adopting
R&R”). Because the district court did not err in its
grant of the preliminary injunction under the ’050 patent,
although it did err in granting the injunction under the
’992 and ’616 patents, we affirm.

The relevant issue is the use of silver oxide as an oxidant:

Apicore owns, and Mylan Inst. is the exclusive licensee
of, the ’992, ’616, and ’050 patents, which relate to
ISB, a triarylmethane dye used to map lymph nodes. The
’992 and ’616 patents (together, “the process patents”) are
directed to a process for preparing ISB by reacting isoleuco
acid with silver oxide in a polar solvent, followed by
reaction with a sodium solution.


Aurobindo acknowledged to the FDA that it was looking for a
reagent “other than silver oxide.” It eventually selected manganese diox-
ide, and its process resulted in ISB with a 5–10% impurity
which could not be removed by recrystallization.
Instead, it used preparatory HPLC to achieve an ISB
purity of greater than 99.5%. Mylan sued Aurobindo for
infringement and sought a preliminary injunction, which
the district court granted.

One issue

We first consider whether the district court erred in
finding that Mylan is likely to succeed on the merits
because Aurobindo “more likely than not” infringes the
process patents under the doctrine of equivalents. Report
and Recommendation, 2016 WL 7587325, at *12. To
establish a likelihood of success on the merits, a patentee
must show that it will likely prove infringement of the
asserted claims and that its infringement claim will likely
withstand the alleged infringer’s challenges to patent
validity and enforceability. Sciele Pharma, Inc. v. Lupin
Ltd., 684 F.3d 1253, 1259 (Fed. Cir. 2012) (citing,
239 F.3d at 1350). A preliminary injunction
should not issue if the accused infringer “raises a substantial
question concerning either infringement or validity.”, 239 F.3d at 1350.

The position of the accused infringer Aurobindo:

Aurobindo argues that it had raised a substantial
question of infringement of the process patents under the
doctrine of equivalents because manganese dioxide oxidizes
isoleuco acid in a different way than silver oxide in
that manganese dioxide is a strong oxidizing agent,
whereas silver oxide is a weak oxidizing agent. Additionally,
Aurobindo continues, manganese dioxide oxidation
requires the use of an acid and the patents specifically
report the use of silver oxide as not requiring an acid.

The counter:

Mylan responds that the district court correctly found
a likelihood of success on the merits of infringement
under the doctrine of equivalents because the court
properly found that manganese dioxide and silver oxide
are equivalent in the context of the process patents.
Specifically, the court credited Sessler’s testimony in light
of record evidence that the silver oxide and manganese
dioxide processes produce crude ISB in similar yields.
The court explained that if manganese dioxide was a
substantially stronger oxidizing agent than silver oxide, a
skilled artisan “would expect different results.”

The CAFC noted:

As set forth below, we conclude that the district
court’s analysis of equivalence in this case was flawed, no
doubt because of the sparse and confusing case law concerning
equivalents, particularly the paucity of chemical
equivalence case law, and the difficulty of applying the
legal concepts to the facts. We will attempt to provide
more clarity on these subjects.
Moreover, the law on the doctrine of
equivalents as applied to chemical materials is not clear,
and its misapplication can lead to unsound results. This
appears to be such a case.

Yes, the CAFC does mention Graver Tank.

The CAFC considered the district court to err in its analysis
of the "way" the chemicals acted:

The district court correctly evaluated the “function”
aspect of the FWR test—deciding, in effect, that the
function of the silver oxide was to oxidize the precursor
isoleuco compound to ISB acid.6 But that is not considering
the “way” the oxidation works. Manganese dioxide
and silver oxide may have the same function, but the
question is whether they operate in the same way. Critical
facts that might be considered in an equivalents
analysis include the relative oxidation strengths of the
two oxidizing agents, as argued by Aurobindo, and the
fact that manganese dioxide requires the use of an acid
for oxidation, but silver dioxide does not, and results in a
different yield. All of this in fact may at trial indicate a
different “way.” Thus, there is room for sufficient doubt
as to whether silver oxide and manganese dioxide oxidize
isoleuco acid in the same way so as to satisfy the “way”
prong of the FWR test.

Accordingly, the district court erred in its equivalents
analysis under FWR and we reverse its determination.

Of interest to practitioners in the chemical arts AND to

For example, consider the well-known compounds aspirin
and ibuprofen, which chemists would not usually
consider to be structural equivalents under the insubstantial
differences test. Chemical compounds are characterized
by their structures, and these two compounds differ
substantially in structure (see appendix). However, the
two compounds would seem to be substantial equivalents
under the FWR test. They each provide analgesia and
anti-inflammatory activity (“function”) by inhibiting
prostaglandin synthesis (“way”) in order to alleviate pain,
reduce fevers, and lessen inflammation (“result”). See,
e.g., Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62
F.3d 1512, 1546 (Fed. Cir. 1995) (Lourie, J., dissenting).
Thus, a compound may appear to be equivalent under the
FWR test, but not under the substantiality of the differences
test. Hence, the substantial differences test may be
more suitable than FWR for determining equivalence in
the chemical arts. Warner-Jenkinson, 520 U.S. at 40
(“Different linguistic frameworks may be more suitable to
different cases, depending on their particular facts.”).
Manganese dioxide and silver oxide are substantially
different in many respects. For example, manganese and
silver are in different groups of the Periodic Table. In
oxide form, manganese has an oxidation state of +4, while
silver is +1. Those differences may well be relevant to
equivalence at trial. Thus, the choice of test under the
doctrine of equivalents may matter in this case.

The CAFC's mention of Graver Tank was brief. In Graver, the
patentee claimed alkaline earth silicates, which encompass magnesium.
The infringer was using manganese silicates.

The dissent of Justice Douglas was short, and likely the correct

The Court applies the doctrine of equivalents in a way which subverts the constitutional
and statutory scheme for the grant and use of patents.

The claims of the patent are limited to a flux "containing a major proportion of alkaline earth metal silicate."
Manganese silicate, the flux which is held to infringe, is not an alkaline earth metal silicate.
It was disclosed in the application and then excluded from the claims.
It therefore became public property. See Mahn v. Harwood, 112 U. S. 354, 112 U. S. 361.
It was, to be sure, mentioned in the specifications.
But the measure of the grant is to be found in the claims,
not in the specifications. Milcor Steel Co. v. Fuller Co.,
316 U. S. 143, 316 U. S. 145-146. The specifications can be used to limit,
but never to expand, the claim. See McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article.

Did Sheriff David Clarke copy without attribution?

A post by ANDREW KACZYNSKI at TriState titled Sheriff David Clarke plagiarized portions of his master's thesis on homeland security has text:

In all instances reviewed by CNN's KFile, Clarke lifts language from sources and credits them with a footnote, but does not indicate with quotation marks that he is taking the words verbatim.

According to guidelines on plagiarism posted on the Naval Postgraduate School's website, "If a passage is quoted verbatim, it must be set off with quotation marks (or, if it is a longer passage, presented as indented text), and followed by a properly formulated citation. The length of the phrase does not matter. If someone else's words are sufficiently significant to be worth quoting, then accurate quotation followed by a correct citation is essential, even if only a few words are involved."

One notes that IPBiz attributes the text to KACZYNSKI without quotation marks or indentation. Plagiarism?

The Guardian notes of previous work by Kaczynski :

Monica Crowley, a radio host, columnist and Fox News contributor, was picked by Donald Trump for a communications post with the national security council. In January she withdrew from consideration, after Politico and Kaczynski reported that she allegedly plagiarised parts of a PhD thesis and a 2012 book.

In 2013, Kaczynski, then at Buzzfeed, reported that Rand Paul, a US senator from Kentucky and a contender for the Republican presidential nomination, had plagiarised portions of books, articles and speeches. Paul told CNN: “Ultimately, I’m the boss, and things go out under my name, so it is my fault. I never had intentionally presented anyone’s ideas as my own.”


The Clarke matter is distinct from the Walsh matter (involving a paper at the War College) wherein Walsh presented no attribution at all (i.e., no footnote).
Major plagiarism scandal brewing as to Senator John Walsh
including a comment from one of Walsh's "victims."

Lonnie Johnson and the SuperSoaker invention discussed on "CBS Sunday Morning" "by design" episode on 21 May 2017

Jane Pauley appeared on the show remotely from Amsterdam, with the news being covered by a different person.

Of note for intellectual property was the story by Mo Rocca on Lonnie Johnson, the inventor of the SuperSoaker.

More details of Johnson's career are available in a story in Forbes, which illustrates some of the problems a single inventor can face:

Inventing was more of a hobby. Also I thought that once I got a patent, the world would beat a path to my door. But nobody knocked. When I realized the technology was being commercialized, it didn’t dawn on me that it was something I should pursue.


I was experimenting with nozzles I’d made that shot a stream of water across the bathroom and I thought they’d make a good water gun. I was having trouble getting people to understand the hard science inventions I had like a heat pump or the digital measuring instrument. I thought the toy was something anyone could look at and appreciate.


Initially I wanted to manufacture it myself and I talked to some companies that could handle that. But when they told me it would cost $200,000 to get the first 1,000 guns off the production line, I figured at $200 each, nobody was going to pay that much for a water gun. I didn’t understand that the tooling costs a lot but once you got the production line set up, you’d get the cost way down. I had spent my career in the military, so manufacturing and business were outside my bailiwick.


In 1987 I launched a successful toy, the Jammin Jet, powered by compressed air and water that would shoot out the back. It was made of Styrofoam and had a five-foot wingspan. A company called Entertech made it but an engineer inside the company put the rudder at an angle so the plane would fly in a circle. I tried to convince him not to do that. They manufactured 60,000 planes, spent $1 million in TV advertising and shipped planes with a design flaw. A kid would take the plane out of the box, and it would dive and break apart.


It was 1989 and I’d written letters to companies including Hasbro, who dismissed the idea. Eventually I went to the Toy Fair and I met a guy in the hallway who said I should talk to the folks at Larami, a small company that made knock-off toys. At the fair, I managed to meet with someone there and he said, “If you’re ever in Philadelphia, come and see us and we’ll be happy to talk to you.” He said, “Don’t make a special trip.” So I went to Philadelphia and waited over an hour in the reception area before I got in to see someone. I took the gun out of my suitcase. They asked if it worked and I shot water across the conference room. They turned the prototype into the first Super Soaker.


I can tell you that I received a royalty on sales, that the Super Soaker was the No. 1 selling toy in the world and that between 1992 and 1995, it topped $1 billion in sales. Because of the success of the Super Soaker, Hasbro bought Larami.


As to the value of a strong trademark over a patent:

The toy is still around but the patents have expired. In hindsight, one of the things I learned was the value of the brand. The Super Soaker name was the result of a discussion between myself and the president of Larami. If I’d understood the value of the brand, I would have put it in my contract, which was just a patent license.

Johnson has some interest in the battery biz:

My other invention is an all-ceramic battery. Existing batteries use liquid electrolytes. My battery uses glass as an electrolyte. We can hold between two and three times the energy that a lithium ion battery can. The idea is that the JTEC could convert heat from the sun to electricity and the battery could store the heat until you’re ready to use it. Solar power would be one application. You could also use it in nuclear power plants.

link to Forbes:

link to CBS Sunday Morning:

Moment of nature: Keukenhof Garden outside Amsterdam.
This was not unrelated to the Pauley piece on Hortus Bulborum in Limmen, established in the 1920s by tulip enthusiast Peter Boschman.

Saturday, May 20, 2017

An open question on Federal Rule of Civil Procedure 72(a)?

Concerning objections to a magistrate's non-dispositive order, the last sentence of FRCP 72(a) states:

The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

But what does "contrary to law" mean?

Within a footnote in CRAWFORD v. US, 2016 U.S. Dist. LEXIS 86685 (MD Fl 2016) one finds the text:

The Court notes some authority that the contrary to law standard invites plenary review of a magistrate judge's legal conclusions. See e.g., Haines v. Liggett Group, Inc., 975 F.2d 81, 91 (3d Cir. 1992); Milwaukee Carpenter's Dist. Council Health Fund v. Philip Morris, Inc., 70 F. Supp. 2d 888, 892 (E.D. Wis. 1999); Computer Econs., Inc. v. Gartner Group, Inc., 50 F. Supp. 2d 980, 983 & n.2 (S.D. Cal. 1999). In this Circuit, however, the contrary to law standard has been distinguished as more deferential than de novo review. See Merritt, 649 F.2d at 1016-17 ("[A] magistrate['s non-dispositive discovery orders] are reviewable under the 'clearly erroneous and contrary to law' standard; they are not subject to a de novo determination as are a magistrate's proposed findings and recommendations.") Nonetheless, even to the extent the contrary to law standard may invite some level of plenary review, it is evident that because a magistrate judge is afforded broad discretion [*5] as to discovery matters, reversal as to a magistrate's resolution of a discovery dispute is appropriate only where that discretion is abused. See Tracy P. v. Sarasota County, No. 8:05-CV-927-T-27EAJ, 2007 U.S. Dist. LEXIS 33988, 2007 WL 1364381, at * 2 (M.D. Fla. May 9, 2007) ("Magistrate judges are afforded broad discretion in the resolution of nondispositive discovery disputes. The magistrate's determination will therefore be overturned only if the magistrate judge abused her discretion or the decision is clearly erroneous."); Botta, 475 F. Supp. 2d at 185; Doe v. Hartford Life and Accident Ins. Co., 237 F.R.D. 545, 547-48 (D. N. J. 2006); Doe v. Marsh, 899 F. Supp. 933, 934 (N.D.N.Y. 1995); see also 12 Charles Alan Wright, Arthur R. Miller, & Richard L. Marcus, Federal Practice and Procedure § 3069 (2d ed. 1997) ("Regarding legal issues, the language 'contrary to law' appears to invite plenary review. But many matters such as discovery scheduling or disputes might better be characterized as suitable for an abuse-of-discretion analysis.").

One notes that the 2006 case from D. N.J. (within the Third Circuit) seems to be in conflict with the [earlier] 1992 decision of the Third Circuit Court of Appeals, which text states:

The district court is bound by the clearly erroneous rule in findings of facts; the phrase "contrary to law" indicates plenary review as to matters of law. See also Rule 72(a), Fed. R. Civ. P. ("Nondispositive Matters").

Also of note, within a single decision in the District of New Jersey (629 F. Supp. 2d 416):

A magistrate judge's order is contrary to law "when the magistrate judge has misinterpreted or misapplied the applicable law." Doe v. Hartford Life & Accident Ins. Co., 237 F.R.D. 545, 548 (D.N.J. 2006) (citing Pharm. Sales & Consulting Corp. v. J.W.S. Delavau Co., 106 F. Supp. 2d 761, 764 (D.N.J. 2000)). While a magistrate judge's decision typically is entitled to deference, "a magistrate judge's legal conclusions on a non-dispositive motion will be reviewed de novo." Id.

BUT (!)

A magistrate judge's ruling on a non-dispositive matter such as a discovery motion is [page 434] "entitled to great deference and is reversible only for abuse of discretion." Kresefky v. Panasonic Commc'ns & Sys. Co., 169 F.R.D. 54, 64 (D.N.J. 1996).

Does anyone have any thoughts on this?

Wednesday, May 17, 2017

Writers on plagiarism guilty themselves of plagiarism?

A post in Discover mentions the situation of a paper on plagiarism copying (without proper attribution) from another source:

Regular readers will know that I have an interest in plagiarism. Today I discovered an amusing case of plagiarism in a paper about plagiarism.

The paper is called The confounding factors leading to plagiarism in academic writing and some suggested remedies. It recently appeared in the Journal of the Pakistan Medical Association (JPMA) and it’s written by two Saudi Arabia-based authors, Salman Yousuf Guraya and Shaista Salman Guraya.


As background, see the 2010 post on IPBiz:

and the 2009 post on IPBiz:

Nothing new in the revelation in Discover.

**Separately, from Blawgsearch for 16 May 2017


and for 17 May 2017:

Tuesday, May 16, 2017

Apple's pizza container patent application, published US 20120024859

The Verge has a post on Apple's published application US 20120024859, titled "Container," but useful for serving pizzas.
The first published claim:

A molded fiber container suitable for containing a food item, comprising:

a base, the base comprising:

a plurality of ridges integrated with an interior surface of the base, wherein when the food item is placed on at least some of the plurality of ridges, a gap is formed between the food item and the interior surface of the base, the gap assisting in thermally isolating the food item and allowing moisture expelled from the food item to be transported away from the food item;


a lid, the lid comprising:
a plurality of openings arranged in accordance with at least some of the plurality of ridges, and
a moisture channeling feature integrally formed in the lid, the moisture channeling feature cooperating with at least some of the plurality of openings and the gap to provide a path by which at least some of the moisture expelled from the food item is transported out of the container and into an external environment.

The Verge did NOT mention the final rejection of 1 December 2016 (37 pages), for among other things, lack of written description and indefiniteness. There are also rejections for obviousness, over various combinations of references.

link to the post of The Verge:

Although The Verge refers to "a pizza box" , one notes a box is usually not considered round

a container with a flat base and sides, typically square or rectangular and having a lid.
"a cereal box"
synonyms: carton, pack, packet; More
an area or space enclosed within straight lines, in particular.

Valuing patents?

The article in the NLJ does not explicitly mention patent citation analysis for valuation, but does state

Valuation sometimes requires something other than a generalized categorization of value. Valuing patents monetarily can often be difficult. While objective analytical measures of portfolios can be done, they are often poor estimates of the value for any particular patent or patent family. Economic estimates, which are generally used to put a price on patents, are similarly limited. Those that consider future value are highly speculative and those that are based on actual costs fail to consider the potential use of the patent.


Recall the work of Edlyn Simmons, "Patent Statistics: Comparing Grapes and Watermelons"

Western tertiary education for Chinese and Indian nationals

Wikipedia defines tertiary education in the following way: Tertiary education, also referred to as third stage, third level, and post-secondary education, is the educational level following the completion of a school providing a secondary education. The World Bank, for example, defines tertiary education as including universities as well as institutions that teach specific capacities of higher learning such as colleges, technical training institutes, community colleges, nursing schools, research laboratories, centers of excellence, and distance learning centers

A post on radionz suggested problems with certain tertiary education institutions in New Zealand that cater to Indian and Chinese students:

The report said Linguis had about 1000 mostly Indian and Chinese students enrolled in business courses in 2015 and had expanded rapidly from just 158 students in 2012.


A 2-1 CAFC majority finds the absence of an "unconditional" covenent not to sue and thus, because no mootness, subject matter jurisdiction

The decision of Judge Robinson of D. Del. in Arcelormittal vs. AK Steel was affirmed in a 2-1 vote:

Plaintiffs sued Defendants in 2010 for infringing U.S.
Patent No. 6,296,805.

After our most recent remand in
this case, the district court invalidated
claims 24 and 25 of U.S. Patent No. RE44,153, the reissue
of the ’805 patent. We conclude that
the district court possessed subject matter jurisdiction
when it granted summary judgment, that the court properly followed
our most recent mandate, and that the court
properly exercised its discretion to deny ArcelorMittal’s Rule 56(d) request.

Accordingly, we affirm.

Of note in the majority opinion:

In this fact-specific context,
we must give effect to ArcelorMittal’s express
intent to make conditional delivery of an unconditional covenant
mean something different than unconditional delivery of
an unconditional covenant.

Judge Wallach, in a lengthy dissent, argued that the case had become moot after
the signing of the covenant not to sue.

Did the covenant not to sue take effect when signed, or when delivered to the
federal district court?

Monday, May 15, 2017

Twitter prevails over Easyweb at CAFC

Easyweb lost under 35 USC 101:

EasyWeb appeals the district court’s grant of summary judgment of patent ineligibility under 35 U.S.C. § 101 and in the alternative, non-infringement. Because all asserted claims recite patent-ineligible subject matter, we affirm.

No invention:

Turning to the second step [of Alice], we find claim 1 does not contain an inventive concept sufficient to “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355. The elements of claim 1 simply recite an abstract idea or an abstract idea executed using computer technology. Although EasyWeb argues that an inventive concept arises from the ordered combination of steps in claim 1, we disagree. Claim 1 recites the most basic of steps in data collection, analysis, and publication and they are recited in the ordinary order.

In sum, all the claims are directed to the abstract idea of receiving, authenticating, and publishing data, and fail to recite any inventive concepts sufficient to transform the abstract idea into a patent eligible invention. Because we find all the claims ineligible, we do not reach the remaining issues raised on appeal.

Separately, from Blawgsearch on May 15, 2017:

Saturday, May 13, 2017

UMaryland to adopt TurnItIn's "Feedback Studio"

From dbknews:

Turnitin Feedback Studio has features that allow students to check their work for plagiarism, collect student feedback anonymously and reveal content matches in student writing to "help students take ownership of their work and practice proper citation," among other features, according to the Turnitin website.


Turnitin Feedback Studio checks a student's work against databases that include billions of web pages, thousands of periodicals, journals and publications and a repository of student works collected from other institutions


The prediction of the movie Cherry2000 for the year 2017

The movie "Cherry 2000," made in 1987, but set in the year 2017, predicted humanoid robots for 2017. In reality,
we are at self-driving cars.

**Separately,Matt LeBlanc got his start in the movie Grey Knight (aka Ghost Brigade) a horror movie (set in the time frame of the Civil War) with several stars showing up.

Scott Brooks of Wizards to talk to trademark attorneys?

Wizards' coach Scott Brooks on all-black "funeral" attire of Boston Celtics, who nevertheless lost game 6:: "I'm going to talk to my lawyers. I think we have that trademarked. That's our thing."