Monday, June 30, 2014

SnoWizard loses in snoball case

The decision begins:

A snowball is a confection of ice shavings, flavored
with various syrups and typically served in a cone - shaped
paper cup

Sadly, for SnoWizard, the '871 patent went down for invalidity under the on-sale bar.

Gigaom suggests Philip Johnson of J&J in line for USPTO Directorship

Quoting emails from Harold Wegner, Gigom suggests that Philip Johnson of Johnson & Johnson is in line for the Director position at the US Patent Office.

The Gigaom post included the text:

In December, Johnson testified before the Senate on behalf of the 21st Century Patent Coalition, a group of companies who opposed a bill that would have made it easier for defendants to challenge low-quality patents, and to recover legal costs in the face of frivolous patent lawsuits.

Members of the Patent Coalition include:

Air Liquide
Air Products
American Intellectual Property Law Association (AIPLA)
Baxter Healthcare Corporation
Beckman Coulter
Boston Scientific
Bridgestone Americas Holding, Inc.
Bristol-Myers Squibb
Cargill, Inc.
Cummins Inc.
Dow Chemical Company
Eastman Chemical Company
Electronics for Imaging
Eli Lilly and Company
Exxon Mobil Corporation
General Electric

General Mills
Henkel Corporation
Hoffman-La Roche
Illinois Tool Works Inc.
Johnson & Johnson
Millennium Pharmaceuticals, Inc.
Milliken & Company
Northrop Grumman Corporation
Patent Café.com, Inc.
PepsiCo, Inc.
Procter & Gamble
SanDisk Corporation
Texas Instruments
USG Corporation
United Technologies

See also Views on the Patent Reform Act of 2007 by the Coalition.

The Gigaom post neglected to mention that former USPTO Director David Kappos is currently senior advisor to
Partnership for American Innovation. See IPBiz post Kappos ridicules idea that "patent system is broken"

Behind the patent "problem": trolls with patents or free-riders without patents?

From within The Myth Of the Wicked Patent Troll

There is one basic reason behind the attacks on trolls: Big Money. Many patent-intensive products—the smartphone in your pocket, the laptop computer in your briefcase—are produced by big corporations that license many patents. The iPhone is a classic example: It contains thousands of patented components, but Apple does not own many of the key ones. It must negotiate for the right to use them. These corporations can make higher profits the less they pay to use patented technology they do not own, and higher profits still by paying nothing at all.

Sunday, June 29, 2014

Money issue of CBS Sunday Morning on June 29, 2014

CBS Sunday Morning does its "money issue" on June 29, 2014, sadly a recycle of an episode from March 23, 2014 CBS Sunday Morning on March 23, 2014: the money issue

George Hulka gets his high school diploma, along with his great-
grandson. Weather: good for July 4.

Cover story by Mark Strassman on disappearing shopping malls. Audry Cellegari is interviewed about spending her teen-age years at a shopping mall. Everyone wanted to go to the mall. For half a century the mall was the mecca. A clip from the Blues Brothers. First enclosed mall: Southdale outside of Minneapolis
Robin Lewis author of the New Rules of Retail. Mention of 54,000 miles of interstate highway, which afforded the possibility of regional malls. Between 1956 and 2005, 1500 malls were built. Then, clip of webpage. No new enclosed mall built since 2006. Jose LaGaspe created ethnic mall outside of Atlanta, Plaza Fiesta. Follow the demographics. Hispanic population nearly quadrupled in Atlanta between 1990 and 2000, but no shopping places for hispanics. Plaza Fiesta has 280 stores. Fiesta is one stop experience. Give customers a reason to go out of the house, which they can't get on line.


Next week: Robin Thicke

Moment of nature: Yellowstone National Park with mother bear and her cubs leading the good life.
[Note: not the same as March 23, 2014 episode!]

Anthony Mason states that Charles Osgood will be back in this chair next Sunday morning.

Friday, June 27, 2014

Hill-Rom v. Stryker: reversal because the district court’s judgment of non-infringement was premised on erroneous claim constructions

Hill-Rom v. Stryker gives various statements of law

“[T]his court has expressly rejected the contention
that if a patent describes only a single embodiment, the
claims of the patent must be construed as being limited to
that embodiment.” Liebel-Flarsheim, 358 F.3d at 906
(listing cases rejecting attempts to import limitations
from the specification into the claims). The court continued,
“[e]ven when the specification describes only a single
embodiment, the claims of the patent will 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.’” Id. (quoting
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327
(Fed. Cir. 2002)).

As to disavowal

Disavowal requires that “the specification [or prosecution
history] make[] clear that the invention does not
include a particular feature,” SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
(Fed. Cir. 2001), or is clearly limited to a particular form
of the invention, Edwards Lifesciences LLC v. Cook Inc.,
582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the preferred
embodiment is described in the specification as the
invention itself, the claims are not necessarily entitled to
a scope broader than that embodiment.”) (quotation
omitted). For example, we have held that disclaimer
applies when the patentee makes statements such as “the
present invention requires . . . ” or “the present invention
is . . . ” or “all embodiments of the present invention
are . . . .”

Hill-Rom looks good

There is no such disclaimer or lexicography here.
There are no words of manifest exclusion or restriction.
The patents-in-suit do not describe the invention as
limited to a wired datalink. There is no disclosure that,
for example, the present invention “is,” “includes,” or
“refers to” a wired datalink and there is nothing expressing
the advantages, importance, or essentiality of using a
wired as opposed to wireless datalink. Nor is there language
of limitation or restriction of the datalink

The doctrine of claim differentiation arises

“[T]he presence of a
dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found
in the independent claim.” Liebel-Flarsheim, 358 F.3d at
910. This presumption is especially strong where the
limitation in dispute is the only meaningful difference
between an independent and dependent claim. Id. Of
course, claim differentiation is not a hard and fast rule,
and the presumption can be overcome by a contrary
construction required by the specification or prosecution
history. Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d
1361, 1369 (Fed. Cir. 2005).

The matter of a functional definition arose

The dissent argues that our construction is incorrect
because it defines “datalink” in functional terms. But, as
we have previously explained, defining a particular claim
term by its function is not improper and “is not sufficient
to convert a claim element containing that term into a
‘means for performing a specified function’ within the
meaning of [35 U.S.C. § 112(6)].” Greenberg v. Ethicon
Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
Indeed, “[m]any devices take their names from the functions
they perform. The examples are innumerable, such
as ‘filter,’ ‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Id.
There is nothing improper about defining “datalink” as a
link that conveys data.

And, of knowledge at the time of filing:

Next, the dissent contends that a person of ordinary
skill could not have understood “datalink” to include
wireless connections because there is no evidence that
wireless connections were known to persons of ordinary
skill in the art at the relevant time. To the contrary, the
record evidence establishes that wireless connections
were known and used by persons of ordinary skill during
the relevant time frame. The Background of the Invention
of the patents-in-suit describes a prior art patent
disclosing a “personnel locating system” using “infrared
transmitters,” i.e., wireless transmitters, to transmit a
“pulse-coded signal which corresponds to the identity of
the wearer.” ’038 patent col. 1 ll. 42–46 (describing U.S.
Patent No. 4,275,385). This is an unequivocal disclosure,
in the patent itself, of wireless datalinks. Furthermore,
Hill-Rom’s expert testified that at the time of the patent’s
filing, a person of ordinary skill would have understood
“datalink” to include a wireless connection.

Judge Reyna dissented

I dissent for three reasons. First, the intrinsic record
is devoid of any description of a wireless “datalink” structure.
Second, credible extrinsic evidence belies the majority’s
conclusion that “datalink” encompasses wireless
communications. Third, the majority relies on expert
testimony that is conclusory and unreliable.

Of interest

Importantly, the expert report never expressly states
that one of ordinary skill in the art in 1993 would understand
that a “datalink” encompassed wireless connections.
We have long recognized that, although the understanding
of a claim term can evolve over time, the literal scope
of a patent claim “cannot have different meanings at
different times.” PC Connector Solutions LLC v.
SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005).
The literal scope of a claim is fixed by the meaning of its
terms in the relevant art as of the effective filing date of
the application. Phillips, 415 F.3d at 1313 Cir. 2005)
(“We have made clear . . . that the ordinary and customary
meaning of a claim term is the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective
filing date of the patent application.”). Here, the
patents-in-suit claim priority to an application filed in
1993 and, a proper construction of the claims must be
tethered to that date.

Cleveland editors weigh in on Redskins, Chief Wahoo. Unintended consequences: increased use of "Redskins"?

The post mentioned text from Judge Bergsman's dissent in the Redskins case:

The one dissenter in the decision, Trademark Trial and Appeal Board member Marc Bergsman, said that his dissent should not be construed to mean that he didn't personally find the name disparaging, but only that he found the board did not have evidence before it sufficient to do so, including with regard to whether the NCAI spoke for one in every three Native Americans at the times when the Redskins name and six logos were registered -- specifically in 1967, 1974, 1978 and 1990.

This "one in three" evidence was a factor in distinguishing this Redskins case from the earlier Redskins case, ultimately won by the football team on appeal.

As many are noting, this case is only about federal trademark rights. The team could still USE the mark even without federal rights. Ironically, if the team lost this trademark case, it would be EASIER for others to use the same mark, thus expanding the use of the "disparaging" text, not reducing the use.

Michelle Lee: Speaking Truth to Patents: The Case for a Better Patent System

The USPTO website posted the text for Michelle Lee's Speaking Truth to Patents: The Case for a Better Patent System

The suggestion of patents as monopoly arose

Now, critics of our patent system point to the patent's grant of exclusivity as a monopoly. And they are right to a point. That grant of exclusivity inhibits competitors and allows the patent owner to charge supra-competitive prices, but only for a limited time. But we accept the monopoly because of our strong conviction that the long-term benefits to society outweigh the costs. Innovation today means that we will have even more innovation tomorrow. And the higher prices we pay for patented goods and services today are an investment for the future.

One notes that a "right to exclude" is not a "right to make."

The matter of patent quality is now a big deal

In addition to the measures the Administration is taking now, the PTO has a longer-term role to play in ensuring the health of the patent system, and that has to do with improving patent quality. Issuing high-quality patents can play a significant role in curtailing abusive patent litigation over the long run.

To that end, I have made improving patent quality a top priority for the PTO.

That may sound familiar to you, and that’s because improving patent quality has always been at the core of the PTO’s mission. But, for too long, due to uncertain budgetary conditions and limited resources, the PTO has had to make do with less. Despite our best intentions, we’ve had to accept trade-offs between quality and application backlog and pendency, forcing us to cut programs and shift resources to maximize output without sacrificing quality.

At the end

In closing, I’d like to revisit something I said earlier. As what used to be a small world of patent law has become larger, more visible, and more consequential—to our economy and the world—we must acknowledge that the patent system doesn’t belong to a narrow set of patent stakeholders, but to all of us. As specialists, experts, and repeat players in this field, we must acknowledge not only the strengths of our patent system (and there are many) but also those places where it falls short of its goal to promote the Progress of Science and the useful Arts.

Fixing those areas needing improvement is not a “pro-patent” thing to do, or an “anti-patent” thing to do. It doesn’t mean rewriting the terms of the bargain underlying the patent system as set forth in the Constitution. It isn’t going to break the patent system.

Old news re-circulated?

The blog biofuelsdigest picked up a story on June 26, 2014 with text

Proterro gets patent for proprietary photobioreactor

In New Jersey, The United States Patent and Trademark Office (USPTO) has issued Patent No. 8,728,783 to Proterro, Inc., protecting the company’s proprietary photobioreactor, a novel element in Proterro’s patented sugar-making process (U.S. Patent No. 8,597,914). Proterro’s unique photobioreactor is robust, modular and made from off-the-shelf materials. It integrates systems for optimizing light, water supply […]

The problem is US '783 issued on May 20, 2014, and US '914 even earlier. Not exactly "hot off the press."

The first claim of US '783 is to a photobioreactor:

A photobioreactor for cultivating photosynthetic microorganisms, the photobioreactor comprising:

a non-gelatinous, solid cultivation support suitable for providing nutrients and moisture to photosynthetic microorganisms on at least a portion of a surface thereof, wherein said portion of the surface has a topography that allows photosynthetic microorganisms to adhere thereto when said portion of the surface is oriented non-horizontally; and a physical barrier disposed over at least said portion of the surface of the cultivation support.

Wednesday, June 25, 2014

Breyer in Aereo

Justice Breyer: "Rather than directly send the data to the subscriber, a server saves the data in a subscriber-specific folder on Aereo's hard drive. Aereo's system creates a subscriber-specific copy — that is, a 'personal' copy — of the subscriber's program of choice."


Jury verdict overturned in ParkerVision v. Qualcomm; Qualcomm does not infringe

Shire wins in DNJ in case over the hyperactivity drug Vyvanse

Reuters noted that DNJ granted Shire's summary judgment motion in a lawsuit against five generic drug producers [ Actavis, Amneal, Mylan, Roxane and Novartis's Sandoz unit ], holding that patent claims protecting its medicine were both infringed and valid.


Monday, June 23, 2014

Popsicle patent wars of yesteryear

Ministers, in sermons about sharing, frequently point to the story of the two-stick Popsicle. Sometimes the ministers mention that the Popsicle was invented by an eleven year old boy, Frank Epperson, in 1905. And during the depression, the two stick popsicle was introduced so that one could share.

There is a bit more to the story, which can be found at the post The Frozen Sucker War: Good Humor v. Popsicle written by Jefferson M. Moak.

Yes, there are patents, which arose in the 1920's, when commercial promise was demonstrated. The patents led to litigation, which in this case, led to agreements among the competitors. The key claims would be invalidated by 1938. The big story for patent practitioners is about defining terms, and what happens when there is ambiguity in terms in licensing deals. The companies that became the Good Humor Corporation of America and the Popsicle Corporation had patents in 1923 and 1924, numerous litigations, and finally an agreement between 1925 and 1932. Changing economics caused the 1925 agreement to go bad.

The early mover as to ice cream and the Good Humor company was one Harry B. Burt, who got the idea of inserting a stick into a chocolate-covered ice cream bar [such as the product Eskimo Pie] and created the Good Humor Bar. Burt got patents for a method of making, and the machinery to make.

One notes Burt stated "Our royalties are small, indeed far less than litigation would cost to be an infringer." Burt would then sue Citrus Products Company and the Popsicle Corporation, who made frozen water ices, not ice cream. Arguably, Citrus and Popsicle were competing more against cold drink companies than against ice cream companies. Sometimes the identity of your competitor is not so clear. Burt certainly was not a non-practising entity [NPE] but he did have an expansive view of the scope of his patent claims.

Two years AFTER Burt filed, Epperson filed on June 11, 1924 for a patent on the Popsicle process, which was granted two months later. He immediately sold all of his patent rights to the Popsicle Corporation on September 8, 1924. In August 1925, a deal was reached with the Joe Lowe Corporation over distribution of the popsicle product.

The relevant agreement came a few months later. This 1925 agreement was between Burt [the ice cream area] and the Popsicle Corporation [the frozen ice area] and was made on October 13, 1925. This deal would break down during the depression over a disagreement as to what was meant by sherbet, a possibly "in between" product, when Popsicle introduced the "milk popsicle."

Moaks wrote:

Both sides attempted to define the composition of a sherbet using dictionary terms and the belief of ice cream manufacturers of the times. Among Good Humor's definitions was that of a "flavored water ice." Popsicle countered by stating that its new "Milk Popsicle" was a sherbet in the understanding of the ice cream industry. From the manufacturer's viewpoint, an ice "is a mixture of water, sugar and flavor, while a sherbet is the same with the exception that the water is replaced with a milk product or, in modern practice, ice cream mix."

The district court judge concluded that the term "sherbet" in the 1925 agreement was strictly to mean a "water sherbet." Popsicle and Lowe lost. But the companies had already concluded a new agreement.

As to the ministers and sermons, the two-stick Popsicle was phased out in May 1986. The 1980's, in contrast to the 1930's, were a decade of greed. As to the origin of the two-stick popsicle, one source says company officials admitted the two-stick Popsicle was introduced during the Depression as a marketing ploy. The company thought it could win over customers by selling the frozen treat for a nickel and saying it could be split with a friend.
[source: Los Angeles Times, Popsicles to Get a New Look in May ]

One notes that the "sherbet war" arose because of price differentials; sherbet and "milk popsicles" could be sold for a nickel; ice cream cost a dime. Popsicles coat less than ice cream, but Popsicle sought to further cut into the ice cream territory with the "milk popsicle." Failing this gambit, Popsicle went with the "two stick" ploy.

As to the patents, relevant patents include 1,404,539, 1,470,524, 1,470,525, and 1,505,592.

the first claim of US '539, related simply to coated ice cream:

1. A confection comprising a core of normally 1iquid material frozen to a substantially solid state and sealed within an edible,
sustaining and form-retaining casing adapted to-maintain the confection in its original form durin handling.

US '524 was filed by Burt on Jan. 30. 1922. A 1938 case,ICYCLAIR, INC. V. NATIONAL POPSICLE CORPORATION, 94 F.2D 669 (9TH CIR. 1938) , notes:

The Burt patent 1,718,997 covers the product manufactured under Burt patent 1,470,524. Claims 1 and 2 of the Burt patent No. 1,470,524 cover the manufacturing process which involves placing the ice cream mixture in a container, partially freezing the same, then placing a number of sticks therein so that there will be a handle for each piece when subdivided, and then freezing the mixture until it is hard.


In regard to the Burt patent No. 1,718,997 (product patent), it is clear that a frozen confection on a stick is not a novel product in view of the fact that candy confections have been placed on sticks and marketed for many years.


We conclude that claims 1 and 2 of the Burt patent No. 1,470,524 and claims 1 and 7 of the Burt patent No. 1,718,997 are invalid because of lack of invention.

From what we have said it is clear that claims 2, 3, 4, 5, 6 and 7 of the Epperson patent No. 1,505,592 are likewise invalid for want of invention. The fact that Epperson by the device of placing the mixture to be frozen into individual molds was able to freeze the product much faster than Burt discloses no patentable process, even though it be conceded that a different form of crystallization was thus obtained.

Philip Totaro on Elon Musk's patent move

Concerning the move by Elon Musk on Tesla's patents:

If Mr. Musk would be willing to redistribute his wealth to the employees and investors who made the commitment to create value for the company in the first place, then this move to open source their patents during the formative stages of the EV industry might make more sense.


Sunday, June 22, 2014

CBS Sunday Morning on June 22, 2014, the first Sunday of summer

Lee Cowan did the stories for the first Sunday in summer. The cover story was about doodling on the job. Second, amateur night at the Apollo done by Anthony Mason. Ella Fitzgerald and the Jackson Five. Gladys Knight. Third, Mo Rocca on Melissa McCarthy. Fourth, Serena Alschul on jeans (recycled story). Fifth, Tracy Smith on Chelsea Handler.
Sixth, Seth Doane on Tokyo; Steve Hartman. Farewells to Jerry Goffen.

Headlines. Insurgents of ISIS in Iraq. Kerry arrived in region this morning (Cairo). Pope Francis in Calabria: all mobsters ex-communicated. Floodwaters on the rise in the midwest. Cameroon, England, Spain out in World Cup. Weather: more storms in midwest. Nice weather in northeast.

Recent studies show doodling may provide mental benefit. Rodney Dangerfield equivalent? Doodler Sunni Brown, book "The Doodle Revolution." Info-doodles help in problem-solving. Go straight to the white board. sb inc. The doodle still has doubters: waste of time.
Andrew Silton, an asset manager. A way of staying engaged in meetings. Doodles open door to better concentration. Applied . Jackie Andrade. Doodles remember 29% more details than non-doodlers. Jessie Prinz at City University of New York. Has blue hair. Pictures drawn during academic lectures. Train people to doodle. Doodling keeping us from zoning out. Doodling opens space. Sweet spot. Morley Safer interviewed by Lee Cowan. Does between 5 to 10 doodles daily. Doodles of water towers. The hand takes over. Doodle of Eisenhower. Mark Twain was a doodler.

Almanac. June 22, 1944. FDR signed the GI Bill of Rights [Servicemen's Readjustment Act of 1944 ]. The story brings up March on Washington in 1932. In 1947, half college admissions in US were veterans. Nearly 8 million vets took advantage of GI bill.

Serena Altschul did a story on old jeans (denim). Jacob Davis and Levi Strauss. In 1990's, Levis began to shut down American manufacturing. Roy Slaber in Oakland, CA. Cone Mills, in White Oak, NC. What's old is new again. Mat and Cary Edmondson in Nashville, TN. Imogene and Willie.

See text of 2012 IPBiz post

Serena Alschuler on blue jeans/denim. Michael Allan Harris. Denim detective. He hunts old mines in search of blue gold. The jeans of the Old West. Piece from 1873; unstamped rivets. Wear patterns.
Recreate the wear patterns to establish "lived in" look. Marlon Brando in The Wild One. Denim bluejeans personify freedom. The metal rivet, to hold denim together, was PATENTED by Levi and Strauss. Roy Slaper of label "Roy." A one man sweat shop. Oakland, California. Cone Mills Corporation in North Carolina. As it wears it looks more beautiful than when new. $340 for jeans.
Mat and Kerry Edmonson in Nashville, TN. Imogene and Willy. Sugar Cane. Iron Heart. The indigo dye left the fabric and left wear patterns. American history of work and play.

Tracy Smith interviews Chelsea Handler. "Chelsea Lately." 7 year itch. Leaving E!. Female talk show host. Half million viewers. Mention of all the shuffling with Leno, Letterman. Feuded with Piers Morgan: you're a terrible interviewer. Going to Netflix. Streaming video service. Talk about human interest. Talk show in 2016. Don't have a lot of fear - based issues. Grew up in New Jersey. My parents refused to participate in my childhood. At age of 19, went to Los Angeles. Girls Behaving Badly. Uganda Be Kidding Tour. 39 year old single woman. Are you there Vodka? Functioning alcoholic? Earns more than 20 million per year.

Seth Doane: postcard from Tokyo. Tokyo's robot restaurant. The Lockup restaurant. Diners eat in cells; part haunted house. Cat Cafe. $10 per hour for petting. 16 cat cafes in Tokyo. Cafe with pet goats (Chocolate and Cherry).

Anthony Mason on the Apollo. Dr. Mathhew Hashimoto entered Apollo's amateur night competition and won. Billie Holiday, Jimi Hendriz. Opened in 1934; 1500 seat. Where stars are born and legends are made. Gladys Knight and the Pips. Matthew Whitaker.

Moment of nature. Rhinestein Nature Preserve, East of Buffalo, NY.

Thursday, June 19, 2014

The USPTO on the Redskins: cancellation 92046185

The decision authored by Judge Kuhlke noted the prior cancellation by the Board, which was reversed by the D. D.C., 284 F. Supp. 2d 96; 68 USPQ2d 1225 (2003). An appeal of that decision turned on the question of laches. 565 F.3d 880; 90 USPQ2d 1593 (CADC 2009)

The decision includes photographs of John Riggins and Doug Williams (in SuperBowls) [page 17]

Monday, June 16, 2014

Huffington Post scrambles patents and trade secrets in discussing Musk/Tesla

Huffington Post conflated "trade secrets" with patents in the text

Four days after CEO Elon Musk offered most of his company’s patents to rivals in hopes of cultivating a bigger electric car market, Nissan and BMW are “keen on talks” to cooperate on charging networks, the Financial Times reported on Sunday.

That pretty much validates why the Silicon Valley company freed up its trade secrets in the first place: Tesla wants its superchargers to become the industry standard.

link Tesla's Clever Patent Move Is Already Paying Off

Note the earlier IPBiz post, including the text bringing up lingering trade secrets:

As noted elsewhere on IPBiz, at one time in the United States, there were more electric cars than gasoline cars.
There was no network of charging stations at that time.

As to Tesla, it depends on where the money is to be made. Kodak could practically give away cameras, as long as there was lots of money in selling film. And the tricks in making film could be protected by trade secrets.

Judge Randall Rader to resign from CAFC effective June 30, 2014

from Gone Judge – Judge Randall Rader To Resign:

Sadly, Judge Rader kept that promise and announced that he will retire from the court effective on June 30, 2014.

Joff Wild at IAM had the scoop

I am leaving the CAFC while I still have the energy to change the world, says Randall Rader

Saturday, June 14, 2014

On plagiarizing Hemingway

See discussion within the post The Troubling Case of Chris Hedges

The relevant (copied) passage from A Farewell to Arms is:

Abstract words such as glory, honor, courage or hallow were obscene beside the concrete names of villages, the numbers of roads, the names of rivers, the numbers of regiments and dates.

Friday, June 13, 2014

On Tesla's patent giveaway

In an article Elon Musk’s huge patent bet could doom Tesla, even if it’s great for the rest of us ,
Brisn Fung brings up the story of Bell Labs and the transistor to understand what Tesla might be doing in opening up its electric car patents:

AT&T's main interest in the transistor was to reduce the costs of carrying phone calls, but its executives intuitively grasped how the technology could upend other industries, too. They didn't see why a phone company should keep the blueprints of such a revolutionary technology to itself. So AT&T said, to all comers, Pay us a one-time fee of $25,000, and you can use the transistor however you want. In the 1950s, this was an incredible deal. Eventually, AT&T would cut even that fee to zero as part of a deal with federal antitrust officials to keep control of its long-distance telephone operations.

As to "intuitively grasped," one recalls the presentation made by Bell Labs managers in New York City on June 30, 1948, which included the transistor used in a radio, a television, and a telephone handset. That explicit demonstration qualifies as a bit more than intuitive grasp. On July 1, 1948, the New York Times covered this demonstration in "News of the Radio." See footnote 29 of What the story of the invention of the transistor teaches us about 21st century patent practice

To explain Tesla's generosity as to patents, Fung observes:

Electric vehicles are distinct from other technologies in that they require a special network of electric charging stations all across the country. Unless a driver in California can be sure there'll be enough juice to get him to New Jersey, electric cars will never become a viable alternative to gasoline vehicles.

Tesla needs electric cars to become widely adopted if the company is to succeed. It'd be even better if all electric vehicles used the same batteries, the same plugs, the same everything. If some competitor designed a different system in Florida that was incompatible, you'd wind up with a patchwork of electric vehicle infrastructure, and that doesn't serve the national goal of cutting carbon emissions.

As noted elsewhere on IPBiz, at one time in the United States, there were more electric cars than gasoline cars.
There was no network of charging stations at that time.

As to Tesla, it depends on where the money is to be made. Kodak could practically give away cameras, as long as there was lots of money in selling film. And the tricks in making film could be protected by trade secrets.

Failure to disclose structure fatal to Triton Tech at CAFC

Triton Tech of Texas lost its appeal to the CAFC, with a claim term in a means plus function claim being found indefinite; there were also issues of waiver of argument.

The relevant portion of the claim was

integrator means associated with said input device
for integrating said acceleration signals over time
to produce velocity signals for linear translation
along each of . . . first, second and third axes

with "integrator means" not being defined

The '181 patent does not further explain how the
numerical integration is performed, only that it is per-
formed in a “conventional manner.”

The problem was

“‘[n]umerical integration’ . . .is not a single
algorithm, but rather a whole class of algorithms that can
be used to calculate definite integrals . . . .”Id.
at 16. The district court thus concluded that the
asserted claims were indefinite. 1 Id. at 15 – 16
(citing Aristocrat Techs. Austr. Pty Ltd. v. Int’l Gaming Tech.
, 521 F.3d 1328, 1334 (Fed. Cir. 2008)


The fact that various numerical integration algo-
rithms may have been known to one of ordinary skill in
the art does not rescue the claims .
“[A] bare statement that known techniques or methods can be used does not
disclose structure.”
Biomedino, LLC v. Water Techs. Corp., 490 F.3d 946, 953 (Fed. Cir. 2007);


Appeal of PTAB decision fails in In re Wirth

The non-precedential case In re Wirth, an appeal of a PTAB decision, illustrates two basic points
about appealing a Board decision

1. To prevail in an appeal of a PTAB decision to the CAFC, the appellant must prevail on ALL rejections presented by PTAB. See footnote 5 of the CAFC decision.

2. The CAFC need not agree with all grounds for rejection of a claim; agreement on one is sufficient. See text:

While we question the expansiveness of the Board’s claim
construction and disagree with the Board’s application of
the printed matter doctrine here, we nevertheless
affirm the Board’s judgment of invalidity

Oral argument was cited:

Oral Argument Tr. 9:00-29,
available at


Thursday, June 12, 2014

BMS loses to Teva

Therefore, we see no error in the selection of 2′-CDG
as the lead compound here. See Velander v. Garner, 348
F.3d 1359, 1377 (Fed. Cir. 2003) (“Obviousness, and
expectation of success, are evaluated from the perspective
of a person having ordinary skill in the art
at the time of invention
.” (emphasis added) (citation omitted));see also
Eisai , 533 F.3d at 1359


Rembrandt Social Media v Facebook

Tuesday, June 10, 2014

Apotex wins in Latisse®/bimatoprost

from the case Allergan v. Apotex

Apotex Inc., Apotex Corp., Sandoz, Inc., Hit-Tech
Pharmacal Co., Inc., Actavis, Inc., Watson Laboratories,
Inc., and Watson Pharma, Inc. (collectively “appellants”)
appeal from a final judgment of the U.S. District Court for
the Middle District of North Carolina finding that appellants
had infringed claims of U.S. Patent Nos. 7,388,029
(“’029 patent”) and 7,351,404 (“’404 patent”) and had
failed to establish they were invalid. For the reasons
stated below, we reverse the district court’s findings with
respect to the validity of each patent.

Monday, June 09, 2014

Plagiarizing pastors, revisited

Related to the 2006 IPBiz post
Pastors who plagiarize with pride?
, note Pastors, Sermons And Plagiarism In The Internet Age including the text

As more instances of plagiarism are being alleged, it’s unclear whether plagiarism is more common, or if it’s being reported more often. Plagiarism has been a long-standing issue among pastors, who are expected to churn out fresh content each week for sermons while in some cases also penning best-selling books.

CAFC in Q.I. Press: an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal

from within the decision of Q.I. Press vs. Lee and Quad/Tech

as to obviousness

“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. In assessing this question, assessment of proffered evidence of non-obviousness must be part of the inquiry, even in the reexamination context. Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357–58 (Fed. Cir. 2013). That is the case here.


Although these objective indicia of non-obviousness are relevant to, and must be factored into our analysis, that evidence does not alter the conclusion that, upon consid- eration of all relevant evidence, claims 61–72 of the ’423 patent were invalid as obvious over Sainio in view of Ross. The Board thus did not err in reaching that conclusion.

As to written description

We agree with the Director that the figures of the ’423 patent do not show the substrate unsupported at the point of illumination as required by claim 18. Whether a claimed invention is supported by an adequate written description is a question of fact, Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc), which we review for substantial evidence, Shu-Hui Chen v. Bouchard, 347 F.3d 1299, 1304–05 (Fed. Cir. 2003). The written description is a statutory requirement set forth in 35 U.S.C. § 112. The test for written descrip- tion is that it “must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad, 598 F.3d at 1351 (citation and quota- tions omitted). The disclosure must “convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id.


Concerning the argument that the Board erred in re- versing the rejection of claims 13–60 because those claims improperly expand the scope of the ’423 patent in viola- tion of 35 U.S.C. § 305, we agree with Quad/Tech that the argument was not presented before the Board and is thus waived. See In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (“Absent exceptional circumstances . . . we generally do not consider arguments that the appli- cant failed to present to the Board.” (citing In re Watts, 354 F.3d 1362, 1367–68 (Fed. Cir. 2004)).
Regarding the obviousness of claims 1–60, however, those claims differ only slightly from claims 61–72, the rejection of which we have above affirmed.

Of new ground of rejection

We are cognizant of the fact that the Board perhaps did not sua sponte reject claims 1–60 for obviousness over Sainio in view of Ross because that rejection would have constituted a new ground for rejection on appeal. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (“The Board may not ‘rel[y] on new facts and rationales not previously raised to the applicant by the examiner.’” (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011)); see also Leithem, 661 F.3d at 1319 (stating that even “reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner”).
However, the Board has the discretion to issue a new ground of rejection if it has knowledge of one. 37 C.F.R. § 41.77(b) (“[S]hould the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim.”). In those instances, the “Board must designate its decision a new ground of rejection and provide the appellant with an opportunity to respond.” Rambus, 731 F.3d at 1256
(citing In re Stepan Co., 660 F.3d 1341, 1344 (Fed. Cir. 2011); 37 C.F.R. § 41.77(b)); see also Stepan, 660 F.3d at 1343 (“[I]f the appellant has not had a full and fair oppor- tunity to litigate the Board’s actual basis of rejection, the administrative validity proceedings before the [PTO] should be allowed to continue.” (citing In re Kumar, 418 F.3d 1361, 1367–68 (Fed. Cir. 2005)). If a new ground of rejection is included in the opinion, the patentee then has the option to either reopen prosecution before the examin- er or request rehearing. 37 C.F.R. § 41.77(b).
Here, when all these references were before the Board, and this court, an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Board should have observed the similarities between the claims, noted those similarities between the claims and the references before the Board on appeal, analyzed whether the combination of Sainio and Ross would have rendered claims 1–60 obvious, and if so, issued a new ground of rejection. The combination of Sainio and Ross was before the Board on appeal because those references were cited by the examiner to invalidate claims 61–72. And, given the minor differences between the claims, the Board “[had] knowledge of . . . grounds not raised in the appeal for rejecting [claims 1–60].” Id. We do not hold that the Board should always apply references that are before it affecting some claims to every other claim on appeal, but we do find that in this instance, in which nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent, the Board erred by not con- sidering the combination of Sainio and Ross as a new ground for rejection of claims 1–60. Accordingly, we vacate the Board’s decision to the extent that it holds that claims 1–60 would not have been obvious and remand that portion of the case for further proceedings consistent with this opinion.

Do academics care about innovation?

Discussion of 102(b)(1) in 2011 included the text [the inventor] can thus take full advantage of the grace period and disclose his invention in academic papers and at trade shows without worrying that such disclosures will lead to theft or fraudulent invalidation of his patent." Congressional Record, Sept. 6, 2011, S. 5320. Numerous patent attorneys have pointed to the weakness of the 102(b)(1)(B) exception. If there are any patentable ideas within a disclosure that an academic wants published, or extensions to patentable ideas, the patent attorney would be well-advised to recommend filing a patent application prior to publishing. A recent PLI course even noted that a cover-sheet provisional, with no claims, would be better than "no filing."

The theme of academics not caring about actual innovation of an idea is not new.

Within a 50 year old episode of "The Avengers" (pre Diana Rigg; pre Honor Blackman) one has depicted the difference in viewpoint to invention of the scientist, the businessman, and the politician. The episode of the Avengers "A Chorus of Frogs" (1963) contains the line: "Ah, the scientist, you do not understand politics." Response of the scientist as to politics: "Unreliable and imprecise."

Villain/businessman "Peligo Mason" (Eric Pohlmann) supplied the voice of the unseen Blofeld in the James Bond features "From Russia with Love" (1963) and "Thunderball" (1965). Mason reminds the scientist: "Remember, it's my money."

In an episode wherein the Chinese (embodied by "Anna Lee") are the political villains (1963!), "Venus Smith" is seen with a book and a recording for "Learning Cantonese."

Anna Lee to the scientist: "I'm talking common sense." When you succeed, I suppose you will go around giving lectures. The scientist agrees.

Mason: Anna Lee has a certain proprietary interest in my work.

Steed gives some historical science background to breathing underwater: Caisson disease.

The coded message:

Malaga next week. Hector much worse.

fails to get delivered, and Venus is snagged. But in the end, this "sale" of valuable secrets, in the 1963 context, is presented merely as a business deal.

The episode ends with Steed and Mason discussing a deal, and Anna Lee goes on her merry way.
"To China, better luck next time."


Does the focussed specialist always win?

From the post Changing the dates, not the rules, is the way to fix horse racing's Triple Crown :

The analogy I've made is that it's like asking a baseball pitcher to throw three complete games in a week. They may have done that in the early 20th century, but they sure don't now. And the same can be said for thoroughbreds, which once ran far more often than they do today.

On July 2, 1963 (extending to July 3), Warren Spahn (then 42 years old) and Juan Marichal each pitched 15 scoreless innings. Spahn lost the game in the bottom of the 16th inning, giving up a home run to Willie Mays. [In the game after Larsen's perfect game in the 1956 World Series, Bob Turley pitched 9 scoreless innings, losing in the 10th, 1-0]

In 1920, two pitchers each went 26 innings: Joe Oeschger of the Boston Braves and Leon Cadore of the Brooklyn Dodgers;


A question as to either the baseball or horse matters, if they could do it once, why can't they do it now? Do the short term specialists always beat the generalists? In patent law, there was a movement away from the specialist firms, such as Pennie & Edmonds and Fish & Neave, to the generalist law firms.

Wednesday, June 04, 2014

Bouncing jurisdiction between CA11 and CAFC in Krauser case

A significant point

Therefore, BHI’s second jurisdictional theory
fails every element of the test described by the Supreme
Court in Gunn. The resolution of the inventorship question
is neither “necessary” nor “substantial” to the case. A
claim of ownership does not necessarily require consideration
of patent law inventorship. A state law contract
claim or quantum meruit claim may entitle Krauser to
royalties from the Dental Implant System even if he is not
listed as an “inventor” on the face of the patent. Given
that there is no federal issue in this case, an exercise of
federal question jurisdiction would certainly disrupt
“Congress’s intended division of labor between state and
federal courts.” Gunn, 133 S.Ct. at 1065.


In summary, there is no plausible claim that this
court has jurisdiction.


Consumer Watchdog loses at CAFC

Consumer Watchdog appeals from the Patent Trial
and Appeal Board’s decision affirming the patentability of
claims 1–4 of U.S. Patent No. 7,029,913 (’913 patent).
Because Consumer Watchdog has not established an
injury in fact sufficient to confer Article III standing,
however, this court dismisses the appeal.

The interesting legal point is that, just become one brings
an inter partes re-exam, does not mean one can appeal an
adverse result to the CAFC:

The present appeal concerns Article III standing. To
meet the constitutional minimum for standing, the party
seeking to invoke federal jurisdiction must satisfy three
requirements. Lujan v. Defenders of Wildlife, 504 U.S.
555, 560 (1992). First, the party must show that it has
suffered an “injury in fact” that is both concrete and
particularized, and actual or imminent (as opposed to
conjectural or hypothetical). Id. at 560–61. Second, it
must show that the injury is fairly traceable to the challenged
action. Id. at 560. Third, the party must show
that it is likely, rather than merely speculative, that a
favorable judicial decision will redress the injury. Id. at

These constitutional requirements for standing apply
on appeal, just as they do before district courts. Hollingsworth,
133 S. Ct. at 2661. Accordingly, these requirements
apply with equal force to appeals from
administrative agencies, such as the U.S. Patent and
Trademark Office (PTO), to the federal courts. See Sierra
Club v. E.P.A., 292 F.3d 895, 899 (D.C. Cir. 2002). To be
clear, although Article III standing is not necessarily a
requirement to appear before an administrative agency,
once a party seeks review in a federal court, “the constitutional
requirement that it have standing kicks in.” Id.


[Consumer Watchdog] does not allege that it intends to engage in such activity.
Nor does it allege that it is an actual or prospective
licensee, or that it has any other connection to the ’913
patent or the claimed subject matter. Instead, Consumer
Watchdog relies on the Board’s denial of Consumer
Watchdog’s requested administrative action—namely, the
Board’s refusal to cancel claims 1–4 of the ’913 patent.
That denial, however, is insufficient to confer standing.

The statute at issue
here allowed any third party to request reexamination,
and, where granted, allowed the third party to participate.
35 U.S.C. §§ 311(a), 314(b)(2) (2006). The statute
did not guarantee a particular outcome favorable to the
requester. See generally 35 U.S.C. §§ 311–318 (2006).
Consequently, the Board’s denial of Consumer Watchdog’s
request did not invade any legal right conferred upon
Consumer Watchdog.

The punchline

Nor is it enough that the inter partes reexamination
statute allows a third party requester to appeal decisions
favorable to patentability. 35 U.S.C. § 315(b). A statutory
grant of a procedural right, e.g., right to appeal, does
not eliminate the requirements of Article III.


But the statutory grant of a
procedural right does not eliminate the requirement that
Consumer Watchdog have a particularized, concrete stake
in the outcome of the reexamination. Summers, 555 U.S.
at 496 (“[D]eprivation of a procedural right without some
concrete interest that is affected by the deprivation—a
procedural right in vacuo—is insufficient to create Article
III standing.”).

Rambus wins reversal of Board's rejection for anticipation

From the CAFC on Rambus

After oral argument, requestor Micron Technology,
Inc. (“Micron”) moved to withdraw from this case, which
we granted in a separate order. Rambus has the right to
appeal the Board’s rejection of its claims irrespective of
Micron’s participation in this appeal. See 35 U.S.C. §
315(a)(1) (2006). Thus, despite Micron’s withdrawal, a
live controversy regarding the patentability of Rambus’s
claims remains before us for resolution.1 We do not reach
Micron’s alternate grounds for affirming the Board,
because these arguments have been withdrawn. As
discussed below, we reverse the Board’s anticipation
decision as unsupported by substantial evidence.

As to the argument

The Board found that, in at least some embodiments
in Bennett, Parameter VI meets the claim limitation at
issue. Specifically, when the embodiments in Fig. 25a
and b both (1) win arbitration on the first attempt and (2)
are not busy for an indeterminate amount of time, then
Parameter VI is a “value that is representative of an
amount of time to transpire after which the memory
device outputs the first amount of data.” We disagree. A
value cannot “represent” an “amount of time” if there are
additional factors, wholly unrepresented by that value,
that necessarily impact, or represent, the “amount of
time.” Certainly, Parameter VI is one factor that may
affect the amount of time that passes before data is trans-
ferred but it does not represent that time. Accordingly,
we reverse the Board’s decision that Bennett anticipates
claims 26 and 28 of the ’916 patent.

Sunday, June 01, 2014

60 Minutes on June 1, 2014

The recycled story on the F-35 noted that 2,443 aircraft will be purchased at a cost of over $400 billion.

The recycled story by Morley Safer on photographer Henry Grossman recapped stories on JFK and the Beatles.

CBS Sunday Morning on June 1, 2014

The show had an intellectual property twist whe Conor Knighton spoke of Apple's trademarked
phrase "There's an app for that."