Monday, May 31, 2010

DMass ruling in Aranesp case

The issues in the district court in Massachusetts were:

First, the Plaintiffs claim that the Defendants used various types of kickbacks to induce providers to purchase Aranesp, a drug manufactured by Amgen intended for treatment of anemia associated with chronic kidney disease and chemotherapy. One such kickback took the form of "excess overfill," i.e., dosages of liquid Aranesp that Amgen included in its single-dose vials, which were in excess of the amount necessary to withdraw the labeled dosage or the amount recommended by the United States Pharmacoepia ("USP"). This excess overfill was akin to a built-in free sample for which the Defendants encouraged providers all over the country to bill, even when the extra Aranesp was either never administered or was administered in medically unnecessary cases. The free overfill created the potential for providers to profit from excess reimbursement and constituted an illegal kickback.

The Plaintiffs also allege that the Defendants gave kickbacks to providers in the form of sham consulting agreements, all-expense paid retreats, free services, and price concessions. Amgen funded these kickbacks by paying monies to INN, disguised as Group Purchasing Organization ("GPO") administrative fees. INN and ASD would then pass such monies to providers as various forms of kickbacks. The Defendants' provision of all such kickbacks caused providers falsely to certify that they were in compliance with federal and state anti-kickback statutes when seeking reimbursement, and caused federal and state governments to pay claims they otherwise would not have paid.

Second, the Plaintiffs claim that Amgen reported an inflated Average Sales Price ("ASP") for Aranesp to the Medicare and Medicaid programs. The federal and state governments base the reimbursement rate for a particular drug on a pharmaceutical company's reported ASP. Although companies are not required to discount bona fide fees (such as GPO administrative fees) in their ASP calculation, they are required to discount price concessions given to customers. The fees Amgen paid to INN and ASD did not constitute bona fide fees and should have been discounted from Aranesp's ASP because they were passed through to providers as price concessions. Amgen failed to discount the price concessions, thereby causing federal and state governments to overpay for Aranesp claims.

Third, the Plaintiffs claim that the Defendants conspired to violate federal and state False Claims Acts by agreeing to engage in the above fraudulent conduct with an intent to cause false claims to be presented to the government.

The court found:

To the extent Count I of Relator's Third Amended Complaint is based on (1) kickbacks in forms other than the overfill scheme as against Defendant Amgen, (2) the pass-through administrative fee scheme as against all Defendants, and (3) ASP inflation as against all Defendants, it is DISMISSED because such claims are barred by the first-to-file rule and this deprives the Court of jurisdiction over these claims.

Relevant law:

In United States ex rel. Duxbury v. Ortho Biotech Prods., 579 F.3d 13 (1st Cir. 2009), the First Circuit followed the trend of other circuits and held that the first-to-file rule bars "`a later allegation [if it] states all the essential facts of a previously-filed claim' or `the same elements of a fraud described in an earlier suit.'" 579 F.3d at 32 (quoting United States ex rel. LaCorte v. SmithKline Beecham Clinical Labs., Inc., 149 F.3d 227, 232-33 (3d Cir. 1998)). Under this essential facts standard, "§ 3730(b)(5) can still bar a later claim, even if that claim incorporates somewhat different details." Id. (internal quotation marks omitted).

Previous IPBiz post:

IP rights in sounds

In its Almanac feature on 30 May 2010, CBS Sunday Morning noted aspects of the life of Mel Blanc [ May 30, 1908 – July 10, 1989]. One thing that wasn't noted was Blanc's break-out insistence on receiving credit for his voice roles. In a craft wherein the product is a sound, and the makers of the sound were in some sense fungible, Blanc acted to protect his talents by insisting on on-screen credit for his work.

Though the actual intellectual property might be owned by someone other than Blanc, there were many trademark lines associated with Blanc characters:

Bugs Bunny: "What's up, doc?"

Tweety-Pie: "I Tawt I Taw a Puddy Tat"

Porky Pig: "That's All Folks" [which appears on Blanc's tombstone]

In terms of "single source" in trademark law, the famous laugh of Woody Woodpecker was originally done for a character Happy Rabbit (the precursor of Bugs Bunny). When Blanc got an exclusive contract with Warner Brothers, he no longer did Woody Woodpecker (Lantz/Universal) and the laugh stayed with Woody, not with Blanc.

One can have a trademark in a sound, as for example NBC rights in its signature chimes.

***On a matter related to cartoons, recall the lines in the episode of The Simpsons titled
The Day the Violence Died -->

Animation is built on plagiarism! If it weren't for someone plagiarizing The Honeymooners, we wouldn't have The Flintstones. If someone hadn't ripped off Sergeant Bilko, there'd be no Top Cat. Huckleberry Hound, Chief Wiggum, Yogi Bear? Hah! Andy Griffith, Edward G. Robinson, Art Carney."

And the memorable line: You take away our right to steal ideas, where are they going to come from?”

***Also, recall William S. Burroughs, and Naked Lunch and the “cut-up method.". Curiously, the Burroughs of the cut-up method was the grandson of William Seward Burroughs I, an inventor of an adding machine (US patents 388,116 to 388,110), for whom the Burroughs Corporation was named. Burroughs became part of Unisys.

Cross-reference: comment by "S. Burroughs" on post When plagiarism inspires creativity

Sunday, May 30, 2010

At a Taco Bell in Hamilton, NJ

In the real world, the "lobby" of a Taco Bell closes BEFORE the drive-thru. But this is Hamilton, New Jersey.

Right now, Taco Bell is pushing the "$2 Meal Deal." IPBiz had earlier discussed IP issues with Subway's $5 footlong. See

The saga of the $5 footlong: lessons for IP people?
. In the time between Nov. 2009 to May 2010, we've gone from $5 to $2 deals. [An article from Nation's Restaurant News referred to the "Subway Effect": Researchers say consumers’ devotion to discounted meals may be a long lingering byproduct of the economic downturn. A recent study by AlixPartners LP found that the number of consumers who expect to pay $5 or less for a meal — what researchers dubbed the “Subway Effect” — has grown significantly post-recession.]

Taco Bell does seek innovation:

The price tag undercuts most other value meal combos available at fast food restaurants. According to Nation's Restaurant News, combination meals at other quick-service restaurants are typically $3 to $5.

"Taco Bell is setting out to make big changes to big things and our brand promise with $2 Meal Deal," David Ovens, chief marketing officer, said in a statement. "We want to change the way consumers can access value menus by introducing a new and substantially better deal, especially when it comes to a meal."

Taco Bell said a study found that many consumers thought combo meal deals were "too pricey and have lost their relevance." It said that drinks, especially, were seen as too expensive.

from Taco Bell rolls out temporary $2 Meal Deal

UPDATE. Sept. 9, 2010.

It appears that the $2 meal deals are vanishing. Within the local NJ area, the "meal" is still around but priced at $2.49 or $2.99.

Also, on burgers, Consumer Reports Ranks McDonald's Hamburger America's Worst

The Shake Shack

America's Test Kitchen was popularizing burgers from the Shake Shack, illustrating with a film visit to Madison Square Park, and the long lines of customers.

For non-New Yorkers, Madison Square Park is located at 23rd Street, between 5th and Broadway, and is no where near Madison Square Garden. Related to Civil War themes, troops used to quell the draft riots in New York City in 1863 were located in Madison Square Park. Related to electric lighting, in 1880, Brush Electric Light Company provided lighting to the Square. A renovation of the park was completed in 2001 and the Shake Shack opened for business in 2004.

One thing ATK did not mention was a report from slashfood in 2006:

If you find yourself in the Southeast corner of Madison Square Park in New York City, you might have seen a line snaking back and forth and around corners. This would have been the line for Shake Shack, a tiny joint that serves up burgers, fries and shakes that has an almost cult-like following.
However, you might not see that line anymore, as Eater reports that the restaurant has received a score of a whopping 140 points and 15 violations in its July health inspection. According to Gawker, that makes Shake Shack the second dirtiest place to eat in New York.
Sure, we understand bad equipment, perhaps a faulty thermometer in keeping food at the right temperature, but cross contamination? In a place that serves meat? Ugh. But nothing beats vermin infestation. You could grab a latte at Starbucks, a burger from Shake Shack, and get your complete recommended daily intake of bugs in one meal.

ATK did give a do-it-yourself guide for burgers:

Flat meat (sirloin tip) and short rib meat is the combo for America's Test Kitchen "best burger." Salt added only after grinding. Thin griddled crispy crust after cooking in skillet.
With them, toasted potato rolls.

Of fries, Yukon gold cut into 1/4 by 1/4" fry strips. Peanut oil. Potatos into cold oil. Then 15 minute boil.
Guy Crosby discussed the science.
Water in potato: free water, adsorbed water, and bound water. Bound water was stated to be water of crystallization. The more water evaporated, the more oil absorbed.
A plot of % oil absorbed vs. time was shown.
In ATK recipe, the temperature only reaches 300F.
As to the science, the proposition that oil "replaces" water in cooking was presented as established fact, tho it is less than
obvious that a higher molecular weight hydrophobic molecule (oil) would "replace" either adsorbed or bound water. Adsorbed or bound water might leave the potato on prolonged treatment above 212 F but oil isn't going to those sites.

Oil is absorbed by the potato during frying. For French fries, the oil content is 10-15%, which is less than the 33 to 38% for (higher surface area) potato chips. During deep fat frying, the oil changes and the potato changes, all of which was ignored during ATK, which emphasized "oil replacing water."

One thing one might want to contemplate is generation of acrylamide.

See French fries with less than 100 µg/kg acrylamide. A collaboration between cooks and analysts

In an earlier post, IPBiz noted the passing of Edwin Traisman, who invented the McDonalds process for preparing frozen French Fries. Contemplate text from US 3649305, (which cited Traisman's US3050404) which has more useful information than found on ATK:

Of the size of the fries: In accordance with this invention, potatoes are held in storage under conventional, normal accepted conditions so as not to accumulate excessive amounts of sugar therein. They are then peeled, trimmed, sorted, and cut into french fry sized strips of about three-sixteenths inch to nine-sixteenths inch in cross section.

Of temperature: The strips are then partially deep fat fried for from about 30 seconds to about 90 seconds in an oil bath at a temperature of from about 300° to about 400° F

The patent mentions sugar and starch issues: The strips are then thoroughly washed to remove the free starch remaining on the surface caused by the rupturing of the potato cells in the cutting process. If desired, the sugar content of the potato strips may be adjusted by well-known means at this point in the process.

The utility of the patent: The final product resembles french fried potatoes prepared directly from fresh potatoes in quality, color, texture, and most importantly, in flavor and odor.

Cross references:

Chemical reactions of deep fat frying of foods

New determination method of amylose content in potato starch

US 3,937,608

United States Patent Application 20010055637

***Of the everything's better in New York theme, from Lamar Odom of the Lakers:

To Odom, of course, there is nothing bigger in basketball than wearing a Lakers uniform and following in the footsteps of such names as West, Baylor, Goodrich, Abdul-Jabbar, Johnson and O’Neal. Getting to live in sunny, celebrity-filled Los Angeles isn’t bad, either.

“We got a lot of good things going for us in L.A.,” Odom said. “Playing for the Lakers is unlike playing for any other team in the world. It’s almost like being a Yankee.

**UPDATE on Shake Shack, 12 July 2010

Burger lovers rejoice! Minichain Shake Shack opens in Times Square

It's at W. 44th St. and Eighth Ave.

Plagiarism and worse

During the plagiarism episode with SIU president Glenn Poshard, part of the defense was that proper procedures for footnoting weren't known at the time of Poshard's thesis. Flash back more than 200 years, and look at the defense of a snagged plagiarist. From a review by MARK BUSHNELL of an account by Ennis Duling on the plagiarist Thomas Anburey who wrote about the battle of Hubbardton during the Revolutionary War on uly 7, 1777-->

That was just the beginning. Another English publication, The Critical Review, found more purloined prose and stated that "we can pronounce this work, in its most essential parts, to be an ill-digested plagiarism from general Burgoyne's Narrative" and other contemporary sources. That Anburey's plagiarism was caught so quickly (in a time long before Google searches) suggests just how blatant it must have been.

Despite his apologies that they were "the rapid effusions of a confessedly inexperienced Writer," Anburey's brazen borrowing helps prove that he didn't write the letters during the period they describe. Indeed, works from which Anburey plagiarized were written as late as 1787.

And, of simply wrong things:

Duling might have left Anburey alone if his account had remained obscure. Unfortunately, some of his fabrications have been picked up as fact, even by some noted historians, and repeated. Once a lie gets into the historical record, it can be hard to remove.

Hmm, recall the idea that the inventors of the transistor foresaw only hearing aid applications? Gary Boone as inventor of the transistor?

**As one bit of trivia

The battle of Hubbarton is the only Revolutionary battle fought in present-day Vermont. The battle of Bennington (August 16, 1777) was actually fought in Walloomsac, New York.

**Background of the battle of Hubbarton

On 5 July 1777, Americans under Arthur St. Clair evacuated Fort Ticonderoga, and marched toward Hubbardton (in what is now Vermont). In 1778, St. Clair was court-martialed for the loss of the fort, but was cleared.

Readers of IPBiz may recall the discussion of St. Clair in another context: St. Clair commanded US forces in 1791 in "the Battle of the Wabash," the greatest defeat of the American army by Native Americans in history with some 623 American soldiers killed in action as opposed to about 50 enemy dead. That loss is roughly three times more dead than suffered by Custer at Little Big Horn in 1876.

Upper St. Clair Township near Pittsburgh is named for St. Clair.

***As one bit of trivia, "Rolling Rock" beer which once came from Latrobe, PA, also near Pittsburgh, has been brewed in Newark, NJ since 2006. "It comes from the mountain springs to you." Anheuser-Busch purchased the Rolling Rock brand (trademark) but not the brewery.

As one other bit of trivia on Latrobe, the code for the Arnold Palmer Regional Airport is "LBE", the initials of the author of this blog.

Saturday, May 29, 2010

Events at Bridgewater

Bridgewater, New Jersey library display featuring invention:

Bridgewater citizens expressing opinion of Obama:

Peonies in nearby Somerville on 29 May 2010:

Accident in front of Bridgewater library on 29 May 2010:

Blake/Lilly rubber match and unintentional plagiarism

In a baseball-related post Over the line! Dodgers' Casey Blake says Ted Lilly was 'cheating', David Brown criticizes Casey Blake for labeling pitcher Ted Lilly a cheater for the manner of his delivery [ Of starting his windup from in front of the pitching rubber, Blake said "That's cheating. You've got to stay on the rubber." ]

Brown noted Blake can't call him a cheater because he lacked intent.

We have seen this type of argument in the plagiarism context, wherein we now have the nomenclature "unintentional plagiarism" or "inadvertent plagiarism." Of course, plagiarism is copying without attribution, whether intended or not. Delivering the ball in front of the rubber breaks the rule, intended or not. Practicing without permission what's in a patent claim is infringement, intended or not.

See also

SIU's unintentional plagiarism concept as contrived sophistry?

Mullin's "Prior Art" blog tries to smoke Ebert
[ Patent infringement is strict liability. It simply does not matter if the patent infringer was "aware" of the patent (or of Mullin's blog). If the accused infringer has a product or process that falls within the scope of a claim, it is over, case closed. The worst thing that can happen to an infringer is an injunction: the infringer is shut down, all happening without awareness of the patent. ]

Fishwrap and Bobo kill Ablaise '737 patent claims

One of the more interesting aspects of Dow Jones v. Ablaise
resides in the nature of the prior art documents used in the case,
going under such names as Fishwrap and Bobo. Ablaise
countered with the Krakatoa Chronicle, an email exchange
between a student and a professor, and an MIT undergrad thesis
(recall Wheeler's recently-discussed Harvard undergrad thesis was plagiarized).

Prior art is going to be interesting in the future.

As a preliminary matter, the CAFC took a whack at some
jurisdictional musings by the district court judge. In this case,
Super Sack ruled and Dow Jones lost on the jurisdictional point as
to one patent (the '530) but Dow Jones won on the substantive
point as to the other patent (the '737).


Dow Jones & Co., Inc. v. Ablaise Ltd., 583 F. Supp. 2d 41,
44 (D.D.C. 2008). However, the district court noted that
he regarded our Super Sack-Benitec rule to be inapplica-
ble to this case, for what he believed to be “sound pruden-
tial reasons” and for “reasons of the efficient utilization of
the litigation resources of both bench and bar.” Id. at 268.

**Bottom line. CAFC says no subject matter jurisdiction-->

In the case at bar, Ablaise’s cove-
nant not to sue avowed that Ablaise would not sue Dow
Jones for any acts of infringement of its ’530 patent. The
covenant therefore extinguished any current or future
case or controversy between the parties, and divested the
district court of subject matter jurisdiction. Subject
matter jurisdiction is a threshold requirement for a
court’s power to exercise jurisdiction over a case, and no
amount of “prudential reasons” or perceived increases in
efficiency, however sound, can empower a federal court to
hear a case where there is no extant case or controversy.

**On the subject of "affiliates":

Dow Jones fails to provide a precise definition of what
it means by “affiliates”, but with respect at least to News
Corporation, its attempt to insinuate the latter as a party
into this case fails. News Corporation, of which Dow
Jones is a subsidiary, is a legally distinct entity from Dow
Jones, and it is well-settled law that, absent a piercing of
the corporate veil (which neither party alleges), a parent
company is not liable for the acts of its subsidiary. See,
e.g., Penick v. Frank E. 160, 165 (D.D.C. 1984).

Judge Robertson in D. D.C. is reversed:

We therefore
reverse the order of the district court’s denial of Ablaise’s
motion to dismiss Dow Jones’ claim seeking inthe ’530 patent.

The question of obviousness:

The district court granted Dow Jones’ motion for
summary judgment of invalidity of the ’737 patent on the
grounds that the asserted claims were obvious under 35
U.S.C § 103. A claim is obvious if: “the differences be-
tween the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a).

Obviousness here:

The district court found that there was undisputed
evidence that a modification incorporating location-
changing HTML tags into the Bobo prior art reference
would have been straightforward and obvious to an arti-
san of ordinary skill. As an example, the district court
pointed to the undisputed fact that the Bobo patent
employs the HTML tag, which is used to display
an image on the Web page. Ablaise conceded that such a
tag, accompanied by an alignment tag, would meet the
“formatting data” limitation of claim 1. Therefore, a
person of ordinary skill in the art would simply have to
add an alignment tag (already well known in HTML) to
the existing tag recited in the Bobo patent to
meet all of the limitations of claim 1 of the ’737 patent.
Because “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no
more than yield predictable results”, the district court
found that claim 1 was invalid as obvious under 35 U.S.C.
§ 103. KSR, 550 U.S. at 416. Further, the district court
credited Bestavros’ testimony that, with respect to an
artisan’s motivation to combine the elements, “[b]etween
1990 and May 15, 1995, with the pervasiveness and wide
acceptance of the web, there was a tremendous amount of
technological development seeking to increase the usabil-
ity of web pages and to bring the established features of
various computer programs to the web platform.” More-
over, the court noted that both parties acknowledged that
one of the “established feature” of non-web programs was
the capacity to personalize formatting. Taken together,
the court found that these facts presented clear and
convincing evidence of both design need and market
pressure to add location-changing HTML tags to the Bobo patent.

Secondary considerations got no traction. Further, there was
coercive licensing: the use
of coercive licensing agreements that had more to do with
avoiding the costs of litigation than with the novelty of the the patent.

**Curiously, although the district court/CAFC worked through
an OBVIOUSNESS rejection over Bobo, the USPTO was finding
an ANTICIPATION rejection over Bobo:

In a recent submission to this court, Dow Jones
presented a copy of a final Office Action, dated December
23, 2009, by the U.S. Patent and Trademark (“PTO”)
Office in connection with an ex parte reexamination of the
’737 patent. The Office Action constitutes a final rejection
by the Examiner of claims 1-6 of the ’737 patent (includ-
ing the claims asserted in this appeal) as invalid under 35
U.S.C. § 102(a) as anticipated by the Bobo prior art refer-
ence as well as another prior art reference not raised in
this appeal (Varela). An ultimately final rejection of the
claims by the PTO would fatally undermine the legal
presumption of the validity of the ’737 patent and would
be sufficient by itself to moot this entire portion of the
appeal and warrant affirmation of the district court’s
finding of invalidity of the ’737 patent (although on
grounds of anticipation rather than obviousness). How-
ever, the ex parte pletely resolved.

Friday, May 28, 2010

John Deere gray market case: what's in your denominator?

Of an earlier portion of the case, the CAFC wrote:

However, we vacated in part and remanded the
Commission’s decision based on a particular requirement
for recovery, under our recent decision in SKF USA, Inc.
v. International Trade Commission, 423 F.3d 1307 (Fed.
Cir. 2005), that Deere also show that all or substantially
all of Deere’s authorized domestic products are materially
different from the accused gray market goods. Bourdeau,
444 F.3d at 1325–27. In other words, Deere had to show
that substantially all of the Deere harvesters being sold in
the United States that were authorized by Deere were
North American-version harvesters, as opposed to Euro-
pean-version harvesters.
In discussing the “all or sub-
stantially all” requirement, we stated:
As we noted in SKF, the sale by a trademark
owner of the very same goods that he claims are
gray market goods is inconsistent with a claim
that consumers will be confused by those alleged
gray market goods. “To permit recovery by a
trademark owner when less than ‘substantially
all’ of its goods bear the material difference . . .
would allow the owner itself to contribute to the
confusion by consumers that it accuses gray mar-
ket importers of creating

Of the math:

The Commission next found that 40 to 57% of the
European-version harvesters sold in the United States
were sold by official Deere dealers.2 Id. at 51. To arrive
at its numbers, the Commission divided the number of
authorized European-version harvesters by the total
number of European-version harvesters sold in the United
States. The Commission found that at least 141 Euro-
pean-version harvesters were sold in the United States by
official Deere dealers. Id. at 28, 50. The Commission
indicated that the record showed a possible 14 more
authorized EuUnited States.

Dividing the smaller number of official European-
version harvesters sold in the United States (141) by the
total number of European-version harvesters sold in the
United States (247 to 347), the Commission arrived at its
40 to 57% number. Id. at 51. The Commission did not
use as its denominator the total number of authorized
harvesters sold in the United States, which would have
been the number of authorized North American-version
harvesters (4400) plus the number of authorized Euro-
pean-version harvesters (141), or 4541. The Commission
thus concluded that official Deere dealers were responsi-
ble for introducing a “substantial quantity” of noncon-
forming goods into U.S. commerce. Id.

A memorable line:

In order to divide the numerator by the denominator, we
need to have calculated the numerator.
Thus, in order to
enable the Commission to reapply the “all or substantially
all” test on remand, we must give the Commission guid-
ance on whether it appropriately calculated the numera-
tor. We therefore must decide whether the sales were
authorized by Deere. Furthermore, although the dissent
may disagree with our reasoning, we must affirm if the
Commission’s decision on authorization was supported
by substantial evidence, and we believe it was.

But, the problem was the denominator:

The question was whether “substantially all of the
authorized sales,” i.e., the sum of authorized North
American-version and authorized European-version
harvester sales, were of North American-version harvest-
ers. The denominator therefore should have been total
authorized sales, not total European-version harvester
sales, in the United States.

Bottom line, judgment vacated and remanded. Deere gets a win,
but the case isn't over.

Jazz slammed by CAFC on disposable cameras

In a thread about disposable cameras in 2005, one commenter wrote:

The Kodak empties don't necessarily go back to Kodak, they go back to whoever the photofinisher gets the best price from. As for Fuji or Kodak look-alikes that don't actually say Fuji or Kodak, that's like "Guchi" knockoff bags or "Rollecks" watches or "Likeuh" cameras. Counterfeit goods like that are most rampant in China and third world countries but pop up everywhere.

The commenter raises a trademark issue, wherein the counterfeit appears to be the original, and the consumer is misled.
With disposable cameras, the brand can be something else, but the product really was made by an original manufacturer.

In FujiFilm, the CAFC re-visited the disposable camera
[lens- fitted film package (LFFP) ] area:

Defendants present four issues for review: (1) whether
Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S.
, 128 S. Ct. 2109 (2008), eliminated the territoriality
requirement for patent exhaustion announced in Jazz
Photo Corp. v. United States International Trade Com-
mission, 264 F.3d 1094 (Fed. Cir. 2001) (Quanta argu-
ment); (2) whether the court invoked non-mutual
collateral estoppel and precluded Polytech from present-
ing its permissible repair and first sale defenses on the
basis of court proceedings to which Polytech was not a
party (estoppel argument); (3) was a new trial on damages
warranted by the jury’s $2.00 per infringing LFFP run-
ning royalty and $2.5 million lump sum award (new trial
argument); and (4) whether the court properly held de-
fendants in contempt of a preliminary order enjoining
importation of infringing LFFPs (contempt argument).

The damages portion of the decision is of some interest:

Fuji presented testimony that in a hypothetical nego-
tiation it would have enjoyed a strong bargaining position
based on (1) defendants’ entire business depending on a
Fuji license; (2) Customs excluding infringing LFFPs; and
(3) defendants’ demonstrated inability to segregate in-
fringing LFFPs from non-infringing LFFPs. Relying on
these and other factors from Georgia-Pacific Corp. v.
United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y.
1970), Fuji’s expert testified that the parties would have
agreed to a 40 cent royalty rate. Based on defendants’
inability to separate the LFFPs, the expert testified at
length about Georgia-Pacific factor 6 (collateral sales) and
included both infringing and non-infringing LFFPs in the
royalty base. In support of its all-product royalty base,
Fuji presented the method as an accepted technique to
avoid repeated disputes over what percentage of LFFPs
infringe, a point of contention between Fuji and defen-

Critically, Fuji’s expert testified that in a hypothetical
negotiation the royalty rate would have changed inversely
to royalty-base changes, resulting in a consistent royalty
Specifically, if 50% of LFFPs infringed, and the
royalty base only included infringing LFFPs (a reduction
by one-half in the size of the potential royalty base of all
LFFPs), then the royalty rate would double from 40 cents
to 80 cents per infringing LFFP. In short, Fuji advocated
a consistent royalty amount that would not vary with
changes in the royalty-base size. To that end, Fuji’s
expert provided the jury with sufficient information to
reach Fuji’s proposed royalty amount, whether the royalty
base included all LFFPs (a larger royalty base, driving the
royalty rate down to reach Fuji’s proposed royalty
amount), or only infringing LFFPs (a smaller royalty
base, driving the royalty rate up to reach Fuji’s proposed
royalty amount). By increasing the royalty rate in an
amount proportionate to any reduction in the size of the
royalty base, the jury could have reached a $2.21 royalty
rate for application to a royalty base including only in-
fringing LFFPs.** $2.21 is even larger than tinfringing LFFP royalty the jury awarded.

***Related theme. When plagiarism inspires creativity

Innovation is about changing the way we live. Outside of a "Sex in the City" world, one might challenge the notion that the fashion industry is about innovation. Further, one might challenge the notion that the fashion industry is unrestricted by copyrights, or by trademarks. As to evidence that "knock-offs" hinder sales of originals, one can look to the recent FujiFilm v. Jazz case. The Venetians in the 15th century figured out that allowing people to "steal" ideas didn't encourage creative people to talk about their ideas. Blakely needs to do her homework.


In response to S. Burroughs (pen name? related to William S. Burroughs?), Lawrence B. Ebert is a registered patent attorney, which does not imply that Ebert's interest is in maintaining the status quo. Ebert does have a Ph.D. from Stanford, and a J.D. from the University of Chicago. Blakely received a PhD in English from the University of California, Santa Barbara. Ebert does oppose "post grant review" in the patent area, introduction of which would create more work for patent attorneys. So-called reformers, such as Jaffe and Lerner, who demonize patent attorneys, favor post grant review, which would benefit patent attorneys. Going beyond arguments about people, it remains true that intellectual property, in the form of copyrights, trademarks, and design patents, is utilized in the fashion industry. A world in which ideas are routinely stolen evokes Hobbes.

As to IP, the comments of Johanna Blakley are Sooooooooooooo yesterday.

***Speaking of "yesterday", note the NYT article
Will Last Century’s Styles Open Today’s Wallets? which includes the text:

Brands are combing their archives in the hope that old clothing styles with a classic feel will assuage consumer anxiety in shaky times. With some Americans feeling as if they can’t trust government, Wall Street or big business, the brands are betting their heritage lines will evoke memories of better times — and help pry open shoppers’ wallets.

Note to Johanna, "looking backwards" is not innovation.

Also from the NYT:

At L. L. Bean, a clothing maker for almost 100 years, the task has fallen to Alex Carleton, the creative director for L. L. Bean’s “Signature” collection. Housed behind Mr. Bean’s old Victorian house off of Main Street in Freeport, Me., the company’s archives include rooms full of clothes, lockers stuffed with boots, every catalog ever printed, letters from people like Babe Ruth, and Mr. Bean’s hunting journals.


Mr. Fiske, of Eddie Bauer, also turned to an archivist to assemble old items for inspiration. The company recently introduced clothes like the B-9 parka, which Mr. Bauer supplied to the Army Air Forces during World War II, and the Skyliner jacket, a quilted coat that Mr. Bauer designed after a freezing winter fishing expedition.


Other brands glancing backward include Halston, which reworked designs from the Seventies to create its heritage line. Sperry Top-Siders is selling limited-edition shoes with old-school styling, like brick-colored soles. Keds is issuing two shoe designs for each decade from the last century (a 1920s sneaker looks almost like a dress shoe, with black and white details).

The trend extends to other industries, too. Earlier this year, General Mills sold some Lucky Charms and Cheerios in limited-edition vintage boxes. Pepsi-Cola brought back limited-edition Pepsi and Mountain Dew with retro labels late last year. And Carl’s Jr. brought back a vintage menu item — chili dogs, which Carl Karcher sold from a cart in the 1940s — last year.

At the end of the day, (formerly) protected IP goes into the public domain, and everyone is free to comb the archives.

Thursday, May 27, 2010

Mullin still trashing Spangenberg

In a post on May 21, 2010, Joe Mullin goes after Erich Spangenberg, again. This post is called Spangenberg Speaks, Says Sue First, Ask Questions Later.

Last year, Mullin had a hissy-fit over a piece on Spangenberg by Heather Skyler. Last year, Mullin was recycling Lemley; now he's just recycling Mullin.

The end of this year's article gets into patent valuation:

Still, when it came to the issue of a patent marketplace, Phelps threw some cold water on Ryan and Spangenberg's hope for a more something akin to a real-estate asset-type marketplace.

"I'm one of those people who's kind of skeptical about whether there will be public marketplaces for patents," said Phelps. "There's been a failure of another profession here, and that's the accounting profession," he said. (By "another," Phelps meant, in addition to the legal profession.) "It's a dysfunctional marketplace. They're are scared to death. They don't know how to value [IP] and they're going to get their socks sued off if they value it wrong."

Spangenberg smiled at Phelps's critique of his rosy IP-market scenario. "I'm a bit more optimistic on the transactional side." But he did take the point. "At the end of the day, valuation of IP will remain an inexact science."

Phelps is right to skeptical about the viability of public marketplace for patents. But wrong about the failure of accountants who don't have the right skill set for the job. The same invention can be valueless in the hands of Xerox, but quite valuable with Apple, and accountants are not the go-to guys for that call.

Harvard Law grad Birnbaum axed from DOI Minerals Management Service

According to her bio at, S. Elizabeth Birnbaum is a Harvard Law grad:

Birnbaum received her Juris Doctor from Harvard University in 1984 and her A.B. degree, magna cum laude, from Brown University in 1979. She was Editor in Chief of the Harvard Environmental Law Review, Vol. 8.

As to job description:

As MMS Director, Birnbaum administers programs that ensure the effective management of renewable energy, such as wind, wave, and ocean current energy; and traditional energy and mineral resources on the nation’s Outer Continental Shelf, including the environmentally safe exploration, development, and production of oil and natural gas, as well as the collection and distribution of revenues for minerals developed on federal and American Indian lands.

See separately:

How valuable is a Harvard administrator credential?

In passing, LBE notes that during an interview at a major Chicago law firm, the "head" of the environmental law department was shocked when LBE informed her that there was benzene in gasoline.


A comment to the post Was Elizabeth Birnbaum Fired? Don't Ask Obama

Just what would a former Harvard Law Review Editor know about minerals management? From 2001 until 2007 she worked for American Rivers telling the Senate how hydroelectric dams are killing things. When she was appointed last year in the buddy job at the MMS her resume was a list of consulting jobs.

Will anyone in the media make the Harvard Law Review connection to Obama and Ms. Elizabeth Birnbaum and ask some hard questions?

From the CBS story:

"Did she resign," asked CBS White House Correspondent Chip Reid. "Was she fired? Was she forced out? And if so, why?"

"I found out about her resignation today," the president answered, "so I don't know the circumstances in which this occurred."

An incredulous press corps followed up.

"How is it that you didn't know about Ms. Birnbaum's resignation/firing before?" asked another reporter.

Mr. Obama: "Well, you're assuming it was a firing. If it was a resignation, then she would have submitted a letter to Mr. Salazar this morning at a time when I had a whole bunch of other stuff going on... Come on, I don't know. I'm telling you I found out about it this morning. So I don't yet know the circumstances, and Ken Salazar has been in testimony on the Hill."

Birnbaum resigned before she could deliver her prepared remarks [to the House Subcommittee on Energy and Environment ]

Judge Pflager speaks out on indefiniteness

From a dissent to denial of panel rehearing in Enzo by Judge Plager:

To begin the discussion of how this court could move
in that direction, I would grant the petition for panel
rehearing. The court now spends a substantial amount of
judicial resources trying to make sense of unclear, over-
broad, and sometimes incoherent claim terms. It is time
for us to move beyond sticking our fingers in the never-
ending leaks in the dike that supposedly defines and
figuratively surrounds a claimed invention. Instead, we
might spend some time figuring out how to support the
PTO in requiring that the walls surrounding the claimed invention
be made of something other than quicksand.

Greenberg's "Tech Transfer"

Within Nicholas Wade's review of the book "Tech Transfer," one finds a quote about perks of university profs:

“These included annual pay increases, lax to near-non-existent conflict-of-interest and conflict-of-commitment regulations, and ample pools of powerless grad students, postdocs and adjuncts to minimize professorial workloads. As a safety net, the faculty favored disciplinary procedures that virtually assured acquittal of members accused of abusing subordinates, seducing students, committing plagiarism, fabricating data, or violating the one-day-a-week limit on money-making outside dealings.”

In the season finale of CSI: Miami on 24 May 2010 ["All Fall Down"], part of the plotline was of manipulated scientific data in a university research context. The manipulation was by a grad student Melissa Walls, and related to followup studies on the the work of Yale's Stanley Milgram, who conducted an experiment focusing on the conflict between obedience to authority and personal conscience.

As to "ample pools," one must mention the name San Filippo, once of the Rutgers chemistry department, who took the concept to new lows.

As to famous psychology / behavior experiments, a favorite of LBE's is that of Philip Zimbardo at Stanford.
Stanford Prison Experiment:

Zimbardo concluded the experiment early when Christina Maslach, a graduate student he was then dating (and later married), objected to the appalling conditions of the prison after she was introduced to the experiment to conduct interviews. Zimbardo noted that of more than fifty outside persons who had seen the prison, Maslach was the only one who questioned its morality. After only six days of a planned two weeks' duration, the Stanford Prison experiment was shut down.

Jeffrey Lange's Fifteen Minutes of Fame

With the SuperBowl coming to New Jersey in 2014, the New York Times had an article resurrecting the famous snowball game of December 23, 1995. The NYT noted:

One man became the public face of this unruly game. A picture snapped by an Associated Press photographer, showing him standing up in midhurl, was published everywhere. The Giants organization posted a $1,000 reward to find that man.

Callers identified him as Jeffrey Lange, 26, and the police rounded him up.

Years later, one would have a similar "manhunt" for the Rutgers grad student who screwed up Newark Airport traffic by walking back through a security checkpoint. Not many people remember that fellow's name. Lange, who then lived in Readington, just west of Bridgewater on Route 22, became much better known.

The NYT article featured a blog post by one Weinstein on a retrospective on Lange. Blog posts can become newsworthy of the NYT. IPBiz is waiting for a blog post to become prior art, and then to have a controversy about "when" it was posted.

According to the NYT, Lange is still in New Jersey.

"The 2014 Super Bowl will be the first to be played in an open air stadium in a cold weather region." from

Meadowlands in February? Watch for Snowballs


Giants Fan Is `Miserable' Since His Snowball Arrest

Wednesday, May 26, 2010

Unhappy shareholders at Merck meeting at RVCC

An AP story on the Merck annual shareholders meeting began:

Shareholders of drugmaker Merck spent their annual meeting Tuesday [25 May 2010] peppering its chief executive with questions about what the company will do to boost its lagging stock price, raise dividends and improve performance.

The meeting was held at Raritan Valley Community College [RVCC].

The word "patent" did not appear in the AP story.

See also

Some patent cliffs can't be seen

Status unclear from the USPTO Public Pair website

Footnote 2 of the decision Orion v. Hyundai states:

Also, the asserted claims of the ’627 patent were the subject of an ex
parte reexamination proceeding, initiated by a third party. In a Final Office Action dated
May 5, 2009, the U.S. Patent and Trademark Office rejected the claims as anticipated
by prior art references, not overlapping with the prior art raised by Hyundai in this
action. The status of the reexamination proceeding, or any subsequent appeal, is
unclear from the USPTO Public Pair website.

Elsewhere in the decision there is discussion of what constitutes a printed publication,
and, yes, In re Hall is cited:

Whether a document constitutes a printed publication under § 102 is a question
of law based upon the underlying facts of each particular case. Cordis Corp. v. Boston
Scientific Corp., 561 F.3d 1319, 1332-33 (Fed. Cir. 2009). Here, to qualify as a printed
publication, the Electronic Parts Catalog promotional publication must have been
disseminated or otherwise made accessible to persons interested and ordinarily skilled
in the subject matter to which the advertisement relates prior to the critical date. See
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008);
In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (explaining that public accessibility is the
“touchstone in determining whether a reference constitutes a ‘printed publication’ bar
under 35 U.S.C. § 102(b)”).

Of anticipation:

In addition to qualifying as a printed publication, a single prior art reference must
expressly or inherently disclose each claim limitation to anticipate a claim. Finisar,
523 F.3d at 1334. Additionally, the reference must “enable one of ordinary skill in the
art to make the invention without undue experimentation.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). Further, the party asserting invalidity due to anticipation must
prove anticipation, a question of fact, by clear and convincing evidence. Yoon Ja Kim v.
ConAgra Foods, Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006).


For purposes of the anticipation analysis, the only dispute is whether the prior art
Electronic Parts Catalog reference meets the “proposal” element. See Blackboard, 574
F.3d at 1379-80 (reversing a district court’s denial of JMOL on anticipation and finding
the claim invalid as anticipated where the plaintiff disputed anticipation of only one
limitation and this court found that the prior art taught that limitation).

The issue is one of matching claim elements:

Thus, testimonial and documentary evidence regarding the Electronic Parts
Catalog reference establish that the Electronic Parts Catalog reference anticipates claim
1 of the ’627 patent. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319-
20 (Fed. Cir. 2009) (reversing a jury verdict and finding a method patent anticipated
where a plaintiff tried to distinguish the prior art based on disclosed functions “in
addition” to those claimed by the patent). Like the plaintiff in Exergen, Orion attempts to
distinguish the IDB2000 system because it could display wholesale prices in addition to
retail prices.

The presence of additional features in the prior art publication does not negate the presence of the claimed

"Wrongful death" theme in tv finales in 2010

In "Rubber Room," the finale to Law & Order on 24 May 2010, character Jack McCoy delivered one of the most impassioned speeches in the 20 year history of the show to a lawyer from a teachers union. Beginning with “Just how far up your ass is your head?” , McCoy delivers a threat to the lawyer, and to the union, as to their lack of assistance in identifying a teacher who is planning a Columbine-like massacre:

“but if your obstruction allows a massacre to happen I will crucify you Mr. Kraleck. I will charge you with negligent homicide and after I convict you, I will resign my job and represent the families of the victims in a wrongful death suit against you and the union. By the time I’m done, you will be finished, so my advice to you is GET OUTTA MY WAY!”

How many times in Law & Order history has a DA threatened to resign and then go after a bad character via civil action? In the storyline, the police arrive at the school "just in time," so that no one is killed, and no factual predicate for any wrongful death actions is created. The season, and the series, end. The anti-teacher union sentiment found in "Rubber Room" mirrors other issues going on not only in New York but also New Jersey in early 2010.

One day later, on May 25, the season finale {titled "Running"] to the CBS show "The Good Wife" placed a "wrongful death" action in a more central role. In context, the death is of a crooked cop turned informant, and is brought by the wife. The twist is that the informant was creating self-serving information, the wife instigated his demise, and (not knowing any of this) the city offers the wife-widow a half-million dollar settlement of the wrongful death case. The only people bothered by this were Alicia, the good wife, and Kalinda, who takes a step which might correct the problem. [An attorney ethics issue is raised here.]

The "Running" episode is not the first episode of "The Good Wife" involving a wrongful death action.

The finale to NCIS on May 25 ["Rule Fifty-One"] did not have a wrongful death action, but did revolve around an execution death of a drug dealer twenty-years earlier, supposedly done by Gibbs. M. Allison Hart appears and evokes some philosophical musings on right and wrong related to the earlier Mother's Day episode, wherein Gibbs' mother-in-law got a pass for murder.
"Rule 51" includes a rule about lawyers, and separately casts Mexican drug interdiction efforts in a bad light, much as "Rubber Room" excoriated teachers unions. Of the "wrongful death" of the drug dealer, one sees that the drug dealer's children pursue other-than-civil resolutions.

***See also

Last episode of Law & Order

Law & Order “Rubber Room” Recap & Review

March 2 NCIS "Mother's Day" brings back M. Allison Hart

Tuesday, May 25, 2010

Poltorak criticizes S.515

Although Poltorak labels S.515 as a compromise between IT and pharma, one notes IT is flexing its muscles in the House to deep six S.515.

It is true that independent inventors and university folks were not really "in" on S.515 dealing and have little to benefit from this "reform."

As to what IT folks are doing in the House, see the previous IPBiz post:

Fee diversion: don't get fooled again

Coming up on June 3: Patent Reform: 8:30 a.m., Main Street Landing, Burlington. Sen. Patrick Leahy and federal intellectual property official David Kappos wills discuss Leahy's Patent Reform Act with Vermont inventors and IP professionals.


Patent Reform 2010: What Shape Will It Finally Take?

This seminar is co-sponsored by Analysis Group, Georgetown University's Center for Business and Public Policy, and McKool Smith.

Columbia University valedictorian nailed for plagiarism

Columbia student Brian Corman copied from comedian Patton Oswalt in his valedictorian speech. Corman's speech was "up" on YouTube but then it went down, faster than you could say Wheatoned Curry.

Oswalt twittered and the YouTube vid re-appeared.

Plagiarized grad speeches, as at Palo Alto High, are nothing new.

**As to Ann Curry, in giving a commencement address at Wheaton in Norton, MA, Curry mis-identified as graduates Billy Graham, Wes Craven, and Todd Beamer, all of whom went to Wheaton in Illinois. She did get one graduate right. From her apology to Wheaton in Massachusetts:

I now know I should have named National Medal of Science winner Dr. Mary Ellen Avery, former New Jersey Governor and former EPA Director Christie Todd Whitman, literary agent Esther Newberg, Oscar-nominated actress Catherine Keener and Ken Babby, the youngest senior officer in the history of the Washington Post, among others. Thank goodness I got Leslie Stahl right.

Yes, she misspelled the first name of Lesley Stahl!

IPBiz has commented on the bumbling performances of Stahl on "60 Minutes," especially the "thermocouple-in-hot-dog" and "copper sulfate as metal" stupidities in the Kanzius episode.

***And, yes, TechDirt did comment on the Columbia matter, including the text:

While it certainly does piss off comedians, they seem to ignore the fact that it's not just quite common among comedians, but, historically, it was considered quite normal. That's because people realized that there is no monopoly on being funny


Related to that, what this really comes down to is a reputational issue. While Oswalt is wrong to call Corman's actions "stealing," he's right to question the kid's decision, and raise questions about his reputation.

Let's see, because copying is common, it's all right, and one shouldn't call copying stealing?

Monday, May 24, 2010

Rule 11 sanctions from inventorship dispute; relevance to Myriad?

from the decision:

Count VIII alleged a “breach of fiduciary duty by John
Doe I [patent attorney] in violation of 35 U.S.C. et seq., 37 CFR et seq., and
the Manual of Patent Examination Procedure (MPEP).”
Supplemental App. 35 (capitalization altered). The
district court found that “[t]he gravamen of Count VIII is
that Defendant John Doe I breached the fiduciary duty
owed to Plaintiff by representing two parties with conflict-
ing interests and by sacrificing the interests of one party
for another.” Carter, slip op. at 5. In evaluating this
claim, the district court stressed its concern that the
claim constituted an attempt “to manufacture a federal
cause of action by couching a garden-variety malpractice
claim in terms of patent law.” Id. In the district court’s
view, “[h]owever Plaintiff’s counsel couches it, no federal
cause of action exists for breach of fiduciary duty under
federal patent law or the MPEP.” Id. at 6

Bottom line:

Here, the determination of John Doe I’s compliance
with the MPEP and the CFR is a necessary element of
Carter’s malpractice cause of action because the CFR and
the MPEP establish John Doe I’s expected fiduciary
duties to his clients. Count VIII thus involves a substan-
tial question of federal patent law and is not frivolous.7


While we conclude that Count VIII was not frivolous,
we reach a different result with regard to Counts I and
XI. Count I alleges a violation of Article I, Section 8,
Clause 8 of the U.S. Constitution, which grants Congress
the power to “promote the Progress of Science and useful
Arts, by securing for limited Times to . . . Inventors the
exclusive Right to their respective . . . Discoveries.” The
district court rejected Myers & Kaplan’s assertion that
the Patent Clause creates a private cause of action on
behalf of inventors. Carter, slip op. at 4. The court noted
that Myers & Kaplan presented “no legal authority or
reasonable explanation as to how [the Patent Clause] does
confer a private cause of action.” Id. Myers & Kaplan
contends the district court erred because Count I presents
a non-frivolous argument for establishing new law, which Rule 11(b)(2) expressly permits.

Can anyone say ACLU v. Myriad?

The CAFC noted:

We agree with the district court that the Patent
Clause does not create private rights of action on behalf of
inventors. Myers & Kaplan’s assertion that no sanctions
should be imposed under Count I because this count
presents an argument for establishing new law ignores
the fact that the argument for creating new law must be
non-frivolous. There is no basis for inferring that Article
I, Section 8, Clause 8 provides rights to inventors without
congressional action, and we long ago made clear, in the
context of the Copyright Clause, that it does not. In In re
Cooper, our predecessor court rejected the argument that
the Clause itself required trademark protection for book
titles. 254 F.2d 611, 616 (C.C.P.A. 1958). The court
explained that “Article I, Section 8, eighth clause, of the
Constitution . . . does no more than grant power to Con-
gress to secure certain rights to authors and inventors
insofar as it elects to do so. The cited clause grants no
rights to authors and has nothing to dtion of trademarks.” Id. at 616-17.

**UPDATE. For a more conventional complaint about
a lawyer:

In the Matter of J. GREGORY SWANSON

Equitable estoppel issues in Aspex v. Clariti

The CAFC concludes:

The elements of equitable estoppel were established
without material factual dispute, and the district court did
not abuse its discretion in weighing the equities. We affirm
the district court’s ruling that Aspex is equitably estopped
from suing Clariti for infringement of the ’747 patent.

The points made by Judge Rader in dissent [below] are of
interest on the equitable estoppel issue.

But no attorney fees under 285 for Clariti:

Defeat of a litigation position, even on summary
judgment, does not warrant an automatic finding that the
suit was objectively baseless; all of the circumstances must
be considered. The district court did not clearly err in
ruling that the act of bringing this suit, under the circum-
stances that existed, did not produce an exceptional case in
terms of fees.

On inequitable conduct:

Clariti argues that the inventor of the ’747 patent, David
Chao, and his assignee, co-defendant Contour Optik, Inc.,
knew of a material reference and intentionally withheld it
from the Patent and Trademark Office. The reference is a
patent application filed by Julie Madison of Manhattan
Design Studio. The Madison application was filed on April
18, 1997, ten days before Chao filed the ’747 application,
and it issued as U.S. Patent No. 6,149,269 (“the ’269 pat-
ent”) shortly after the ’747 patent issued. Mr. Chao testified
that he became aware of the Madison application while it
was pending, in late 1996 or early 1997, and was “very
upset” because he had given some technical drawings to Ms.
Madison and he believed that she had used these drawings
in her patent application. Neither Mr. Chao nor his as-
signee Contour Optik brought the Madison application to
the attention of the PTO during prosecution of the ’747
application. Clariti later requested reexamination of the
issued ’747 patent on the basis of Ms. Madison’s issued ’269
patent, and the ’747 claims were confirmed after Mr. Chao
“swore behind” the Madison application.

Judge Rader dissented:

“Silence alone will not create an estoppel unless there
was a clear duty to speak or somehow the patentee’s contin-
ued silence reinforces the defendant’s inference from the
plaintiff’s known acquiescence that the defendant will be
unmolested. . . . [O]n summary judgment, such inference
must be the only possible inference from the evidence.” A.C.
Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020,
1043–44 (Fed. Cir. 1992) (en banc) (internal citations omit-
ted) (emphasis in original). In Aukerman, this court held
that because the district court could draw different infer-
ences from the correspondence between the parties, the
district court clearly and impermissibly drew an unfavor-
able inference against the patentee in granting summary
judgment. Id.; see also Hemstreet v. Computer Entry Sys.
Corp., 972 F.2d 1290, 1295 (Fed. Cir. 1992) (holding that
“mere silence must be accompanied by some other factor
which indicates that the silence was sufficiently misleading
as to amount to bad faith” (emphasis in original)). The
patentee’s silence “must be combined with other facts re-
specting the relationship or contacts between the parties to
give rise to the necessary inference that the claim against
the defendant is abandoned.” Aukerman, 960 F.2d at 1042.
This court held that even an invitation to sue made by the
defendant did not create a clear duty to speak for the pat-
entee. See id. at 1026–27.
In this case, Aspex sent Clariti a letter that does not
create the clear duty required by Aukerman.


This court mistakenly relies on Scholle Corp. v. Black-
hawk Molding Co., 133 F.3d 1469 (Fed. Cir. 1998) and
Wafer Shave, Inc. v. The Gillette Co., 857 F. Supp. 112 (D.
Mass. 1993), aff’d, 26 F.3d 140 (Fed. Cir. 1994) to establish
misleading conduct. In Scholle, the accused infringer made
a design-around product during litigation in an effort to
avoid future infringement. 133 F.3d at 1470. The defen-
dant presented samples of the design-around product to the
patentee and informed the patentee that it would consider
the design-around product non-infringing unless the pat-
entee advised it otherwise. The patentee gave no response
to the defendant’s inquiry. Id. Following the defendant’s
inquiry, the parties had numerous discussions regarding the
patent and even a possible merger. Id. at 1471. The pat-
entee knew of the defendant’s position in the market and
the rapidly growing sales of the design-around product. Id.
In those years of discussions, the patentee never suggested
that it might consider the design-around product to infringe
its patent. Id. Years later, the patentee sued the defendant
for infringement by the design-around product. Id. at 1471–
72. In Scholle, this court found that the discussions that the
parties had over the years was “cooperative behavior [that],
in light of [the patentee’s] previous threats to sue, created a
reasonable inference that [the patentee] considered the
[product] a non-infringing design-around product and did
not intend to sue.” Id. at 1472. In other words, the “course
of dealing” and “extensive contact” between the parties
coupled with the patente at 1472, 1473.

Judge Rader also stated:

Marketing products, which is all Clariti did here, gener-
ally does not require the same kind of investment as devel-
oping and manufacturing products.

If IPBiz is not mistaken, in the pharma area, a lot MORE
money is spent in marketing products, than in developing and
manufacturing products.

Last episode of Law & Order

Included within a discussion of the last episode of "Law & Order" [ Rubber Room on 24 May 2010 ] is the line

"Law & Order" has become, to be as unromantic as possible about it, a triumph of what is now popularly called "branding" ..

Law & Order had trademarks at several levels, including the signature music and the half law/half order format. At some level, it was an updated, and more complex, "Dragnet." However, there was no "Dragnet" without Jack Webb but "Law & Order" escaped actor/show branding.

Lindsey Vonn, whose parents are lawyers, is on the episode.

There were 456 episodes over a record tying 20 seasons (Gunsmoke also had 20; the Simpsons, a nondrama have had more).

Law & Order: tort fable?

NBC on Law & Order

Sunday, May 23, 2010

Tesla: "We look forward to learning and benefiting from Toyota's legendary engineering"

Tesla, with a $50 million investment from Toyota, will make its cars in a factory that Toyota and General Motors Co. formerly operated in Fremont, California.

California has many state regulations (eg, note recent problems with CARB) and high labor costs.

Lesley Stahl does phthalates

Lesley Stahl took on phthalates on "60 Minutes" on 23 May 2010.

Lesley Stahl should not do science topics.

See also

"60 Minutes" on Kanzius: We don’t want to be in a position to hype this.

The Bloom Box featured by Lesley Stahl on "60 Minutes" on Feb. 21

***Elsewhere, a story by Morley Safer on Marty Cooper and the cell phone. Cooper (aged 81) signed up on twitter
6 months ago and has 17 followers. Technology has to be invisible, transparent, and simple. The buyers should
dictate what they want. Engineers get enchanted by the technology.

Cooper talked about the jitterbug and the smart antenna. Doctors (at least in newsreels) made house calls, helped by
radiophones in cars.

People are mobile and its personal phones they wanted, describing the "war" between AT&T (Joel Engle) and Motorola.

Your phone, or something like it, will be checking your vital signals, and a computer somewhere else will be checking the data.
The "annual physical" concept will be worthless, compared to measuring data all the time.

Cooper: "Privacy is a thing of the past." Privacy requires a new mindset among people. Safer: Hiding something is an undeniable human right.

Cooper has a Droid.

Cooper: optimum telephone will be embedded behind your ear.

**Related Have They Got a Deal for You

The eValues program is the latest iteration in the fast-growing field known as predictive analytics, which uses vast amounts of data to spot trends and anticipate consumer behavior.

Two of the best-known users of applications of predictive analytics are baseball executives, who scour statistics to find overlooked superstars, and the online DVD rental service Netflix, which suggests movies its customers might like.

"CBS Sunday Morning" does innovation

"CBS Sunday Morning" on 23 May 2010 had many scenes shot from San Simeon and many stories touching on innovation.

One story was about new sport airplanes, and featured the ICON A5 Amphibious Light Sport Airplane. The 100HP Rotax rotary engine powers the pusher prop (push prop as used by the Wright Brothers) and there is a patent pending on the propellor guard. COO Steen Strand, a Stanford graduate, has worked for IDEO, Lehman Brothers, in addition to engineering several startups ranging from skateboarding to healthcare.

One story was about refrigerators, and included General Electric's "Monitor" refrigerator, which used sulfur dioxide as a refrigerant (and was named because of its likeness to the USS Monitor of the Civil War). "Sunday Morning" did not talk about the Einstein-Szilard refrigerator patent, US 1,781,541. Relevant to issues of non-practicing entities, Einstein and Szilard, who were not in the refrigerator manufacture business, conveyed their patent rights to Electrolux.

Sunday Morning also had a segment on harmonicas, which touched on issues of trade secrets, in presenting the replaceable reed system of the B-radical.

And, yes, there was a reference to "Citizen Kane," which might relate both to copyright law and to privacy law.

On current refrigerator wars:

On Robert Barnett (Rita Braver's husband and University of Chicago 1971 law school grad):

The Sunday Morning story was on cufflinks, but Sunday Morning could easily do a story on Barnett which would illustrate how lawyers can invade the domain of literary agents. Of the cufflinks, one set was in the form of roulette wheels.

Friday, May 21, 2010

"Substantial evidence" doesn't carry the day in IN RE RAVI VAIDYANATHAN

The CAFC did not back up the BPAI on obviousness rejections:
For claims 1–9, we vacate the rejection and remand
for further examination.

The patent examiner has to set up the obviousness case:

The patent examiner is respon-
sible for marshalling the references whose teachings are
most relevant to the claimed invention, and evaluating
the claimed invention against these teachings, from the
viewpoint of a person of ordinary skill in the field of
invention. See Graham, supra; In re Kubin, 561 F.3d
1351, 1355 (Fed. Cir. 2009); see generally In re Oetiker,
977 F.2d 1443, 1445–47 (Fed. Cir. 1992).

Of new arguments:

While the PTO Solicitor’s
argument is new as to what portion of Biggers provides
support for the Board’s findings, we have occasionally
permitted the Solicitor to support the Board, on appeal to
the court, by reference to additional portions of the refer-
ences of record, provided that the applicant has had a fair
opportunity to respond. See In re Hedges, 783 F.2d 1038,
1039 (Fed. Cir. 1986); see also In re Wesslau, 353 F.2d
238, 241 (CCPA 1965) (prior art reference should be
considered in its entirety for what it fairly suggests to one
skilled in the art). Nonetheless, the reviewing court must
review the decision of the Board on the basis of the
Board’s findings, rather than on “post hoc rationalizations
for agency action.” In re Hounsfield, 699 F.2d 1320, 1324
(Fed. Cir. 1983) (quoting Burlington Truck Lines, Inc. v.
United States, 371 U.S. 156, 168 (1962)).

Of shifting postions-->

We conclude, on the evidence and arguments pre-
sented, that the Board did not persuasively explain how a
person of ordinary skill in the art would conclude that
Biggers taught that the trajectory commands produced by
the neural network are to be input into a separate autopi-
lot function. The PTO’s shifting positions do not assist in
appellate review. See In re Thrift, 298 F.3d 1357, 1366
(Fed. Cir. 2002) (citing SEC v. Chenery Corp., 332 U.S.
194, 196 (1947)) (“a reviewing court, in dealing with a
determination or judgment which an administrative
agency alone is authorized to make, must judge the
propriety of such action solely by the grounds invoked by
the agency”). However, we are not prepared to hold that
all three of the PTO’s conflicting interpretations of Big-
gers and other teachings with respect to autopilot func-
tionality are incorrect. We remand for further
development of the record, and full reconsideration by the

**Separately, on the BPAI (not) allowing claims-->

Our decision is limited to the finding before us for review. The Board
does not “allow” claims of an application and cannot direct an examiner to
pass an application to issuance.
Rather, the Board’s primary role is to
review adverse decisions of examiners including the findings and
conclusions made by the examiner. See 37 C.F.R. § 41.50(a)(1) (“The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the

Thursday, May 20, 2010

History revisited, or history revised?

from Nanowerk post, titled: From beams to buckyballs - setting the stage for the nanotechnology revolution-->

Curl said Smalley initially showed little interest in pursuing the experiment, but Curl thought Kroto's ideas had merit. "My argument was that the experiment might actually lead to a test of a proposal of the origin of the diffuse interstellar bands," he said. "Rick could see the advantage of trying to find the solution to a 50-year-old mystery."
But something else caught their attention. The experiments in late 1985 showed an abundance of carbon 60, which set the scientists racing to figure out what such a molecule would look like. "We had this problem that this (carbon cluster) was a little strong, and it looked like there was something there," Curl said, noting that the team pursued the interstellar question no further. "The discovery of the fullerenes drew all our attention."
Smalley was the first to find the solution by assembling a paper model of hexagons and pentagons that turned out to be identical to a soccer ball. (In a webcast available here, Curl described how the team came up with the key to the solution over enchiladas at a Houston diner.)
Within days, Nature received their paper announcing the discovery of the buckminsterfullerene, which they described as a "truncated icosahedron." The scientists noted they were "disturbed at the number of letters and syllables in the rather fanciful but highly appropriate name. … A number of alternatives come to mind (for example, ballene, spherene, soccerene, carbosoccer), but we prefer to let this issue of nomenclature be settled by consensus." It became popularly known as the buckyball.

Problems here:

C60 first reported in J. Chem. Phys. by Exxon group.
Smalley paper came later, in J. Am. Chem. Soc., not Nature.

See, for example, LBE, Written Description: Circumscribing Possession to Prevent Overreaching , in Intellectual Property Today -->

In patent law, and in some areas of science, the concept of written description serves to establish, or deny, priority. n7 The area of buckyballs gives a simple example. Although the Exxon workers absolutely, positively made C60 in 1984, and published thereon (J. Chem. Phys., 1984, 81, 3322), there was no hint that they considered C60 to be a truncated icosahedron, or buckyball for short. The buckyball proposal in 1985, based on a previously disclosed synthesis, led to a Nobel Prize.

Elsewhere in IPT-->

To illustrate one issue in the interpretation of Continental Can,
consider the discovery of buckyballs. In 1984, workers at Exxon disclosed the
existence of C60, with the formula as determined by mass spectrometric
measurement n6 and a way to make said C60. (J. Chem. Phys., 1984, 81, 3322). They did not disclose the correct structure of C60; Professors Smalley and Kroto
proposed the structure of C60 to be that of a truncated icosahedron in 1985. This
was not known to be correct until after the work of Huffman and Kratschmer in
1990. Now, assuming that the synthesis of Exxon always led to C60 with the
icosahedral structure, would a patent claim to C60 in 1990 (with the truncated
icosahedral structure) be inherently anticipated by the Exxon work in 1984, even
though no one knew the structure in 1984, and in fact could not have proved the
structure until 1990? Assuming that one of ordinary skill would recognize the
inherent property, albeit at a later date, one might think there would be
inherent anticipation. (Of course, a 1990 claim to merely C60 would be
explicitly anticipated by the written description and enablement of the 1984
reference.) IPBiz notes that, in this hypo, the public was not obtaining any "benefit" from buckyballs prior to 1990 (benefit post 1990 is not clear either), but IPBiz reiterates the inherent anticipation conclusion, in spite of Burk/Lemley.

**Separately, see Silence in a reference can sometimes be anticipation including discussion of
Upsher-Smith Labs., Inc. v. Pamlab, 412 F.3d 1319, 1322 (Fed.Cir.2005) and
n re Baxter Travenol Labs, 952 F.2d 388 (Fed. Cir.1991).

USPTO fee-setting authority without ending fee diversion useless

In a post titled With Overhaul of Patent Law Stalled, House To Consider Narrower Bill, CQ Politics discusses a limited-scope patent reform bill of Congressman Conyers, the House Judiciary Chairman.

The problem is that a grant of fee setting authority to the USPTO without ending fee diversion from the USPTO merely means that patent applicants will be paying more for less.

The problem with ending fee diversion has been documented by Marla Grossman, so that the current activities are merely repeats of an old shell game.

Patent Docs includes the text:

In its own release, the American Intellectual Property Law Association (AIPLA) stated that it "opposes granting the USPTO fee-setting authority without ending the problem of fee diversion." According to the AIPLA press release, the Patent and Trademark Office Fee Modernization Act of 2010 will give the USPTO Director the authority to increase fees, while lacking "any mechanism to ensure that those fees remain at the Office." In its release, the "AIPLA emphatically opposes this legislation." AIPLA President Alan Kasper adds that "[t]he time has come for Congress to once and for all provide the USPTO with the ability to more predictably and intelligently plan its fiscal operation by ending the possibility of fee diversion."

Note post Lofgren-backed patent reform bill stalls [from 18 May 2010] which includes:

In a posting on the Intellectual Property Owners Association Web page, the group -- which had opposed the bill along with other IP and trademark groups -- said the House Judiciary Committee leadership "decided last evening to withdraw the USPTO fee bill, not yet introduced, from today's House 'suspension' calendar."

Read more: Lofgren-backed patent reform bill stalls - Silicon Valley / San Jose Business Journal

Previous IPBiz posts:

Different takes on patent reform

Fee diversion: don't get fooled again

Wednesday, May 19, 2010

Gerald Posner snagged again?

Things are looking worse for Gerald Posner, the author of "Case Closed." After being forced out at the Daily Beast for plagiarism, there have been some more accusations of plagiarism, and of tampering with Wikipedia.

In a piece titled Posner Plagiarizes Again, Miami New Times talks about work on Posner done by Greg Gelembiuk:

So he ran Miami Babylon through Viper, free online software that scours the Internet to look for copied phrases. It turned up 16 new instances of stolen prose. New Times and author Frank Owen — whose book, Clubland, Posner had heavily plagiarized — found more problems.


On April 11, "miamiskull" — the same name Posner uses on his personal YouTube page — deleted a paragraph about evidence that he'd altered or misattributed quotes in Babylon. (Evidence is posted at

See also

Ironic turn in Gerald Posner plagiarism manner

How valuable is a Harvard administrator credential?

In an editorial Asleep in Admissions?, the Boston Globe states Admission officials at Harvard have a lot to explain to legitimate applicants. and ends Are the phones — and the admission office — in decent working order at Harvard?

As a general proposition, one might ask, is the credential of "administrator" at Harvard, something that is a plus, or, in view of the Wheeler affair, a minus? How about an administrator who has few publications? Perhaps the Senate will let us know.

The Boston Globe suggests that Wheeler's status of "transfer student" should have merited additional scrutiny:

The oversights are even more egregious because it is standard procedure in college admission offices to give extra scrutiny to transfer students.

However, at the New York Times, in an article titled Campuses Ensnared by ‘Life of Deception’, there is a suggestion that "transfer student" presents a loophole in admissions:

Mr. de Villafranca [of the Peddie School in Hightstown, NJ] said that Mr. Wheeler had likely exploited one potential loophole: because he applied to Harvard as a transfer student several years removed from high school, his school counselor — ostensibly at Phillips Andover — might not have been contacted by Harvard about his application.

Of course, Yale University, in response to a transfer request LATER in time, contacted Wheeler's real high school, Caesar Rodney in Delaware. The NYT article noted:

In recounting how the case came to light, Assistant District Attorney John Verner told the court of a phone call that Mr. Wheeler’s parents, Lee and Richard, received from Yale University this year.

By then, Mr. Wheeler had left Harvard, rather than face an academic hearing over accusations he had plagiarized the work of a Harvard professor in his application for a Rhodes Scholarship. He then applied as a transfer student yet again, this time to Yale and Brown.

After Yale contacted Mr. Wheeler’s parents, who were in court on Tuesday, to express doubts about the veracity of parts of his transfer application, they insisted that their son tell Yale the truth.

“Mr. Wheeler’s life of deception would not have stopped if it were not for his parents,” Mr. Verner said.

**By life of deception ending, one presumes one is talking about the charges brought by Mr. Verner. But, why were the charges brought in May 2010, rather than in 2009, when Harvard had figured out what had happened and booted Wheeler?

** The NYT article mentioned other cases:

Other prestigious colleges have seen similar cases before. Two years ago, Yale determined that a student who successfully transferred from Columbia had forged his transcript to give himself straight A’s. Connecticut authorities later charged him with larceny, over the $32,000 in scholarships he’d received.

In 1993, another man pleaded guilty to theft by deception in New Jersey, for obtaining $22,000 in financial aid from Princeton.

**In light of the the Wheeler case, and earlier cases, one can only wonder "what was Ben Stein thinking?"
Ben Stein's wrong on "not getting into college of your choice"

Earlier post:

Adam Wheeler dupes Harvard

From The Talented Mr. Ripley :

My memory might be hazy, but I thought they ask for an official sealed transcript sent from your school's registrar, not from you? If not, wouldn't there be some kind of follow-up with the registrar? I'm kind of surprised to read he submitted it himself and that was that. Of course the potential for fraud would be high.

***In a videoclip of Mike Taibbi on the Today Show, it is suggested that the "identity theft" charge arises from the plagiarism done by Wheeler.

Plagiarism is generally associated with copying the words of someone else without mentioning the person's name. Identity theft is more associated with pretending to be the person and taking the person's name. If a charge of "identity theft" can be leveled against people who copy without attribution, life will become interesting.

Alleged Harvard con-student faces judge

Ex-Harvard Student, Adam Wheeler, Pleads Not Guilty to Charges of Fabricating Academic History :

Wheeler's complex web of lies began to unravel when, as a senior at Harvard in September 2009, he submitted a resume, a Harvard transcript, and an essay to apply for the Rhodes and Fulbright Scholarships. During the application review process, English Professor W. James Simpson suspected that Wheeler had plagiarized the work of Professor Stephen Greenblatt, Verner said.


During the investigation, members of the faculty discovered that the student had forged two letters of recommendation submitted in his application packet for the Rhodes. His fake transcript reflected 36 A’s and one A minus over three years, but further investigation revealed that Wheeler had in reality received a D, a few B’s, and a few A’s in his time at Harvard, according to Verner.

Wheeler’s prompt departure moved investigators to examine his admissions application as a transfer student to Harvard. Wheeler had claimed to be a graduate of Phillips Academy in Andover and a freshman transfer student from MIT, producing transcripts from both institutions—neither of which he had attended, according to Verner.


Wheeler's plagiarized Hoopes-winning project, entitled "The Mapping of an Ideological Demesne: Space, Place, and Text From More to Marvell," was nominated by Suparna Roychoudhury, a teaching fellow in the English department. The published copy of Wheeler's work has been removed from Lamont, according to Harvard University Archives.

Note the discussion of the (legal) concept of demesne in Representing the English Renaissance By Stephen Jay Greenblatt.

**Some points on the Wheeler timeline, from the Middletown Transcript:

The defendant was indicted by a Middlesex Superior Court Grand Jury on May 6. The indictment was immediately sealed while the defendant was located.

On May 10, Delaware authorities located and arrested the defendant in Delaware. On May 17, Massachusetts authorities arrested Wheeler and he was rendited back to Massachusetts.

See also Harvard Crimson timeline on Wheeler matter

Of the fake SAT scores, the Crimson could find no ready explanation:

In an official statement, the College Board assured that all the score reports sent on Wheeler’s behalf were “accurate,” and that the College Board employs “rigorous security measures” to guarantee the authenticity of the official SAT score reports provided directly to each school by the Board.

“I just can’t wrap my head around that one, quite honestly,” Nassirian said about the fraudulent SAT report. “[Wheeler] took the most mechanical, most verifiable components of the application package and put fake ones in their place, and managed to get past the very robust mechanisms that must be in place.”

The Crimson alluded to the earlier Princeton fraud:

In 1991, 31-year-old James A. Hogue—who gained admission to Princeton by posing under the alias Alexi Indris Santana, a orphan from Utah—was convicted of stealing $22,000 from the University. While awaiting sentencing, he enrolled as a Harvard Extension School student and stole $50,000 in minerals and gems from the Harvard Mineralogical Museum.

Tuesday, May 18, 2010

"How does it feel to be in the murder business, Miss Hart?"

For the first time in her lifetime on NCIS, M. Allison Hart (played by Rena Sofer), patent lawyer, and generally controlling lawyer, is placed in a rather defensive position in the episode "Patriot Down."

In the subtheme of the 20 year old murder in Mexico, Abby tells Gibbs: No one needs to know the truth in the Hernandez investigation, but Gibbs gives no request to obscure the truth.

The evidence suggests that Jason Paul Dean (Dylan Bruno), employed by First Defense, the company of Colonel Bell, killed Agent Macy. Director Vance gets to grill M. Allison Hart, and asks what the hell is going on. "Do you care about Gibbs? Then tell me what patriot Bell is up to. Revenge, blackmail, leverage?" But things are not so simple.

At the end, the body in the Mexican sand is not Franks, but Bell. Did the drug dealer do it?

The following NCIS: LA show alluded to Agent Macy's murder in Annapolis.