CBS Sunday Morning on November 30, 2014

Charles Osgood introduced the stories. First, Lee Cowan discusses the Make a Wish Foundation in "Dream Team." Second, Mo Rocca on Chris Rock. Third, Hunter Davies interviewed by Mark Phillips on written Beatle lyrics. Serena Alschul on Marina Abramovicz. Martha Teichner, Bill Geist, Steve Hartman.

Headlines. March from Ferguson to Jefferson City. Pope Francis in Turkey. Ohio State player.


Consider thanking nature for Yosemite. A dream for Gabe was getting out into open spaces, given to him by Make a Wish as being a Park Ranger, where the Sunday Morning clip opens with Gabe putting out a fire threatening Yosemite. Headquarters in Phoenix, Az. David Williams is president. 35 years ago. Chris Grecious. Wanted to be Phoenix police officer. Grecious. He died two days after the wish. That was 250,000 wishes ago.

Almanac gives an IP angle. November 30, 1858 patent issued to John Landis Mason on the Mason jar. Mason was born in Vineland, NJ. Competitors entered in 1879 when patent expired. Mason died penniless in 1902 in New York City.

The claims for US 22186 :

1. A screw neck or nozzle of a jar or bottle, in combination with a groove separating the thread from the shoulder of the bottle or jar. as described.

2. A screw ou the exterior of the neck of a bottle or jar in which the neck extends above the screw-thread and the thread vanishesinto thc neck of the bottle or jar, substantially as described.


Bill Geist on Pie Town, NM. Kathy Knapp of Pie-o-Neer. Good Pie Cafe.
8000 feet elevation. Started in 1922 by Clyde Nolan on US highway 60.
Catherine Roberts, pinto bean pie. [Within the story, there was a statement that Route 60 was the first coast to coast highway; this is not correct. US Route 30, dedicated October 31, 1913, was the first coast to coast highway. Although US 60 initially stretched less than halfway across the country, due to its late creation, it was soon extended west to Los Angeles.]

Hunter Davies. The Queen stopped at the exhibit for the Beatles' Yesterday. The tune was written before the lyrics.
A day in the life.

Death of writer PD James. Cover Her Face. Erin Moriarty interview in 2011.
The Murder Room. Made a baroness in 1991.

Marina Abramovic is number 5 on powerful people in art. Museum of Modern Art display.
Sean Kelly represented her. She was born in Belgrade. Performance art. Her brain studied at Bell Labs.
Lives in upstate NY. Favorite tree. Empty room at Sean Kelly gallery.
Hugged 600 people. Marina Abramovic Institute

Martha Teichner on battle of Franklin on Nov. 30, 1864. Author Robert Hicks. In 2005, a golf course; now a battlefield. James Lighthizer of a civil war trust. Gettysburg 1895. Motel next to Lee's headquarters at Gettysburg. Princeton battlefield in Jan 1777. Institute for Advanced Study.
Lawyer Julian Bibb in FrNklin. 20 acre park. 14 million.

CALENDAR: Week of December 1, Including the lighting of the White House Christmas tree.

Faith Salie comments on shaking hands and the germs that come with it.

Moment of nature. Wakulla Springs, Fl.

See also CBS Sunday Morning for November 30

Work on Twain by Library of Congress uses text of others without citation?

An interesting matter in copyright law is brought up in the post
How the Library of Congress got caught up in a Mark Twain plagiarism scandal


An independent scholar, Kevin Mac Donnell, whose sleuthing I’ve written about before, announced earlier this month on a Mark Twain web forum that he uncovered a hefty amount of plagiarism in Mark Twain’s America, an illustrated biography by Harry Katz and the Library of Congress, and published by Little, Brown.

In his review of the book, Mac Donnell noted that its chronology of Twain’s life seemed to be lifted without attribution from Mark Twain A to Z, a reference book by R. Kent Rasmussen. Mac Donnell counted over 400 lines of prose that match Rasmussen’s text almost word for word. More scholars have since joined Mac Donnell on the forum in scrutinizing Mark Twain’s America, and they now say the text includes over 100 factual errors as well.



Yes, Doris Kearns Goodwin's name arises:


Of course this wouldn’t be the first time a sentimental survey of American history timed for a Christmas release featured a striking lack of original writing or fact checking. (A couple of books by Doris Kearns Goodwin jump to mind.) These accusations now surface about authors with alarming regularity. But what does it suggest about the state of American letters when the latest transgressor cited is actually one of the country’s oldest and most venerable libraries — the very institution where authors register their copyrights?





link: http://qz.com/300305/how-the-library-of-congress-got-caught-up-in-a-mark-twain-plagiarism-scandal/

Relevant to some recent IPBiz posts about Nikola Tesla, note that Mark Twain and Tesla were friends:


Clemens would regularly visit with Tesla, engaging in stunningly intelligent entertainment such as shooting an x-ray gun at his head for fun. There’s even rumors that Twain’s story A Connecticut Yankee In King Arthur’s Court, an early sci-fi classic, based its main character around Tesla.



link: http://www.itsokaytobesmart.com/post/14226144523/nikola-tesla-and-samuel-clemens-mark-twain-had

And recall November 30th is the birthday of Mark Twain.

See Did Nikola Tesla Play a Practical Joke on Mark Twain’s Birthday? , an electrical variant of the old Ex-Lax in chocolate trick

Counter-argument from India on the optimum patent protection

From an interview between Rema Nagarajan and Anand Grover, former UN special rapporteur on the right to health


Actually , they, the US and EU, ought to learn from us [India]. As UN special rapporteur on health, I had advised them to change their patent laws along the lines of the Indian one because we found that with their law, a majority of the drugs being patented were just new forms of existing drugs with no change in therapeutic efficacy. It is precisely to prevent this sort of tweaking of existing drugs to get patents that we have section 3(d). FDA's own data says 76% of drug patents in the US are for new forms of existing drugs. I pointed out to them that they were giving the same number of years under patent for an original new molecule as for new forms of an existing molecule. Companies make the same amount of money by tweaking existing molecules. So what's their incentive to discover new molecules? That's why the discovery of new molecules is grinding to a halt. If they had a law like ours, they would see how many new molecules and drugs would be discovered. But the pharma lobby that heavily funds US elections is too strong for the government to bring the necessary changes in patent laws.



link: http://timesofindia.indiatimes.com/home/stoi/all-that-matters/If-US-had-a-patent-law-like-ours-they-would-discover-many-more-drugs-Anand-Grover/articleshow/45322866.cms

Steve Jobs as an inventor

Within a post titled Steve Jobs Lives on at the Patent Office , the MIT Technology Review discusses the patents of Steve Jobs.

An oblique comparison to Edison arises:


“Whether Steve Jobs was a great inventor depends on whether one is prepared to define the term extremely broadly,” says Mueller. “I’m convinced that if true American inventors like Edison, Bell, and Whitney looked upon Steve Jobs’s achievements and contributions, they would undoubtedly respect the man for what he’s done but they wouldn’t consider him one of their own.”

One criticism is that on his patents, Jobs’s name often appears alongside a score of others, meaning these inventions or designs weren’t entirely of Jobs’s making. Instead, Jobs shared credit for what Apple’s more than 80,000 employees did, something Kane argues “fed into his legend as a one-in-a-lifetime visionary.”



As to Edison, some have suggested that Edison placed his name as inventor on patents for which he was not truly an inventor.
One person's opinion: Edison WAS a thief, he would hire people, take their ideas, and fire them, he had entire divisions of minions (yes I'm using that word) just to make sure that he was the one of his age that made it into the history books, he did everything he could to deface and disgrace his colleagues and competitors... The story of Edison's interaction with Nikola Tesla is legendary. And Edison fired Reginald Fessenden.

If so, Edison might look upon Jobs' inclusion of other inventor names in a different light than suggested above. But not related to Jobs' inventorship or being "one of their own."

As to the concept of inventorship:


Tim Wasko, who developed the interface for Apple’s QuickTime player and the iPod, remembers that Jobs would give feedback on small details, and he’d often end up with a position on a patent. That’s what Wasko says happened when he came up with a concept for a button used on software called iDVD. The button shuts like an iris, giving you a chance to interrupt a process. “It looked pretty cool so he loved that,” says Wasko. “He had useful comments, suggestions, and it’s worthy of him being on the patent.”



There is an allusion to Lemelson:


Deceased inventors can win patents if the approval process draws out, or when attorneys seek “continuations”—essentially new versions of old patents. And the more lawyers and money an inventor has, the more likely his ghost will rattle on. The estate of Jerome Lemelson, the sometimes-controversial independent inventor who came up with the bar code reader, received 96 patents following his death in 1997 at age 74.



Lemelson and MIT have ties:


Jerome H. Lemelson, one of U.S. history’s most prolific inventors, and his wife Dorothy founded the Lemelson-MIT Program at the Massachusetts Institute of Technology in 1994. It is funded by The Lemelson Foundation and administered by MIT's School of Engineering. The Lemelson Foundation uses the power of invention to improve lives, by inspiring and enabling the next generation of inventors and invention based enterprises to promote economic growth in the US and social and economic progress for the poor in developing countries.



In passing, the History Channel [H2] discussed the interrelation of Edison, Tesla, Westinghouse and J.P. Morgan in the show The Men Who Built America/Changing the Game. There is a suggestion that J.P. Morgan threatened Westinghouse with an unjustified patent infringement lawsuit, which Westinghouse had insufficient funds to contest.

And recall Morgan forced Edison out of what became General Electric (and Jobs left Apple for a while.)

Nazomi v. Microsoft: stipulation gambit fails

This case is one of which the losing party on claim construction
stipulated to a decision (here, one of non-infringement) in order
to appeal to the CAFC. Here, that path did not work out well
for the stipulator.


In light of that construction, Nazomi stipulated to a
lack of literal infringement of the constant pool
limitation. Summary Judgment Order II, 2013 WL 4066847, at *4–
5. And the court found that Nazomi failed to establish how
the accused devices operate d in “substantially the same
way” under the doctrine of equivalents. Id. at *5.
Accordingly, the court granted the technology companies’ motion
for summary judgment of noninfringement based on the
constant pool limitation. Id.
The court alternatively granted the technology companies’ motion for summary
judgment of noninfringement based on the indication of a
reference limitation, finding that the accused devices did
not identify a location within the constant pool. Id. at *6.




BUT



We have considered all of Nazomi’s argu-
ments and find them unpersuasive



link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1173.Opinion.11-24-2014.1.PDF

EFF rips Penn State's US Patent 8,442,839

Within the post Stupid Patent of the Month: Who Wants to Buy Teamwork From Penn State? , EFF concludes


We urge Penn State and all universities to be more responsible. Instead of selling patents that have little value except as litigation weapons, universities should focus on true technology transfer—partnering with others to bring new technologies into the world. And universities should end their opposition to patent reform.



The law firm Krass, Sprinkle, Anderson & Citkowski, P.C. prosecuted the patent titled: Agent-based collaborative recognition-primed decision-making, with first claim:


An improved decision-making process, comprising the steps of: providing a collaborative, team-oriented computer architecture wherein human and software agents interact through a shared mental model including an experience knowledge base; receiving information regarding a current situation to be analyzed; consulting the experience knowledge base to qualify the received information based upon any similarities to the current situation; presenting the qualified information to a user through one of the agents; interacting with the user to receive assistance in the form of assumptions or expectancies about the situation; providing the refined information and assumptions or expectancies to other agents; utilizing cues in the experience knowledge base to contact one or more external information sources to gather missing, relevant information, if any, in support of the assumptions or expectancies; using the missing, relevant information in conjunction with other collected information to determine whether a decision about the situation is evolving in an anticipated direction; and, if so: informing the user and updating the experience knowledge base to enhance the quality or timeliness of future decisions regarding similar situations.



Yes, the work was government - sponsored (meaning Bayh-Dole): The research carried out in connection with this invention was supported in part by Grant No. DAAD19-01-1-0504 from the United States Army. The United States government may have rights to the subject matter of this application.

60 Minutes on November 23, 2014

The first story, done by Steve Kroft, on Falling Apart, on infrastructure decline.
70,000 bridges need to be fixed. Roy LaHood. First up, city of Pittsburgh, with Liberty Bridge illustrated.
300 bridges become structurally deficient each year. There are 15 structurally deficient bridges on I-95 in Philadelphia.

An I-35 bridge collapsed in Minnesota. Spending on infrastructure at lowest level since 1947. Gas tax last raised in 1993. Last transportation bill passed in 1997. Also, issues with air travel. Only two east coast US seaports deep enough for large ships. Hackensack bridge in NJ. Single point of failure.

Second story on sealing the reactor at Chernobyl. Bob Simon visits the largest
Movable arch in the world. Debris called the elephants foot. April 26.
Tim Russo of the University of South Carolina. Tourists coming to Chernobyl.

"To those who saved the world"

Patent "Quality", again

Within the law review article by Liang, 11 J. Marshall Rev. Intell. Prop. L. 477:


There is some dispute, however, over the extent to which allowance rates actually reflect patent quality, or more fundamentally what the "allowance rate" actually represents and how it is calculated. n217 At the PTO, many patent applications are continuations, divisionals, or represent continued examinations of [*512] other applications. n218 Some rejected applications are appealed and rejections may be overturned. n219 Thus, the allowance rate may not really represent the percentage of applications that are eventually granted. n220 But if consistently calculated across patent offices and accounting for external factors, allowance rates should help provide an approximate comparison of patent quality across patent offices and over time.



with references:


n217 Malackowski & Barney, supra note 106; Joff Wild, Patent Quality and the Plummeting USPTO Approval Rate, INTELL. ASSET MGMT. (Mar. 6, 2008), http://www.iam-magazine.com/blog/Detail.aspx?g=3fa6e5b7-6c7a-4387-8e54-821924c2ecfe (last visited Apr. 16, 2012).

n218 Cecil D. Quillen, Jr. & Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office--One More Time, 18 FED. CIR. B.J. 379 (2009).

n219 37 C.F.R. § 41.31 (Nov. 22, 2011 through April 4, 2012).

n220 Cecil D. Quillen et al., Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office--Extended, 12 FED. CIR. B.J. 35 (2002).



with n106: James Malackowski & Jonathan Barney, What is Patent Quality? A Merchant Banc's Perspective, 43 LES NOUVELLES 123, 123-24 (2008).

See also LBE, On Patent Quality and Patent Reform , 88 J. Pat. & Trademark Off. Soc'y 1068 (2006) , with the text


In the brief of petitioners eBay and Half.com to the Supreme Court in January 2006, a 2001 paper of Cecil Quillen (and Ogden Webster) was cited for "estimating the rate of patent approvals by the PTO to be 97%." n12 Separately, the brief of Yahoo in the eBay case n13 cited the same Quillen/Webster paper for the proposition: "The PTO approves between 85 to 97 percent of the applications it receives." The Yahoo brief also stated: "As an initial matter, far too many low quality patents issue, as the district court in this case noted." n14 Other papers had cited the Quillen paper for the proposition of a 97% patent grant rate. n15 In fact, Quillen and Webster wrote in 2001: "The Grant Rate for the PTO in fiscal years 1993-1998, corrected for continuing applications, ranges from 80% to 97%, depending on the extent to which prosecution of abandoned applications was prolonged in continuing applications." The 2001 paper of Quillen and Webster stated that the grant rate was within a range, and never explicitly asserted that the grant rate [*1071] was 97%. n16 Nevertheless, the 97% number persists in the legal literature, along with the perception that the examination process at the United States Patent Office [USPTO] lacks quality.


See also LBE, Comment on "Patent Grant Rates at the United States Patent and Trademark Office" , 4 Chi.-Kent J. Intell. Prop. 186 (2005), with text


we suggest that Quillen and Webster's elevated grant rates arise from a flawed numerical approach.




AND, relevant to continuing applications,



Mark Lemley and Kimberly Moore, in footnote 22 of an article in the Boston University Law Review, n17 asserted that Clarke was guilty of "erroneously assuming that every continuation resulted in a patent and concluding that the grant rate was 75%." Because of this assertion, Lemley and Moore concluded "The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that issue based on continuations, and reflects the best estimate we have of how often applications mature into patents."

As pointed out earlier, Clarke made no assumption anywhere in his paper that "every continuation resulted in a patent" and, as such, the footnote is incorrect and not properly cite-checked.

Subsequently, it has been suggested that the footnote intended to state "erroneously assuming every allowed continuation resulted in a patent." This suggestion may be criticized on several grounds.

First, Clarke did not "assume" every allowed continuation resulted in a patent. To eliminate the effects of continuing application practice on the patent grant rate, he identified issued patents claiming priority to an earlier issued patent and he removed them from consideration. n18 This removal included all continuing applications (continuations, divisionals, continuations-in-part).

[*195] Second, Clarke did not remove from consideration allowed continuations that did not claim priority to an issued patent and Clarke did not remove from consideration allowed continuations which did not give rise to a patent.

Third, in working with data on issued patents to identify the number of patents based on continuing applications, Clarke merely did a more thorough job of what was attempted in the QWII. As stated in footnote 22 of Lemley and Moore: "The 85% number provided in the revised Quillen et al. study is based on actual data about the applications that ISSUE based on continuations," [emphasis added n19], QWII made their correction based on data on ISSUED applications, not on ALLOWED applications. If the use of data on ISSUED applications means an assumption that every allowed continuation resulted in a patent, then it is an assumption made by both Quillen/Webster and Clarke. Because it is assumed by both, this assumption is not a basis to select the results of Quillen/Webster over those of Clarke.

Thus, footnote 22, as written, is incorrect, and even as favorably modified is irrelevant to distinguishing the results of Quillen/Webster from those of Clarke.

"CBS Sunday Morning" on November 23, 2014: eat, drink and be merry

Charles Osgood introduced the food issue. The cover story by Dave Pogue is "The Next Course," on the future of food. Second, Lee Cowan on spam. Third, Seth Doane on cooking schools. Fourth, Tracy Smith on Patti LaBelle. Fifth, Susan Spencer on new flavors in foods in Campbell's Soup Products. Headlines of November 23. Suburban St. Louis: still no decision. Marion Berry of Washington, DC has died. He lived the way he wanted to. Iran's nuclear program. Buffalo, NY worries about rain. Weather: severe storms in southeast. Snow in mountain west.

Dave Pogue of yahoo.tech on "the next course." Miller's company makes cookies made of cricket flour. Sort of toasty. Each cookie has 25 crickets in it. There are cricket farms. Crickets mature in six weeks. Cricket cobbler. Rob Reinhart on "soylent." Clip from "Soylent Green." Soylent manual 1.1. 3 meals with 2000 calories. Bon Appetit and Watson the computer. Adam Rapaport. "Chef Watson." 9000 recipes to Watson; then Watson spins out recipes. Watson combined ground beef and banana. Watson produced 100 recipes with pork chops and apples. Holiday mixed drink: rum and apple.

The fruit bowl. Martha Teichner in Moscow, Idaho on artist Roger Rowley on fruit plates. Giant kaleidoscope. A calendar of color. A sense of the seasons. Nothing too fancy. Be true to what you buy in the store. The farmers market is next to the art gallery.

Seth Doane in Osaka. Cable show Iron Chef. tsuji cooking institute. 54 year old cooking school. Cleaning fugu blowfish.
Making Japanese cake wagashi look like flower. Eating professionally. Yoshiki Tsuji

Susan Spencer does her first short clip of Nov. 23. Campbell's clip. Beer and cheese with beef and bacon. A guy's soup for watching football. Mark Alexander. chef's are encouraged to soup things up. Jazzy Jambalaya. Kickin' buffalo chicken. Chicken noodle soup has 32 feet of noodles in every can. Sirloain burger: 8 or 10 miniburgers. making grill marks is trade secret.

Rita Braver on menus. Eleven Madison Park in NYC has no written menu. There are 635,000 restaurants in US. At NY Public Library, Rebecca Fetterman curates the menu collection. Boston's Parker House hotel: stewed eel. Menus for Lusitania. Seating charts. Howard Johnson's. Hooters. Wheeler's fish menu. Greg Rapp; Menu Design. Exo Cafe. Take dollar sign off. Items in boxes. iPad menus. Computer tablet menus. Barbetta menu.

Mo Rocca on Cecillia Chang. Chinese dumplings. Yank Sing restaurant. Chang grew up in a 52 room restaurant. The Mandarin. Peking duck. Kung Pao chicken. Herb Caen stopped by for a meal. John Lennon was a customer. Jack Nicholson.
Frank Sinatra. Soul of a banquet. I don't like to follow; I like to do something different. I think chop suey disapper.

Nancy Giles on slow cooker/crock pot. "What a crock." Crock pot app. Normally 8 hours. Port and beef broth. First stop: voiceover job. Chewbacca at Times Square. Happy slow cook dance.

Lee Cowan on spam. Hawaii. Spam-a-holic paradise. No state eats more spam. 14 varieties of spam. apam/macadamia.
Hawaiian prime rib at McDonald's. TikiNiki: spamburger. Todd Rundgren. Better than hot dog: does not have snouts or anuses in it. Hormel: 395 cans per minutes. Invented in 1937. Monty Python helped spam. Span's kitch.
Jeff Ettinger. Sue the muppets. True slice of Americana. Blue and yellow can.

Susan Spencer. babeth's feast. one giant freezer section. petiete fig and caramelized onion puffs. Clarence Birdseye.
Average 71 frozen meals per year. Cardboard pizza. 50 billion per year industry.

Tracy Smith does Sunday Profile on Patti LaBelle. Last May, LaBelle turned 70. Godmother of soul food. Brisket for Keith Richards. Her piano player Elton John. Mac and cheese: over the top. Patti has diabetes. Shopping in Philadelphia: veggies and fish. Patricia Louise Holt. Patti LaBelle and the Blue Belles. Lady Marmalade. Was about a hooker. Two years after Marmalade, Patti was on her own. Anything can be snatched from you; don't complain.

Center screw press from Harlen. Faith Salie. Andy Brennan . Aaron Burr Cidery. Juice stored for six months; ferments to 7.5%. David Flaherty. Cider's return Cider is a bridge between wine and beer. Orchard St in NYC. Grown up juice box.

Susan Spencer on "Peanut Butter and Company" in NYC. The Elvis: peanut butter, bananas and bacon. "National Peanut Board." 800 million per year. Arachibutyrphobia. . Thomas Jefferson and Jimmy Carter were peanut farmers.

Jim Gaffigan, comedian, on weight gain. A day of gratitude. Overconsuming turkey and pies. The name stuffing. Also called dressing. Stuffing cooked inside a dead animal. Outrage of personal dignity. Book "Food: a love story."

Next week: Paperback writers on the Beatles.

Moment of nature. Turkeys. Little River State Park in Oklahoma.

Columbia Journalism Review on plagiarism

David Uberti has a post in the Columbia Journalism Review titled Journalism has a plagiarism problem. But it’s not the one you’d expect

The "unexpected" problem seems to be the variability in responding to plagiarism issues, once identified, and correlatively altering the definition of plagiarism, ex post, to correlate with the planned punishment (i.e., if the punishment is weak, then it wasn't plagiarism).

One goes back to the inadvertent plagiarism discussion in the Glenn Poshard plagiarism matter.

A separate issue is when a plagiarism discussion masks a deeper problem, as in the Laurence Tribe matter.

US 8,857,000: dry board eraser system

The inventor was in the third grade when the case was filed.

The case was prosecuted by Gearhart Law of Summit, New Jersey, the principal lawyer of which is Richard Gearhart, once of Novartis Pharmaceuticals.

Yes, there was an examiner interview. It occurred on 14 July 2014. It was telephonic, and involved the examiner and attorney James Klobucar. Some claims were amended in view of prior art.

Klobucar is a law grad of Franklin Pierce (now University of New Hampshire School of Law ) and is co-author of the paper
Patent Landscape of Algae Biodiesel: Applicable Genetic Engineering Technologies. University of New Hampshire School of Law Educational Report (2011)

Of some relevance to this is the paper: Matthew R Preiss and Stanley P Kowalski, Algae and Biodiesel: Patenting Energized as Green Goes Commercial, 16 J. Comm. Biotech. 293 (2010)


Also of some relevance is T. J. Lundquist et al., "A Realistic Technology and Engineering Assessment of Algae Biofuel Production," [link: http://www.qibebt.cas.cn/xscbw/yjbg/201012/P020101216508997822989.pdf ]


which in turn cites to an abstract by J. T. Hauck, "Effects of simulated flue gas on growth of microalgae," from the 212th National ACS meeting.

The patent numbers game: "my stack is bigger than your stack" arguments are so gone...

On October 24, 2014, InsideCounsel had a post "Assessing IP Assets," with the text:




The importance of due diligence historically has been downplayed. For the most part, it didn’t matter what condition an asset was in so long as it was acquired. Entities used intimidation tactics to walk into a negotiation with a stack of patents and simply say that “my stack is bigger than your stack.” To do so, they wanted assets, no matter the warts associated with them. Today, the litigation and negotiation environments are much different. Quality, not quantity, assets define a negotiation and whether one entity has IP leverage over another.



Simply running numbers, without evaluating quality, is "out" in due diligence.

Yet, IEEE Power had a post on November 19, 2014, Patent Power 2014
This year’s roundup of the companies and organizations with the strongest U.S. patent portfolios , authored by Anthony Breitzman and Patrick Thomas, cofounders of 1790 Analytics.

LBE talked about earlier work of Breitzman in the Dec. 96 issue of Intellectual Property Today, as later mentioned in the
2009 IPBiz post
Quality lacking in HP laptops?

The topic of "patent citations as metric" was mentioned: "Patent citations turn out to be quite different in character from the citations we may be familiar with in the citation literature."]; E. Simmons, "Patent family databases 10 years later", Database, Vol. 18(3), Pg. 28, (June, 1995).


See the more recent IPBiz Evidence from micro-level patent application data or gobbledygook from the depths of legal academia?

One Republican election loss that may impact IP legislation in the coming term

In an election year that favored Republicans, a House seat loss by Republicans in Nebraska may impact IP.

Of the loss:


Lee Terry, who represents an Omaha-based district, was considered one of the few vulnerable Republican congressional incumbents this election cycle. Democrats set their sights on his seat after he made damaging comments about keeping his salary during the federal government shutdown in 2013.

link



Michael J. Remington of Drinker, Biddle & Reath LLP, Washington stated: Congressman Terry's loss is a loss for the Congress, irrespective of the impact on legislation


Terry was sponsoring a bill to curb abuses associated with patent infringement demand letters.

see Effect of Election on Patent Litigation, Demand Letter, Other IP Legislation Weighed

Patent battle at ED Va yields outcome different from ITC

The patent battle between DeLorme and BriarTek is an example of differing outcomes at a district court in comparison to the ITC.

Judge Brinkema of ED Va found the BriarTek patent invalid. The ITC found it infringed.

CAFC reverses Judge Robinson of D. Del. in VERSATA case

Of note in the CAFC decision:


While we typically review district court decisions on
motions to stay for abuse of discretion, the AIA also
provides this court authority “to conduct more searching
review of decisions to stay pending CBM review.”
Benefit Funding Sys. LLC v. Advance Am. Cash Advance Ctrs.
Inc., 767 F.3d 1383, 1385 (Fed. Cir.2014);see also AIA §
18(b)(2) (providing that this court “shall review the
district court’s decision to ensure consistent application of
established precedent,and such review may be de novo”).
Even under the traditional abuse of discretion standard,
the district court’s order denying a stay pending the
PTAB’s review must be reversed.



link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1468.Opinion.11-18-2014.1.PDF

Google agrees to settle with Rockstar

In a post titled Google, Rockstar agree to settle patent litigation: filing , Reuters reported on 20 November 2014


In October last year, Rockstar sued Google and several handset manufacturers whose phones operate on Google's Android operating system. Rockstar accused Google of infringing seven Nortel patents, all related to search engine technology.

(...)

Google Inc has agreed to settle litigation with patent consortium Rockstar, though terms of the deal were not disclosed in a court filing made public this week.

The interplay of plagiarism accusations and FERPA

Note the report in the Chicago Sun-Times, Hearing officer, UIC clear CSU official of plagiarism, in the Angela Henderson matter.

The report contains the following text


UIC is accused of violating the federal Family Educational Rights and Privacy Act by publicly discussing Henderson’s dissertation and the accusation made by an adversary, Chicago State History Professor Robert Bionaz. The act, known as FERPA, bars schools from releasing private information on student academics without permission.



As to the plagiarism issue


Kaufman, in a letter to Henderson dated July 22 — a day after the lawsuit was filed — wrote: “The hearing officer has stated persuasively that, except for the citation problems, the dissertation meets generally accepted standards for scholarship. . . . Your degree will stand as it was issued.”

CAFC in E.DIGITAL v. FUTUREWEI and HUAWEI DEVICE addresses collateral estoppel

From the decision:


To be clear, our decision that collateral estoppel
cannot apply to the construction of a claim in one patent
based on a previous claim construction of an unrelated
patent is not an invitation to assume the opposite is
always justified.

That is, a court cannot impose collateral
estoppel to bar a claim construction dispute
solely because the patents are related.
Each case requires a determinaion that
each of the requirements for collateral estoppel
are met, including that the
issue previously decided is identical to the one sought to be litigated.

A continuation-in-part, for instance,
may disclose new matter that could
materially impact the interpretation of a claim, and
therefore require a new claim construction inquiry.




As to re-eamination:

Alhough we do not hold that
reexamination history cannot ever create a
new issue that would preclude the application of collateral estoppel, such
a scenario does not exist here because the
reexamination history in no way
modifies, clarifies, or even informs the
construction of the sole memory limitation.

Apple and Skytel

See post Apple loses a patent battle over Skytel's two-way pager tech

Is there “a culture of fraud” at the US patent office?

Within a post titled House hearing probes alleged telework abuses at U.S. Patent and Trademark Office covering the Congressional hearing on 18 November 2014, there is text:



Connolly asked Focarino about the charge that the incidents represent “a culture of fraud” at the patent office. “No, I don’t think they do represent a culture of fraud,” she said. “The vast majority of the men and women working at the patent office are hardworking examiners.”



There was testimony at a joint hearing of the House Oversight and Government Reform Committee and the House Judiciary Committee, related to charges in the Washington Post about white washing in a report furnished to Commerce Department Inspector General Todd J. Zinser. The issue at the hearing was the scope of improprieties that were mentioned in an earlier report, but then omitted in the final report to Kinser:


In opening remarks at the hearing, Rep. Bob Goodlatte (R-Va.), chairman of the Judiciary Committee, said it is “disturbing” that the management of the patent office “would not allow a thorough investigation” of the allegations. He said that stand called into question statements by patent office officials that the abuses were isolated and not systemic.



Some testimony suggested the scope was limited:


Robert Budens, president of the Patent Office Professional Association, which represents 8,300 patent examiners, testified that the allegations of wrongdoing are isolated cases in the context of the agency’s success last year in reducing a troublesome backlog of patent applications.


A Reuters report got into the issue of "end loading":


Examiners have been accused of "end-loading," or turning in most of their work just before a quarter ends to satisfy what is essentially their work quota. Critics say examiners also practice "mortgaging," or turning in unfinished work to get credit for the quarter.

Issa called those two practices "scams against fee-paying applicants."


The Reuters report suggested that telework, per se, was not the problem:


A handful of patent attorneys who regularly deal with the office said telework was not the issue as much as inadequate supervision both inside the Virginia headquarters of the patent office and outside.


A post by The Hill titled Members talk charges for patent office abuses began more aggressively:


During a joint hearing by the Oversight and Judiciary committees, members used words like "outrage," "fraud" and "scams" to describe reports that some patent examiners lied about the amount of time they worked and accusations that the office attempted to "sanitize" an internal review of the allegations.

Others floated the idea of prosecuting those employees who abused the program.

"Are we pursuing an investigation in any way, shape or form to prosecute these people if the evidence is there?" asked Rep. Tom Marino (R-Pa.), a former prosecutor.


The post at The Hill linked "end loading" with "vague patent rejections":


The committee honed in two specific abuses. "End-loading" involves employees waiting until the end of a quarter to finish large amounts of work, which can sometimes lead to vague patent rejections.

The other abuse is described as "mortgaging," in which examiners turn in incomplete work to get credit, before completing it later on.



The Hill report included text from Oversight Committee Chairman Darrell Issa (R-Calif.) which suggests "why" Michelle Lee may not have been present at the hearing:


Last month, Michelle Lee, who was nominated to lead the office, touted the “award-winning" program as a part of retaining talent and saving money, allowing it to double the number of patent examiners in a decade.

She said "no program is perfect" but asserted the telework program has helped to cut down the patent backlog. The patent application backlog remains above 600,000, but that number decreased by about 150,000 since 2009, despite an increased demand.

"Recent revelations make it clear it should not have been touted," Oversight Committee Chairman Darrell Issa (R-Calif.) said, pointing out he is a holder of multiple patents from his work before entering Congress.

Evidence from micro-level patent application data or gobbledygook from the depths of legal academia?

LBE got a chuckle from text at the writtendescription blog:


Prior work by Mark Lemley and Bhaven Sampat has shown that more experienced examiners grant more patents, and they have some results suggesting that this is not just due to selective retention. But I think Lemley & Sampat can’t distinguish between at least three very different stories, which are that more senior examiners grant more patents because (1) they are more out of touch with the latest scientific trends, (2) they are more captured by pro-patent interests, or (3) they just have less time to do their job as well as they would otherwise like. Frakes & Wasserman's new results seem to give us much more confidence that #3 is the correct answer.



One is dealing with a correlation "granting more patents" to "granting bad patents." And the root of evil is --they just have less time to do their job as well as they would otherwise like --

But later on one finds the text:


But they [Wasserman and Frakes] also find that when you control for the decreased time per application, experienced examiners actually grant fewer patents, which is a really interesting result. And consistent with this story of time-crunched examiners triaging their work, they find that when the time per application decreases, examiners are particularly less likely to make time-intensive obviousness rejections, and that the patents they grant fare less well on various quality metrics. They estimate that if all examiners were given as much time as those examiners with the most generous allocations, the PTO would grant nearly 20% fewer patents per year.



Hmm, the patents fare less well on patent quality metrics? And what might these be?


Consistent with the relevant patent literature, we amass for each issued patent in our sample the following metrics of value: (1) the incidence of patent renewal at both 4 and 8 years (Schankerman and Pakes, 1986), (2) the number of citations made by subsequent patents, normalized by the number of claims (Hall, Jaffe and Trajtenberg, 2005)


Paying maintenance fees is a commercial decision made after a few years, and is not about the "quality" of the invention. An invention can be "not valuable" to an original inventor and "quite valuable" in the hands of another. Ask Xerox about this. How many artists lived in poverty, with the "quality" of their work "discovered" after their death? How long did it take for people to discover the value of inventions of Chester Carlson or Reginald Fessenden?

It's sad that a paper in the year 2014 would be talking about patent citation as a useful metric. Even Lemley gave up on this. This nonsense was debunked years ago:

Edlyn S. Simmons and Nancy Lambert. "Patent Statistics: Comparing Grapes and Watermelons" In Recent Advances in Chemical Information, Proceedings of the 1991 Montreux International Chemical Information Conference & Exhibition, H. Collier, Ed, (Royal Society of Chemistry, Cambridge; CRC Press) pp 33-78 (1992).

Simmons, Edlyn S.; Lambert, Nancy. "Comparing grapes and watermelons." ChemTech 23 (6), 1993, p. 51-59

See the IPBiz post
The citations found in patents: do references cited by the applicant matter?

In their publication The Decline and Fall of Gobbledygook, the Canadian Bar Association agrees, “The term ‘legalese’ refers to a style of writing used by lawyers that is incomprehensible to ordinary readers.” from a post by Kelly Laycock.
The logic and style of the arguments about patent examiners is indeed incomprehensible.

Perhaps "patenthawk" should include law review articles, in addition to court decisions, within his scope; from a recent post on Bristol-Myers Squibb v. Teva:


What was remarkable was the inane confusion at the court. Judges Dyk and Wallach stated that "post-invention evidence" is rightly not allowed in considering obviousness. As Judge Newman observed: "Precedent is clear that the information and comparative data presented as evidence of nonobviousness need not have existed before the patent application was filed," noting the secondary consideration of commercial success, and citing several instances where evidence of unexpected results found later were considered relevant to obviousness. The CAFC continues to be an inexcusably pathetic excuse for a patent court: creating self-contradictory precedent and thereby failing to provide guidelines that the patent office and patent community may reasonably rely upon.



And, let's not forget US Patent 6175824 titled Method and apparatus for choosing a stock portfolio, based on patent indicators, to Breitzman and Narin inventors, assigned to CHI Research, with abstract


A portfolio selector technique is described for selecting publicly traded companies to include in a stock market portfolio. The technique is based on a technology score derived from the patent indicators of a set of technology companies with significant patent portfolios. Typical patent indicators may include citation indicators that measure the impact of patented technology on later technology, Technology Cycle Time that measures the speed of innovation of companies, and science linkage that measures leading edge tendencies of companies. Patent indicators measure the effect of quality technology on the company's future performance. The selector technique creates a scoring equation that weights each indicator such that the companies can be scored and ranked based on a combination of patent indicators. The score is then used to select the top ranked companies for inclusion in a stock portfolio. After a fixed period of time, as new patents are issued, the scores are recomputed such that the companies can be re-ranked and the portfolio adjusted to include new companies with higher scores and to eliminate companies in the current portfolio which have dropped in score. A portfolio of the top 10-25 companies using this method and a relatively simple scoring equation has been shown to greatly exceed the S&P 500 and other indexes in price gain over a ten year period.


There is a citation to --Bronwyn, H.H., Jaffe, A. and Trajtenberg, M. "Market Value and Patent Citations: A First Look" (Apr. 1998. Paper prepared for the Conference on Intagibles and Capital Markets, New York University, May 15-16, 1998, pp. 1-34). . -- and to -- Breitzman, A., and Narin, F. "A Case for Patent Citation Analysis in Litigation" (The Law Works, Mar. 1996, vol. 3, No. 3, pp. 10-11, pp. 26-27). --

This patent has been cited in 89 patents, most recently in US 8,818,996, titled Method and system for probabilistically quantifying and visualizing relevance between two or more citationally or contextually related data objects, assigned to PatentRatings, LLC.

NCIS on the legal issue of the status of a Navy Corpsman aiding civilians (Navy medics are not discharged as EMT Basic (?))

A Navy corpsman helps victims of a car crash, and is charged with practicing law without a license.

A police officer (Harper) tells Gibbs: you can't change the law.

Gibbs contacts lawyer Carrie Clark to help the corpsman Anna Dillon. There is a flashback to Anna helping the injured in Afghanistan.



As to forensics, the distinction between paint silver 266 vs. silver 272 leads NCIS to the owner of the vehicle causing the car crash. The owner is " Dave Lancelotti ", played by actor Lou Ferrigno Jr. (yes, the son of the Incredible Hulk).

Interesting line. "The men in mensroom is more of a rule than a suggestion." On finding Bishop in the mensroom.
Discussion of Abby's requirements for men. #8. Advice to Bishop: Let Abby be Abby.

Carrie talks to Anne. Navy training does not comply with state licensure. Kerry says admit what you did.

Gibbs to Harper: make sure we're punishing the right person.


Lancelotti is found dead, a bullet wound in his head, and a gun in his hand.

Ducky determines Lancelotti was already dead when gunshot happened.

Kerry talks to father of deceased Hicks. Anna mentions that J.B. Hicks told Anna to help the other two. Hicks's father expresses surprise that Anna is charged.
Gibbs: It may not be right but it's the law.

Abby: a watched DNA never dings.

The dna of Bennett Jemaine shows up on the murder weapon of Lancelotti.

Abby has a date with Burt. They talk about the "two month thing."
Burt gives Abby black roses.

Anna notes "My life is on the line." Gibbs shows sanding "with the grain."
Kerry shows up. Fairfax County Prosecutor gives deal. Anna gets "community service."
Gibbs says to Anna: go to school; get certified.


The CBS write-up on "Semper Fortis" :



Gibbs searches for a way to clear a Navy Hospital Corpsman, who has served two medical tours in Afghanistan, after she's indicted for illegally providing medical aid to the victims of the crash, even though the surviving victims swear by her life-saving techniques,


See link: http://www.screenfad.com/ncis/ncis-sneak-peak-s12e08-semper-fortis-28194#sthash.pnpeSe0n.dpbs which includes
the text


While Army and Air Force medics are discharged as EMT Basic, the Navy does not enjoy that privilege. Because of that disparity, Dillon is a civilian, not an EMT. It is illegal for civilians to practice medicine without certification. She never will be hired in her field, even if she is found innocent of any charges. Knowing the consequences, Dillon still chooses to do the right thing.



UPDATE on Nov. 22, 2014

One person asked about Good Samaritan laws.

One discussion on LexisNexis:

-->James v. Rowe, No. 87-2297-S (D. Kan. Nov. 25, 1987
When plaintiff suffered a head injury, the ambulance service was called to the scene to provide emergency care and to transport him to the hospital. Plaintiff claimed the ambulance service employees were negligent in treating him and in failing to transport him immediately to a facility capable of treating him. The service asserted the Kansas Good Samaritan Law exempted it from liability for ordinary negligence.

The court, in examining the Kansas law, rejected defendant's contention that the legislature intended to extinguish common law negligence for all health care that might be given in an emergency. The purpose for enacting the Good Samaritan Law was to encourage medically trained personnel to assist in an emergency situation.

Further, the court stated no Kansas court had interpreted the Good Samaritan Law. Those states that had interpreted similar laws have uniformly held that the law was not meant to exempt all medical personnel in every emergency situation, only those who encounter an emergency outside the normal course of their work and who would otherwise have no duty to assist.
<-- Update on Nov. 23, 2014 from the case KLEINKNECHT v. Gettysburg College, 989 F.2d 1360 (CA3 1993) :
we address the College's argument that Pennsylvania's Good Samaritan law provides immunity to both the College and its personnel who rendered emergency care to Drew. This statute provides in pertinent part:



(a) General rule.--Any person who renders emergency care, first aid or rescue at the scene of an emergency . . . shall not be liable to such person for any civil damages as a result of any acts or omissions in rendering the emergency care, first aid or rescue . . . except any acts or omissions intentionally designed to harm or any grossly negligent acts or omissions which result in harm to the person receiving the emergency care, first aid, or rescue . . . .

(b) Exceptions.--

* * *

(2) In order for any person to receive the benefit of the exemption from civil liability provided for in subsection (a), he shall be, at the time of rendering the emergency care, first aid or rescue . . . the holder of a current certificate evidencing the successful completion of a course in first aid, advanced life saving or basic life support sponsored by the American National Red Cross or the American Heart Association or an equivalent course of instruction approved by the Department of Health . . . and must be performing techniques and employing procedures consistent with the nature and level of the training for which the certificate has been issued.

42 Pa. Cons. Stat. Ann. § 8332(a), (b)(2) (1982).


As to the state of Virginia, one has


§ 8.01-225. Persons rendering emergency care, obstetrical services exempt from liability


A. Any person who:

1. In good faith, renders emergency care or assistance, without compensation, to any ill or injured person (i) at the scene of an accident, fire, or any life-threatening emergency; (ii) at a location for screening or stabilization of an emergency medical condition arising from an accident, fire, or any life-threatening emergency; or (iii) en route to any hospital, medical clinic, or doctor's office, shall not be liable for any civil damages for acts or omissions resulting from the rendering of such care or assistance.

(...)

This is about civil damages. This does not address whether or not performing a tracheotomy [a surgical procedure which consists of making an incision on the anterior aspect of the neck and opening a direct airway through an incision in the trachea (windpipe). ] by a civilian amounts to a violation of state licensure laws.

[None of this should be construed as providing legal advice, or forming an attorney-client relationship with anyone.]

Vehicle IP prevails at CAFC

Generally, claim terms are given their ordinary and
customary meaning as understood by one of skill in the
art at the time of the invention. Id. at 1312-13 (citing
Vitronics Corp. v. Conceptronic, Inc.
, 90 F.3d 1576, 1582 (Fed. Cir. 1996);
Innova Pure Water, Inc. v. Safari Water
Filtration Sys., Inc. , 381 F.3d 1111, 1116 (Fed.
Cir. 2004)).

There are two exceptions to this rule:
(1) when a patentee sets out a definition and acts as his own lexicographer; or
(2) when the patentee disavows the full scope
of the claim term either in the specification or during
prosecution. Thorner v. Sony Computer Entm’t Am. LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing
Vitronics, 90 F.3d at 1580).
A patentee must clearly set forth a defini-
tion of the disputed
claim term other than its plain and
ordinary meaning to act as his own lexicographer.Id.
(citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).



Bottom line:


The district court erred in its construction of the
terms “expected time of arrival” and “way point(s),”
and relying on these erroneous constructions, granted
summary judgment of non-infringement in favor of Appellees.
We reverse the district court’s claim constructions,
vacatethe final judgment of non-infringement,
and remand for a determination of infringement based
on the proper constructions
of these terms in the first instance.



link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1380.Opinion.11-14-2014.1.PDF

Patentee loses on summary judgment in Warner Chilcott v. Teva

The "reasonable to try" aspect of obviousness arose in the case:


In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir.
1988) (“Obviousness does not require absolute predictability of success. . . .
For obviousness under § 103, all that is required is
a reasonable expectation of success.”).
The district court therefore did not err in concluding that the
asserted claims would have been obvious in view of the
prior art. (...)


However, lack of certainty does not preclude a conclusion
of obviousness. Therefore, upon a careful review of
the record as a whole, and drawing all
justifiable inferences in the Plaintiffs’ favor, we
agree with the district court that
the Plaintiffs fail to raise any genuine issue of material
fact to preclude summary judgment. We
therefore conclude as a matter of law that the asserted claims would
have been obvious.



link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1439.Opinion.11-14-2014.1.PDF

"History of Patent Law" from USC

History of patent law

Professor plagiarized student in Canada

From within a post by Geoff Leo titled Plagiarism allegation against U of R prof highlights growing problem


The most recent allegation of plagiarism in the engineering faculty at the University of Regina (U of R) is prompting experts to say there’s much more academic dishonesty on campuses across the country than universities are aware of or willing to admit.

"My observation is the institutions have much more interest in pursuing student ethical violations than faculty violations because the faculty violations reflect on their own institution," said Benson Honig of McMaster University’s school of business in Hamilton.

His comment is prompted by a CBC story about U of R student Arjun Paul, who claimed his engineering professor copied parts of his master's thesis and included them in a journal article without crediting Paul.

The journal, Environmental Geotechnics, investigated the allegation against Prof. Shahid Azam earlier this year and concluded "it was evident that [Azam’s published paper] had not fully credited Arjun Paul’s thesis," and as a result it "decided to withdraw the paper from Environmental Geotechnics."




Also from Honig:


Honig said his research indicates there's much more academic dishonesty occurring at universities and colleges than meets the eye.

In his own 2012 paper, "The Fox in the Hen House," Honig revealed that of the 279 articles he reviewed from his own academic discipline, 25 per cent "had some amount of plagiarism" and over 13 per cent "exhibited significant plagiarism."

CAFC affirms D. Del. in Antares v. Medac and explains "the original patent requirement" of 35 USC 251

The CAFC affirmed Judge Robinson in the Antares case.


Antares is a developer of automatic injection devices
used to self-administer pharmaceuticals. It is the assignee
of U.S. Patent No. 7,776,015 (“the ’015 patent”), which
issued on August 17, 2010. That patent, entitled
“NEEDLE ASSISTED JET INJECTOR,” discloses a
system for injecting medicant in which a needle punctures
the skin before forcefully expelling the medicant, thereby
minimizing some of the downsides of typical jet injectors
(in which the medicant itself ruptures the outer layers of
skin), while still maintaining some of the advantages of
typical jet injectors. During prosecution, the applicants
repeatedly distinguished their invention from the prior
art by focusing on the “jet injector” limitation present in
their claims but not the prior art. The originally issued
claims all contained the “jet injection” limitation.



The argument:


Antares argues that the district court incorrectly applied
the recapture rule and that, under the “overlooked
aspects” cases, the recapture rule is inapplicable. In this
respect, Antares relies on Mostafazadeh, 643 F.3d at
1360. Antares argues that, while the recapture rule
generally prohibits a patentee from “regain[ing] through
reissue the subject matter that he surrendered in an
effort to obtain allowance of the original claims,” the
recapture rule is entirely inapplicable if the reissue claims
recite “overlooked aspects” of the invention. Mostafazadeh,
643 F.3d at 1358 (quoting In re Clement, 131 F.3d
1464, 1468 (Fed. Cir. 1997)); see also In re Youman, 679
F.3d 1335, 1347 (Fed. Cir. 2012). Antares argues that
overlooked aspects are “patentably distinct (1) inventions;
(2) embodiments; or (3) species not originally claimed[,]
not mere incidental features of the originally-claimed
invention.” Mostafazadeh, 643 F.3d at 1360 (citation
omitted).1 Because we hold that the asserted claims of
the ’846 patent fail the original patent requirement of 35
U.S.C. § 251, we do not reach the question of whether the
recapture rule applies and, if it does, whether it was
violated here.



The CAFC went into some basics:


Typically, if an applicant files a patent application
disclosing and claiming one invention and later realizes
that the specification discloses a second or broader invention,
he may seek coverage of those additional claims
pursuant to 35 U.S.C. § 120, which allows for continuing
applications to claim the priority date of earlier applications.
One type of continuing application is a continuation
application. A continuation application is “a second
application for the same invention claimed in a prior
nonprovisional application and filed before the original
prior application becomes abandoned or patented.” MPEP
§ 201.07 (9th ed. Mar. 2014); see also 37 C.F.R. § 1.53(b).
A divisional application is another type of continuing
application and is intended for “distinct invention[s],
carved out of a pending application and disclosing and
claiming only subject matter disclosed in the earlier or
parent application.” MPEP § 201.06; see also 37 C.F.R.
§ 1.53(b). When an applicant seeks to add new claims
pursuant to a continuation or divisional application, the
statute explicitly states that the original specification
provides adequate support for the new claims if the
original specification satisfies the § 112(a) written description
requirement for the new claims. 35 U.S.C.
§ 120.2



Of the original patent requirement:


Supreme Court cases have recognized this requirement
for more than 150 years.4 See, e.g., Battin v. Taggert,
58 U.S. 74, 85 (1854) (noting that reissued patents
must be “for the same invention as the original patent”);
Klein v. Russell, 86 U.S. 433, 466 (1873) (same). (...)

Since the creation of this court in 1982, we have addressed
Industrial Chemicals and the original patent
requirement on four occasions: In re Hounsfield, 699 F.2d
1320 (Fed. Cir. 1983); In re Weiler, 790 F.2d 1576 (Fed.
Cir. 1986); In re Amos, 953 F.2d 613 (Fed. Cir. 1991); and
Hester Industries., Inc. v. Stein, Inc., 142 F.3d 1472 (Fed.
Cir. 1998). Significantly, none of those cases suggested
that the 1952 change in language worked a substantive
change in the “same invention” requirement or that the
standard of Industrial Chemicals has in any way been
altered by the legislative changes. (...)

The situation here is quite unlike Amos, in which we
held that the original patent requirement was satisfied.
In Amos, the patentee sought to broaden his claims on an
invention relating to the use of rollers to hold down workpieces
on a moving table. The specification expressly
disclosed that rollers, as they approached the end of the
table, could be “raised either mechanically by the roller
cams or electronically by the computer controlling the
router.” Amos, 953 F.2d at 614. The original claims only
covered the manual embodiment. On reissue, the applicant
sought to add the computer-controlled embodiment.
Id. The Board denied the reissue because there was no
objective intent to claim. Id. at 615. This court reversed
the Board because the exact embodiment claimed on
reissue was expressly disclosed in the specification.



Andrew Williams of PatentDocs criticized the decision.:


The problem in this case stems from the Court's reliance on a 1942 Supreme Court case, U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942). The strict adherence to the language in this case forced the Federal Circuit to contort reissue jurisprudence to such a degree that it appeared to demand a heightened disclosure requirement. This stems, in part, from the Court elevating a line from Industrial Chemicals that suggested that to satisfy the "same invention" requirement "it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification." Id. at 676. As such, the Federal Circuit was forced to conclude that the "original patent" requirement was somehow more exacting than the original requirements for patentability, necessitating the conclusion that "the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention." (emphasis added).



One notes that the issue presented by the parties involved the recapture rule,
and the CAFC stretched to reach the original patent requirement ("overlooked aspects").

PTAB vacated in Rozbicki

Bottom line:

For the reasons above, and because we find that Rozbicki’s remaining arguments are without merit, we affirm the PTAB’s claim construction, and consequently, affirm its finding of written description support and priority for Chiang claims 31–39, 46, 59–61, 63, 64, 66–71, 83, and 84 as it is supported by substantial evidence. We vacate and remand the PTAB’s decision for Chiang claims 47, 49, 51, 53, 55, 57, 76–82, 85, 87, 88, and 90 for further proceedings consistent with this opinion.

Ultramercial again: claims are the definition of what a patent is intended to cover

In Ultramercial v. Hulu, the CAFC worked through 35 USC 101 issues to affirm the district court:


The present posture of the case is that Ultramercial is
again appealing from the decision of the United States
District Court for the Central District of California. Upon
review of the ’545 patent and the standards adopted by
the Supreme Court, for the reasons set forth below, we
conclude that the ’545 patent does not claim patent eligible
subject matter and accordingly affirm the district
court’s grant of WildTangent’s motion to dismiss.



This particular decision was made in view of the Supreme Court Alice decision:


While WildTangent’s petition was pending, the Supreme
Court issued its decision in Alice Corp. v. CLS
Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).
In that case, the Court affirmed our judgment that method
and system claims directed to a computer-implemented
scheme for mitigating settlement risk by using a third
party intermediary were not patent-eligible under § 101
because the claims “add nothing of substance to the
underlying abstract idea.” See Alice, 134 S. Ct. at 2359–
60. The Court in Alice made clear that a claim that is
directed to an abstract idea does not move into § 101
eligibility territory by “merely requir[ing] generic computer
implementation.” Id. at 2357. (...)

As indicated, this case is back to this court on Ultramercial’s
original appeal from the district court’s dismissal,
but in its present posture we have the added benefit
of the Supreme Court’s reasoning in Alice. We review a
district court’s dismissal for failure to state a claim under
the law of the regional circuit in which the district court
sits, here the Ninth Circuit. Juniper Networks, Inc. v.
Shipley, 643 F.3d 1346, 1350 (Fed. Cir. 2011) (citation
omitted). The Ninth Circuit reviews de novo challenges to
a dismissal for failure to state a claim under Fed. R. Civ.
P. 12(b)(6). Livid Holdings Ltd. v. Salomon Smith Barney,
Inc., 416 F.3d 940, 946 (9th Cir. 2005). We review
questions concerning patent-eligible subject matter under
35 U.S.C. § 101 without deference. Research Corp. Techs.,
Inc. v. Microsoft Corp., 627 F.3d 859, 867 (Fed. Cir. 2010).



The CAFC noted:


We first examine the claims because claims are the
definition of what a patent is intended to cover. An
examination of the claim limitations of the ’545 patent
shows that claim 1 includes eleven steps for displaying an
advertisement in exchange for access to copyrighted
media.



Judge Mayer concurred:


I agree that the claims asserted by Ultramercial, Inc. and Ultramercial, LLC (together, “Ultramercial”) are ineligible for a patent, but write separately to emphasize three points. First, whether claims meet the demands of 35 U.S.C. § 101 is a threshold question, one that must be addressed at the outset of litigation. Second, no presumption of eligibility attends the section 101 inquiry. Third, Alice Corporation v. CLS Bank International, 134 S. Ct. 2347, 2356–59 (2014), for all intents and purposes, set out a technological arts test for patent eligibility. Because the purported inventive concept in Ultramercial’s asserted claims is an entrepreneurial rather than a technological one, they fall outside section 101.

CBS Sunday Morning on November 16, 2014

Charles Osgood introduced the stories for November 16, 2014.

The cover story is by Tracy Smith on "can do" pep talks. Second, Lee Cowan on Katey Sagal, of Married With Children. Third, Martha Teichner on UGa9, the bulldog mascot of the University of Georgia.
Fourth, Anthony Mason on Mark Ruffalo. Fifth, Rita Braver; Steve Hartman; David Edelstein.

Headlines: Another American has been beheaded by ISIS. Charlie Daggeta reports. Separately, a video showed a mass beheading of twelve others. A surgeon with Ebola in Nebraska. Obama at G20 meeting. Open enrollment for Obamacare. Allegations against Bill Cosby. Weather: the polar plunge.

"Make the experience part of the conversation." I can do it, by Dr. Wayne W. Dyer. Think good thoughts and good things will surely follow. We have been programmed about what we can't do. There are more than 40,000 paid speakers, about 1/3 of which are motivational.
Author Jonathan Black on the impulse to improve. Mention of Pericles, Patrick Henry and Patton. Zig Ziegler: now is the best time. Tony Robbins. Brian Palmer of the National Speakers Bureau. Chris Farley's SNL sketch on motivational speakers. Palmer: measure time between laughs or responses (a la Phyllis Diller). Josh Shipp: hope over adversity. Youth Speaker University (YSU). Undefinable "it factor." Success is not going to be easy, free, or overnight. Henry Ford: whether you believe you can or whether believe you can't, you are probably correct. You don't have to be sick to get better.

Nov. 16, 1904. John Ambrose Fleming patented the thermionic valve. But note from wikipedia:


In 1904, [Fleming]invented the two-electrode vacuum-tube rectifier, which he called the oscillation valve, for which he received a patent on 16 November.[7] It was also called a thermionic valve, vacuum diode, kenotron, thermionic tube, or Fleming valve. The Supreme Court of the United States later invalidated the patent because of an improper disclaimer and, additionally, maintained the technology in the patent was known art when filed.[8] This invention is often considered to have been the beginning of electronics, for this was the first vacuum tube.[9] Fleming's diode was used in radio receivers and radars for many decades afterwards, until it was superseded by solid state electronic technology more than 50 years later.





Pulse: the turnout in the last election of about 1/3 of eligible voters was the worst
turnout in 72 years.

Skilled costume designers done by Rita Braver. Ann Roth. Glenn Close in "A Delicate Balance." Wikipedia notes: [Roth's] more than one hundred screen credits include The World of Henry Orient, Midnight Cowboy, Klute, Working Girl, Silkwood, The Unbearable Lightness of Being, The Mambo Kings, The Birdcage, Primary Colors, Cold Mountain, Closer, Freedomland, The Good Shepherd, Margot at the Wedding, Mamma Mia, and Evening.
Brenda Vaccaro in Midnight Cowboy nude scene. Clips of Roth in eastern Pennsylvania. Every detail matters to Roth. An Oscar for The English Patient. Roth: I want something overwhelming that just going to knock you out.

Lee Cowan on Katey Sagal. Sons of Anarchy. Hamlet on Harleys. It's always been about the music. She has recorded three albums, including "Covered." Boris Sagal, her father, directed episodes of the Twilight Zone and the Man from U.N.C.L.E. She sang backup for Bette Middler. Rehearsed with Bob Dylan. Later: drugs and alcohol. She now has been sober for 28 years. Kurt Sutter. She has a different energy up there [on stage.]


European Space Agency. Lander bounced twice. Rosetta is the mother ship; Philae the lander.

UGA IX was named by USA Today as the best mascot in college football. In 1956, Sonny Siler was in law school; got white English bulldog puppy. For 58 years, the Siler family shares bull dogs. Uga has a wikipedia entry. 1982 UGa IV with Hershel Walker. Midnight in the Garden of Good and Evil. Kevin Spacey. In the movie, Sonny Siler played the judge. UGa wears what Georgia players wear. Charles Siler. Licence plate UGa IX.
UGa goes from Savanah to Athens in 60degF temperature. UGa gets a bath before each game.
The dog walk.

Sunday Morning does a reprise of Steve Hartman on former NFL center Jason Brown.
Lewisburg, North Carolina. Sweet potatoes. A life of service.

Mark Ruffalo.


Story on the Cagwins. Amanda and Ed. Hawlow Cagwin. Pulitzer Prize-winning photojournalist Scott Strazzante first visited Harlow and Jean Cagwin's 114-acre farm in the spring of 1994, to snap photos for a newspaper story about people who raised farm animals in suburban Chicago. He would return over the years, as the land was turned into sites for dozens of homes. See A changing landscape in "Common Ground"


On Monday, "word of the year." Tuesday: a very Grammy Christmas. Wednesday: national ginger bread house competition. Thursday. Prince Harry Polo. Friday. World hello day.
Saturday: world duck calling contest.



David Edelstein. Documentary. DocNYC: 150 films and events. Robert Kenner: Merchants of Doubt. Happy Valley on Joe Paterno. CitizenFour. Finding Vivian Meyer. Tales of the Grim Sleeper. Dumb reality shows which turn reality into a side show.

Next week. Eat, Drink and Be Merry. The Sunday Morning food issue.

Moment of nature by Viking River Cruises. The Texas side of Caddo Lake. Lots of Spanish moss.

"Seeking Alpha" labels Abbvie a patent troll. Blocking patents.

"Seeking Alpha" has a post on 12 November 2014 titled Gilead Sciences Gets Ambushed By The Patent Troll, AbbVie

For those not familiar with the history of Abbvie, the following is from wikipedia:


On October 19, 2011, Abbott Laboratories announced that it planned to separate into two publicly traded companies, one focused on diversified medical products and the other on research-based pharmaceuticals. The medical products company retained the Abbott name, and the research-based pharmaceuticals company was named AbbVie.[1][2] The separation was effective January 1, 2013[3] and AbbVie was officially listed on the New York Stock Exchange (ABBV) January 2, 2013


The underlying issue, mentioned in the Alpha post is


AbbVie cannot market Harvoni since it does not own patents on either individual drug in the combination, but can potentially compel royalty payments and damages from Gilead.


This is an example of blocking patents, historically illustrated in the classic diode/triode case.

[posted 13 Nov. 2014 at 12:15am (Eastern)]

"60 Minutes" on November 9, 2014

The third story, on actor Steve Carell, brought up a theme from trademarks.

In 2009, Steve and wife Nancy, both from Massachusetts, bought the Marshfield Hills General Store property and restored this landmark to its original glory. Within the store are items made by Carell's mother bearing the mark: -- made by hand by Harriet Carell --

The "60 Minutes" piece also discussed the film Foxcatcher directed by Bennett Mille. The "60 Minutes" piece had a quote by Nancy on Steve's performance in Foxcatcher: I almost forgot I was watching my husband up there.

Re-purposing story lines

On the topic of "self-plagiarism," note that some of the Rigg era Avengers episodes borrow from earlier (British) Avengers episodes. The Rigg era piece "The 50,000 Breakfast" is very close to "Death of a Great Dane."

Of note is "The Superlative Seven" which borrowed heavily
from a Macnee/Blackman episode "Dressed to Kill":

from imdb:

"Dressed to Kill" was one of the last great Cathy Gale episodes, scripted in exciting fashion by Brian Clemens, soon to perform double duty as writer-producer for the next season with Diana Rigg. Steed is among seven people gathered together on a train for a New Year's Eve party, all dressed in different costumes, who become stranded at an abandoned railway station, targeted for their various plots of land near an early-warning radar facility. Many later episodes would borrow elements from this story, particularly "The Superlative Seven," whose twists and turns actually surpass those found here. Among the superlative cast, Richard Leech had previously appeared in "Traitor in Zebra," and Frank Maher had done "November Five," while John Junkin (soon to appear opposite The Beatles in 1964's "A Hard Day's Night") went on to do "Never, Never Say Die." Even with Leonard Rossiter and Alexander Davion also on hand, it's Anneke Wills ("The 50,000 Breakfast") who steals every scene as the Pussy Cat, complete with adorable ears and attractive tail, understandably taking an instant liking to Steed's cowboy garb ("careful, you'll make me purr!"), leading to a 'High Noon' showdown on the platform, with a little bit of help from a disguised Mrs. Gale, wielding a six shooter of her own. Lovely blonde Anneke Wills would soon marry future AVENGERS villain Michael Gough, lasting from 1965-1979.



Each of the guests in each story were invited by a different host (Steed by Tony Linkletter in "Dressed to Kill")

In "Dressed to Kill," Napoleon was the culprit and one of the last lines in the episode was:

It's a long way from Waterloo, Station that is.

Honor Blackman to Patrick MacNee: Don't push your luck Steed, we only just got through with this one.

The party in "Dressed to Kill" had a New Year's theme and aired 28 Dec. 1963 .

Wikipedia also notes: "The Joker" was to a large extent a re-write color episode of the earlier Cathy Gale b/w era story, "Don't Look Behind You," as were a few other later episodes re-writes in color of b/w era tales.)

As a bit of trivia, Anneke Wills is in both Dressed to Kill (with Blackman) and "The 50,000 Pound Breakfast (with Rigg).

CAFC reverses ED Texas on claim construction in Azure v. CSR

In the case Gevo v. Butamax, there was a situation of stipulated infringement under a district court claim construction, followed by an appeal to the CAFC of the claim construction, wherein the district court was reversed.

In Azure v. CSR , we have:


The district court also construed the term “MAC ad-
dress” in the ’129 patent as “a device identifier generated
by the hub device” and not, as Azure and Tri-County
suggested, “an address that uniquely identifies a device or
group of devices on a shared communication medium.”
Azure stipulated to a judgment of noninfringement under
the district court’s construction of “MAC address.”
Because the district court improperly construed the term,
we vacate the judgment of noninfringement and remand.



Stipulating to a district court decision to make an appeal of claim construction is nothing new. This happened in a Gevo v. Butamax case, wherein Butamax stipulated to infringement and then one a reversal of the claim construction at the CAFC (related to an NADH / NADPH matter) But BiofuelsDigest likened this stipulation procedure to what happened in Teva v. Sandoz, wherein there was no stipulation for the purposes of seeking an appeal. From the BiofuelsDigest post
Back in My Arms Again: The Supremes take on patent law in the era of synthetic biology:



The Teva and the Gevo cases — perhaps we should just call it the Geva case, or Tevo — concern patent infringement. In each case, after laborious argument, a District Court makes what is known as a “claim construction” to construe a patent. Then it rules, based on that construction, as to whether infringement has occurred.

In both the Gevo and Teva cases, however, something unexpected happened. After getting a favorable ruling on claim construction and winning at the first level, both companies saw their victories overturned in the Court of Appeals.


Now, what’s unusual about that?

In both the Gevo and Teva cases, the Courts of Appeal employed a controversial practice — what is known as a “de novo” review of the claim construction, and reversed the claim construction on appeal.



Also related to BiofuelsDigest, the Digest (editor and publisher Jim Lane) had made an argument to the effect that, if two companies were fighting over some intellectual property, the fight itself proved the value of the intellectual property:


No one is suing anyone over, say, Cello’s technology, or to gain control of the Range Fuels process. At least not a positive suit aimed at gaining freedom to operate.

For the same reason, you never see a Western where two old prospectors duel it out over a worthless piece of land. In films like Treasure of the Sierra Madre, the fight is invariably over the gold, the map that marks the gold, or the entrance to the mine that guards the gold.

The mounting mountains of paper should be properly seen as a leading indicator of just how valuable a bio-based process to generate low-cost isobutanol from biomass can be, especially if you have figured out the engineering of separating the alcohol from the broth before it kills the microorganism.



IPBiz had noted in 2012:


As a double-layered counter-example, contemplate the fight over COX-2 inhibitors brought by the University of Rochester against (initially) Searle. The suit was brought the day URochester's patent issued, and ended with the URochester patent being found invalid, on summary judgment. Rumor has it UR spent over $10 million. Big dollars, yes; valuable to URochester, no! But, that's not all folks, this area is COX-2 inhibitors, which turned out to be rather bad for some people taking them, and thus not a big pharma gold mine. Ask Merck about that. Nobody mistakes this story for the Treasure of the Sierra Madre. [And, remember, in the movie, the gold blew away.] In summary, in COX-2, there was no gold, and we had two old prospectors dueling it out over a worthless piece of land. For another saga, think also about the "Dolly the Sheep" patent estate.



Biofuels Digest on the Gevo / Butamax patent war on bio-isobutanol

Of relevance to the 2012 IPBiz post is news on Nov. 6, 2014 about the stroke risk associated with COX-2 inhibitors, reported in the story COX-2 inhibitors linked to increased risk of stroke death , wherein a paper in the journal Neurology found


The study shows that people who were current users of COX-2 inhibitors were 19% more likely to die after a stroke than people who did not use COX-2 inhibitors. New users were found to be 42% more likely to die from stroke, compared with non-users.


Although this study about the bad effects of COX-2 inhibitors is reported in 2014, a study available at the time of release of the Merck/Searle products also implicated stroke risks.

And, as to an investment by a big company proving value, ask Exxon about the 1 billion dollars invested in Reliance.


**Returning to the Azure case, there were other legal issues.


“To determine whether an exclusive license is tanta-
mount to an assignment, we ‘must ascertain the intention
of the parties [to the license agreement] and examine the
substance of what was granted.’”
Mann, 604 F.3d at 1359(quoting
Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
240 F.3d 1016, 1017 (Fed. Cir. 2001))
(...)
It is not uncommon for
a licensor to transfer to its li-
censee the exclusive right to enforce the patent. But
significant to this case, Tri-County
reserved no right to have control over, to veto, or to
be notified of any of Az-
ure’s licensing or litigation activities .


As to claim interpretation


Departure from the ordinary and customary meaning is permissible only when the
patentee has acted as his own lexicographer or disavowed
claim scope in the specification or during the prosecution
history. Phillips v. AWH Corp. , 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc). (...)

The specification refers to the phrase
“Media Access (MAC) address,” and not “Media Access
Control (MAC) address.”
Based on this single reference, the
district court concluded that the patent
ee “coin[ed] a new term” distinct from a standard MAC address,
which in turn was limited to hub - generated addresses.
Azure , 2013 WL 173788, at *4.
We disagree. For a patentee to act as
his own lexicographer and give a term something other
than its well-established
meaning, he must “clearly set
forth a definition of the disputed term
.” CCS Fitness, Inc.
v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir.2002).
The lexicography must appear with “reasonable clarity,
deliberateness, and precision sufficient to narrow the
definition of the claim term in the manner urged.”
AbbottLabs. v. Syntron Bioresearch, Inc.
, 334 F.3d 1343, 1355(Fed. Cir. 2003).


Judge Mayer dissented on the claim interpretation portion of the opinion.

CAFC vacates CD Cal decision in Williamson v. Citrix

Appellant Williamson got 2 CAFC judges to agree with his viewpoint, and
the decision of CD Cal was vacated in Williamson v. Citrix

Appellant Williamson won on the meaning of -- pictorial map --:


We agree with Williamson. The district court erred in
construing these terms as requiring a “pictorial map.”
First, the claim language itself contains no such “pictorial
map” limitation. “[I]t is the claims, not the written description,
which define the scope of the patent right.”
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed.
Cir. 1998); see id. (“[A] court may not import limitations
from the written description into the claims.”). While the
specification discloses examples and embodiments where
the virtual classroom is depicted as a “map” or “seating
chart,” nowhere does the specification limit the graphical
display to those examples and embodiments. This court
has repeatedly “cautioned against limiting the claimed
invention to preferred embodiments or specific examples
in the specification.” Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1327–28 (Fed. Cir. 2002) (quoting cases).

(...)

The ’840 patent defines a classroom as “an at least
partially virtual space in which participants can interact.”
Id. at col. 6 ll. 5–7. Nothing further is required, and no
greater definition is mandated by the language of the
claims, the specification, or the prosecution history. As is
well settled, the claims must “not be read restrictively
unless the patentee has demonstrated a clear intention to
limit the claim scope using words or expressions of manifest
exclusion or restriction.” Innova/Pure Water, Inc., v.
Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1117
(Fed. Cir. 2004) (internal quotations omitted).



Williamson also won on a 112 P6 issue:


We agree with Williamson that the district court
erred in concluding that “distributed learning control
module” is a means-plus-function claim term.
Section 112, para. 6, provides that “[a]n element in a
claim for a combination may be expressed as a means or
step for performing a specified function without the
recital of structure, material, or acts in support thereof.”
35 U.S.C. § 112, para. 6 (1994). In Personalized Media
Commc’ns, LLC v. International Trade Commission, 161
F.3d 696 (Fed. Cir. 1998), and again in DePuy Spine, Inc.
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005 (Fed.
Cir. 2006), we stated that the failure to use the word
“means” in a claim limitation created a rebuttable presumption
that 35 U.S.C. § 112, para. 6 did not apply.

(...)

This presumption is “a strong one that
is not readily overcome.” Lighting World, Inc. v. Birchwood
Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).
To rebut this strong presumption, it must be demonstrated
that “skilled artisans, after reading the patent, would
conclude that [the] claim limitation is so devoid of structure
that the drafter constructively engaged in meansplus-
function claiming.” Inventio AG v. ThyssenKrupp
Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).
A claimed expression cannot be said to be devoid of structure
if it is used “in common parlance or by persons of
skill in the pertinent art to designate structure, even if
the term covers a broad class of structures and even if the
term identifies the structures by their function.” Lighting
World, 382 F.3d at 1359–60.

“Technical dictionaries, which are evidence of the understandings
of persons of skill in the technical arts” may
inform whether claim terms connote structure. Linear
Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320
(Fed. Cir. 2004); Mass. Inst. of Tech. v. Abacus Software,
462 F.3d 1344, 1355 (Fed. Cir. 2006). Moreover, in circumstances
in which “[a] structure-connoting term . . . is
coupled with a description of [its] operation, sufficient
structural meaning generally will be conveyed to persons
of ordinary skill in the art.” Linear Tech, 379 F.3d at
1320. In making this assessment, it is important to
consider the claimed expression as a whole, and not
merely any single word, as well as its surrounding textual
context. See Apex Inc. v. Raritan Computer, Inc., 325 F.3d
1364, 1372 (Fed. Cir. 2003) (“[T]he primary source of this
error lies in the district court’s reliance on single words of
the limitations . . . as opposed to the limitations as a
whole . . . .”); Mass. Inst. of Tech., 462 F.3d at 1356 (“The
claim language here too does not merely describe a circuit;
it adds further structure by describing the operation of
the circuit.”).



The term --nonce word -- is discussed:


The district court, in characterizing the word “module”
as a mere nonce word, failed to appreciate that the
word “module” has understood dictionary meanings as
connoting either hardware or software structure to those
skilled in the computer arts. While the parties here have
not cited any dictionaries, we have frequently looked to
the dictionary to determine if a disputed term has
achieved recognition as a term denoting structure.
“[J]udges are free to consult dictionaries and technical
treatises ‘at any time in order to better understand the
underlying technology and may also rely on dictionary
definitions when construing claim terms, so long as the
dictionary definition does not contradict any definition
found in or ascertained by a reading of the patent documents.’”
Phillips, 415 F.3d at 1322–23 (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed.
Cir. 1996)); see also Lighting World, 382 F.3d at 1360;



Bottom line:


we vacate the stipulated judgment of non-infringement
of claims 1–7 and 17–24 and of invalidity of claims 8–16
and remand the case to the district court.



Judge Reyna dissented.

Reines reprimanded in Rader "recognition" matter; CAFC issues public rebuke for misconduct in disseminating an email of praise

From the decision In re Reines


On June 5, 2014, we ordered that respondent show
cause as to why his actions associated with the email did
not warrant discipline by this court, inter alia, because
they violated Rule 8.4(e) of the American Bar Association’s
Model Rules of Professional Conduct. The Show
Cause order is included as Attachment B to this order.
Model Rule 8.4(e) provides that it is professional misconduct
for a lawyer to “state or imply an ability to influence
improperly a government agency or official or to achieve
results by means that violate the Rules of Professional
Conduct or other law.” Model Rules of Prof’l Conduct R.
8.4(e) (2014).
Mr. Reines responded to the show cause order on July
7, 2014. Respondent acknowledged forwarding the email
to clients and potential clients. Mr. Reines argued, inter
alia, that he did not imply any improper influence under
Model Rule of Professional Conduct 8.4(e); according to
Mr. Reines, he forwarded the email “because information
about [his] skill at oral advocacy is an appropriate consideration
in the selection of counsel.” Decl. of Edward R.
Reines ¶ 19. Respondent also argued that ordering discipline
would be unconstitutional under the First Amendment.
Mr. Reines included statements of experts in legal
ethics to support his arguments. Mr. Reines did not
request a hearing in this matter pursuant to Federal Rule
of Appellate Procedure 46(c) and Federal Circuit Attorney
Discipline Rule 5(b).



Bottom line:


Respondent is publicly reprimanded, and the
pleadings related to the show cause order are
placed on the public record



The CAFC listed several factors, including


Fourth, in sending the email to clients and prospective
clients, respondent sought to directly influence their
decisions about retaining counsel. He typically stated,
“[a]s you continue to consider us for your Federal Circuit
needs, I thought the below email from Chief Judge Rader
might be helpful.” Reines Ex. 11.7 Prospective clients
likewise stated that they would consider it in making
retention decisions.8



footnote 8 states:


See Ex. 3 (“I will certainly keep it in mind”); Ex. 19
(“Will keep [the email] here. Very useful.”); Ex. 22 (“I’m
definitely interested in learning more about Weil’s appellate
practice.”); Ex. 30 (“[A colleague] was just saying the
same thing recently and suggested we find a way to get
you more involved with our appeal strategies and Fed Cir
activities.”); Ex. 39 (“we will keep your firm in mind going
forward”); Ex. 41 (“we will definitely keep you in mind”);
Ex. 46 (“We will keep you in mind, for sure, in our trips to
the Federal Circuit.”).



Of First Amendment issues:


A lawyer’s dissemination of compliments contained in
judicial opinions was addressed in Dwyer v. Cappell, 762
F.3d 275 (3d Cir. 2014). The Third Circuit held that an
attorney-conduct guideline banning advertising with
quotations from judicial opinions unless the opinions
appear in full was unconstitutional. Id. at 276. But respondent
cites no authority and we are aware of none
which calls into question the validity of Model Rule 8.4(e)
or recognizes a right to suggest a special relationship with
a judge to improperly influence a court.
As the Supreme Court recognized in Ohralik and
Florida Bar, a strong interest exists in protecting the
integrity of the legal profession and in protecting the
public from misleading commercial speech by attorneys.



There is an open issue:


On Mr. Reines’s side, he provided a ticket for one concert,
at another concert arranged for upgrading to a standing
area near the stage, and arranged for backstage access for
then-Chief Judge Rader at both. (...)

This occurred while Mr. Reines
had cases pending before this court. We do not decide
whether Mr. Reines’s actions violated standards of professional
responsibility. We have decided to refer this separate
matter and the underlying relevant documents to the
California bar authorities for their consideration.