Wednesday, April 16, 2014

Intellectual Ventures handed defeat in ED Va in Capitol One case

Reuters notes that the two Intellectual Ventures [IV] patents in the case comprised claims to abstract ideas that were not
directed to patentable subject matter.

Nathan Myhrvold. IV head, made news elsewhere. Various sources are reporting on published US application 20140078164, titled UNAUTHORIZED VIEWER DETECTION SYSTEM AND METHOD
which has as inventors Chan; Alistair K.; (Bainbridge Island, WA) ; Duncan; William D.; (Kirkland, WA) ; Gates; William; (Redmond, WA) ; Gerrity; Daniel A.; (Seattle, WA) ; Holman; Paul; (Seattle, WA) ; Hyde; Roderick A.; (Redmond, WA) ; Jung; Edward K.Y.; (Las Vegas, NV) ; Kare; Jordin T.; (Seattle, WA) ; Levien; Royce A.; (Lexington, MA) ; Lord; Richard T.; (Tacoma, WA) ; Lord; Robert W.; (Seattle, WA) ; Malamud; Mark A.; (Seattle, WA) ; Myhrvold; Nathan P.; (Bellevue, WA) ; Rosema; Keith D.; (Olympia, WA) ; Tegreene; Clarence T.; (Mercer Island, WA) ; Wood, JR.; Lowell L.; (Bellevue, WA) .

Although the assignee is "ELWHA LLC ", one notes IV patent attorney Tegreene is one of the inventors.

The first claim:


1. A system for detecting and responding to an intruding camera, comprising: an electronic media display device having a screen configured to display content; a sensor; and a processing circuit configured to: obtain information from the sensor; analyze the information to determine a presence of a camera; and edit any displayed content in response to the presence of the camera.




MIT Technology Review on CRISPR patent, US 8,697,359 inventor Feng Zhang

In a post titled The Harvard-MIT genomic science institute trumpets its claims to an important genome editing technology , the MIT Tech Review talked glowingly about US Patent 8,697,359.

Application 14/054,414 was filed October 15, 2013 and the patent issued April 15, 2013.

The first claim states


A method of altering expression of at least one gene product comprising introducing into a eukaryotic cell containing and expressing a DNA molecule having a target sequence and encoding the gene product an engineered, non-naturally occurring Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR)--CRISPR associated (Cas) (CRISPR-Cas) system comprising one or more vectors comprising: a) a first regulatory element operable in a eukaryotic cell operably linked to at least one nucleotide sequence encoding a CRISPR-Cas system guide RNA that hybridizes with the target sequence, and b) a second regulatory element operable in a eukaryotic cell operably linked to a nucleotide sequence encoding a Type-II Cas9 protein, wherein components (a) and (b) are located on same or different vectors of the system, whereby the guide RNA targets the target sequence and the Cas9 protein cleaves the DNA molecule, whereby expression of the at least one gene product is altered; and, wherein the Cas9 protein and the guide RNA do not naturally occur together.




Claim 8 is to a system


An engineered, non-naturally occurring CRISPR-Cas system comprising one or more vectors comprising: a) a first regulatory element operable in a eukaryotic cell operably linked to at least one nucleotide sequence encoding a CRISPR-Cas system guide RNA that hybridizes with a target sequence of a DNA molecule in a eukaryotic cell that contains the DNA molecule, wherein the DNA molecule encodes and the eukaryotic cell expresses at least one gene product, and b) a second regulatory element operable in a eukaryotic cell operably linked to a nucleotide sequence encoding a Type-II Cas9 protein, wherein components (a) and (b) are located on same or different vectors of the system, whereby the guide RNA targets and hybridizes with the target sequence and the Cas9 protein cleaves the DNA molecule, whereby expression of the at least one gene product is altered; and, wherein the Cas9 protein and the guide RNA do not naturally occur together.





The first paragraph of the summary of invention states:


There exists a pressing need for alternative and robust systems and techniques for sequence targeting with a wide array of applications. This invention addresses this need and provides related advantages. The CRISPR/Cas or the CRISPR-Cas system (both terms are used interchangeably throughout this application) does not require the generation of customized proteins to target specific sequences but rather a single Cas enzyme can be programmed by a short RNA molecule to recognize a specific DNA target, in other words the Cas enzyme can be recruited to a specific DNA target using said short RNA molecule. Adding the CRISPR-Cas system to the repertoire of genome sequencing techniques and analysis methods may significantly simplify the methodology and accelerate the ability to catalog and map genetic factors associated with a diverse range of biological functions and diseases. To utilize the CRISPR-Cas system effectively for genome editing without deleterious effects, it is critical to understand aspects of engineering and optimization of these genome engineering tools, which are aspects of the claimed invention.





IPBiz notes the MIT Tech Review is not always spot-on in recognizing good technology; from an earlier IPBiz post:


IPBiz notes the following commentary by the same MIT Technology Review on the fraudulent work of Jan Hendrik Schon:

Hendrik Schön is reinventing the transistor at the place it was born. He and his Bell Labs coworkers have produced single-molecule transistors whose electrical performance is comparable to that of today’s best silicon devices but which are hundreds of times smaller. Making such molecular transistors, which could lead to ultrafast, ultrasmall computers, has been a goal of researchers for years; Schön’s clever design established Bell Labs as a leader in the race. But Schön is not interested in simply reinventing the transistor. He wants to change the very materials that form microelectronics,replacing inorganic semiconductors with organic molecules. Schön has made an organic high-temperature superconductor, renewing hopes that superconductors could have widespread electronic applications. He also helped devise the first electrically driven organic laser, which could mean cheaper optoelectronic devices. The soft-spoken Schön recalls being “very surprised” by how well his molecular transistors worked. But it won’t be a surprise if Schön helps transform microelectronics.





Of course, it would be a surprise if the fraudulent work of Schon transformed anything. And where is Bell Labs now?

Separately,
http://ipbiz.blogspot.com/2007/03/have-scientific-journals-learned-from.html

Goose confusingly similar to turkey?

See A Small Irish Whiskey Brand Takes on Bacardi Over Trademark

Do you remember the "Wild Geese" from 17th century Ireland?

--Advanced biofuels are the fuel of the future, and always will be --?

Within a New York Times post titled Dual Turning Point for Biofuels
, one has the text

There is an old joke in the energy business that advanced biofuels are the fuel of the future, and always will be

This is indeed an old line. In 2004, IPBiz, in a post Oil shale: history repeating? , had the text:

As has been said, synfuel is the fuel of the future and always will be.

See also Henry Ford and ethanol

The NYT article was less than clear on what the "dual turning point" was.

One issue was market saturation:


But even as Abengoa and other companies prepare to produce significant amounts of cellulosic ethanol, using corn stalks and wheat straw as opposed to corn itself, the appetite for such fuels seems to be diminishing.

The market is saturated with ethanol from corn.




Also mentioned was the changed circumstances from fracking, etc.:


Other things have changed, too, since 2007. A boom in shale drilling has produced a sudden gush of domestic oil. Increasingly efficient cars and a sluggish economy have cut demand for fuel.



And



A major obstacle for the biofuel industry is the “blend wall,” the current 10 percent limit on ethanol at most gasoline stations. Some car companies warn that above that level, fuel could damage engines in older vehicles. The Energy Department has disputed such concerns, and the E.P.A. has approved use of 15 percent ethanol blends for cars manufactured after 2001. But gasoline stations have been slow at installing the necessary equipment. And only a modest number of vehicles can use E-85, a blend that is 85 percent ethanol.

But biofuel producers and lobbyists say the country needs more of their product. “Cellulosic biofuel has the promise to deliver tens of billions of gallons of ethanol to the United States, but there needs to be a market for that,” Brian Foody, president and chief executive of the Canadian biofuel company Iogen, told reporters in a recent conference call by industry executives discussing the impact of the E.P.A. proposal. “We believe it’s critical for E.P.A. to create a segment or space in the market for E-85 to grow and to set numbers that will provide incentives.”

Tuesday, April 15, 2014

Are cyanobacteria deemed microorganisms under TSCA?


from within -- Finding Promise in Pond Scum: Algal Biofuels, Regulation, and the Potential for Environmental Problems --, 42 Tex. Envtl. L.J. 59 (2011) :


EPA has extended TSCA oversight to commercial and research activities involving microorganisms by defining "chemical substance" broadly to include microorganisms. n116 However, TSCA pre-manufacture reporting requirements only apply to a "new microorganism," which is further limited to an "intergeneric microorganism." n117 In other words, the requirements apply only to "a microorganism that is formed by the deliberate combination of genetic material originally isolated from organisms of different taxonomic genera." n118 Under TSCA, the term "microorganism" encompasses red and green algae (i.e., microalgae and macroalgae, although notably not cyanobacteria). n119 Under this formulation, microorganisms that are not intergeneric - including naturally occurring and classically mutated or selected microbes, as well as genetically modified microbes whose genetic material originates in a single genus - are not considered to be new and are exempt from TSCA's reporting requirements. n120 To clarify: only those micro-and macroalgal species that have been purposefully cross- [*72] bred or genetically modified to include genes from more than one genera fall under TSCA.



AND



Kudzu is known as "the plant that ate the South" because it has so rapidly taken over the southern U.S. n175 Estimated losses and control efforts due to invasive plants cost roughly $ 34 billion annually. n176 NISC has expressed concern that "a number of potentially harmful non-native algal species are being considered for use in the production of biodiesel, renewable biodiesel, and jet fuel (e.g. the toxic freshwater cyanobacteria, Anabaena circinalis)." n177 The theory is that, because these algae strains are bred to self-replicate and have no natural adversary in the area, once released into the environment they would be very hardy and could outcompete and displace native species, eventually overpopulating and reducing biodiversity. n178 Indeed, the very traits that maximize biofuel crop yield and foster the ability for biofuels to be cultivated in marginal environments, including perennial growth patterns and tolerance to salinity, increase the risk of invasiveness. n179



Some footnotes


n119. Id.; see Microbial Products of Biotechnology, 62 Fed. Reg. at 17,926.

n120. See Microbial Products of Biotechnology: Summary of Regulations under the Toxic Substances Control Act, Envtl. Prot. Agency, http://www.epa.gov/biotech_rule/pubs/pdf/fs-002.pdf (last visited Sept. 26, 2011).

n121. 40 C.F.R. §§725.3, 725.234 (2010).

n122. Premanufacture Notification, 48 Fed. Reg. 21,722, 21,722-24 (May 13, 1983); see Rodgers, supra note 113, at § 6:5(B)(1) (demonstrating that, historically, EPA takes no action on about 85% of premanufacture notices and grants post-notice exemptions from regulation to about 88% of applicants, allowing commercial production to proceed in both cases).

n123. Plant Protection Act, 7 U.S.C.§§7701-7758 (2010).

n124. 7 C.F.R. § 340.2 (2010).

n125. Regulations Affecting the Use of Genetically Modified Algae for Biofuel Production, D. Glass Assoc., Inc., (June 09, 2010, 7:55 PM), http://dglassassociates.wordpress.com/2010/06/09/regulations-affecting-the-use-of-genetically-modified-algae-for-biofuel- production-2.

Eli Lilly: place Canada on US Trade Priority Watch list for countries that provide insufficient patent protection or enforcement

Trolls as owners of large numbers of patents?



In an article about patent trolls, the Pittsburgh Post-Gazette states that patent law suits by non-practising universities are NOT trollish in nature:


Not all suits brought to fight patent infringements are trollish in nature, Mr. Singer said, pointing to two recent lawsuits in favor of Carnegie Mellon University and the University of Pittsburgh, respectively.

A jury found that Marvell Technology Group willfully infringed on computer chip technology patented by a CMU professor and student. And Varian Medical Systems last week settled patent litigation with Pitt over technology used during radiation therapy.




Thus, "not practicing" the claims of the patent does not make the patent assertor a "patent troll," in this view.

Elsewhere in the article



The definition of a patent troll varies, but for the most part they are companies that file or purchase large numbers of patents — sometimes from bankrupt companies — and then file lawsuits or demand fees against infringing companies.





IBM files large numbers of patent applications. And one recalls IBM Hits Twitter With Patent Infringement Claims Ahead of IPO And, as the New York Times noted in 2006 of two lawsuits by IBM against Amazon.com


I.B.M. filed its suits in two federal courts in the Eastern District of Texas, in Tyler and Lufkin. The Eastern District courts there are known for handling patent suits quickly and for often awarding large settlements to plaintiffs, said Gregory P. Silberman, a patent lawyer at the firm of Kaye Scholer.





Troll?

Monday, April 14, 2014

Contemplation of patenting the Salk vaccine prior to the quote "Could you patent the sun?”


The Slate post Jonas Salk: Good at Virology, Bad at Economics alludes to
research by Jane Smith that shows that, before Murrow’s famous interview with Salk with the Salk quote -- “There is no patent. Could you patent the sun?” --, lawyers for the National Foundation for Infantile Paralysis looked into the possibility of patenting the Salk vaccine.

See also text at Reddit:


When Jonas Salk asked rhetorically “Would you patent the sun?” during his famous television interview with Edward R. Murrow, he did not mention that the lawyers from the National Foundation for Infantile Paralysis had looked into patenting the Salk Vaccine and concluded that it could not be patented because of prior art – that it would not be considered a patentable invention by standards of the day.

Sunday, April 13, 2014

Ethanol from biomass

Of a different route to bioethanol, see Scientist-turned-entrepreneur wants to make biofuels cheaper than oil




Goodliffe, 41, is chief executive of Sustainable Ethanol Technologies, a UNCC spinoff that’s developing a process to produce ethanol — a fuel typically made from corn kernels — from any kind of biomass. The process can use the rest of the corn plant, wood chips, construction and yard waste, and paper. In May, the startup received the first strategic corporate partnership award from the Charlotte Venture Challenge sponsored by UNCC.

The patent-pending process was developed by UNCC professor Matt Parrow and Richard Giles, a former UNCC grad student, now teaching at Cleveland Community College.


(,,,)

I [Goodliffe] spend most of my time talking on the phone and emailing. I am working with the Hutchison law firm in Raleigh, which is giving us about $40,000 in legal fees for equity in the company.

I’m managing Richard and Matt, who are tweaking the process. I’m helping run the pilot project at EcoComplex, a landfill in Catawba County. They’re giving us free biomass, and we’re making ethanol from it.

I’m also managing — or maybe he is managing me — Rick King of Preflight Ventures in Raleigh. He is selling us to ethanol plants so we can start generating revenue. We are close to our first sale and should have an agreement in place by summer. Ultimately, we would like to earn a royalty from each gallon a plant produces using our process.





One relevant US case is US 20110294169 published December 1, 2011 (from 13/116860 ).

The first two claims of the patent application are:

1. A method of treating a lignocellulosic material comprising: degrading lignin of the lignocellulosic material with at least one fungus; and hydrolyzing cellulose of the lignocellulosic material with at least one microorganism.

2. The method of claim 1 wherein the at least one fungus comprises a white rot fungus.

**In an Advisory Action mailed on Nov. 25, 2013, the examiner maintained obviousness rejections over a paper by Filley et al.,
Organic Geochemistry (2002), a patent to Akhtar, and other references.

**An RCE, with altered claims, was filed April 7, 2014.

"60 Minutes" for April 13, 2014, Palm Sunday


First story is on Pope Francis.

Second story is on a strong US candidate (female) to win this year's Boston Marathon.

Scott Pelley began the story by noting that Pope Francis signs documents simply as "Francis." Robert Mikkens, American journalist covering the Vatican. Francis: your prayer over me is a blessing. Pope number 266. Francis is in room 201 in the Vatican Hotel. The "scandal of normality." The Jesuits: soldiers of God. Abraham Skorka of Argentina met Francis while talking about soccer. Francis is a memmber of the San Lorenzo de Almagro club. "On Heaven and Earth." President Christina Kirschner. Ritual of washing feet on Holy Thursday. Francis is now 77.

The second segment begins with Obama's visit with Francis. The second segment begins with Robert Mikkens. The Roman Curia. Francis set up a privy council of 8 cardinals. Francis has called the church a field hospital. Gerald LaCroix of Montreal was made a cardinal by Francis. A call to widen your spirit. "We need to look at reality." Urgent concerns about sex abuse and financial scandals. Because of lack of coherence so many people have been hurt. Francis has opened up discussion in the church. We want discussion. But opposition to abortion will remain. And priests will still be men. "The Joy of the Gospel." To Obama. Francis said: it's really young people that order us around. The Pope can shake people's conscience. Counter: how many divisions does the Pope have? Obama: ideas are the most powerful thing on earth. The Pope has 8 titles, the last servant of the servants of God



CBS Sunday Morning on April 13, 2014.

Charles Osgood introduced the stories for April 13, 2014. Cover story on Alzheimers disease. Medical researchers have made progress, but not so much in Alzheimers. Mo Rocca does cover story. 5 million Americans are afflicted. Family in Colombia. "The Longest Journey." Second, Lee Cowan on stunt performers. Taking the fall. Third, Pharrell Williams. Anthony Mason on Williams' trademark happiness. Fourth, Matzo. Nancy Giles. Streit's Matzo factory. Fifth, Dean Reynolds, train ride. Martha Teichner, Steve Hartman. Headlines, April 13, 2014. FedEx tractor trailer accident, 10 people died. Holy Week at Vatican. First anniversay of Boston explosions. Jordan Spieth at Masters. Weather: severe thunderstorms. Snow in Wyoming and Colorado.

Researchers may be turning a corner. City of Medellin, Colombia having a family with Alzheimers. Early onset Alzheimers is hereditary. This accounts for about 5% of Alzheimers. Alzheimers affects 1 in 8 over 65. By 2050, 16 million Americans.
will have. Dr. Adam Fleischer on amyloid protein. Dr. Francisco Lopera in Colombia. Dr. Eric Reiman of Banner Alzheimer's Institute in Phoenix.
Pulse: 40% think a cure for Alzheimers is "somewhat likely" in their lifetime.

Almanac. April 13, 1570. Guy Fawkes. Nov. 5, 1605. V for Vendetta.

Martha Teichner on architect Moshe Safdie. Marina Bay Resort in Singapore. Habitat 67 in Montreal ( located at 2600 Avenue Pierre-Dupuy on the Marc-Drouin Quay next to the Saint Lawrence River ). An idea whose time has yet to come. Mention of Crystal Bridges Museum of American Art in Bentonville, Arkansas.

Nancy Giles on matzos. Streits Matzo Factory, in business since 1925. Allan Adler.

train travel.


Mustang car.

Stunt men.

Opinion. Conor Nighton on final season of Mad Men being in two parts. The Hunger Games


Week ahead. 75th anniversary of Grapes of Wrath. Thursday: Victoria Beckham, 40th birthday.

Next week: Pope.

Moment of nature. Wild horses at Rachel Carson preserve near Beaufort, North Carolina. [ Across Taylor’s Creek from the Beaufort waterfront is a complex of islands that compose the Rachel Carson site. The islands at the western end of the site, Carrot Island, Town Marsh, Bird Shoal, and Horse Island, are more than three miles long and less than a mile wide, covering 2,025 acres. ]

Saturday, April 12, 2014

Google's Lockheimer as witness in Apple v. Samsung



Within a New York Times account of Apple v. Samsung:


Samsung’s lawyers called Mr. Lockheimer as a witness so he could demonstrate how Android was already well into development before the iPhone was introduced, making it unlikely that Apple was copied by Google and, by extension, Samsung.



One notes that U.S. patent law does not have an independent creation defense. Patent infringement is strict liability: does your product fall within the scope of the claims or not? It does not matter if you (or someone else) were working on the invention independently, and thus did not copy. Not relevant to infringement.

If these other efforts were made public, that might go to arguments that (here) the Apple patents were invalid. But not relevant to infringement.

These efforts by Samsung do go to a "good story" approach: In Apple’s latest patent fight with Samsung Electronics, lawyers on both sides are relying on the power of a good story to sway a jury.

The NYT article did present some humor:



At one point, Mr. Quinn tripped up on his questioning when he referred to a smartphone called the Samsung Omnia as “the Ammonia.”

“Don’t you mean Omnia?” Mr. Vellturo responded, and he then questioned whether Samsung needed to hire a new marketing team.



Hoffmann-LaRoche loses appeal on Boniva at CAFC

Hoffman-LaRoche and Genentech cases on Boniva

Hoffman-LaRoche lost its appeal at the CAFC:


Plaintiff Hoffmann-La Roche, Inc., (“Roche”) appeals
from the decision of the United States District Court for
the District of New Jersey granting the defendant generic
drug companies summary judgment of invalidity as to
claims 1-8 of U.S. Patent No. 7,718,634 (“the ’634 patent”)
and claims 1-10 of U.S. Patent No. 7,410,957 (“the ’957
patent”). We affirm.



As to evidence of unexpected results at trial



In response
to Roche’s argument that the 150 mg once monthly dose
gave results that were superior to a 2.5 mg daily dose, the
court found that Roche had “pointed to no evidence in
support of [its] claim that the skilled artisan would have
been surprised that the 150 mg once-monthly dose was
superior to the 2.5 mg daily dose.” The court refused to
consider contentions, raised at oral argument, that the
150 mg dose had a superior and unexpected level of
bioavailability, because Roche had not raised that argument
in its opposition brief.



Of obviousness, the CAFC noted:


Conclusive proof of efficacy is not necessary to show
obviousness. All that is required is a reasonable expectation
of success. See PharmaStem Therapeutics, Inc. v.
ViaCell, Inc., 491 F.3d 1342, 1363-64 (Fed. Cir. 2007);
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir.
2007). Riis—along with other prior art that used BMD
improvement as the primary efficacy marker for treating
osteoporosis—established at least a reasonable expectation
that once monthly dosing of ibandronate could successfully
treat osteoporosis and reduce fracture risk.


KSR was cited


Accordingly, the prior art pointed to a monthly treatment
of 150 mg of ibandronate. At the very least, the 150
mg dose was obvious to try: There was a need to solve the
problem of patient compliance by looking to less-frequent
dosing regimens. And, based on Ravn and Daifotis, in
light of Riis’s total-dose concept, there were only a “finite
number of identified, predictable solutions.” KSR Int’l Co.
v. Teleflex, 550 U.S. 398, 421 (2007).


Reasonable expectation of success can trump unexpected results:



While the evidence would support a finding of superior
efficacy of the 150 mg monthly dose in raising BMD
levels, as compared to a 2.5 mg daily dose, that improved
efficacy does not rebut the strong showing that the prior
art disclosed monthly dosing and that there was a reason
to set that dose at 150 mg. See In re Merck & Co., 800
F.2d 1091, 1099 (Fed. Cir. 1986). The evidence of superior
efficacy does nothing to undercut the showing that there
was a reasonable expectation of success with the 150 mg
monthly dose, even if the level of success may have turned
out to be somewhat greater than would have been expected.



Judge Newman dissented.

As to evidence


The trier of fact is “require[ed to] consider all evidence
relating to obviousness before finding a patent invalid on
those grounds.” In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1075 (Fed. Cir. 2012). It is noteworthy that although the
generic producers who are defendants herein also presented
expert reports, no expert provided anything other
than a personal opinion that the Roche discovery was
obvious.



As to obvious to try


For an invention to be obvious to try, there must be a
finite number of known choices in the prior art, and a
reasonable expectation of success for the choice that is
tried. KSR, 550 U.S. at 421. Obvious to try cannot be
found when the prior art gives no hint that a specific trial
might achieve the desired result. In re Kubin, 561 F.3d
1351, 1359 (Fed. Cir. 2009) (quoting In re O’Farrell, 853
F.2d 894, 903 (Fed. Cir. 1988)). Dr. Daifotis testified,
“monthly oral dosing of alendronate was not seen as a
feasible or desirable endeavor for investigation; if it had
been, we would have explored it.”

(...)
As stated in In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995), “[t]he basic principle
behind this rule is straightforward—that which would
have been surprising to a person of ordinary skill in the
particular art would not have been obvious.” As established
in KSR, absent limited alternatives and some
direction toward the successful path, “obvious to try” is
not applicable.

Friday, April 11, 2014

Apple, Intel don't buy into latest from Intellectual Ventures

From Reuters

Patent buyer Intellectual Ventures has persuaded Microsoft and Sony to invest in its latest acquisition fund while Apple and Intel, which invested with IV previously, declined to participate, according to people briefed on the fundraising.

Thursday, April 10, 2014

Mixed result in 2-1 decision in University of Pittsburgh v. Varian

University of Pittsburgh v. Varian

Varian did win on willfulness:


Next, Varian contends that its non-infringement and invalidity defenses were reasonable and that the trial court erred in finding that Varian acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. Varian thus requests that we reverse the trial court’s willfulness holding. We agree with Varian that the court erred in its assessment of the objective prong of its willfulness determination because Varian’s validity defense under 35 U.S.C. § 103 was not objectively baseless.



Varian won on claim 22:


Varian further contends that the damages award based on claim 22 should be vacated because the district court improperly construed that claim to include beam generators when sold in combination with the RPM System. According to Varian, when claim 22 is properly construed, Pitt is not entitled to damages based on the sales of the linear accelerators, but only the separate RPM System. We again agree with Varian.



Seagate is cited on willfulness:


Establishing that a defendant has willfully infringed a valid patent is a two-step inquiry. First, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). After the “threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvi- ous that it should have been known to the accused in-fringer.” Id. The threshold objective prong “is a question of law based on underlying questions of law and fact and is subject to de novo review.” Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1005 (Fed. Cir. 2012).



Note footnore 3:


While not of substantial weight, it is at least worth noting that the PTO initially rejected the claims of the ’554 patent in light of Peltola during reexamination. While the PTO ultimately found that Peltola did not invalidate the asserted claims of the ’554 patent, the PTO’s actions during reexamination lend some credibility to Varian’s argument that its invalidity defense based on Peltola was not objectively unreasonable when the PTO went so far as to issue an initial rejection of the claims.



Note also:


SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disa- greement with the district court . . . do not amount to a developed argument.”).

Judge Dyk dissented


I agree with the majority’s decision to reverse the will- fulness finding. However, I respectfully dissent from the majority’s decision to affirm the construction of claim 20. In my view, the majority’s construction is plainly incor- rect, and the resulting infringement findings as to claim 20 as well as claims 22 and 38, which depend from and recite the same apparatus as claim 20, should be set aside.