Thursday, November 14, 2019

The "Courts, Intellectual Property and the Internet subcommittee" to hold hearing on the CAFC decision in Arthrex

BloombergLaw writes of Congressional response to the Arthrex decision of the CAFC:

A House Judiciary panel will examine a recent Federal Circuit decision that Patent and Trademark Office
administrative judges were unconstitutionally appointed.

The committee’s Courts, Intellectual Property and the Internet subcommittee is planning a Nov. 19
hearing to discuss how the ruling in Arthrex v. Smith & Nephew affects litigants and attorneys filing challenges at the Patent Trial and Appeal Board.


Arthrex “threatens to inject an enormous amount of uncertainty into the patent system,”
U.S. Rep. Hank Johnson (D-Ga.) said in an emailed statement. Johnson has been working with his
Senate Judiciary counterparts to rewrite federal patent eligibility law.

The U.S. Court of Appeals for the Federal Circuit said PTAB judges should have been appointed by the president
and confirmed by the Senate because of the power they had. The Commerce Department secretary has been appointing
the judges since Congress passed a 2011 law that created the administrative patent review process.

The court addressed the issue by severing part of the law barring PTAB judges from being fired without cause.
Johnson questioned that move.

“I am concerned that the Arthrex court’s remedy of removing civil service protections for administrative patent judges means
that there may not be enough transparency into when political pressure may have affected a case, to say nothing of being unfair to the
civil servants who signed up for a different position than they now have,” Johnson said.

The Federal Circuit panel said its ruling only applies to cases where litigants have presented an appointments clause challenge on appeal.
The court ordered a new hearing before a new panel of PTAB judges, in a challenge filed by Smith & Nephew Plc over an Arthrex Inc. patent for a surgical device.


The CAFC wrote in Arthrex on 31 October 2019:

Arthrex, Inc. appeals from the final written decision of
the Patent Trial and Appeal Board holding claims 1, 4, 8,
10–12, 16, 18, and 25–28 of U.S. Patent No. 9,179,907 unpatentable as anticipated.
Arthrex appeals this decision
and contends that the appointment of the Board’s Administrative Patent Judges (“APJs”)
by the Secretary of Commerce, as currently set forth in Title 35, violates the
Appointments Clause, U.S. Const., art. II, § 2, cl. 2. We
agree and conclude that the statute as currently constructed makes the APJs principal officers.
To remedy the violation, we follow the approach set forth by the Supreme
Court in Free Enterprise Fund v. Public Company Accounting Oversight Board, 561 U.S. 477 (2010) and followed by
the D.C. Circuit in Intercollegiate Broadcasting System,
Inc. v. Copyright Royalty Board, 684 F.3d 1332 (2012). As
the Supreme Court instructs, “‘[g]enerally speaking, when
confronting a constitutional flaw in a statute, we try to
limit the solution to the problem,’ severing any ‘problematic portions
while leaving the remainder intact.’” Free Enterprise Fund, 561 U.S. at 508 (quoting Ayotte v. Planned
Parenthood of Northern New Eng., 546 U.S. 320, 328–29
(2006)). We conclude that severing the portion of the Patent Act restricting
removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional
appointment problem.
As the final written decision on
appeal issued while there was an Appointments Clause violation, we vacate and remand. Following Lucia v. S.E.C.,
138 S. Ct. 2044 (2018), the appropriate course of action is
for this case to be remanded to a new panel of APJs to
which Arthrex is entitled.

Of a waiver issue:

Appellees and the government argue that Arthrex forfeited its
Appointments Clause challenge by not raising the
issue before the Board. Although “[i]t is the general
rule . . . that a federal appellate court does not consider an
issue not passed upon below,” we have discretion to decide
when to deviate from that general rule. Singleton v. Wulff,
428 U.S. 106, 120–21 (1976). The Supreme Court has included Appointments
Clause objections to officers as a
challenge which could be considered on appeal even if not
raised below. Freytag v. Commissioner of Internal Revenue,
501 U.S. 868, 878–79 (1991); Glidden Co. v. Zdanok,
370 U.S. 530, 535–36 (1962).


Because the Secretary continues to have the power to appoint APJs and those APJs continue to decide patentability
in inter partes review, we conclude that it is appropriate for
this court to exercise its discretion to decide the Appointments Clause challenge here.
This is an issue of exceptional importance, and we conclude it is an appropriate use
of our discretion to decide the issue over a challenge of

The big issue:

The issue, therefore, is
whether APJs are “Officers of the United States” and if so,
whether they are inferior officers or principal officers; the
latter requiring appointment by the President as opposed
to the Secretary of Commerce. We hold that in light of the
rights and responsibilities in Title 35, APJs are principal


The only two presidentially-appointed officers
that provide direction to the USPTO are the Secretary of
Commerce and the Director. Neither of those officers individually
nor combined exercises sufficient direction and supervision over APJs to render them inferior officers.


Having considered the issues presented, we conclude
that APJs are principal officers. The lack of any presidentially-appointed officer who can review, vacate, or correct
decisions by the APJs combined with the limited removal
power lead us to conclude, like our sister circuit in Intercollegiate, which dealt with the similarly situated CRJs, that
these are principal officers. While the Director does exercise oversight authority that guides the APJs procedurally
and substantively, and even if he has the authority to dedesignate an APJ from inter partes reviews, we conclude
that the control and supervision of the APJs is not sufficient to render them inferior officers. The lack of control
over APJ decisions does not allow the President to ensure
the laws are faithfully executed because “he cannot oversee
the faithfulness of the officers who execute them.” Free Enterprise Fund, 561 U.S. at 484. These factors, considered
together, confirm that APJs are principal officers under Title 35 as currently constituted.

Separately, from Blawgsearch on 14 November 2019:

Wednesday, November 13, 2019

Mina Chang matter, deja vu all over again?

Back in the year 2006, IPBiz had a post
Resume of Trump's E.J. Ridings questioned

Fast forward to 2019, and one had the following text:

NBC News claims that Mina Chang, a deputy assistant secretary in the State Department's Bureau of Conflict and Stability Operations, also faked an issue of Time magazine with her face on the cover and made false claims about graduating from Harvard University and her appointment to a nonexistent position with the United Nations, among other misleading lines in her State Department biography and LinkedIn experience.


CAFC finds error in SD Cal analysis of design patent infringement in Columbia Sportswear case; also discusses "false testimony" issue

The outcome in Columbia Sportswear :

Because we conclude that the court did not err in holding claims 2
and 23 of the ’270 patent invalid but that it did err in granting summary
judgment of infringement for the ’093 patent [D657,093],
we affirm-in-part, reverse-in-part, and remand for further

Of the issue of false testimony within the case:

Second, Columbia submits that Dr. Block’s testimony
regarding Fottinger entitles it to a new trial. Specifically,
Dr. Block testified at trial that Fottinger’s use of a “25
mesh” with half-millimeter spots yielded an embodiment
with 36% coverage. Both Seirus and Columbia agree that
this testimony was incorrect. Appellant’s Br. 68; Appellee’s
Br. 64. Seirus characterizes Dr. Block’s testimony as an
error in interpreting how the dot pattern in Fottinger repeated, Appellee’s Br. 67, while Columbia characterizes it
as intentionally introduced false testimony, Appellant’s Br.

We have considered the issue of false testimony in at
least two cases
, Fraige v. American-National Watermattress Corp.,
996 F.2d 295 (Fed. Cir. 1993), and Rembrandt
Vision Technologies, L.P. v. Johnson & Johnson Vision
Care, Inc., 818 F.3d 1320 (Fed. Cir. 2016). Both came to us
after denials of motions under Rule 60(b), which specifically provides for relief from a judgment in the case of
fraud. Even putting aside this procedural difference, however, the facts here—
a few lines of mistaken expert testimony—are in stark contrast to the facts in those cases. For
example, in Fraige, the defendant’s fraudulent conduct was
so significant that the court imposed sanctions against the
defendant under Fed. R. Civ. P. 11 and referred the matter
of misconduct to the United States Attorney. 996 F. 2d at
296–97. In Rembrandt, an expert falsely testified about
performing experiments material to the issues in the case
and withheld data that would have undermined his opinions. 818 F.3d at 1323–24. Such conduct infects the
proceedings and can result in an unfair trial, but the record
here is not comparable. Even if Dr. Block purposefully misrepresented the contents of Fottinger, Fottinger itself was
in the record for the jury to consider. The jury could have
easily verified any representations about the reference.
Moreover, Columbia had ample opportunity to cross-examine Dr. Block on his incorrect understanding of Fottinger’s
disclosure. Under these circumstances and given the uncomplicated nature of the evidence, we cannot conclude
that Dr. Block’s misstatements warrant a new trial

Of the infringement matter:

Given the record in this case, we are persuaded that
the district court erred in granting summary judgment of
infringement for two reasons: (1) the court improperly declined to consider the effect of Seirus’s logo in its infringement analysis and (2) the court resolved a series of
disputed fact issues, in some instances relying on an incorrect standard, that should have been tried to a jury.
The district court relied on one precedent from this
court—L.A. Gear—for the proposition that logos should be
wholly disregarded in the design-infringement analysis. In
that case, the parties did not dispute that the patented and
accused designs were substantially similar. L.A. Gear, 988
F.2d at 1125. In fact, “copying [was] admitted.” Id. In
evaluating infringement there, we explained that design
infringement is not avoided “by labelling.” Id. at 1126. A
would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its
name. But L.A. Gear does not prohibit the fact finder from
considering an ornamental logo, its placement, and its appearance as one among other potential differences between
a patented design and an accused one. Indeed, the fact
finder is tasked with determining whether an ordinary observer would find the “effect of the whole design substantially the same.” Gorham, 81 U.S. at 530. It would be
inconsistent with this mandate to ignore elements of the
accused design entirely, simply because those elements included the name of the defendant.

Monday, November 04, 2019

CAFC tackles meaning of "travel trailer"

The outcome:

Because we hold the
Board erred in concluding “travel trailer” does not limit the
scope of the claims, we reverse and remand for further proceedings consistent with this opinion.

Of the "structure" of a claim preamble, the CAFC noted

The parties dispute whether the preamble phrase
“travel trailer” limits the claims. Appellants begin by arguing that the claims have no preamble at all. They argue
that “[a] travel trailer having . . .” is not a preamble and
does not use a transition word. Appellants’ Br. 23. We do
not agree. Though this claim does not use the typical claim
language (comprising) which denotes the transition between the preamble and the body, the word “having” performs the same role here.

As to traval trailer:

To the extent that the Board determined that “travel
trailer” is simply a statement of intended use and not a
structural limitation, we do not agree. Appellants relied on
two pieces of extrinsic evidence, Miller and Woodall’s, to
support their assertion that “travel trailer” is a specific
type of recreational vehicle that includes a living quarters.

Life in Washington DC in winter 1863/1864

Further to an earlier IPBiz post

one notes a post by the book's author titled

The year Washington, D.C. trembled (and danced) behind its barricades which appeared on November 3, 2019.

Talking about the winter of 1863-1864, the text mentions "the great U.S. Patent Office Ball":

The season had begun as always with a New Year’s reception at the Executive Mansion,
hosted by the Lincolns, then had launched itself into a frenzy whose outward manifestation
was the city’s newest obsession: dancing. Washingtonians were crazy about it.
They were seen spinning through quadrilles, waltzes, and polkas at the great U.S. Patent Office Ball,
the Enlistment Fund Ball, and at “monster hops” at Willard’s hotel and the National.

Colfax, later to be Vice-President, is mentioned:

Politicians such as Secretary of State William Seward and Congressman Schuyler “Smiler” Colfax threw musical soirees.

See an earlier IPBiz post which noted:

Related to "Mayor Pete" of South Bend, U.S. Grant's first vice-president was
Schuyler Colfax of South Bend, Indiana, who was the first person to have served as Vice-President and Speaker of the House of Representatives.

[Query: Is "Mayor Pete" Smiler2?]

Of the fortifications surrounding Washington D.C.:

For in the winter of 1863-64, Washington was the most heavily defended city on earth.
Beyond its houses and public buildings stood 37 miles of elaborate trenches and fortifications
that included 60 separate forts, manned by 50,000 soldiers. Along this armored front bristled some
900 cannons, many of large caliber, enough to blast entire armies from the face of the earth.

Of the XXII Corps, wikipedia notes

XXII Corps was a corps in the Union Army during the American Civil War.
It was created on February 2, 1863, to consist of all troops garrisoned in Washington, D.C.,[2] and
included three infantry divisions and one of cavalry (under Judson Kilpatrick, which left
to join the Army of the Potomac during the Gettysburg Campaign). Many of its units were transferred to the Army of the Potomac during Grant's Overland Campaign.[2]

Friday, November 01, 2019

Twilight Zone "I am the Night - Color Me Black," a message for 2019?

In " I am the Night - Color Me Black," the 26th episode of the fifth (and final) season of the initial Twilight Zone (airing March 27, 1964), one has a story of relevance to the year 2019.

One Jagger is about to be hung in the town square, supervised by the sheriff, for the murder of a cross-burning psychopathic bully. The date is squarely set as May 25, 1964. In the real world of 1964, executions were not by hanging (except maybe in Utah, and this location was referenced as a "remote little midwestern village) and they were not conducted by local authorities. But this is the Twilight Zone, and this is a symbolic lynching of a white man who killed a man who was hostile to blacks.

The attending clergyman is black (played by Ivan Dixon) who gives interesting final comments:

Now, you and i are a different faith, and obviously a different color, but you stood up for me and mine.
You spoke for us, and god help us, you killed for us.
And i feel you deserve some measure of peace.


When he came at you, Jagger did it feel good to you then? What difference? When you aimed that gun at his head, that wasn't such a bad moment, was it? Good, bad, who cares? When you killed him, Jagger, when you blew his head off, there were no regrets then, were there? You enjoyed that, didn't you? You know it! Yes, yes, i i know it now.
Now i know it too well.
You're guilty


Do you know why it's dark? Do you know why it is night all around us? Do you know what the blackness is? It's the hate he felt, the hate you felt, the hate all of us feel, and there's too much of it.
There's just too much.

Of an interchange of Jagger to the clergyman:

Jagger: It's important to get with the majority, isn't it? That's that's a big thing nowadays, isn't it, reverend? That's all there is, is the majority.
The minority must have died on the cross 2,000 years ago.
You seen the light, reverend.
You really seen the light.

As to omissions of fact:

But there's just a few disturbing facets about this case.

One the murdered man was not a decent man.
He was a cross-burning, psychopathic bully who attacked the man in there.
And two, Deputy Pierce here saw it happen and then perjured himself.
Now, wait a minute! Perjured is the word, deputy.
Now, you said jagger shot him from across the room.
No such thing.
The murdered man had powder burns all over him.

This might not have proven self-defense but it would've pointed to it and maybe helped it.
And you, sheriff koch, you saw the body.
But i didn't hear any comments on those powder burns when you gave your testimony.
And your courageous editor here in covering the trial didn't see fit to include this insignificant
addendum though he also knew at the time he was being very selective about what truths he was writing about, what truths he wasn't.

You're right, deputy.
Justice is being served on a platter with its tongue cut out just like the carcass of any dead animal.

One can have judicial opinions which are very selective about the facts they mention, and those they don't mention.

link to text:

Thursday, October 31, 2019

ED Texas rules in favor of US Automobile Association over Wells Fargo in denying SJ via 35 USC 101

A district court (ED Texas) determined, in denying a motion for summary judgment, that claims of U.S. Patent Nos. 8,977,571 (the “’571 Patent”) and 9,818,090, were not patent ineligible under 35 USC 101.

Yes, Berkheimer and Exergen were cited:

“[t]he question of whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in the relevant field is a
question of fact” that must be “proven by clear and convincing evidence.” Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).

Something is not necessarily well-understood, routine, and conventional simply because it
is disclosed in a prior art reference. Exergen Corp. v. KAZ USA, Inc., 725 F. App’x 959, 965–66
(Fed. Cir. 2018).
There are many obscure references that may qualify as prior art but are
insufficient to establish something is a “well-understood, routine, and conventional activity
previously engaged in by scientists who work in the field.” Mayo, 566 U.S. at 79. Accordingly,
determining “[w]hether a particular technology is well-understood, routine, and conventional goes
beyond” simply examining “what was simply known in the prior art.” Berkheimer, 881 F.3d at

Additionally, specific improvements described in a patent specification, “to the extent they
are captured in the claims, create a factual dispute regarding whether the invention describes well understood,
routine, and conventional activities.” Berkheimer, 881 F.3d at 1369. However,
“[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed
combination is well-understood, routine, conventional to a skilled artisan in the relevant field,
[patent eligibility] can be decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d
at 1368.


Alternatively and independently, the Court finds that even if the Asserted Claims were
directed at an abstract concept, a genuine dispute of fact would exist as to whether the claim
elements individually or as an ordered combination were “well-understood, routine, and
conventional to a skilled artisan in the relevant field.” Berkheimer, 881 F.3d at 1368. Such a factual
dispute precludes summary judgment.

See IPBiz post

The USPTO and the Berkheimer memo

Patent fight over hair color

The fight is over hair color:

Plaintiff-appellant Metricolor LLC sued defendantsappellees L’Oréal S.A.,
L’Oréal USA, Inc., L’Oréal USA
Products, Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC, LLC
(collectively, “L’Oréal” or “L’Oréal defendants”) in the United States District Court for the Central
District of California alleging various claims related to the
launch of two L’Oréal hair bonding products that allegedly
resemble the hair coloring system claimed in Metricolor’s
patent, U.S. Patent No. 9,301,587 (’587 patent).

There was a vacate and remand:

Because the district court did not address Metricolor’s
request for leave to amend the complaint, much less conduct an
analysis of whether any amendment would have
been futile, we vacate the district court’s grant of L’Oréal’s
Rule 12(b)(6) motion and remand for the district court to
address Metricolor’s request for leave in the first instance.

The CAFC gets into the "abuse of discretion" standard:

Though the “grant or denial of an opportunity to amend is within the
discretion of the [d]istrict [c]ourt,” “outright refusal to
grant the leave without any justifying reason appearing for
the denial is not an exercise of discretion.”

Merely taking an action, without justifying the action with a reason,
is an abuse of discretion.

Relevant to a recent NCIS: New Orleans episode (Spies and Lies) note the

We also agree with the district court that the complaint
failed to sufficiently plead any of Metricolor’s non-patent
claims of breach of contract, breach of confidence, federal
trade secret theft, and unfair competition under state law.
As the district court correctly found, the complaint did not
sufficiently allege any misuse of confidential information
beyond what was already disclosed in the published ’587
patent application

You can't "steal" information in a patent or published application.

Wednesday, October 30, 2019

CAFC analyzes copying in Liqwd case

The outcome in Liqwd:

Liqwd, Inc., appeals from a decision by the Patent Trial
and Appeal Board that certain claims in its patent on formulations and methods of
keratin treatment are unpatentable as obvious. In its obviousness analysis, based on
evidence presented by Liqwd, the Board found that L’Oreal
USA, Inc., used Liqwd’s confidential information and copied Liqwd’s patented method. But the Board disregarded
its factual finding when concluding that the copying involved was legally irrelevant. Because that conclusion was
error, we vacate the Board’s obviousness determination
and remand. We agree with the other appealed aspects of
the Board’s final written decision.

An issue

Liqwd argues that the Board erred by ruling that
L’Oreal’s copying of Liqwd’s unpublished ’885 patent application
“did not qualify as an objective indicium of nonobviousness” despite the Board’s factual finding that “[L’Oreal]
used maleic acid because of [L’Oreal’s] access to [Liqwd’s]
non-public information, rather than because of
[L’Oreal’s] . . . independent development.” Appellant
Br. 27 (quoting J.A. 45). L’Oreal responds and relies on
Iron Grip Barbell in arguing that Liqwd did not show replication of any specific
product embodying the claimed invention, so there is no evidence of copying by L’Oreal.
Appellee Br. 37–40. We therefore review whether the
Board erred in determining that L’Oreal’s “development of
its products due to access to non-public information about
[Liqwd’s] patent application” was not “copying of the type
that is relevant to the question of obviousness of the
challenged claims of the ’419 patent” on the basis that the
evidence did not show L’Oreal copied a specific product.
J.A. 45–46. We conclude this was error.
This court has consistently held that objective indicia
“‘may often be the most probative and cogent evidence’ of
nonobviousness.” Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000) (quoting
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983)). Objective indicia are essential safeguards that protect
against hindsight bias. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012). The objective
indicia analysis is, therefore, a fundamental part of the
overall § 103 obviousness inquiry. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983).
As a result, the Board must consider all such evidence of
objective indicia and determine the weight to give it “en
route to a determination of obviousness.” Stratoflex, Inc.
713 F.2d at 1538.
It is well established that copying by a competitor is a
relevant consideration in the objective indicia analysis.
Iron Grip Barbell, 392 F.3d at 1325. Such copying may be
evidence that the patented invention is nonobvious. Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir.
1984). “Copying requires duplication of features of the patentee’s work
based on access to that work, lest all infringement be mistakenly treated as copying.” Institut Pasteur
& Universite Pierre Et Marie Curie v. Focarino, 738 F.3d
1337, 1347–48 (Fed. Cir. 2013). Evidence of copying may
include internal documents, direct evidence such as photos
of patented features or disassembly of products, or access
and similarity to a patented product. Iron Grip Barbell,
392 F.3d at 1325.


Other cases following Iron Grip Barbell have also emphasized that similarities between an issued patent and an
accused product do not, on their own, establish copying. In
Wyers v. Master Lock Co., we held that the patent owner
failed to establish copying despite its argument that “competitors’ copying and marketing of convertible shank hitch
pin locks shortly after the invention’s existence became
known supports a finding of nonobviousness.” 616 F.3d
1231, 1245–46 (Fed. Cir. 2010) (citing Iron Grip Barbell,
392 F.3d at 1325). We again distinguished between infringement and copying, reasoning that “[n]ot every competing product that arguably falls within the scope of a
patent is evidence of copying; otherwise, ‘every infringement suit would automatically confirm the nonobviousness
of the patent.’” Id. at 1246 (quoting Iron Grip Barbell, 392
F.3d at 1325). In Tokai Corp. v. Easton Enterprises, Inc.,
although we restated that “[c]opying requires evidence of
efforts to replicate a specific product,” we emphasized the
vital difference between infringement and copying. 632
F.3d 1358, 1370 (Fed. Cir. 2011) (quoting Wyers, 616 F.3d
at 1246).

Bottom line:

We therefore vacate the Board’s obviousness determination and remand the case for the Board to consider this
evidence in its obviousness analysis. See Knoll Pharm. Co.
v. Teva Pharms. USA, Inc., 367 F.3d 1381, 1385 (Fed. Cir.
2004) (“The so-called ‘objective’ criteria must always be
considered and given whatever weight is warranted by the
evidence presented.” (internal citation omitted));
Stratoflex, Inc. 713 F.2d 1530, 1539 (Fed. Cir. 1983) (the
obviousness analysis requires that “all pieces of evidence
on that issue have been fully considered and each has been
given its appropriate weight”).

Judge Newman in dissent in Idenix: "The jury verdict of validity under section 112 is in accordance with law and supported by substantial evidence. "

The outcome of Idenix v. Gilead:

Idenix Pharmaceuticals LLC and Universita Degli
Studi Di Cagliari (collectively, “Idenix”) appeal from the
decision of the U.S. District Court for the District of
Delaware granting judgment as a matter of law (“JMOL”)
against Idenix and finding that U.S. Patent No. 7,608,597
is invalid for lack of enablement. Idenix Pharm. LLC v.
Gilead Scis., Inc., 2018 WL 922125, at *25 (D. Del. Feb. 16,
2018) (“JMOL Opinion”). Gilead Sciences Inc., (“Gilead”)
argues that the patent is also invalid for failure to meet the
written description requirement, and that the district court
erred by failing to grant JMOL on that ground as well. We
affirm as to non-enablement and hold that the patent is
also invalid for lack of written description.

Judge Newman dissented:

I respectfully dissent. The court errs in holding that
the specific narrow claims of the ’597 patent are invalid.
The large number of unclaimed chemical variants in the
specification are not described, not synthesized, and not
tested for antiviral activity. It is incorrect to include these
variants in the claims and then to invalidate the claims because
these variants are not described and not enabled.


reasonable jury could have understood the claims as directed to the nucleosides that are specifically described and
that are shown to have the claimed antiviral activity. A
reasonable jury could have credited the evidence that the
’597 claims are for these specific compounds, not the “billions and billions” of unsynthesized and
unevaluated variants in the specification. It is not disputed that the specific
claimed compounds meet the requirements of 35 U.S.C.
§ 112. The jury verdict of validity must be viewed in light
of the evidence and argument before the jury.
The majority’s holding that validity under section 112
is determined based on whether unclaimed subject matter
is described and enabled, provides a new path of uncertainty and unreliability of the patent grant. I respectfully

The claims define the scope of the invention.
Judge Newman wrote:

My colleagues err in ruling that the claims cover “billions” of variants. The ’597 specification recites a very
large number of substituents for nucleosides that are not
synthesized, not characterized, not evaluated, and not included in the claims. Some of these variants have been
claimed in other patents and applications.1 However, they
are not claimed in the ’597 patent.
My colleagues err in
holding that because other substituents and modifications


The panel majority now discards the jury verdict, stating “the jury was not free to adopt a number lower than the
many, many thousands of configurations identified as
‘principal embodiment[s]’ in the patent itself.” Maj. Op.
at 12 (alteration in original). However, the jury was not
free to adopt an incorrect view of the patent, for almost all
of the embodiments that the specification calls “principal
embodiments” are for Formulas for which no synthesis and
no evaluation data are provided in the ’597 specification.

The patent quality debate re-arising???

Within a post by David W. Jones at The Hill:

Now, patent quality rarely gets the attention it deserves, so Sen. Thom Tillis (R-N.C.) should be commended for addressing it at a hearing this week. It’s the high-tech industry's hope that the hearing makes clear that instead of lowering the bar, we need to apply existing standards more rigorously to improve patent quality.

What is “quality?” It’s simple: Good patents satisfy the requirements of the Patent Act – that the invention be new, disclosed with specificity and clarity, and appropriate subject matter. Bad patents do not and were erroneously issued by the Patent and Trademark Office (PTO).


**Patent quality. "It's simple" ???

Second anniversary of Ingraham/Kelly interview: Robert E. Lee was an honorable man

Two years ago, on October 30, 2017, Laura Ingraham had her debut program with guest, (then) White House Chief of Staff John F. Kelly.
As to the debate over the presence/removal of Confederate monuments, Kelly said:

I think it’s just very, very dangerous and it shows you what, how much of a lack of appreciation of history and what history is. I will tell you that [Confederate general and commander] Robert E. Lee was an honorable man. He was a man that gave up . . . his country to fight for his state, which in 150 years ago was more important than country. It was always loyalty to state first back in those days. Now it’s different today. But the lack of an ability to compromise led to the Civil War, and men and women of good faith on both sides made their stand where their conscience had them make their stand.

There were issues about calling Lee "an honorable man" and with the "lack of ability to compromise" leading to the Civil War.

It is true that "150 years ago [loyalty to state] was more important than country ]to some]." It was so for Robert E. Lee. Lee went with his state when Virginia seceded. Curiously, Lee's loyalty to Virginia came to be adverse to the Confederacy, when Confederate leaders proposed sending some of Lee's troops to the defense of Vicksburg in early 1863. Lee fought this proposal, arguing that attacking Pennsylvania would free up Virginia farmers to get their crops in. Lee valued Virginia over Vicksburg and the Confederate West.

As to compromise, the firebrands of the South started the Civil War. Lincoln, and other Northern politicians, tried all sorts of compromises. Note that Senator William H. Seward and Representative Thomas Corwin introduced the "Corwin Amendment."

As to Ingraham/Kelly:

Separately, this is roughly the fourth anniversary of the confrontation arose between Yale University students and faculty Head of College, Nicholas A. Christakis over an issue about Halloween costumes

As to snowflakes:

As a piece of trivia, the term "snowflake" was used in Civil War era Missouri.

Tuesday, October 29, 2019

The CAFC discusses "wherein" clauses in Alere v. Rembrandt

The outcome of Alere v. Rembrandt:

Alere, Inc., appeals from a final written decision of the
Patent Trial and Appeal Board in an inter partes review
proceeding, upholding certain challenged claims as not unpatentable.
We conclude that the Board correctly construed the disputed “wherein” clause in claim 1 and affirm
that limited portion of the Board’s final written decision.
Because the Board improperly declined to institute review
on certain claims and grounds included in Alere’s petition
and its final written decision did not address those claims
and grounds, we vacate the remaining aspects of the final
written decision and remand for further proceedings.

The judicial standards:

The Administrative Procedure Act (“APA”) at 5 U.S.C.
§ 706(2) guides our review of Board decisions. Dickinson v.
Zurko, 527 U.S. 150, 152, 165 (1999). Under the APA, we
review the Board’s legal determinations de novo and its factual findings
for substantial evidence. ACCO Brands Corp.
v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). As
such, we review the Board’s ultimate determinations on
claim construction de novo and any subsidiary factual findings for substantial evidence.
HTC Corp. v. Cellular
Commc’ns Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir.

As to the "wherein" clause:

We start with the plain language of the claim.1 Phillips
v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). The
disputed “wherein” clause is found in claim 1 and states:
wherein the flow control channel is disposed inside
the sample fluid container with the liquid pervious
side oriented toward the base of the sample fluid
container so that the assay sample fluid, when
added to the container, is delivered to the sample
loading zone of the assay test strip by entry through
a liquid pervious side of the flow control channel
without migration through an intermediate structure . . . .
’019 patent col. 8 ll. 57–64 (emphases added). This clause
includes functional language that informs us of the structural requirements
of the claim. K-2 Corp. v. Salomon S.A.,
191 F.3d 1356, 1363 (Fed. Cir. 1999). The most natural
reading of this claim language shows a functional limitation that simply
requires that in the claimed device, when
the flow control channel is in place (i.e., “disposed inside
the . . . container”), fluid can be “added to the container”
and “delivered to” the loading zone of the assay test strip
without migration through another structure. In other
words, when (1) the flow control channel is in place and (2)
fluid is added to the container, then the fluid is delivered
to the loading zone.


Nothing in the claim language excludes a container
that contains fluid before the flow control channel is disposed inside or imports a temporal limitation on when fluid
must be introduced into the container. As the Board
pointed out, the claim recites a device, not a method—an
important distinction. See IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Thus,
the claim language does not create a process limitation.

Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (stating that “apparatus claims
cover what a device is, not what a device does”). That the
written description includes examples of embodiments
where the flow control channel is placed into fluid already
in the container does not mean that the device disclosed is
incapable of allowing the addition of fluid after the flow
control channel is “disposed inside.” Further, there are no
embodiments that disclose devices without that capability.
Accordingly, nothing in the specification is inconsistent
with the requirement of being able to add fluid to the container once the flow control channel is placed inside.
The Board correctly construed the wherein clause as
creating a functional limitation for structural relationships
of the device. Accordingly, we agree with the Board’s construction of the “wherein” clause found in claim 1(c) as
“requir[ing] a structure that is capable of allowing liquid to
enter the container when the flow control channel is disposed therein and capable of directing this liquid to the
sample loading zone of the assay test strip without the liquid having to migrate through an intermediate structure.”

As to the remand issue:

The parties agree that Alere is entitled to remand under SAS Institute, Inc. v. Iancu, ––– U.S. ––––, 138 S.Ct.
1348, 200 L.Ed.2d 695 (2018) in order for the Board to consider the non-instituted claims and grounds in the petition.
The parties dispute whether we should first reach the merits of the unpatentability challenges for the instituted
claims and grounds. We have previously declined parties’
invitations to address the merits of instituted claims and
grounds before remanding partially instituted proceedings,
recognizing that, “[a]ppellate courts have historically disfavored piecemeal litigation and permitted appeals from
complete and final judgments only.” BioDelivery Scis. Int’l,
Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 1210
(Fed. Cir. 2018) (quoting W.L. Gore & Assocs., Inc. v. Int’l
Med. Prosthetics Research Assocs., Inc., 975 F.2d 858, 861
(Fed. Cir. 1992)). Other panels of this court, however, have
taken a different approach, addressing the merits of the instituted claims and grounds and then remanding for the
Board to consider the non-instituted claims and grounds.
E.g., Medtronic, Inc. v. Barry, 891 F.3d 1368, 1371 n.1 (Fed.
Cir. 2018).
We conclude that the better course of action in this case
is to remand without addressing the merits of the patentability challenges. Here, there are both non-instituted
claims and non-instituted grounds. As Alere points out,
the Board did not institute review on the same claims at
issue in this appeal for four other challenges included in
the petition. The likelihood of having to review the Board’s
patentability determinations for some of the same claims
for different grounds after the Board considers all claims
and grounds included in the petition weighs in favor of
awaiting a “complete and final” decision without further
addressing the merits.