Sunday, May 31, 2009

GM to file bankruptcy 1 Jun 09

From a Bloomberg report:

“GM going through bankruptcy is a very positive thing for the auto industry: They should emerge as a reasonable competitor,” said Len Blum, managing director at investment- banking firm Westwood Capital LLC in New York. “The only thing that’s been holding GM back is labor contracts and relationships with debtors and franchisees. All that should be cleansed in a bankruptcy.”

Also, from Bloomberg:

The filing was a “defining moment in the reinvention of GM,” said Fritz Henderson, president and chief executive officer of the carmaker. “The economic crisis has caused enormous disruption in the auto industry.”

GM listed in its petition as top creditors Wilmington Trust Co., representing bondholders owed $22.8 billion; United Auto Workers, owed $20.6 billion; and Deutsche Bank AG, representing bondholders owed $4.44 billion. The Unofficial GM Dealers Committee, which said it represents more than 6,000 GM dealers in the U.S., filed a notice that it will take part in the bankruptcy litigation.

“This is a step they should have taken more than a year ago, which could have put them in much better shape,” said Stephen Pope, chief global strategist at Cantor Fitzgerald in London.


The automaker was founded in 1908 by William “Billy” Durant, who bought more than 20 car companies before being ousted in a 1920 bailout by Pierre Du Pont and J.P. Morgan.

By the 1960s, GM controlled more than half the U.S. vehicle market. In 2008, it sold only 8.35 million cars worldwide, losing its place as the world’s biggest automaker to Toyota Motor Corp. as customers opted for the Japanese carmaker’s fuel- efficient Corolla and Camry brands instead of GM’s light trucks and Hummers.

Ralph Nader-->

America's manufacturing base will be further eroded, as GM pursues its Grand China Strategy -- increasing manufacturing outside of the United States, and increasingly from China, for import back into the United States. Unanswered questions persist about how GM's valuable operations in China, and unrepatriated profits, will be treated in bankruptcy, or excluded from bankruptcy.


With the company entering bankruptcy, the next challenge will be to ensure that the government exercises its ownership rights to undo and mitigate, to the extent possible, these damages. Among other measures, this should involve revisiting the serious drag-down, concessionary wage terms imposed on the United Auto Workers; demanding a moratorium on GM's outsourcing of production of cars for sale in the United States; and establishing successorship liability for the new GM, so that victims of dangerous and defective GM cars can have their day in court.

***May 31 was the date of the Air France 447 disaster

Yahoo News presents a bit of possibly relevant history of Qantas Flight 72 (recall Dustin Hoffman's line in RainMan?):

Following an investigation of the A330's uncommanded dive, Australian aviation officials, assisted by U.S. and French authorities, blamed a pair of simultaneous failures for the near disaster. The plane has three air data inertial reference units (ADIRUs), which are designed to help the plane's flight-control computer fly the plane safely. The system is intended to eliminate the possibility of electronic error: the flight computer, which is always monitoring the trio, can disregard one ADIRU if it begins relaying information that conflicts with the other two.
But that's not what happened when one of them went awry on October 7 and began sending erroneous data spikes on the plane's angle of attack (AOA) - the angle between its wings and the air flowing over them - to the flight control computer. "For some reason the damn computer disregarded the healthy channels," says Hans Weber, an aviation expert who heads Tecop International, an aviation consulting firm in San Diego. "Instead, it acted upon the information from the rogue channel." The computer, responding to the faulty data, put the plane into a dive. (Read "Is There a Cause for Fear of Flying?")
In its preliminary investigative report, released March 6, the Australian Transport Safety Bureau said Airbus had initially said that it didn't know of any other similar events. But when the same thing happened again, involving a different aircraft on December 27, Airbus combed its computerized flight files and found data fingerprints suggesting similar ADIRU problems had occurred on a total of four flights. One of the earlier instances, in fact, included a September 2006 event on the same plane that entered the uncommanded dive in October (the other three flights had continued safely on). The same VCR-sized ADIRU was to blame in both those cases, although it had supposedly undergone a needed "re-alignment" following the 2006 event. All three planes carried the same brand and model of ADIRU, as do 397 of the 900 330s and 340s in the Airbus fleet.


The Australians' March report concluded that the October dive was due to a series of events that, when combined, was as "close to the worst possible scenario that could arise from the design limitation in the AOA processing algorithm." Airbus also told investigators that this particular mathematical formula for flying the plane is found only on its A330 and A340 models. "Different algorithms were in use on other Airbus types, which were reported to be more robust to AOA spikes," the report said. "The manufacturer advised that AOA spikes matching the above scenario would not have caused a pitch-down event on Airbus aircraft other than an A330 or A340."

IPBiz asks: where's Ralph Nader and unsafe at any speed?

Death of Paul Haney, voice of Gemini and Apollo

Yahoo News reported the death of Paul Haney, who was known as the "voice of NASA's Mission Control" for his live televised reports during the early years of the space program.

Project Mercury flights were accompanied by the voice of John A. "Shorty" Powers .

ArticleOne and Merck's Singulair: the need to cite employee science articles in the IDS

A May 29 WSJ piece begins:

The U.S. Patent and Trademark Office has ordered a re-examination of a key patent for Merck & Co.'s blockbuster Singulair allergy and asthma drug, saying new questions have been raised about its "patentability."

and includes the text:

In April, a firm called Article One Partners LLC filed a request with the Patent Office to re-examine the patent, citing information that wasn't brought to the attention of the patent examiner who reviewed Merck's initial application in the 1990s, including a paper by a Merck scientist.

The grant of the re-exam request illustrates why it is important for companies to cite all relevant scientific publications by employees when they file for patent applications. Here, two papers by one Merck Canada employee (named Young), which were not cited in the patent application of another Merck Canada employee (named Belley), gave traction to the re-exam request of Belley's patent. A patent application (and subsequent patent) of the one employee (Young, on which Belley was co-inventor) WAS CITED in the patent application of Belley; the problem was that the science papers were not.

IPBiz had previously observed:

Globes said that Barclays Capital noted, "Based on testimony offered and the tone of the proceedings, in our view the most likely outcome is that Merck's patent no. 5,565,473 will be upheld should there be no out-of-court settlement (which remains a possibility).

On 27 April 09, re-exam 90/009,432 was filed. The 501 form filed (information disclosure citiation [!] in a patent] included US Patent No. 5,104,882 (to Young) and two science papers by Young (one in "Drugs of the Future" (1988) and one in Advances in (...) Leukotriene Research (1989).

Young is not a named inventor on US 5,565,473, whose inventors are Canadian, with the research arising out of Merck Frosst Canada, Inc. (Kirkland, CANADA). The first named inventor on the '473 patent is Belley.

Young is the first named inventor of US 5,104,882, which ALSO arose out of Merck Frosst Canada, Inc. and includes the inventors Zamboni, Gauthier, and Belley.

One notes that inventor Michel L. Belley is common to both patents.

The '473 patent, at issue in the re-exam, mentioned three different related patent applications: 774414, 741888, and 596887. The application leading to the '473 patent is 08/392,592, filed February 23, 1995, with a priority chain:

This is a continuation of application Ser. No. 07/774,414, now abandoned, filed Oct. 10, 1991, which is a CIP of U.S. Ser. No. 741,888, Aug. 8, 1991, abandoned, which is a CIP of U.S. Ser. No. 596,887, Oct. 12, 1990, now abandoned. [IPBiz notes these ARE the applications cited in related US applications.]

The '882 patent, cited against the '473 patent derives from application 07/527,236, filed May 22, 1990, with a priority chain: This is a CIP of U.S. Ser. No. 356,478, filed 5/24/89, now abandoned, which is a CIP of U.S. Ser. No. 275,160, filed 11/22/88, now abandoned, which is a CIP of U.S. Ser. No. 125,050, filed 11/25/87, now abandoned.

In terms of Article One's handling of the matter, on 27 March 09, a letter went out FROM the USPTO noting that Article One had failed to include a statement pointing out each new question of patentability and thus had not complied with 37 CFR 1.510(b)(1). The USPTO lectured Article One: "It is not sufficient to merely state that the references were not of record in the prior prosecution of the '473 patent." The USPTO illustrated inappropriate language in the Article One request.

The USPTO grant of re-exam on 27 April 09 pertains to claims 1, 7 and 18-22 of the '473 patent. On page 8 of the 27 April 09 mailing, the USPTO notes that the Young '882 patent WAS CITED in the exam of '473 patent but was NOT applied. On page 9, the USPTO notes the 1988 publication of Young was NOT of record in the prosecution of the '473 patent.

Friday, May 29, 2009

Pravda post on Obama: America as Weimar Republic?

A post on titled American capitalism gone with a whimper began with

It must be said, that like the breaking of a great dam, the American decent into Marxism is happening with breath taking speed, against the back drop of a passive, hapless sheeple, excuse me dear reader, I meant people.

and included

The final collapse has come with the election of Barack Obama. His speed in the past three months has been truly impressive. His spending and money printing has been a record setting, not just in America's short history but in the world. If this keeps up for more then another year, and there is no sign that it will not, America at best will resemble the Wiemar [sic] Republic and at worst Zimbabwe.

IPBiz notes that the first president of the Weimar Republic was one Friedrich Ebert. [wikipedia: When the Constituent Assembly met in Weimar in February, 1919, Ebert was chosen to be the first president of the German Republic.]

Innovation and invention, again

IPWatchDog had a post on 9 March 09 titled Change in Patent Office Philosophy Can Lead Recovery which included the text:

What we need is a novel approach to issuing patents. It has always seemed strange to me that we call the patent process a non-adversarial ex parte process. I suppose it is that, but it is hardly a cooperative process. What we need to do first is change the philosophical view of the Patent Office to get everyone on board with the idea that patents should be granted to applicants. Next, an examination process needs to evolve so that examiners are allowed and encouraged at a very early stage to work together with the applicant or the applicant’s representative to locate allowable matter and issue the allowable matter. Essentially, the examiner and the application or applicant’s attorney should work toward finding allowable matter and issuing the patent, much as is required of examiners when inventors represent themselves. By a cooperative examination process that seeks to issue patents we will put exclusive rights more quickly into the hands of innovators, who can then seek investment and build companies that will employ individuals. This will undoubtedly result in the preliminary issuance of narrow patent claims, which could then be expanded upon by continuation after continuation.

As one minor point, allowing the patent places a property right in the hand of the inventor, not the innovator. The inventor may be an innovator (eg, Chester Carlson) or he may not (ironically exemplified by later Xerox employees)

Separately, note that IPWatchDog did NOT include IPBiz in its blog polling, although Quinn did say

I think it is safe to say that the major blogs have been captured on these lists. The only exception may be Just a Patent Examiner, which I will still add to the voting despite not having a ranking.

***Also, seen on a Google search-->

Results 1 - 1 of about 0 for "robert klupacs" finkel. (0.25 seconds)

The Great Canadian Cut-and-Paste Caper

Early in 2009, there was a ripple of irony when it was found that Southern Illinois University [SIU], home of a plagiarist President, had plagiarized text in its anti-plagiarism policy from Indiana University. Now, in May, we have the the great Canadian cut-and-paste caper, wherein the Conference Board of Canada, supposedly an independent research organization, copied without attribution text from the Intellectual Property Alliance, a US lobbying organization, to advocate positions in the area of copyright. (This general plotline reminds one of the Mashelkar saga in India over drug patent policy, with, of course, the added sublime irony of having someone, complaining of copyright violations (Canada as the file-sharing capital of the world), guilty of plagiarism. Canada created a sillier story than India did).

The Canadian story was broken by Michael Geist on 25 May 09 in a post titled The Conference Board of Canada's Deceptive, Plagiarized Digital Economy Report . The post has side-by-side comparisons of original text and copied text, just as the SIU Daily Egyptian had for Poshard. GILLIAN SHAW of the Vancouver Sun has covered the story in Piracy reports scuttled by plagiarism claims.

Nevertheless, IPBiz has to take issue with one point by Geist, expressed in the following text:

That is just the press release - the report itself is even worse as it is largely a copy of the IIPA 2008 Special 301 Report on Canada. Given the lack of attribution in some instances, this work would face possible plagiarism sanctions in almost any academic environment

Academic plagiarism sanctions in the 21st century are largely non-existent. Ask Glenn Poshard at SIU or Laurence Tribe at Harvard. Even Joe Biden, who at Syracuse Law copied five pages of a law review article, merely had to re-take the course.

Separately, of Geist's text -- Even where there is attribution, the chart below demonstrates that the report simply adopts the IIPA positions and language as its own. -- one recalls that Mark Lemley accepts funding from Microsoft and takes Microsoft-favorable positions in law reviews and no one says much.

See also

One commenter to the Vancouver Sun article wrote:

Why is this news story not getting wider attention? Here we have a seemingly well organized conspiracy to influence Canadian law by a group of well funded American corporations. Hello? Does there even exist an independent press in Canada any more?

Hmmm, what would "Richard" think about Lemley's funding from Microsoft?

Thursday, May 28, 2009

Isolated points

There are currently over 100 mentions of wikipedia on IPBiz.

On May 28, IPBiz got a harsh comment about one of them:

The statement "wikipedia has altered entries" indicates a serious misunderstanding of Wikipedia. The transformation you observed in Wikipedia's Joe Biden entry may very well have reflected political bias, but it's the bias of the "editor" who made the change, not of Wikipedia. You can choose to become an "editor" and change it back, something you can accomplish with one click. It is probable that Wikipedia's Joe Biden article has a pro-Democrat bias, but the mechanism is more complicated than you recognize.

There are several levels of response to this.

First, who can rely on text which depends on "what" the last editor did? In this particular case, there is a political spin. If the entry is political in the first place, and subject to further politically-motivated changes, what value is the thing as authority?

Second, at least when Channel 10 "sikahema'd" Vai Sikahema's piece "Rutgers is Wrong," it stayed GONE. If you can't rely on a source to at least approach some "truth," what value is the thing as authority, even a wrong authority?

Third, IPBiz was interested as to Biden's plagiarism (specifically at Syracuse Law), and not pro-Democrat or anti-Democrat thinking. As in point one, if wikipedia turns on politics, and not substance, what value is the thing as authority? The objective reality as to Biden is that Biden did plagiarize at law school and he was never exonerated as to that plagiarism. This event did not adversely affect his later career. If wikipedia can't keep facts on-line, there is a big problem.

[note separately IPBiz post: on the general problem of speaking without regard to consequences, as may have happened to Vai Sikahema speaking about Rutgers is Wrong, and which gives rise to desires to alter/delete internet postings, apart from pure political motivation]

See also

**Separate matter

A while back, Patently-O was pushing the 2009 Intellectual Property Scholars Conference. LBE made a submission but was told: we’ve decided to give priority to scholars with positions on law school faculties.
That kind of approach fosters the in-breeding and group-think mentality that has been a plague to academic IP.

**Separate matter. Blogging trends survey by videojug

Wednesday, May 27, 2009

"We talk and it's gone"

Ken Robertson was talking about broadcasters ripping off the print media in writing:

"Broadcasters are used to this 'we talk and it's gone' mentality, and they get into a habit of taking short cuts."

IP profs sometimes take the "we write and it's gone" approach to scholarship. Lemley/Moore in "Ending Abuse" said Quillen's grant numbers were preferred over Clarke's and then in "Rubber Stamp" that point was treated as "gone."

News Chick on Robertson on attribution:

If the information is common knowledge that a reporter can get from dozens of sources, that's one thing. If broadcasters get information from a newspaper, he says it needs to be attributed. That sounds like a reasonable request.

**See PI Reader Blog, the News Chick who (also) wrote:

When I first started at KIRO radio in 1988, I was the night editor. One of my duties was to go through the papers, (what was then the afternoon Seattle Times and the late edition of the Post-Intelligencer) look for stories we didn't have, and rewrite them in a broadcast style.

I didn't think of it as plagiarism back then, but I didn't like doing it. Now, 21 years wiser, I think it's plagiarism and I don't do it.

One wonders what Glenn Poshard thought of page 54 of his thesis "back then."

What about copying a political speech?

Schatten quoted by Nature on GFP in marmosets

One year after the discoverers of the green fluorescent protein won the Nobel Prize in chemistry ( Japanese-born Osamu Shimomura of the Marine Biological Laboratory in Woods Hole, Massachusetts, Martin Chalfie of Columbia University in New York and Roger Tsien of the University of California, San Diego), other workers (Erika Sasaki and Hideyuki Okano of the Keio University School of Medicine in Japan ) put GFP in marmosets. The name of Gerald Schatten came up:

"The birth of this transgenic marmoset baby is undoubtedly a milestone," stem cell expert Dr. Gerald Schatten, of the University of Pittsburgh School of Medicine, and Shoukhrat Mitalipov, of Oregon Health and Sciences University, wrote in a commentary in Nature.

One recalls Schatten's involvement with fraudster Hwang Woo Suk.


***Separately see Michael Hiltzik's:

Investor-funded research could bring march of science to a standstill


**Of the marmosets:

Gene for glowing

Alexander the Great to Aristotle on publications vs. trade secrets


It would appear that Alexander the Great received from Aristotle not only his doctrines of Morals and of Politics, but also something of those more abstruse and profound theories which these philosophers, by the very names they gave them, professed to reserve for oral communication to the initiated, and did not allow many to become acquainted with. For when he was in Asia, and heard Aristotle had published some treatises of that kind, Alexander wrote to him, using very plain language to him in behalf of philosophy, the following letter -->

Alexander to Aristotle, greeting. You have not done well to publish your books of oral doctrine; for what is there now that we excel others in, if those things which we have been particularly instructed in be laid open to all? For my part, I assure you, I had rather excel others in the knowledge of what is excellent, than in the extent of my power and dominion. Farewell.

IPBiz notes the greatest value to a society of patents (as distinct from trade secrets) IS that they ARE LAID OPEN TO ALL. Alexander understood what happened when knowledge was laid open to all. Patent reformers in the 21st century need to understand the point recognized by Alexander centuries ago.

**Also, from What the Story of the Invention of the
Transistor Teaches Us About 21st Century Patent Practice,
8 J. MARSHALL REV. INTELL. PROP. L. 80 (2008):

The primary benefit to the public of the patent system is the public disclosure of
useful information
.33 In the case of the invention of the transistor, Bell Labs
scientists promptly and accurately disclosed their information, both through
patenting and through scientific publication, so that other scientists could build upon
their work.34

Bruce Alberts wrote in the September 5, 2008 issue of Science on the importance
of having an accurate repository of science articles, which comments apply equally to
the importance of having an accurate repository of issued patents:

The publication of a scientific article is less a way for scientists to earn
recognition and advance their careers than it is an engine of scientific
progress. Science continually advances only because many cycles of
independent testing by different scientists allow new knowledge to be built
with confidence upon old knowledge, thereby creating a repository of
reliable understandings about the world.35

Patents are an engine of scientific progress, just as publications are.36 We want
the information in both patents and publications to be accurate, and we want people
to read them, so that wasteful, duplicative work is avoided.37 The prompt and proper
documentation of the research effort by Bell Labs gave timely information to
scientific peers, and enhanced advancement, rather than duplication, of an important

GM bankruptcy looms

AP reports:


A General Motors Corp. bankruptcy filing seemed inevitable after a rebellion by its bondholders forced it to withdraw on Wednesday a plan to swap bond debt for company stock.

GM has until Monday, June 1 to complete a government-ordered restructuring that includes debt reduction, labor cost cuts and plant closures. But a Chapter 11 reorganization is likely after the company said its offer to exchange $27 billion in unsecured debt for 10 percent of the company's stock had failed. GM has received $19.4 billion in federal loans.


And, where will all the IP go?

Tuesday, May 26, 2009

Sotomayor on IP

One IPBiz reader complained that IPBiz had not commented on the IP decisions of Judge Sotomayor and sent along the following:

Sotomayor SCOTUS case history: Intellectual property
Posted: 06:53 PM ET

From CNN Research Director Robert Yoon

WASHINGTON (CNN) – During Supreme Court nominee Sonia Sotomayor's 17 years as a federal judge, the U.S. Supreme Court has reviewed her decisions on at least eight occasions. CNN has reviewed those cases and has summarized each in a series of posts. The names and citations reflect the cases as they were known when they first came before Sotomayor.
Tasini vs. New York Times, et al (1997), 972 F. Supp. 804: As a district court judge in 1997, Sotomayor heard a case brought by a group of freelance journalists who asserted that various news organizations, including the New York Times, violated copyright laws by reproducing the freelancers' work on electronic databases and archives such as "Lexis/Nexis" without first obtaining their permission. Sotomayor ruled against the freelancers and said that publishers were within their rights as outlined by the 1976 Copyright Act. The appellate court reversed Sotomayor's decision, siding with the freelancers, and the Supreme Court upheld the appellate decision (therefore rejecting Sotomayor's original ruling). Justices Stevens and Breyer dissented, taking Sotomayor's position.

In passing, Justice Breyer is considered an expert on copyright, in part because of a certain law review article he once authored.
YET, on two pivotal cases in copyright (Tasini and Lessig's case), Justice Breyer was in the minority on the Supreme Court.

A different blog states that Sotomayor was "right" on Tasini:

Sotomayor’s opinion was thoughtful and articulate, and, in my view, correct. Unfortunately, the U.S. Court of Appeals for the Second Circuit did not see it that way. The Second Circuit held that the revision right held by creators of a collective work under Section 201(c) does not include the right to republish the collective work in electronic media. This decision was subsequently affirmed 7-2 by the Supreme Court.

That blog also mentioned Specht v. Netscape Communications Corp.

**IPBiz considered the nomination of Sotomayor a no-brainer for Obama. Tough for Republicans to fight AND who else do we know with Princeton undergrad and Ivy law degree?

USPTO director is less foreseeable, NASA counts for more in Obama's eyes.

***From the New York Times, in 1998, on then district Judge Sotomayor -->

Judge Sonia Sotomayor seemed like a trouble-free choice when President Clinton nominated her to an appeals court post a year ago. Hers was an appealing story: a child from the Bronx housing projects who went on to graduate summa cum laude from Princeton and become editor of the Yale Law Journal and then a Federal prosecutor.

Moreover, she had been a trial judge since 1992, when she was named to the bench by the last Republican president, George Bush.

But Republican senators have been blocking Judge Sotomayor's elevation to the appeals court for a highly unusual reason: to make her less likely to be picked by Mr. Clinton for the Supreme Court, senior Republican Congressional aides said in interviews.


''Basically, we think that putting her on the appeals court puts her in the batter's box to be nominated to the Supreme Court,'' said one senior Republican staff aide who spoke on the condition of anonymity. ''If Clinton nominated her it would put several of our senators in a real difficult position.''


''PROFILE: Sonia Sotomayor'' BORN: June 25, 1954. BIRTHPLACE: New York City. EDUCATION: Cardinal Spellman High School, New York City; Princeton University, B.A., 1976; Yale Law School, J.D., 1979. CAREER: Assistant District Attorney, New York County District Attorney's Office, 1979-84; associate and then partner in the New York law firm Pavia & Harcourt, 1984-92; United States District Judge, Southern District of New York, 1992 to the present. FAMILY: Divorced. No children. HOBBIES: Running.

*** The douche-bag case

See NBC Connectict: Sotomayor Ruled in "D-Bag Case"
Ruled teen's blog post created a created "foreseeable risk of substantial disruption"

Recall South Park's Giant Douchebag vs. Turd Sandwich and Biggest Douche in the Universe

Twitter and Drudge

A post at the Miami Herald Twitter poses risks for papers begins with Drudge:

The end began in January 1998, when Matt Drudge broke the story on his blog that linked President Clinton amorously to a young White House intern. At least that's how his scoop is remembered, as a signature moment in the growing dominance of online news. Except that's not what happened. Drudge didn't break the intern story because he didn't have it. What he reported was that Newsweek magazine had the story but wouldn't publish it.

In the beginning, there was a great deal of denial, especially by George S. Then there was the blue dress, which story WAS broken by Drudge (yes?).

See also -->

And the blogs that pick apart every article that the [Washington]Post produces are a good thing, said Len Downie, because they "keep the paper honest" and, even if their commentary isn't positive, bring people to the site.

"Blogs are not competitors and not problems," he said. "Instead we have a very interesting symbiotic relationship. Our largest driver of traffic is Matt Drudge."

The Herald post ended with -->

Today's networking technologies are a huge leap forward in connectedness, but they can seduce journalists into swapping one bubble for another kind of enclosure. The real danger of Twitter isn't its power to undermine newsroom authority. Let it.

The danger is that Twitter will keep reporters off the streets and in front of their screens, that it will further skew journalism toward seeking out, listening to and serving the young, the hip, the technically sophisticated, the well-off -- in short, the better-connected. The people who aren't being heard now aren't sending out tweets.

The last racists in Europe, patent people?

The IAM blog had some intense comments about quotes attributed to SAS's Kalliopi Spyridaki which appeared in the article Is the demand for patents stifling reform? by Paul Meller in Science Business:

“We file only in the US, for reasons including the cost of filing and litigation in Europe as well as the complexity of the system here. Within the EU patent reform, it will be important to consider mechanisms to ensure high-quality patents,” said Kalliopi Spyridaki, EU affairs manager at SAS.

with IAM stating:

Software patent protection is hard to get in Europe, but it is not impossible. To rule it out on the basis of expense is ridiculous. First of all because however much it costs to obtain a patent via the EPO, or national patent offices in Europe, that amount is insignificant when compared to the potential loss of market share a decent patent could guard against. As for the point about enforcement, it is just not true. Even in Europe's most expensive jurisdiction, the UK, it is very unlikely to cost more than £1 million ($1.5 million) to litigate a case. In Germany, France and Italy you are looking at perhaps $200,000 to $300,000 at the most. In the US, the latest I saw was that on average getting a first instance decision in a big case will give you little change from $5million. In other words, SAS could litigate a case in the UK, France, Germany and Italy, probably throw in the Nordic countries and the Netherlands, and still spend less than it would cost to litigate in the United States.

The reference to -- high-quality patents -- evokes memories of Cecil Quillen. Of course, Quillen said Europe had higher quality patents than did the US.

Another intense quote in the Science Business article-->

[Bruno] Vandermeulen went further, suggesting that the inertia shows that Europe’s patents community comprises “the last racists in Europe”.

The bottom of the Science Business article states:

We record all IP addresses on the TalkBack message boards which may be required by the authorities in case of defamatory or abusive comment.

Does that apply to comments IN articles in Science Business?

Separately, a commenter to IAM had an alternative explanation for US companies avoiding filing cases in Europe:

Of course, the idiosincrasies of the US patent system do not help. For instance, one reason for Americans not to file abroad is that, in principle, they'll have to file at the USPTO Information Disclosure Statements about all the prior art cited in foreign search reports

The commenter also stated: It isn't just Europe, please note that she says: "We file only in the US". This has very little to do with prosecution (never mind litigation!) costs abroad, and everything to do with ignorance and a certain fear of the unknown. Unfortunately, it is quite a common attitude among many American companies and quite a few patent attorneys. In fact, I fear many American decision-makers even believe that a US patent is enforceable worldwide.

IPBiz questions the accuracy of those later comments.

Rectangular Roomba?

Published US patent application 20080276407 has an abstract

An autonomous coverage robot includes a chassis having forward and rearward portions and a drive system carried by the chassis. The forward portion of the chassis defines a substantially rectangular shape. The robot includes a cleaning assembly mounted on the forward portion of the chassis and a bin disposed adjacent the cleaning assembly and configured to receive debris agitated by the cleaning assembly. A bin cover is pivotally attached to a lower portion of the chassis and configured to rotate between a first, closed position providing closure of an opening defined by the bin and a second, open position providing access to the bin opening. The robot includes a body attached to the chassis and a handle disposed on an upper portion of the body. A bin cover release is actuatable from substantially near the handle.

and a first claim

An autonomous coverage robot comprising:a chassis having forward and rearward portions, the forward portion of the chassis defining a substantially rectangular shape; a drive system carried by the chassis and configured to maneuver the robot over a cleaning surface;a cleaning assembly mounted on the forward portion of the chassis;a bin disposed adjacent the cleaning assembly and configured to receive debris agitated by the cleaning assembly;a bin cover pivotally attached to a lower portion of the chassis and configured to rotate between a first, closed position providing closure of an opening defined by the bin and a second, open position providing access to the bin opening;a body attached to the chassis;a handle disposed on an upper portion of the body; anda bin cover release configured to control movement of the bin cover between its first and second positions, the bin cover release being actuatable from substantially near the handle.

Of related applications:

[0001]This U.S. patent application claims priority under 35 U.S.C. .sctn.119(e) to U.S. Provisional Application 60/938,699, filed on May 17, 2007 and U.S. Provisional Application 60/917,065, filed on May 9, 2007. The disclosures of the prior applications are considered part of the disclosure of this application and are hereby incorporated by reference in their entireties.

[0002]The contents of U.S. Pre-grant Publications 2003/0192144, 2006/0200281, and 2007/0016328, and also U.S. Pat. Nos. 6,748,297 and 6,883,201 are hereby incorporated herein by reference in their entireties.

The case was done by FISH & RICHARDSON PC. The assignee is IROBOT CORPORATION.

Don't forget application 20080109126 to the lawn care robot:

A robot lawnmower includes a body and a drive system carried by the body and configured to maneuver the robot across a lawn. The robot also includes a grass cutter and a swath edge detector, both carried by the body. The swath edge detector is configured to detect a swath edge between cut and uncut grass while the drive system maneuvers the robot across the lawn while following a detected swath edge. The swath edge detector includes a calibrator that monitors uncut grass for calibration of the swath edge detector. In some examples, the calibrator comprises a second swath edge detector.

Monday, May 25, 2009

Artistic license

The JMRI webpage discusses the "model train" case in a post titled: JMRI Defense: Articles by Others. Although IPBiz was "on" this case back in June 2006, the only mention of this on JMRI is the text: Another article by a patent attorney discussed aspects of the case in June.

The JMRI webpage does mention a law review article by Robert W. Gomulkiewicz, Conditions and Covenants in License Contracts: Tales from a Test of the Artistic License, 17 Tex. Intell. Prop. L. J. 335 (2009).

See also

Patent dispute over model train control system illustrates many patent reform issues

Kanzius obtains US 7,510,555

A search of the USPTO database on 25 May 09 revealed one patent issued to John Kanzius, US 7,510,555 issued on March 31, 2009. The first claim states:

A method for killing or damaging target cells in a patient, comprising:

introducing into the patient RF absorption enhancers capable of selectively binding to the target cells and further capable of generating sufficient heat to kill or damage the bound target cells by heat generated solely by the application of an RF field generated by an RF signal between a transmission head and a reception head that is different from the transmission head;

arranging the transmission and reception heads on opposite sides of a portion of the patient for treatment; and

irradiating the portion of the patient between the transmission and reception heads containing RF absorption enhancers with an RF field to kill or damage the target cells from the heat generated by the RF absorption enhancers.

Claim 67 states: The method according to any of claims 1-10, 22-24, 44, 46-50, 62 and 63, wherein the RF signal comprises a signal having a frequency component at one of about 13.56 MHz and about 27.12 MHz for heating the RF absorption enhancers.

The related application section states: This application claims priority to, and the benefits of, provisional application Ser. No.: 60/569,348 filed on May 7, 2004, which is entitled System and Method For RF-Induced Hyperthermia, and which is incorporated herein by reference. This application is also a continuation in part of and claims priority to non-provisional application Ser. No.: 10/969,477 filed on Oct. 20, 2004, which is also entitled System and Method for RF-Induced Hyperthermia, which is currently pending, and which is incorporated herein by reference. This application is also related to U.S. patent application Ser. No. 11/050,478, filed herewith and entitled Systems and Methods for Combined RF-Induced Hyperthermia and Radioimmunotherapy, which is currently pending, and related to U.S. patent application Ser. No. 11/050,481, filed herewith and entitled Systems and Methods for RF-Induced Hyperthermia Using Biological Cells and Nanoparticles as RF Enhancer Carriers, which is currently pending, both of which are incorporated herein by reference.

See also

8 March 09 post titled
Kanzius IP concerns patent applications, not issued patents
, which is herewith updated to acknowledge the '555 to sole inventor Kanzius (now deceased)

article by Jennifer Stacy: Kanzius cancer work continues: The latest steps toward a cure

Timex loses in Paragon case

An assertion of infringement by Timex of claims of Paragon's US 6,736,759 got back on track, as the CAFC vacated the judgment of noninfringement by Judge Michael R. Barrett and remanded for further proceedings consistent with this opinion.

Of disavowal of claim scope:

“[A] patentee may limit the meaning of a claim term by making a clear and
unmistakable disavowal of scope during prosecution.” Cohesive Techs., Inc. v. Waters
Corp., 543 F.3d 1351, 1361 (Fed. Cir. 2008) (quoting Computer Docking Station Corp.
v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008)). By amending the claims to require
a separate data acquisition unit and display unit, and by remarking that this
distinguished the “unitary structure” of Root, the applicants clearly and unmistakably
disavowed a single structure that encompassed an electronic positioning device, a
physiological monitor, and a display unit. The claimed exercise monitoring system must
be at least two structures. However, there is nothing in the amendment or the
applicants’ comments that clearly and unmistakably disavows a monitoring system with
more than two structures. Thus, there was no clear and unmistakable disavowal of a
“data acquisition unit” made up of physically separate structures.

Of consistency of a term used in different claims:

“We apply a ‘presumption that the same terms appearing in
different portions of the claims should be given the same meaning unless it is clear from
the specification and prosecution history that the terms have different meanings at
different portions of the claims.’” PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1366
(Fed. Cir. 2007) (quoting Fin Control Sys. Pty., Ltd. v. OAM, Inc., 265 F.3d 1311, 1318
(Fed. Cir. 2001)); see also, e.g., Phillips, 415 F.3d at 1314 (“Because claim terms are
normally used consistently throughout the patent, the usage of a term in one claim can
often illuminate the meaning of the same term in other claims.”).

Of apparatus claims:

The problem with construing “displaying real-time data” as used in the claims of
the ’759 patent to preclude “contextually meaningful delay” is that such a construction
injects a use limitation into a claim written in structural terms. “[A]pparatus claims cover
what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb,
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).


See, e.g., Catalina Mktg. Int’l, Inc. v.,
Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (holding that “a patent grants the right to
exclude others from making, using, selling, offering to sale, or importing the claimed
apparatus or composition for any use of that apparatus or composition” (emphasis
added)); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine
is entitled to the benefit of all the uses to which it can be put, no matter whether he had
conceived the idea of the use or not.”). Construing a non-functional term in an
apparatus claim in a way that makes direct infringement turn on the use to which an
accused apparatus is later put confuses rather than clarifies, frustrates the ability of both
the patentee and potential infringers to ascertain the propriety of particular activities,
and is inconsistent with the notice function central to the patent system. See, e.g. PSC
Computer Prods., Inc. v. Foxconn Int’l, Inc., 355 F.3d 1353, 1361 (Fed. Cir. 2004)
(emphasizing “the important public notice function of patents—the mechanism whereby
the public learns which innovations are the subjects of the claimed invention, and which
are in the public domain”); see also Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1255 (Fed. Cir. 2008) (emphasizing that claim language should “provide a clear-
cut indication of the scope of subject matter embraced by the claim” and noting “that the
patent drafter is in the best position to resolve the ambiguity in the patent claims”).

Epistar gets to challenge validity of Philips' US 5,008,718

Epistar v. ITC gets into issues with covenants not to challenge patent validity, and
also of issues of disavowal of claim scope.

Of covenants not to challenge the validity of the patent:

On August 30, 2001, Lumileds and UEC settled the litigation by negotiating and
executing a Settlement Agreement and Mutual Release, Stipulated Consent Judgment,
and License Agreement. Lumileds granted UEC a license to use the ’718 patent for the
manufacture, sale, and importation of LEDs with absorbing substrates, in exchange for
an up–front fee and royalty payments. UEC also covenanted, on behalf of itself and its
successors, not to challenge the ’718 patent’s validity.

The rub:

Later, from January 2003 through July 2004, Lumileds asserted the ’718 patent
against Epistar in district court. See Lumileds Lighting U.X., LLC v. Epistar Corp., No.
C–03–1130–CW (N.D. Cal. Jan. 10, 2003). Settling the litigation, Lumileds granted
Epistar a license to use the ’718 patent in the manufacture of absorbing–substrate LEDs
in exchange for a substantial lump–sum payment (nearly twice that in the UEC
agreement), but no ongoing royalty requirement. With respect to the licensed products,
Epistar promised not to challenge the validity of the ’718 patent, but retained the right to
challenge its validity if Lumileds sued Epistar for infringement in the future. The
agreement was silent with respect to non–licensed products, preserving Epistar’s
statutory right to contest validity of the ’718 patent when asserted against those


The complaint originally named two respondents, UEC and Epistar. On
December 30, 2005, UEC merged into Epistar, with UEC ceasing to exist as a separate

The issue-->

Lumileds moved in early 2006 for a summary determination that Epistar could not
assert the invalidity of the ’718 patent in defense of its Epistar–UEC LED products.
Lumileds argued that the UEC merger bound Epistar to the UEC agreement with
Lumileds, prohibiting a challenge of invalidity of the ’718 patent against UEC products.
Lumileds also claimed that Epistar’s merger with UEC prevented a validity challenge on
Epistar’s own products as well.

The CAFC's take-->

This court finds that Epistar’s right to contest validity of the ’718 patent with
respect to its products is governed by its own separate agreement with Lumileds.
Epistar (as successor to UEC) may not contest the validity of the ’718 patent with
respect to the UEC products that it inherited in the merger. Black letter contract law
states that the assignment of a contract to an assignee, such as from UEC to Epistar,
only changes the obligated party, not the scope of the obligation. See, e.g., Arthur L.
Corbin, Corbin on Contracts § 884, at 488 n.13 (1993) (An “assignor has no power, by
assignment or otherwise, to change in any material way the performance to be rendered
by the obligor.”).

Preserving the rights that Epistar separately secured by contract does not in any
respect permit UEC to escape its obligations. When Lumileds settled with Epistar, the
settlement agreement addressed only the licensed products and thereby preserved
Epistar’s unrestricted right to contest the validity of the patent in other contexts. This
court cannot allow Lumileds to escape its agreements due to a merger that does not
disturb its contract with Epistar. In other words, Lumileds cannot fortuitously gain rights
against Epistar that it could not secure pre–merger. Thus, the settlement agreement
binds the parties, as understood and intended by them, according to its ordinary terms.
See Beck, 260 Cal. Rptr. at 241–42; see also Restatement (Second) of Contracts §
201(1) (1981); id., § 202(5) (“Wherever reasonable, the manifestations of intention of
the parties to a promise or agreement are interpreted as consistent with each other and
with any relevant course of performance, course of dealing, or usage of trade.”).

To paraphrase this court in International Nutrition Co. v. Horphag Research, Ltd.,
Epistar’s acquisition of UEC does not have the effect of limiting Epistar’s rights that are
unrelated to the product lines it acquired from UEC. 220 F.3d 1325, 1329 (Fed. Cir.
2000). Accordingly, this court overturns the Commission’s final determination that
Epistar is estopped from challenging validity of the ’718 patent when asserted against
its own products, separate from the UEC–Lumileds settlement agreement.

On disavowal of claim scope:

To prevail, Epistar must establish the inventors “demonstrate[d] an intent to
deviate from the ordinary and accustomed meaning of a claim term by including in the
specification expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325
(Fed. Cir. 2002).

LizardTech was cited:

In LizardTech, lnc. v. Earth Resource Mapping, lnc., this court held that where
two steps (or structures) are “entirely different concepts and procedures” and identified
as separate steps in the claims, no skilled artisan could reasonably construe them as a
single element. 424 F.3d 1336, 1342–43 (Fed. Cir. 2005) (excluding the “altogether
distinct process of taking a DWT [discrete wavelet transform]” from the scope of the
claim term “maintaining updated sums of DWT coefficients”).

Micro Chemical was cited:

For example, in Micro Chemical, Inc. v. Great Plains Chemical Co., the patentee
explained in the background section of the patent that a prior art device using the
“weigh dump method” was too slow and too inaccurate. 194 F.3d 1250, 1260 (Fed. Cir.
1999). The patent did not assert that the “weigh dump method” itself was the reason for
the inaccuracies or slowness. Id. This court ruled that the patentee did not disavow the
use of the “weigh dump method,” even if the claim were construed as a step–plus–
function claim under 35 U.S.C. § 112, ¶ 6. Micro Chem., 194 F.3d at 1259–60.


By the same token, this court also recognizes that disparaging
comments alone do not necessarily show a manifest or express disavowal of the
criticized subject matter. See, e.g., Ventana Med. Sys., Inc. v. Biogenex Labs., Inc.,
473 F.3d 1173, 1180–81 (Fed. Cir. 2006) (finding that general comments distinguishing
the prior art were not sufficient to limit the term “dispensing” to “direct dispensing”); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1365–67 (Fed. Cir. 2004) (finding
descriptions of the deficiencies of using mainframe computers did not exclude
mainframes from the term “user computer” because the specification as a whole did not
express a clear disavowal of that subject matter).

The Kyocera case on LEO's was discussed

Epistar filed a Motion for Temporary Remand and Order to Modify Limited
Exclusion Order in this court on April 6, 2009. Epistar moved this court to temporarily
remand this case to the ITC with instructions that the ITC modify its LEO to comport
with this court’s decision in Kyocera Wireless Corp. v. International Trade Commission,
545 F.3d 1340 (Fed. Cir. 2008). This court in Kyocera Wireless held that the ITC lacks
statutory authority to issue a LEO that excludes imported products by entities not
named as respondents before the ITC. 545 F.3d at 1345, 1357–58. Epistar did not
raise this issue in its briefs, nor did the court hear argument on this issue at the June 6,
2008, hearing.

CAFC finds license inherently to include "have made" rights

Corebrace went after Star for having a third party make a product
under the license of Corebrace to Star. Corebrace lost on a 12(b)(6)
at district court and at the CAFC.

The key line by the CAFC: The right to “make, use, and sell” a product inherently
includes the right to have it made by a third party, absent a clear indication of intent to
the contrary.

The precedent:

In Carey, the Court of Claims, one of our predecessor courts, whose decisions
bind us, see South Corp. v. United States, 690 F.2d 1368, 1370-71 (Fed. Cir. 1982),
held that a license to “produce, use, and sell” a product inherently includes the right to
have it made by a third party. The court stated that a license to produce, use, and sell
“is not restricted to production by the licensee personally or use by him personally or
sales by him personally. It permits him to employ others to assist him in the production,
and in the use and in the sale of the invention. Nor need he take any personal part in
the production.” Carey, 326 F.2d at 979.

The CoreBrace argument was rejected:

CoreBrace argues that the reservation of rights clause in the License precludes
an interpretation that the License includes “have made” rights. According to CoreBrace,
because the License reserves to CoreBrace “[r]ights not expressly granted to [Star],” the
License could not have implicitly granted “have made” rights to Star. We disagree.
Because the right to “make, use, and sell” a product inherently includes the right to have
it made, “have made” rights are included in the License and not excluded by the
reservation of rights clause. A grant of a right to “make, use, and sell” a product,
without more, inherently includes a right to have a third party make the product. A clear
intent shown in a contract to exclude “have made” rights can negate what would
otherwise be inherent. In this case, however, CoreBrace has failed to show a clear
intent to exclude “have made” rights from the License. In fact, other provisions of the
License appear to contemplate that Star may have the product made by a third party.
For example, the License provides that Star owns any improvements to the technology
“by a third party whose services have been contracted by [Star].”


Most importantly, nothing in the License indicates an intent to exclude “have
made” rights. CoreBrace argues that the License’s provision requiring Star to indemnify
CoreBrace for all claims “arising out of [Star’s] manufacture” demonstrates an intent that
no third party manufacture the products. According to CoreBrace, if “have made” rights
had been intended, the License would have required indemnification for all claims
arising out of third parties’ manufacture as well. However, that vague reference does
not show a clear intent to exclude “have made” rights, especially in light of the
provisions indicating that third parties might be involved in supplying goods and
improving the technology in order for Star to exercise its rights under the License.

**UPDATE on 26 June 09

Comment of LBE on post on licensing on IPFinance-->

Of --"Party A grants to Party B an [exclusive] licence with respect to the use of the Intellectual Property --, in the background presumption in the US, the co-owner would have a right to license [see Lucent v. Microsoft] but not a right as an exclusive licensor. Some agreements speak of party A granting to party B an OPTION for an exclusive license. Some universities take the position that they can ONLY offer an option for an exclusive license, although that is not dictated by Bayh-Dole.

The initial post had the text:

This week's contract construction issue involves joint ownership. Joint ownership of IP rights is one of those relationships to which parties often gravitate, even if legal counsel takes a dim view. In that context, consider the following two provisions, which in various related forms, I have encountered from time to time.

First, the parties state that they "agree they shall jointly own all of the intellectual property rights resulting from their mutual performance of the Project."

Second, the parties further agree that "Party A grants to Party B an [exclusive] licence with respect to the use of the Intellectual Property rights created during their mutual performance of the Project [for defined purposes of use]."

The obvious question is why are there two clauses apparently covering the same subject matter, one establishing joint ownership, while the other purports to grant a licence from one party to the other? If the IP is jointly owned then, subject to any particular local laws, each party is permitted to do what it likes with respect to these rights.

CAFC grants mandamus, transfer of venue in Sanofi case

In the case IN RE GENENTECH, INC. and BIOGEN IDEC INC., the petitioners sought, and obtained, a writ of mandamus to move the patent case from ED Texas to ND California. The opposing party, Sanofi-Aventis Deutschland GmbH, was represented by McDonnell Boehnen Hulbert & Berghoff LLP, of Chicago.

The CAFC mentioned the TS Tech case:

The use of
mandamus to correct a patently erroneous denial of transfer pursuant to § 1404(a) has
been approved under the rulings of the Fifth Circuit in appropriate circumstances. See
In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008) (issuing mandamus to
transfer patent case out of the Eastern District of Texas where all identified witnesses
and evidence were located in alternative venue); In re Volkswagen of Am., Inc., 545
F.3d 304 (5th Cir. 2008) (en banc) (same).

The CAFC discussed inconvenience to witnesses:

Because it generally
becomes more inconvenient and costly for witnesses to attend trial the further they are
away from home, the Fifth Circuit established the “100-mile” rule, which requires that
“[w]hen the distance between an existing venue for trial of a matter and a proposed
venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses
increases in direct relationship to the additional distance to be traveled.” Id. (quotation
marks omitted).

Of the European witnesses:
However, the “100-mile” rule should not be rigidly applied such
that it creates the result presented here. The witnesses from Europe will be required to travel a significant
distance no matter where they testify.

Of electronic storage of documents:

Finally, the district
court minimized the inconvenience of requiring the petitioners to transport their
documents by noting that “[t]he notion that the physical location of some relevant
documents should play a substantial role in the venue analysis is somewhat antiquated
in the era of electronic storage and transmission.” Sanofi-Aventis, slip op. at 11.
Finally, we note that the court’s antiquated era argument was
essentially rejected in Volkswagen because it would render this factor superfluous. 545
F.3d at 316.

Of 1404:

There is no requirement under § 1404(a) that a
transferee court have jurisdiction over the plaintiff or that there be sufficient minimum
contacts with the plaintiff; there is only a requirement that the transferee court have
jurisdiction over the defendants in the transferred complaint. See Hoffman v. Blaski,
363 U.S. 335, 343-44 (1960) (power of district court to transfer case under § 1404(a)
depends on whether the transferee district was one in which the action “might have
been brought” by the plaintiff);

Of caseload statistics:

Genentech suggests that the most recent Federal Judicial
Caseload Statistics indicate that cases in the Northern District of
California reach disposition more quickly than cases in the
Eastern District of Texas – 9.7 months from filing to disposition
in the Eastern District as opposed to 7.4 months in the Northern
District. While this assertion is true when all cases are factored
in, the disposition time in cases which actually go to trial is lower
in the Eastern District – 18.4 months – than in the Northern
District – 25.5 months. Sanofi also points to a 2008 patent
litigation study, which found that in the twenty most active patent
districts in the country, the fifth-ranked Eastern District had a
much faster median time-to-trial interval – 1.79 years – than the
sixteenth-ranked Northern District – 2.87 years.

Siegel calls for NY Times to remove Dowd

ROBERT S. SIEGEL writes on the Dowd plagiarism business:

Slate’s Jack Shafer noted that Dowd handled herself well during the incident by responding promptly and openly with an explanation that was not an excuse. He adds that her next step should be a column telling readers how this whole thing happened.

IPBiz questions whether Dowd's saying she got the previously blog-published material "from a friend" is a defense. Not crediting the friend vs. not crediting the blog, the issue remains taking something without crediting the source. Is Dowd's column merely a collection of "what was heard from friends"?

The present Dowd situation evokes the earlier Laurence Tribe matter. Although Tribe acknowledged plagiarism happened, the tricky wording of Tribe's apology led some to suspect it was a ghost writer who had committed the plagiarism, and Tribe's real sin was placing his name on material he had not written. Some suggested Elena Kagan may have been involved.

An odd twist on ghost-writing happened in the recent Ward Churchill business at Colorado University. To make his own work appear more credible, Churchill wrote an article, under someone ELSE'S name, praising Churchill's work. This in turn is somewhat like drug companies hiring writers to write articles praising drugs, which articles appear in press under the by-line of professors who did not in fact write the article.

Siegel wrote of the New York Times:

The New York Times remains one of the world’s most widely read and most influential newspapers. The newspaper was always a liberal leaning paper. Journalists tend toward activist views and the Times size and power always made its left leaning seem bigger than at other papers. In recent years however, the paper has leaned significantly more left causing it to lose credibility with a large segment of the American public. In that the NYTimes news coverage has a depth and breadth unequaled by any other news outlet in the world, this loss of credibility is a growing problem for our nation and the world. We need a well informed electorate to strengthen our Constitution.

The text -- Journalists tend toward activist views -- evokes the coverage of patent reform by many journalists, who have given the pro-reform position inordinate coverage. The piece by Eli Kintisch in Science comes to mind, but even the Wall Street Journal has been extraordinarily one-sided in its reporting.

Siegel calls for Dowd's ouster:

But the United States of America needs the New York Times to take a strong stand for its own credibility. Dowd needs to go.

That is about as likely as Harvard Law telling Laurence Tribe to leave.

Of the Dowd matter, see also

Patent fight in birth control area

AP has a story which includes the text:

Conceptus ( CPTS ) claims Hologic ( HOLX )'s plan to sell the Adiana birth control system will infringe on the patent for Conceptus' Essure system. Conceptus is asking the U.S. District Court for the Northern District of California for an injunction against Adiana sales in the U.S.

In an infringement action, the PRODUCT of Hologic would be compared to the CLAIMS of the Conceptus patent. The product of Conceptus has nothing to do with the analysis.

More output from independent inventors in the bad economy

Alana Semuels has a piece in the LATimes titled: Recession is giving inventors time to fine-tune their ideas. The first sentence has an allusion to Chester Carlson, the inventor of xerography: If we have the Great Depression to thank for inventions such as the Twinkie, Monopoly and the photocopier. One notes from the time of Carlson's first patent to the Xerox 914 in 1959, about 20 years of time elapsed. We have Carlson's persistence to thank for the photocopier.

We have a line in the article that is Dickens translated to the 21st century: That's because some self-starters among the ranks of the unemployed, sick of trudging off to job fairs and sending out resumes, are starting businesses to finally launch that invention they've been mulling over for years.

Inventors Alliance gets a mention: "This fluctuation happens every time there's a dip in the economy," said Andrew Krauss, president of the Silicon Valley-based Inventors Alliance, which holds monthly meetings at which inventors share ideas and learn how to patent products. "But it's doubled lately -- I've never seen so many people at our meetings."

The diminishing number of patent applications is noted: The number of patent and trademark filings in 2009 is lagging 2% behind last year because major corporations, which generate the vast majority, are cutting back, according to a spokeswoman from the U.S. Patent and Trademark Office.

But in one indication of increased activity, membership in the United Inventors Assn., a nonprofit education and support group, has grown 20% in the last six months, said its executive director, Patrick Raymond.

Inventors in states including Michigan and New York have created six local clubs in the last year, Raymond said.

"Interest in inventing is high, and our membership is growing in the middle of a recession," he said.

Invention is portrayed as preferable to flipping houses: Dina Beauvais of Phoenix spent 22 years buying, fixing up and selling houses. But after flipping one in August, she decided that the market was imploding and vowed to try her hand at inventing.

Sunday, May 24, 2009

Michel on Jaffe/Lerner

The 271Blog has excerpts from a past speech by Judge Michel which include:

And Professors Jaffee and Lerner, who are very highly qualified economists, wrote in their book, which many of you read, that the courts often give double damages and actually cited a case that I was involved in as an example of double damages, and they said that I gave both lost profit damage and reasonable royalty damages to the winning patentee. Well, yeah, the Court did. Of course it did, because it was for different products and different time ranges, two different forms of damages, but they weren't -- but that's not double payment. That's paying once, so there's a lot of misunderstanding out there.

Airplane toilet queue patent: it's back!

In a 20 May 09 post titled Flushing away Bilski, Aaron R. Feigelson discusses U.S. Patent No. 7.535.367, Airplane lavatory reservation system, which evokes memories of IBM's6,329,919.

Feigelson links to an EE Times article about a talk given by Jon Dudas in San Jose [Speaking at an IP symposium here on Wednesday (April 16, 2008) ] and suggests Dudas may have been referring to the '367 when Dudas talked about an application the USPTO “recently received for what was claimed to be a better way to stand in line while waiting to use an airplane toilet” as an illustration of declining application quality. Sounds like Dudas may have been referring to this very patent, rather than IBM’s. HOWEVER, IPBiz notes that in a talk in Hollywood, CA in March 2008, Dudas linked the toilet queue patent to a "top 10" company, suggesting he did have IBM in mind. [see Ars Technica]

Nevertheless, the '367 is indeed another toilet queue patent, and, yes, IBM's (now withdrawn) US '919 IS CITED by the '367.

The background section of the '367 describes the problem:

It is a common occurrence in airplanes for passengers to stand and wait outside airplane's lavatories for long periods of time. This practice is common in long distance international flights where most passengers need to use the lavatory at one time or another. This is especially problematic in the morning hours when many passengers need to use lavatory at the same time. Many passengers find standing outside a lavatory to be an unpleasant and embarrassing experience. This is especially true for female passengers and young children. It is problematic for children as they are not accustomed to standing and waiting for long periods to use the lavatory. In addition, passengers standing outside a lavatory cause inconvenience to passengers occupying seats that are in close proximity to the lavatory. This practice invades the privacy and personal space of these passengers. Sometimes, passengers standing outside a lavatory engage in loud conversations, which is very disturbing to the passengers occupying seats in proximity to the lavatory. Sometimes, passengers waiting outside a lavatory block the view of television screen for passenger sitting behind them. On occasion, arguments and even fights occur among passengers over the issue of who is first in line to use a lavatory. This truly is an uncivilized way to use lavatory in a technologically advanced machine such as an airplane. As a result, seats close to the lavatories are undesired and are often shunned by passengers at the time of seat allocation. At times, when a large number of passengers stand and wait outside a lavatory, it becomes a safety issue on two accounts; 1) passengers do not have seat belts on during this time and are hence vulnerable to falling and sustaining injuries in case of turbulence; and 2) if a large number of passengers stand on one side of the airplane, there is a potential for causing unequal distribution of weight and consequently endanger the stability of the airplane.

Here's the solution, as given in claim 1:

A lavatory reservation system comprising of; 1) assigning lavatory set to user among multiple lavatories in a facility according to user location in the facility; 2) lavatory reservation request input means; 3) lavatory door lock having means to restrict access to the lavatory based on set of rules; operatively connected to controller; and having input means; 4) a controller; 5) a monitoring device coupled to the controller and adapted to monitor occupancy of a lavatory; 6) computer program code operative with the controller enabling the controller to: receive a request to use lavatory from user; enter user in queue in assigned lavatory set according to set of rules; assign access code for lavatory reservation request; notify user of lavatory status; automatically operate lavatory door lock from second unlocked to first locked position upon lavatory door changing from first open to second closed position subsequent to entry of valid access code into corresponding lavatory door input means.

See also

Dudas, IBM's toilet queue patent, and patent quality

Patent reform and IBM's questionable patents

Patent officials run amok?

One finds the text --patent officials run amok-- within an editorial at the San Francisco Chronicle on the Myriad case.

The editorial views gravity as an abstract idea, as distinct from a law of nature:

Traditionally, the Supreme Court has held that no one is allowed to patent products of nature (like apples or gold), laws of nature (like E=MC squared) or abstract ideas (like gravity). Human genes would obviously fall under both the first and second categories, but "the patent office has been chipping away at that law for the last 20 or 30 years," Hansen said.

See also


San Francisco Chronicle Thinks Gravity is an Idea

Saturday, May 23, 2009

USPTO examiners told to allow more cases?

A post on 22 May at IPWatchDog titled Patent Examiners Told To Issue Patents includes the text: The patent examiner told Mark that about 2 weeks ago management told the examining corps that they need to start issuing patents. This may seem strange to those who are not familiar with how the Patent Office has been operating, but this is sadly important news to report. IPBiz notes that allowance rate has always had a political component. We can thank Cecil Quillen and his fanciful assertion of a 97% grant rate for provoking Jon Dudas into the recent rejection frenzy, which now may be abating because of economic reasons.

Elsewhere, on 21 May, IAM noted the continued absence of a USPTO director:

It is now three weeks and counting since Gary Locke, the US Commerce Secretary, stated that he had made the choice as to who would be the next Director and that the only thing that stood in the way of revealing his identity was the vetting procedure. Well, it must be one heck of a vetting procedure is all I can say.

Back at the Obama ranch, there was time to name Charles Bolden, a four-time space shuttle astronaut and retired Marine general, as administrator of NASA. No time for patents, though.

Separately, IAM noted the following:

More than 20% of companies in North America plan to decrease their spending on innovation during 2009, according to a recently published survey conducted by the Boston Consulting Group. In Innovation 2009 - Making Hard Decisions in the Downturn, BCG also reports that globally innovation is seen as a top three priority by 64% of responding companies. That is down from 72% in 2006.

I know that it is wrong to equate spending on innovation with patent filings, but I can't help wondering whether this means that the recent declines in the number of applications we have seen in many patent offices - including the USPTO - is set to continue for some time yet, with the US perhaps being among the most affected. Some of the findings of a recent study of Fortune 1000 companies undertaken by BTI Consulting may also indicate that this is a possibility. Having spoken to senior corporate counsel at 370 companies, BTI reports that legal budgets are set to increase in the second half of 2009, after 12 months of decline. However, the picture is not so rosy when it comes to IP. In contrast to areas such as regulatory and bankruptcy/restructuring, general IP spending is forecast to go down by 4.4% during the rest of this year, while the amount dedicated to IP litigation is set to fall by over 7.5%.

IPBiz suggests IAM recall "who" the authors of "plagiarize with pride" were.

Separately, 271 Blog went to Patent Docs for some insight on Tafas v. Dudas:

Prof. Duffy, noting his background in administrative law, suggested that Ms. Knowles would not be happy if the Supreme Court ever got their hands on the case. When Ms. Knowles stated that she thought the Supreme Court would provide a more favorable ruling for GSK than the Federal Circuit did, Prof. Duffy jokingly advised her to hire some new attorneys. When asked about his Supreme Court prediction after the session, Prof. Duffy indicated that the Supreme Court (where he once clerked) was not as familiar with patent law as it was with administrative law, and therefore, the Court would likely defer to the USPTO with respect to its interpretation of 35 U.S.C. § 120, and thus find the rule limiting continuations to be consistent with that section.

IPBiz suggests the plain language of 120 would not get the USPTO past step 1 of the Chevron two-step. Further, right now, the USPTO needs all the applications they can get. Why appeal?

Finally, and separately, a "where are they now" moment. Back on 26 March 2008, MATTHEW L. WALD of the New York Times ran a puff piece titled For Carbon Emissions, a Goal of Less Than Zero which included the text:

More audacious is a plan by two professors at Columbia University to suck carbon dioxide out of the air, using waste heat from a solar plant, which has no smokestack.

Peter M. Eisenberger, a professor of earth and environmental sciences whose résumé includes positions at Exxon and other major companies, and Graciela Chichilnisky, an economist and mathematician, have proposed a “global thermostat strategy,” which would adapt a chemical process for capturing carbon dioxide from smokestacks.

Ordinarily, the process requires a large amount of energy. But the professors noted that McMahan L. Gray, a scientist at an Energy Department laboratory, has modified the process so that the relatively small amount of waste heat from a solar-generating plant could do the job. They estimate that they could remove about five pounds of carbon dioxide per kilowatt-hour of electricity produced. (A coal plant emits about two pounds when it makes that much electricity.)

Fast forward to fall 2008 to see how the corresponding PCT [PCT/US2008/064311; WO 2008/144708] of the "audacious plan" fared with a USPTO prior art search.
[see the last page of the publication.] For all Quillen's squawking about bad searches by the USPTO, and low quality patents, the USPTO did a lot better than the New York Times.

As one other footnote to the Wald article, in the old days, when a person to be featured in an article worked for Bell Labs and for Exxon (as Eisenberger did), an author would emphasize the Bell Labs connection. Here, Wald omitted Bell Labs. Wald also omitted that Eisenberger is actually a physicist by training and experience.

**Totally separately, note

Best PCs Under $500 which includes:

You're a casual computer user, and you really don't need to spend any more than $500 on a PC.

Tessera wins at ITC

Forbes, through AP, reported:

Shares of Tessera Technologies Inc. soared Thursday, 21 May 09, a day after a patent dispute ruling that could give a substantial boost to the company's earnings.

One of the losers at the ITC was Qualcomm, who had been lionized by Jaffe and Lerner in Innovation and Its Discontents. The AP noted:

Mosesmann said Qualcomm has indicated it will license its packaging products from rival Amkor Technology Inc. ( AMKR - news - people ), based in Chandler, Ariz., rather than Tessera.

On "nonpartisan" organizations

The californiastemcellreport noted of the proposed NIH guidelines on stem cells:

Citing the “perverse effect” of proposed NIH stem cell research rules, the Consumer Watchdog group today [20 May 09] called for changes in the guidelines along the lines recommended by the California stem cell agency and the Interstate Alliance on Stem Cell Research.

The press release of Consumer Watchdog contains the assertion: Consumer Watchdog, formerly the Foundation for Taxpayer and Consumer Rights is a nonprofit, nonpartisan orgainzation with offices in Washington, DC and Santa Monica, CA.

In a post on californiastemcellreport from 29 Oct 08:

In the case of John M. Simpson, stem cell project director for Consumer Watchdog of Santa Monica, Ca., he takes two weeks vacation and goes to work in the Obama campaign in Missouri, one of the battleground states in this year's historic presidential election.


We asked Simpson why he is taking his vacation time to work the long and arduous hours involved in the final stage of a presidential campaign.

He said the election is pivotal, a time to unite the country and move away from "Republican rule that is dominated by the interests of big business."

California seemed to be comfortably in the Obama camp. So Simpson volunteered for out-of-state work. He attended a two-day "Camp Obama" training session in October. They put him in touch with the folks in Missouri.

In addition to scrounging up bunks for volunteers, Simpson is setting up speaking engagements for Obama surrogates, lugging furniture and sweeping floors. "No job too big, no job too small" is Simpson's credo. He reported, however, that he can't keep up with the 20-something, paid staffers who put in 20 hour days. He said he can only do 12 hours.

Separately, one remembers Simpson's ill-fated challenge to the WARF stem cell patents, wherein the references he and PubPat brought up were found by the patent office not enabled and the submitted declarations conclusionary. The assertion of "nonpartisan" would seem to be conclusionary too.

Blogspot blogger accused of plagiarism

The Toledo Blade reports that Former Lucas County (Ohio) Commissioner Maggie Thurber, who writes on, resigned as columnist for the Toledo Free Press after being accused of plagiarism in a column about Memorial Day.

The issue was one of plagiarism from the internet. The Blade noted:

The weekly paper was on the newsstands Friday, and Ms. Thurber's column had several paragraphs that were almost word for word what was on Internet sites of the American Legion Auxiliary and the History Channel. Ms. Thurber did not credit either in her column.

Early last evening, this editor's note was all that appeared under the headline and byline for Ms. Thurber's column on the Free Press Web site: "Toledo Free Press takes any accusation of plagiarism seriously. Pending investigation, this article has been removed from our Web site and its author is under indefinite suspension."

In a country having a vice-president who is an admitted plagiarist (Syracuse Law incident), one wonders who really does take plagiarism seriously. Yes, newspapers say they do, but the reality of Biden, Poshard, Tribe, and Kearns-Goodwin suggest others do not.

***Of the blog-->

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Grant plagiarist Chu sues Texas Southern University

IPBiz had earlier discussed the plagiarism of a research grant application by physics prof Rambis Chu. Now, Chu has taken a leaf out of the San Filippo notebook and sued the university over due process issues. The Houston Chronicle reported:

Chu, who was granted tenure as an associate professor of physics last spring, is accused of submitting a grant proposal to the U.S. Army Research Laboratory, copied from one written previously by a physicist at the University of Houston.

TSU declined the $800,000 research grant last summer after discovering the similarity to earlier work by UH physicist John Miller, in whose lab Chu worked while completing post-doctoral studies. Miller has said that Chu asked for a copy of the proposal to use as a guide when he applied for his own grants on other projects.

Both proposals deal with detecting biological warfare agents inside sealed containers. Miller’s was funded by the Defense Advance Research Projects Agency in 2002 and 2003. Chu’s proposal was an almost verbatim copy of Miller’s, according to copies of the proposals provided to the Houston Chronicle.

Andrews contends in the lawsuit that Ohia erred in firing Chu for violating the school’s policy on scientific misconduct because no such policy was adopted by the school’s governing board.

Some of the comments to the Chronicle post are of interest.

This was for a grant and not an academic paper. Most grants don't require an original idea, but are written to obtain funds for a project or research. I am not condoning Chu, but there is not enough information to determine if he violated any rules.


Wow, what a defense; "can't fire me for cheating because you have no policy for cheating so it was ok for me to cheat"

Earlier IPBiz post:
Texas professor accused of plagiarizing a grant proposal

Friday, May 22, 2009

Dowd's use of ghostwriters?

Maureen Dowd used material from a blog without attribution to ANYONE, and later said she got it from a friend.

The CSMonitor via Politico on the Dowd plagiarism business:

But that raised other issues about whether it’s common practice for Dowd to use entire passages from friends in her column without attribution. And when I sent a follow-up email about this to Dowd, she didn’t respond. …

CEO of Heifer International Foundation resigns over plagiarism investigation

Details are sketchy but the plagiarism investigation may involve the book Circle of Giving: Donors' Stories of Wisdom, which was published in 2006 by Eudora Press LLC of Little Rock.

The Arkansas News wrote:

Heifer Foundation replaced its president and chief executive 21 May 09 amid an investigation into allegations of copyright infringement and plagiarism.

Janet K. Ginn agreed to step down as chief officer of the fundraising arm of Heifer International, the foundation said, to be replaced by Chief Financial Officer Ardyth Neill.

Microsoft loses $200M jury verdict in ED Texas

On 20 May 09, a jury in ED Texas found that Microsoft had infringed claims of I4i's U.S. Patent No. 5,787,499.

ComputerWorld noted:

The technology that the court said infringes on the i4i patent enables custom XML tagging in Word 2003 and Word 2007, used mainly for people creating and modifying templates for Word documents.


The ruling is the second patent ruling to go against Microsoft in as many months. In April, Microsoft was ordered to pay $388 million to Uniloc, a company that makes antipiracy tools.

See also Microsoft Ordered To Pay $200 Million For Patent Infringement

Thursday, May 21, 2009

Who gets fired first, older or younger people?

In a piece titled With Jobs Scarce, Age Becomes an Issue , Dana Mattioli suggests that younger workers, not older workers, may bear the brunt of reductions-in-force during the current economic downturn. Various lawyers are quoted:

Age-discrimination lawsuits brought by older workers can cost more than the salary of the worker who was laid off and can hurt the company's reputation, according to Andria Ryan, partner at Atlanta law firm Fisher & Phillips LLP.

"Younger people, in general are a lot less of a risk [for lawsuits] when you do a reduction in force," says Ms. Ryan. While most states protect employees 40 and older from age discrimination, only a handful of jurisdictions extend this protection to employees as young as 18, she says.

As an initial point, the "cost" of a worker is a lot more than the worker's salary. However, the comparison of the cost of the lawsuit to the cost of the salary was of interest. Of the "company's reputation," people have short memories. For example, Exxon Corporate Research Labs terminated half its research scientists in 1986. The event was scarcely noted in the press, and did nothing to prevent Exxon from hiring workers later. One related event was that many of the terminated employees tried to obtain a job offered by a different Exxon company, and the scramblings about that "wired" job make interesting reading.

Refer to In the Matter of Exxon Chemical Company (on behalf of Dickakian), 87-INA-615 AND see On Gold-Plating Patents, which article noted:

Through a post on the internet [], I became aware on March 2, 2001 of a Department of Labor/Board of Alien Labor Certification case in 1987 peripherally involving me. The case for denying employer’s application for alien labor certification is far stronger than indicated, because of omission of numerous facts. [see “You can’t know it when you can’t see it,” p. 22, IPT (April 2001)]

In that particular case, a large U.S. corporation had terminated 50% of its scientists in its basic research laboratory, but denied several of them the opportunity to compete with a foreign worker for a single position in one of its applied laboratories.

[The story of Charles Scouten, who interviewed for the position, is of great interest, not only on its merits alone, but also to theme asserted by Mattioli.]

Returning to the concept of reputation, a certain patent law firm once rescinded ALL of its summer offers, and there was some discussion of that incident at the time. But who remembers now? Does any reader of IPBiz recall which patent firm it was?

Mattioli also wrote:

While younger workers tend to earn the lowest salaries, making them the least-expensive workers to retain, companies are becoming wary of laying off older, better-paid workers. In fact, Gerald Maatman, co-chairman of the class-action litigation practice at Seyfarth Shaw LLP, which represents employers, says he has been fielding more inquiries about laying off younger workers than in years past, especially from companies in states like New Jersey and Michigan that have laws to protect workers as young as 18. Age-discrimination lawsuits brought by older workers can cost more than the salary of the worker who was laid off and can hurt the company's reputation, according to Andria Ryan, partner at Atlanta law firm Fisher & Phillips LLP.

"Younger people, in general are a lot less of a risk [for lawsuits] when you do a reduction in force," says Ms. Ryan. While most states protect employees 40 and older from age discrimination, only a handful of jurisdictions extend this protection to employees as young as 18, she says.

"Companies don't like [layoffs by seniority], but [they're] also the easiest to defend," says Gerald Hathaway, co-chairman of the business-restructuring practice group with employment law firm Littler Mendelson. "If you have a bona fide seniority system it's a defense for any type of discrimination," according to the law, he adds.


Svetlana Gelman, 24, worked in the marketing department of a law firm until December when she was laid off. She feels strongly that her age and the fact that she doesn't have a family to support put her at greater risk before the layoff. Ms. Gelman says she was competing head-to-head with another employee with a child, who was hired a few months after Ms. Gelman and often would use her sacrifices as a parent to tout her dedication to the firm. "The person was very tactical, she would bring the child in, spoke about him all the time and would say things like 'My child is sick but I'm still here,' " says Ms. Gelman.

And as work became more scarce and layoffs loomed, Ms. Gelman says she was let go while her colleague remained, despite the fact that Ms. Gelman earned less and often worked longer hours because of her co-worker's child-care responsibilities.

IPBiz notes that Andria Ryan, partner at Atlanta law firm Fisher & Phillips LLP got plugged TWICE in the article.

Thursday, May 14, 2009

Meet the new obviousness, same as the old obviousness?

Teva, represented by Kenyon & Kenyon, lost its appeal from a decision of Judge Farnan (D. Del.) in Procter & Gamble v. Teva over patents relating to the compound risedronate, the active ingredient of P&G’s osteoporosis drug Actonel®.

The case involved allegations of obviousness. The CAFC wrote:

A party seeking to invalidate a patent based on obviousness
must demonstrate “by clear and convincing evidence that a skilled artisan would have
been motivated to combine the teachings of the prior art references to achieve the
claimed invention, and that the skilled artisan would have had a reasonable expectation
of success in doing so.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir.
2007). Clear and convincing evidence places in the fact finder “an abiding conviction
that the truth of [the] factual contentions are highly probable.” Colorado v. New Mexico,
467 U.S. 310, 316 (1984) (quotation marks omitted).

Thus, there is invocation of reasonable expectation of success, not merely
"obvious to try."

TSM seems alive and well:

Accordingly, under KSR, “it remains necessary to identify
some reason that would have led a chemist to modify a known compound in a particular
manner to establish prima facie obviousness of a new claimed compound.” Takeda
Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007).

The use of unexpected results arises:

If a patent challenger makes a prima facie showing of obviousness, the owner
may rebut based on “unexpected results” by demonstrating “that the claimed invention
exhibits some superior property or advantage that a person of ordinary skill in the
relevant art would have found surprising or unexpected.” In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995).

The concept of lead compound:

An obviousness argument based on structural similarity between claimed and
prior art compounds “clearly depends on a preliminary finding that one of ordinary skill
in the art would have selected [the prior art compound] as a lead compound.” Takeda,
492 F.3d at 1359; see also Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353,
1359 (Fed. Cir. 2008) (stating that “post-KSR, a prima facie case of obviousness for a
chemical compound still, in general, begins with the reasoned identification of a lead
compound” in the prior art). Teva argues that the ‘406 patent identifies 2-pyr EHDP as
the most promising molecule for the inhibition of bone resorption. The trial court
disagreed and concluded from the evidence that a person of ordinary skill in the art
would not have identified 2-pyr EHDP as a lead compound for the treatment of

Of structural similarities:

The question of obviousness “often turns on the structural similarities and
differences between the claimed compound and the prior art compound[].” Eisai Co.
Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353, 1356-57 (Fed. Cir. 2008); see also
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008) (“Precedent
establishes the analytical procedure whereby a close structural similarity between a new
chemical compound and prior art compounds is generally deemed to create a prima
facie case of obviousness . . . .”); In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997)
(“Structural relationships often provide the requisite motivation to modify known
compounds to obtain new compounds.”); In re Payne, 606 F.2d 303, 313-15 (CCPA
1979) (discussing the presumption of obviousness based on close structural similarity).
In this case, risedronate and 2-pyr EHDP are positional isomers; they each contain the
same atoms arranged in different ways.

Of flexible TSM:

“In keeping with the flexible nature of the obviousness inquiry, the
requisite motivation [to modify] can come from any number of sources.” Eisai, 533 F.3d
at 1357 (citation omitted). Thus, in addition to structural similarity between the
compounds, a prima facie case of obviousness may be shown by “adequate support in
the prior art” for the change in structure. In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir.
1985). As we noted in Takeda:
A known compound may suggest its homolog, analog, or isomer because
such compounds often have similar properties and therefore chemists of
ordinary skill would ordinarily contemplate making them to try to obtain
compounds with improved properties. . . . [However,] it remains necessary
to identify some reason that would have led a chemist to modify a known
compound in a particular manner to establish prima facie obviousness of a
new claimed compound.

492 F.3d at 1356-57 (citation omitted).

Teva failed TSM:

In light of the Supreme Court’s
instruction in KSR, the Federal Circuit has stated that, “[t]o the extent an art is
unpredictable, as the chemical arts often are, KSR’s focus on [] ‘identified, predictable
solutions’ may present a difficult hurdle because potential solutions are less likely to be
genuinely predictable.” Eisai, 533 F.3d 1353, 1359 (quoting KSR, 127 S. Ct. at 1742).
The district court found that Teva failed to clear that hurdle, establishing insufficient
motivation for a person of ordinary skill to synthesize and test risedronate.

Teva failed "reasonable expectation of success":

Additionally, there was an insufficient showing that a person of ordinary skill in
the art would have had a “reasonable expectation of success” in synthesizing and
testing risedronate. PharmaStem, 491 F.3d at 1360. In KSR, the Supreme Court
stated that when an obvious modification “leads to the anticipated success,” the
invention is likely the product of ordinary skill and is obvious under 35 U.S.C. § 103.
127 S. Ct. at 1742. “[O]bviousness cannot be avoided simply by a showing of some
degree of unpredictability in the art so long as there was a reasonable probability of
success.” Pfizer, 480 F.3d at 1364 (citing In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir.
1985)). Here, the district court’s findings indicate that there was no reasonable
expectation in 1985 that risedronate would be a successful compound.

[Yes, Corkill is quoted.]

Routine testing arises:

Cases following KSR have considered whether a given molecular modification
would have been carried out as part of routine testing. See, e.g., Takeda, 492 F.3d at

When a person of ordinary skill is faced
with “a finite number of identified, predictable solutions” to a problem and pursues “the
known options within his or her technical grasp,” the resulting discovery “is likely the
product not of innovation but of ordinary skill and common sense.” KSR, 127 S. Ct. at
1742. So too, “[g]ranting patent protection to advances that would occur in the ordinary
course without real innovation retards progress.” Id. at 1741. In other cases, though,
researchers can only “vary all parameters or try each of numerous possible choices until
one possibly arrive[s] at a successful result, where the prior art [gives] either no
indication of which parameters [are] critical or no direction as to which of many possible
choices is likely to be successful.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
In such cases, “courts should not succumb to hindsight claims of obviousness.” In re
Kubin, __ F.3d __, No. 2008-1184, slip op. at 14 (Fed. Cir. Apr. 3, 2009).
patents are not barred just because it was obvious “to explore a new technology or
general approach that seemed to be a promising field of experimentation, where the
prior art gave only general guidance as to the particular form of the claimed invention or
how to achieve it.” In re O’Farrell, 853 F.2d at 903.