Hostess products with Mars components

Hostess is marketing some product comprising product of Mars, and displays this fact on the front outside packaging.

BakingBusiness reported in July 2016 :


The new products were developed through a licensing partnership between Hostess and Mars. While officially announced on July 7, the products were on display in late May at the Sweets & Snacks Expo in Chicago. William Toler, chief executive officer of Hostess, has discussed the partnership with Mars and expressed the hope it will generate additional co-branded products.



link: http://www.bakingbusiness.com/articles/news_home/New_Products/2016/07/Hostess_Mars_cobranded_brownie.aspx?ID=%7B43B3061C-1886-4FD6-B7A5-55813350F6C8%7D&cck=1

On the back of the packaging, one finds the following:

CAFC affirms claim construction of ND Cal in NORTHPEAK WIRELESS case; Northpeak loses

The technical area was wifi [IEEE 802.11 (commonly referred to as “WiFi”). ]
The CAFC upheld the claim construction related to US Patent 4,977,577 of the
ND Cal district court:



The substance of both stipulations is essentially the same: under
the district court’s constructions of several terms, North-
Peak could not prove infringement of the asserted claims
of the ’577 patent. The district court entered final judgment
of non-infringement as to both groups of accused
infringers (now, collectively, “the Appellees”).
NorthPeak appeals the district court’s constructions of
four claim terms/groupings: (1) “register”; (2) “[preamble/
address/data] register”; (3) “storing/stored”; and (4)
three related means-plus-function terms. Pursuant to the
parties’ stipulations—and as confirmed during oral argument—
if we affirm any one of the district court’s constructions
for “register,” “[preamble/address/data]
register,” or “storing/stored,” we must also affirm the
judgments of non-infringement.
For the following reasons, we affirm.



Of the law:


“The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015); see also Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“[W]hen the
district court reviews only evidence intrinsic to the patent
(the patent claims and specifications, along with the
patent’s prosecution history), the judge’s determination
will amount solely to a determination of law, and the
Court of Appeals will review that construction de novo.”).



Of the issue over the term "register"


Starting with this last point, we note that, although
the district court primarily relied on prosecution disclaimer
in reaching its construction, this case does not
require invoking the prosecution disclaimer doctrine. It is
well established that we are to give claim terms their
“ordinary and customary meaning,” with reference to the
intrinsic evidence, including the prosecution history.1 See
Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1317 (Fed.
Cir. 2005). Although consulting the prosecution history
often serves to identify ways in which the inventor may
have narrowed a claim’s definition in order to obtain
allowance, it may also simply “inform the meaning of the
claim language by demonstrating how the inventor understood
the invention.” See id. at 1317; see also Shire
Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366
(Fed. Cir. 2015) (explaining that prosecution history
statements “do inform the claim construction,” even when
they “do not rise to the level of unmistakable disavowal”).
In this case, contrary to NorthPeak’s unsubstantiated
assertions, there is no hint in the term “register” itself
that would suggest the plain and ordinary meaning
necessarily encompasses types of regular memory such as
RAM or buffers. Therefore, we are not faced with the
question of whether NorthPeak unambiguously disclaimed
the full scope of the term during reexamination.
Rather, the only intrinsic evidence informing the plain
and ordinary meaning of register comes from the prosecution
history—including the definition NorthPeak itself
provided during reexamination:

The term “register” should be construed as “a designated
or specific region of memory in a computer
processor.” This construction is consistent with
the plain and customary meaning to one of ordinary
skill in the art. See, e.g., COMPUTER
DICTIONARY at 334, Microsoft Press (2d. Ed. 1994)
(defining “register” as “[a] small named region of
high-speed memory located within a microprocessor
or any electronic device capable of storing binary
data. A register is usually large enough to
hold only a few bytes of information and is referenced
in programs by a name such as AX or SF.



The decision turned on the meaning assigned to "register":



The intrinsic evidence fully supports the district
court’s construction as representing the plain and customary
meaning of the term “register.” Even assuming
the full scope of the plain meaning of “register” were
broader than that which we assign, we would, like the
district court, find that NorthPeak unambiguously disclaimed
a broader scope during reexamination. The
proper construction of “register” is: “a small, named
region of high speed memory located within a microprocessor
or any electronic device capable of storing binary
data. A register is usually large enough to hold only a few
bytes of information and is referenced in programs by a
name, rather than an address.”

As stated above, because we affirm the district court’s
construction of “register,” we need not address the remaining
claim terms. The judgment of the district court
is affirmed.

Microsoft's "holodeck" patent application: US 20160371884

The abstract of the '884 application states


The described implementations relate to complementary augmented reality. One implementation is manifest as a system including a projector that can project a base image from an ancillary viewpoint into an environment. The system also includes a camera that can provide spatial mapping data for the environment and a display device that can display a complementary three-dimensional (3D) image to a user in the environment. In this example, the system can generate the complementary 3D image based on the spatial mapping data and the base image so that the complementary 3D image augments the base image and is dependent on a perspective of the user. The system can also update the complementary 3D image as the perspective of the user in the environment changes.



The first published claim recites:


A system, comprising: a camera configured to provide spatial mapping data for an environment; a projector configured to project a base three-dimensional (3D) image from an ancillary viewpoint into the environment, the base 3D image being spatially-registered in the environment based at least in part on the spatial mapping data; a display configured to display a complementary 3D image to a user in the environment; and, a processor configured to: generate the complementary 3D image based at least in part on the spatial mapping data and the base 3D image so that the complementary 3D image augments the base 3D image and is dependent on a perspective of the user, wherein the perspective of the user is different than the ancillary viewpoint, and update the complementary 3D image as the perspective of the user in the environment changes.



The application has no "background" section and no "summary of invention," but it does have a conclusion:





[0118] The order in which the disclosed methods are described is not intended to be construed as a limitation, and any number of the described blocks can be combined in any order to implement the method, or an alternate method. Furthermore, the methods can be implemented in any suitable hardware, software, firmware, or combination thereof, such that a computing device can implement the method. In one case, the methods are stored on one or more computer-readable storage media as a set of instructions such that execution by a processor of a computing device causes the computing device to perform the method.

[0119] Although techniques, methods, devices, systems, etc., pertaining to complementary augmented reality are described in language specific to structural features and/or methodological acts, it is to be understood that the subject matter defined in the appended claims is not necessarily limited to the specific features or acts described. Rather, the specific features and acts are disclosed as exemplary forms of implementing the claimed methods, devices, systems, etc.


There is no claim of priority. The application was filed June 17, 2015 and published December 22, 2016. The first named inventor is Hrvoje BENKO.

***
Meanwhile, Amazon obtained United States Patent 9524648 titled Countermeasures for threats to an uncrewed autonomous vehicle,
with first claim:


A method of operating an uncrewed autonomous vehicle (“UAV”) comprising: establishing, at the UAV via a communication interface, communication with a mesh network comprising a plurality of other UAVs; generating first location data of the UAV using a first navigation system onboard the UAV, wherein the first location data indicates a first location of the UAV; receiving external data from one or more of the plurality of other UAVs in the mesh network; generating second location data using a second navigation system, wherein the second location data indicates a second location of the UAV; determining that the first location data differs from the second location data by a threshold value; determining operation of the UAV is compromised based at least in part on the external data; transitioning to a fail-safe mode wherein the UAV is configured to disregard one or more of commands, the first location data, or the second location data; and transmitting alert data indicative of: the compromise of the UAV; and last available location data of the UAV.

Fitbit drops 337 ITC case against Jawbone

Aaron Pressman of Fortune has reported that Fitbit dropped its ITC patent case against its financially-ailing competitor Jawbone.
Much of the earlier wrangling had led to invalidity of various patents on both sides.

Jawbone seems to be planning an antitrust claim against Fitbit; from a statement on 24 Dec 2016: "Fitbit's pursuit of these baseless claims for so long was to burden Jawbone–an issue to be raised in Jawbone's anti-trust claim against Fitbit."

The issue of invalid (as distinct from unenforceable) claims, in an antitrust context, has been the subject of a thread on linkedin.
(Steve Ngo posing the question: Can a Patent be Invalidated (because of Fraud or Unclean Hands) thru the USPTO?)

link to Pressman post: http://fortune.com/2016/12/24/jawbone-fitbit-patent-challenge/

See also: https://techcrunch.com/2016/12/24/fibit-v-jawbone/

http://www.techtimes.com/articles/190146/20161226/fitbit-withdraws-patent-complaint-to-prevent-jawbone-products-from-entering-the-us-a-christmas-gift-or-something-else.htm

**In passing, IPBiz ranked number 1 IP blog for 27 Dec 2016:

CAFC discusses the meaning of evidence in Rudolph Technologies

Of a reversal of PTAB:


For the Board to have found that the “at least one
other die” disclosure in Alumot suggests multiple-die
comparison is one thing. But extrapolating this disclosure
even further, to find that Alumot suggests training a
composite model, is quite another, requiring more inferences
than are justified considering the sum and substance
of Alumot. “A factfinder should be aware, of
course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966)). Indeed, one must “be careful not to allow hindsight
reconstruction of references to reach the claimed
invention without any explanation as to how or why the
references would be [modified] to produce the claimed
invention.” Kinetic Concepts, Inc. v. Smith & Nephew,
Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008)). Because the Board relied on no evidence
for its determination that one of ordinary skill
would have known of training a model using multiple dies
as one of two ways to compare an inspected light pattern
to that of “at least one other die,” substantial evidence
does not support the factual findings underlying its obviousness
conclusion for claim 9 and the claims depending
from it. Accordingly, we find claim 9 not obvious over
Alumot in view of Moriya.



Judge Reyna disagreed:


The majority does not
explain how or why the text from the Alumot reference
does not count as evidentiary support, nor does it cite
legal authority for that proposition. Indeed, a basic tenet
of U.S. Patent law is that the text, diagrams, and figures
of a prior art reference are evidence. See, e.g., Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 280 (1976) (listing prior patents
and prior art publications as types of evidence in an
obviousness inquiry); Okajima v. Bourdeau, 261 F.3d
1350, 1356 (Fed. Cir. 2001) (citing the scope and content
of the prior art references as substantial evidence in
support of the Board’s determination of nonobviousness).
The interpretation of such evidence results in factual
findings. “Art can legitimately serve to document the
knowledge that skilled artisans would bring to bear in
reading the prior art identified as producing obviousness.”
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d
1359, 1365 (Fed. Cir. 2015). These factual findings can
“include findings as to the scope and content of the prior
art, the differences between the prior art and the claimed
invention, the level of ordinary skill in the art, the presence
or absence of a motivation to combine or modify with
a reasonable expectation of success, and objective indicia
of non-obviousness.” Id. at 1364.




Also of note


We dismiss Rudolph’s appeal as to
claims 30–34 and 36 because we lack jurisdiction to
review the Board’s new grounds for rejection.


link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1418.Opinion.12-20-2016.1.PDF

CAFC reverses PTAB in D'Agostino v. Mastercard

The bottom line:


Because the Board’s decisions rest on
an unreasonable claim interpretation, we vacate the
decisions and remand for further proceedings.



Note text


Because the decisive aspect of the Board’s reasoning is
contrary to the claim as reasonably construed, we need not
and do not discuss other statements made by the Board
en route to its conclusion, some of which MasterCard
declines to defend



Footnote 1 observes:


MasterCard also has correctly declined to
defend the Board’s apparent under-
standing of Mr. D’Agostino’s
remarks about scenarios
involving Target and McDonald’s made
in the imprecise back-and-forth
discussion at oral argument before the
Board.



link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1592.Opinion.12-20-2016.1.PDF

Apple brings antitrust action against Acacia over patents obtained from Nokia

PatentlyApple has a post Apple Files a Major Antitrust Case against Acacia Research Corporation Pointing to a Conspiracy with Nokia Corporation which presents a complaint filed by Apple in federal ND Cal against Acacia (and others) asserting antitrust violations.

The action involves "standard essential patents" acquired by non-practicing entities (also known as patent assertion entities [PAE]) from Nokia which were the subject of FRAND agreements:


This conduct is all the more pernicious because it unfairly and anticompetitively evades binding commitments that Nokia made to license declared standard essential patents ("SEPs") on fair, reasonable, and non-discriminatory ("FRAND") terms. Nokia positioned itself to claim that its patents cover technologies included in telecommunications standards by repeatedly assuring standard-setting organizations that it would license its patents fairly. Yet Acacia and Conversant are now conspiring with Nokia in a scheme to diffuse and abuse such patents and, as the PAEs and Nokia fully intended, monetize those false promises by extracting exorbitant non-FRAND royalties in ways Nokia could not.



Apple's complaint has five counts:


Count #1: Breach of FRAND Contract



Count #2: ACACIA-NOKIA, CORE WIRELESS-NOKIA AGREEMENTS to Restrain Competition in Cellular Technology Licensing (Section 1 of the Sherman Act).



Count #3: Unlawful Asset Acquisition (Section 7 of the Clayton Act)



Count #4: Conspiracies to Monopolize the SEP TECHNOLOGY MARKETS (section 2 of the Sherman Act)



Count #5: Unfair Competition under Cal. Bus. & Pro. Code § 17200



The relief requested includes:



E. That all contracts or agreements that Nokia, on the one hand, and or Acacia or Conversant, on the other, entered into in violation of the Sherman Act, Clayton Act, Cal. Bus. Prov. Code § 17200, et seq., or in breach of Nokia's FRAND undertakings be declared void and the patents covered by those transfer agreements be transferred back from Acacia and Conversant (or their respective subsidiaries) to Nokia;



F. That all patents transferred by Nokia to, or acquired by, Acacia or Conversant (or their respective subsidiaries) in violation of the Sherman Act, Clayton Act, Cal. Bus. Prof. Code § 17200, et seq., or in breach of Nokia's FRAND undertakings be declared unenforceable;



On 21 December 2016, Joe Mullin wrote on Ars Technica:


Just yesterday, Apple filed an antitrust lawsuit (PDF) against Nokia in federal court in San Jose. In it, Apple accused the Finnish company of transferring "massive numbers of patents" to patent assertion companies like Acacia. Nokia reached a deal with "each of its PAE co-conspirators" to separately enforce a diffused patent portfolio, "to maximize the aggregate royalties that can be extracted from product companies," Apple lawyers allege. "Nokia and those PAEs have thereby increased market power and created or enhanced monopoly power associated with those patents."

Apple claims that Nokia's strategy of working with PAEs to stack up big royalty payments is a violation of US antitrust laws, as well as a breach of contract. The breach of contract claim says that Nokia violated its commitments to license certain standard-essential patents on a FRAND (fair, reasonable, and non-discriminatory) basis.



As to "market power" and "monopoly power," the Apple complaint acknowledges that Nokia and the PAEs are not producing participants in the cell phone market:


Acacia's and Conversant's illegal conduct takes place against the backdrop of Nokia's failure as a supplier of cell phones. In 2011, Nokia remained a major supplier of cell phones, but, due to its failure to innovate, was facing business prospects so dire that Nokia ultimately exited the cell phone market. As Nokia's CEO had announced to employees the previous year, Nokia was standing on "a burning platform." Unable to compete with innovative companies such as Apple—which had developed a revolutionary hardware and software platform—Nokia quickly transformed itself. It changed from a company focused on supplying cell phones and other consumer products to a company bent on exploiting the patents that remain from its years as a successful cell phone supplier. In its changed form, Nokia has sought to extract exorbitant patent royalties from Apple and other cell phone makers, and Acacia and Conversant have been its willing conspirators to that end.



Some background discussion of SEPs and FRAND can be found in

**
http://www.cardozo.yu.edu/what-%E2%80%9Cfrand%E2%80%9D-all-about-licensing-patents-essential-accepted-standard

http://www.iam-media.com/intelligence/IAM-Yearbook/2016/Country-by-country/Latest-developments-in-FRAND-and-SEP-litigation

**

Note the Microsoft/InterDigital matter.
link: http://www.essentialpatentblog.com/2016/04/judge-andrews-permits-microsofts-sep-based-antitrust-claims-interdigital-proceed-microsoft-v-interdigital/

Some relevant issues were discussed in CSU v. Xerox, wherein CSU had alleged a Section 2 Sherman Act violation:

The CAFC interpreted prior case law and Section 271(d) of the Patent Act, 35 U.S.C. 271(d),3 to establish that a patent holder generally has no obligation to license or sell its intellectual property, and that privilege is not negated by the antitrust laws. The CAFC did note three exceptions. First, a suit to enforce the statutory right to exclude is not exempt from the antitrust laws if the infringement defendant shows that the patent was obtained through fraud on the Patent and Trademark Office. Second, an infringement defendant may avoid liability by demonstrating that the infringement suit is a sham to cover an attempt to interfere with the business relations of a competitor. Third, the court of appeals noted (id. at 8a) that, in Eastman Kodak Co. v. Image Technical Services, Inc., 504 U.S. 457, 479-480 n.29 (1992) (Kodak), this Court stated that "power gained through some natural and legal advantage such as a patent, . . . can give rise to liability if a seller exploits his dominant position in one market to expand his empire into the next."

In the Apple/Acacia case, Acacia is not a competing producer of phones, nor, at the moment, is Nokia. There is no assertion in the complaint that fraud on the patent office happened. The CAFC-noted exceptions don't apply. Recall also that the Supreme Court in Illinois Tool had noted: "a patent does not necessarily confer market power upon the patentee."

The issue turns on the FRAND obligations undertaken by Nokia which devolved to Acacia. Is this simply a contract case? Or does a violation of an obligation under FRAND transform this to a federal antitrust case?


***

Of relevant past cases, note

* Apple v. Motorola, 2011 U.S. Dist. LEXIS 72745 (WD Wisc)


To state a claim for patent misuse, Apple must allege facts showing that Motorola has employed anticompetitive practices in an effort to extend its patent grant beyond its statutory limits. USM Corp. v. SPS Technologies, Inc., 694 F.2d 505, 510 (7th Cir. 1982); see also Princo Corp. v. International Trade Commission, 616 F.3d 1318, 1328 (Fed. Cir. 2010) ("What patent misuse is about, in short, is 'patent leverage,' i.e., the use of patent power to impose overbroad conditions on the use of the patent in suit that are not within the reach of the monopoly granted by the Government.") As explained in the context of Apple's antitrust claims above, Apple's allegations support an inference that the license Motorola seeks to impose on Apple extend beyond the reach of a lawful patent monopoly. This is sufficient to state a claim for patent misuse.

To survive a motion to dismiss on a promissory estoppel claim, Apple must plead that Motorola made a promise that it should have reasonably expected to cause Apple to change its position, and that the promise caused Apple to change position in such a manner that injustice can be avoided only by enforcing the promise. Hoffman v. Red Owl Stores, Inc., 26 Wis. 2d 683, 693-94 133 N.W.2d 267, 273-74 (1965). Motorola contends that Apple's promissory estoppel claim should be dismissed as inadequately pleaded because Apple has not alleged that Motorola made any promise to Apple. I disagree.

Apple alleges that Motorola made promises to the standards setting organizations through its commitments that it would license any essential patents under fair, reasonable and non-discriminatory terms. Apple's Cpt., dkt. #1, ¶¶ 27-45; 118. Apple alleges that the intended purpose of Motorola's promises was to induce reliance and that Motorola "knew or should have reasonably expected that this promise would induce sellers of mobile wireless devices, like Apple, to develop products compliant with the relevant standards." Id. ¶ 119. Apple alleges that it "invested billions of dollars in the applicable technology and developed and marketed its products and services in reliance on Motorola's (and others') promises . . . including designing its products and services to be compliant with adopted standards." Id. ¶ 120. Finally, Apple alleges that it has been harmed as a result of its reasonable reliance on Motorola's promises and is threatened by loss of profits, customers, goodwill and product image, uncertainty in business planning and uncertainty among customers and potential customers. These facts are sufficient to state a claim for promissory estoppel.



* Multimedia Patent Trust v. Apple, 2012 U.S. Dist. LEXIS 167479 (SD Cal, opinion by Judge MARILYN L. HUFF)


MPT moves for summary judgment of Apple and LG's affirmative defense of standards settings organizations estoppel. (Doc. No. 426 at 13.) Specifically, MPT argues that Apple and LG have failed to present evidence showing which entity or entities owed an alleged duty of disclosure to a standard setting organization. (Doc. No. 426 at 13.) In response, Apple and LG argue that they have presented evidence showing that MPT's predecessors-in-interest were members of standards setting bodies relating to the MPEG-2 standard and the H.264 standards. (Doc. No. 478 at 12-14.)

"A member of an open standard setting organization may be equitably estopped or may have impliedly waived its right to assert infringement claims against standard-compliant products." Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1347-48 (Fed. Cir. 2011). To establish an affirmative defense of waiver or estoppel in the standard setting organization context, a defendant must satisfy two elements: "(1) the patentee had a duty of disclosure to the standard setting organization, and (2) the patentee breached that duty." Id. at 1348.

In response to MPT's motion, Apple and LG have presented evidence from which a reasonable inference could be drawn that MPT's predecessors-in-interest were members of the standards setting bodies for the MPEG-2 and H.264 standards and participated in standards setting activity for those two standards. (Doc. No. 478, Declaration of Justin Barnes Exs. H-I.) Apple and LG also have also presented evidence from which a reasonable inference could be drawn that those two standard setting bodies required their members to disclose patents that might reasonably be necessary to practice those standards. (Id.) Therefore, Apple and LG have presented sufficient evidence to allow their defense of standards setting organization estoppel to survive summary judgment.




Of law review articles, note

* Daryl Lim, PATENT MISUSE AND ANTITRUST: REBIRTH OR FALSE DAWN?, 20 Mich. Telecomm. Tech. L. Rev. 299 (2014) :



Patent misuse is an extension of the equitable doctrine of unclean hands where courts exercising their discretion will deny enforcement even if infringement is found. n25 It acts as a public injunction against abuses of the privilege granted under patent law, and balances public and private interests. n26 [p. 309] Examples of patent misuse include tying, n27 package licensing, n28 and horizontal price-fixing n29 and territorial allocations n30 under the guise of sham patent licenses. n31

A judge finding patent misuse has the discretion to withhold damages or injunctive relief even if the patents themselves have not yet been enforced. n32 The patents in question are rendered unenforceable until the effects of the misuse have been purged. n33 Purging requires patentees to show that they have completely abandoned the misconduct, and that their "baleful effects" have dissipated. n34



* Daryl Lim, MISCONDUCT IN STANDARD SETTING: THE CASE FOR PATENT MISUSE, 51 IDEA 559 (2011).

Lim states of acknowledgements: I am grateful to William Kovacic, Hugh Hansen, Stuart Loh, Mark Lemley, and Herb Hovenkamp for their helpful comments and encouragement.

From footnote 197


See, e.g., Apple Inc.'s Second Amended Answer, Defenses, and Counterclaims, Nokia Corp. v. Apple, Inc., No. 2011 WL 495957 (D. Del., February 11, 2011) ("Nokia's demand for a reciprocal 'grantback' license to Apple's non-standards-essential patents as a condition for licensing Nokia's purported essential patents at a F/RAND royalty rate constitutes misuse of Nokia's purported essential patents."); see also Oliver, supra note 153, at 67 ("It would appear that neither subsequent enforcement of patent A minus the grantback obligation nor subsequent enforcement of patent B would constitute patent misuse under Princo, although the conduct might constitute an antitrust violation.")



Within Lim's conclusion:


Patent misuse is ultimately a judge-made doctrine, and its vitality rests upon the will of those shaping it. The antitrust analysis placed upon the patent misuse doctrine by the Federal Circuit provides a principled and robust means of developing the doctrine according to contemporary economic analysis to curb anticompetitive conduct. At the same time, patent misuse's origins in patent policy endows it with sufficient suppleness in the hands of the expert judicial panels at the Federal Circuit to craft it within clearly defined guidelines and preserve an equitable instrument well attuned to the needs of the patent community and the wider public which it serves.



*Cole, Horton and Vacca, FOOD FOR THOUGHT: GENETICALLY MODIFIED SEEDS AS DE FACTO STANDARD-ESSENTIAL PATENTS, 85 U. Colo. L. Rev. 313 (2014)


A standard, most often seen in technology-based industries, is "any set of technical specifications that either provides or is intended to provide a common design for a product or process." n247 Standards serve useful purposes because they encourage interoperability, facilitate competition in replacement parts, and even promote social welfare. n248

(...)

Before SSOs [Standard Setting Organizations] adopt standards covered by SEPs, they frequently require the owners of those patents to commit to licensing their patents under reasonable and non-discriminatory (RAND) terms. n260 This is because adoption of an SEP could endow the patent owner with disproportionate market power and permit it to "extract unreasonably high royalties from suppliers [and users] of standard-compliant products and services." n261 Requiring RAND licensing protects adopters and users of the standard from paying extraordinarily high fees when there are no realistic opportunities to produce the product or provide the service without infringing the patent. n262 This RAND licensing requirement is commonplace. n263

But not all standards are created by SSOs. n264 De facto [*351] standards may also emerge as a result of consumer preference. n265 If a de facto standard emerges and is covered by a patent, then the patent becomes a de facto standard-essential patent (de facto SEP). The owner of the de facto SEP, like the owner of the de jure SEP, may have increased market power.

There should be no difference between the rights and responsibilities that arise from the creation of a de jure SEP and a de facto SEP. In particular, where patented technology necessary for the satisfaction of a human need reaches SEP status, a license should be implied between the patentee and those users who cannot practicably fulfill the need without infringing the patent. This type of implied license would, like other licenses, be an affirmative defense. n266 If established, this implied license would remove the possibility of inflating damages for deterrent or punitive effect and remove the possibility of granting injunctions.

CAFC issues Rule 36 judgment in Wildcat v. Adient

The CAFC issued a Rule 36 judgment in the Wildcat Licensing case. Donald Dunner
represented the unsuccessful appellant in the appeal from inter partes reviews
IPR2014-00304 and IPR2014-00305.

The oral argument can be found at

https://www.courtlistener.com/audio/27454/wildcat-licensing-wi-llc-v-adient-plc/

An IP flashback on Jerry Lewis

Yahoo Celebrity ran a post Jerry Lewis Gives the Most Awkward Interview which included text:


Comedian Jerry Lewis sat down with the Hollywood Reporter for its series on entertainers who are in their 90s and still working. The interview with Lewis was so bad that the Hollywood Reporter headlined it the “most painfully awkward interview of 2016.”

(...)

” When asked about any memories of Dean Martin and Frank Sinatra, Jerry told Andy that he didn’t want to share any with him.



The interaction of Jerry Lewis and Dean Martin has been much discussed. A small footnote involves a curious intellectual property issue, which even touched on the television show "77 Sunset Strip."

Early episodes of "77 Sunset Strip" prominently featured a place called "Dino's Lodge," which was a real establishment on Sunset Strip (no, not at 77 Sunset Strip, which address does not exist, but rather at 8532 Sunset Blvd.). Dino's Lodge opened in 1958. It was not owned by Dean Martin, but naming rights were licensed from Martin in return for a percentage. "77 Sunset Strip" had an agreement with Dino's Lodge, and the display of the Dino's Sign in the opening credits of the tv show amounted to a kind of infomercial. It is interesting to note that the character Gerald Lloyd "Kookie" Kookson III (played by Edd Byrnes) was portrayed as a parking valet at Dino's Lodge, which was a real establishment.

Maury Samuels was a business partner of Martin's and was involved in the Dino's Lodge transaction. By 1961, he and Martin had a falling out, and Jerry Lewis partnered with Samuels to open a restaurant for Jerry Lewis. Called "Jerry's," it was about 3 blocks from "Dino's Lodge." Jerry hired the chef, and other employees, from Dino's Lodge. By February 1962, Dean Martin severed ties with "Dino's Lodge." By February 1963, Lewis was trying to sell "Jerry's."

Of intellectual property matters, mentalfloss noted:


Much to his aggravation, he [Martin] lost a motion in court to have his likeness and name removed from the sign. So the new owners carried on as Dino’s Lodge, with the big neon head staring down on Sunset for another decade before the place finally went bust.



The hipster character Kookie played by Byrnes became popular. His single (with Connie Stevens) --"Kookie, Kookie (Lend Me Your Comb)" -- became the first hit single for the newly established Warner Bros. Records. In the show, Kookie drove a T bucket hot rod (created by Norm Grabowski ) based on a shortened 1922 Ford Model T touring car combined with to a shortened Model A pickup truck bed and powered by a 1952 Cadillac 331-cid V-8. In 1957, the car was featured in a LIFE magazine Photographic Essay titled, “The drag racing rage: hot rodders grow in numbers but the road to respectability is a rough one.”



Reference links:

http://blog.wfmu.org/freeform/2011/07/dining-at-dinos-lodge.html

http://www.lamag.com/citythinkblog/vintage-los-angeles-sunset-stripped/

http://mentalfloss.com/article/12882/time-dean-martin-and-jerry-lewis-opened-competing-restaurants-sunset-strip

CAFC in U.S. Water Services: A Genuine Dispute as to a Material Fact Bars Summary Judgment Based on Inherent Anticipation

In the case US Water Services v. Novozymes, the technology at issue relates to the production of
ethyl alcohol (i.e., ethanol ) from a milled grain.


link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1950.Opinion.12-14-2016.1.PDF

"The Avengers" offered a view of the value of patents, circa 1965

Some critics of the patent system argue that the "right to exclude" is not needed because the true innovator will dominate the market simply by skill.

In the episode of the television show The Avengers captioned "The Cybernauts," actor Burt Kwouk portrays Japanese industrialist Tusamo of the Harachi company, who has developed a device to supplant the transistor. Patrick Macnee (as character John Steed pretending to be potential licensee Bob Lambert of Industrial Deployments, who has been murdered) asks Tusamo if Tusamo has a patent. Tusamo indicates a patent is not needed because the capitalization for the process is extreme ($50 million in those days).

Rather than competitively bidding for a license to Tusamo's invention, bad guy character Dr. Clement Armstrong (depicted as an ex-government employee and played by actor Michael Gough) is using cybernauts to kill other industrialists who are bidding for the European concession to Tusamo's invention.

In the story line, the inventor Tusamo does not need a patent because, according to the premise, competitors to Tusamo don't have the capital to get into the alternative transistor game. The potential licensees seem to accept the premise, as they are literally killing one another off to get the exclusive European license from Tusamo, rather than trying to compete with Tusamo.

Although Tusamo did not have a patent for the alternative transistor, he carefully guarded his list of potential licensees. Steed, making his initial pitch in Tusamo's office, artfully photographed the list on Tusamo's desk using a camera in his umbrella while Tusamo's back was turned to point to a picture of his manufacturing facility. Industrial espionage at work.

The Cybernauts first aired on ABC on 16 October 1965, and, although the third episode of the fourth series (the first series in America), The Cybernauts was the first Avengers episode seen in America, and arguably one of the best.

Actor Kwouk had appeared in a British episode of The Avengers in 1964 ("Lobster Quadrille") and in Goldfinger and "A Shot in the Dark," also in 1964. He died May 24, 2016. His character Tusamo remarked, "This heralds a new age. Computers no bigger than a cigarette box. Pocket television. And radios smaller than a wristwatch."

And Tusamo gets to deliver fortune cookie wisdom:




Tusamo: We have saying, in darkness, ceiling is always higher.

John Steed: Confucius?

Tusamo: Tusamo.



**To the extent that the Tusamo device might be deemed the integrated circuit, one recalls that two distinct companies arrived at the invention at about the same time, and were locked in a patent interference. Noyce and Kilby were the two inventors in question. Kilby got a Nobel Prize, after the death of Noyce.

Faked news and plagiarized "letters to the editor"

The cover story on CBS Sunday Morning, titled -- What’s to be done about fake news? -- by Ted Koppel, included the text:


There’s nothing new, of course, about using media to commit political slander. In 1796, an anonymous editorial accused Thomas Jefferson of cowardice, of running away from British troops. The unidentified author? The current toast of Broadway: Alexander Hamilton.

Our revered founding fathers could sling mud with the worst of them.

It’s not the nastiness that’s new; it’s the delivery systems.



link to CBS story: http://www.cbsnews.com/news/whats-to-be-done-about-fake-news/

[Koppel neglected to mention that Hamilton, tho no fan of Jefferson, helped elect Jefferson in 1800. From wikipedia:
Hamilton, however, regarded Burr as far more dangerous than Jefferson and used all his influence to ensure Jefferson's election. On the 36th ballot, the House of Representatives gave Jefferson the presidency, with Burr becoming vice president.]

* The delivery systems can include "letters to the editor."

An interesting New Jersey/Florida plagiarism connection appears in a post in a Florida newspaper, which post
includes the text:


Like local "authors" of the former seasonal diatribes against eating meat - until caught by astute letters-to-the-editor authors who actually compose their own material - they troop to websites that cater to their political interests, copy-and-paste pre-scripted letters, slap their names to 'em and shoot 'em to the local paper.



link: http://www.nwfdailynews.com/news/20161218/letter-plagiarism-by-letter-writers

**Also in the Koppel piece was criticism by Jonathan Turley of Oliver Wendell Holmes:


To which Jonathan Turley, a First Amendment scholar at George Washington University, said, “If there was one statement of one justice in one case that I could eradicate from the face of the Earth, it would be Oliver Wendell Holmes’ statement about crying ‘fire’ in a crowded theater.

CAFC addresses discovery issues in United Construction v Tile Tech

The "background" section begins


This case comes to our court following a series of de-
lays, missed deadlines, and other procedural missteps by
Tile Tech that are necessary to describe in full.



Tile Tech's arguments:


Tile Tech raises two principal arguments on appeal, one concerning the entry of default judgment and the other related to the scope of the District Court's permanent injunction. Appellant's Br. 14-28, 29-33. "A decision to sanction a litigant [by ordering default judgment] pursuant to Fed[eral] R[ule of] Civ[il] P[rocedure] 37 is one that is not unique to patent law . . . and we therefore apply regional circuit law to that issue . . . ." ClearValue, Inc. v. Pearl River Polymers, Inc., 560 F.3d 1291, 1304 (Fed. Cir. 2009) (internal quotation marks and citation omitted); see also Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1297 (Fed. Cir. 2016) (considering an appellant's challenge to the imposition of default judgment and stating that "[w]e are guided by regional circuit law when reviewing discovery rulings . . . and the imposition of sanctions" (internal citations omitted)). In this case, we look to Ninth Circuit precedent, and the relevant standard is articulated below. Because the injunction "enjoins the violation of a[] right secured by a patent . . . [it] involves substantive matters unique to patent law and, therefore, is governed by the law of this court." Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 n.12 (Fed. Cir. 1988); see Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (applying Federal Circuit law as the standard of review for the scope of an injunction).



Note also


Where one party withholds evidence, repeatedly declines to truthfully
respond to discovery requests or comply with the
District Court’s rules, and fails to properly designate witnesses
and exhibits during discovery, such conduct prejudices an
opposing party’s ability to reach a rightful disposition of
the case



link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1392.Opinion.12-14-2016.1.PDF

Also: 2016 U.S. App. LEXIS 22248

From U . S . WATER SERVS ., INC . v. NOVOZYMES A /S on "inequitable conduct"

U.S. Water did not withhold or misrepresent information to the USPTO.
See Fiskars, nc. v. Hunt Mfg. Co., 221 F.3d 1318, 1327 (Fed. Cir.
2000) (“An applicant is not required to tell the [US]PTO
twice about the same prior art, on pain of loss of the
patent for inequitable conduct.”).





link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1950.Opinion.12-14-2016.1.PDF


From the law review article by Taylor in 27 Berkeley Tech. L.J. 349 (2012) :



Under the new materiality test, announced in Therasense and adopted by the PTO in its proposed revision to Rule 56, prior art is but-for material if [p. 366] the PTO would not have allowed a claim had it been aware of the undisclosed prior art. n153 Thus in applying the Federal Circuit's new materiality test, a judge must recreate the conditions of a PTO examination to determine the materiality of a withheld reference. The inquiry is whether, by a preponderance of the evidence, given the broadest reasonable construction of the claim, the claim would not have issued if the PTO examiner had seen the withheld information. It has been suggested that, similar to the way many courts now hold Markman hearings, courts may begin to hold "Therasense hearings" in which the court will find the broadest reasonable construction for a particular claim and then determine whether under a preponderance of the evidence standard that the claim would not have been allowed by the PTO had it been aware of the undisclosed information. n154

The Federal Circuit previously raised the intent standard Kingsdown in an attempt to reduce the flood of inequitable conduct allegations. n155 However, the high standard quickly eroded, and inequitable conduct allegations continued. n156 A significant amount of time has passed since the Federal Circuit's Kingsdown decision in 1988 and the inequitable conduct doctrine continues to be a problem for the courts and PTO. n157 Although Kingsdown failed, Therasense may have a significantly better chance for success as it comprehensively reformed the doctrine. Rather than just raising the intent standard or the materiality standard, the Federal Circuit in Therasense clearly dictated standards for both of these key elements of the inequitable conduct defense, as well as specifically pointed to standards that were henceforth abolished. The Federal Circuit created a set of coherent standards in Therasense that provide substantial direction in comparison to the continuously vacillating inequitable conduct standards prior to Therasense. n158 The court's holistic approach may well prove more effective and enduring that its predecessor, Kingsdown.

(...)

In Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., a Virginia district court held that an attorney's failure to produce a Statement of Claim to the PTO did not constitute inequitable conduct under the new Therasense standard. n203 The patentee alleged imminent infringement of a certain pharmaceutical [p. 374] compound patent (the '012 patent), by its competitor. n204 The competitor defended the allegation by claiming that the patent was invalid because of inequitable conduct committed by the patentee during prosecution. n205 During prosecution of the patent, the patentee's attorney received a Statement of Claim from another competitor, suing under the patentee's Canadian version of the U.S. application and alleging invalidity. n206 The patentee's attorney withheld this Statement of Claim from the PTO during prosecution. n207

In coming to a decision regarding the inequitable conduct allegation, the court looked to the Federal Circuit's Therasense decision. n208 The court noted that under Therasense, "in order to substantiate a claim of inequitable conduct, "the accused infringer must prove by clear and convincing evidence that the applicant knew of the references, knew that it was material, and made a deliberate decision to withhold it.' " n209 Looking to the facts of the case, the court determined that the information withheld, "hardly approaches" the Therasense but-for materiality. n210 Similarly, the court found that there was no evidence to suggest that the patentee's attorney had any intent to deceive the PTO in failing to disclose the statement of claim because (1) he had no such duty in the first place and (2) such intent is hardly the single most likely inference from his actions. n211 Consequently, the court held that the [p. 375] competitor had failed to make a showing of inequitable conduct by clear and convincing evidence. n212 The district court noted that the present case was the "archetype of the action" the Federal Circuit was targeting with its Therasense decision. n213 The court described Therasense as a "bulwark against the waste of resources by both the judiciary and litigants." n214

Pro se party prevails, as the CAFC explicates 15 U.S.C. § 1060(a)(1)

The issue was one of trademark in the renewable energy sector:


In November 2008, Orlando filed an application at the
PTO, seeking to register the mark THE EMERALD CITY
for use in business development and consulting services in
the renewable energy industry. The application was an
intent-to-use application under 15 U.S.C. § 1051(b). On
November 24, 2009, the PTO issued a Notice of Allowance,
which commenced a six-month period for Orlando to
file a Statement of Use (“SOU”) as required for registration
of the mark.



The CAFC affirmed the TTAB:


Because the Board did
not err in determining that the 2009 agreement between
ECC and Perry Orlando (“Orlando”) regarding the mark
THE EMERALD CITY prior to its registration constituted
an assignment of the intent-to-use application for that
mark in violation of Section 10 of the Lanham Act, 15
U.S.C. § 1060(a)(1), we affirm.



Emerald Cities Collaborative [ECC] made arguments that ultimately were
rejected by the CAFC:


ECC argues that the Board erred in construing the
Agreement as an immediate assignment, and therefore
that it was not in violation of § 1060(a)(1). ECC contends
that the Agreement shows that ECC and Orlando intended
to assign the mark only upon registration, and that the
Board’s interpretation disregarded and contradicted the
intention of the parties. ECC also argues that the Board
erred in interpreting the provisions relating to (1) ECC’s
right to oversee the quality of products sold under the
mark, and (2) ECC’s exclusive right to enforce the mark
against third parties, as evidence of an immediate assignment.
According to ECC, those provisions only applied
after registration.



As one footnote to this case, the appellee Roese appeared pro se, and
prevailed.

There is no "guaranteed" right to use one's own invention

Within a blog post at Scientific American related to the CRISPR IP battle, Jacob S. Sherkow wrote:


Before we even get to the question of what, precisely, was invented, it’s important to understand what a patent actually is. Surprising to many scientists, a patent is not a right to use one’s own invention—you have that whether you file for a patent or not—but rather, the right to exclude others from using an invention without the patent holder’s permission.



[link: https://blogs.scientificamerican.com/guest-blog/what-the-crispr-patent-dispute-is-all-about/ ]

A patent is a right to exclude others from making, using, selling or offering to sell that which is encompassed by the claims of a valid patent. But there is no right to use one's own invention. One does not "have that."

The classic story of blocking patents is that of the diode and the triode.

See for example the 2011 post on IPBiz titled "It is axiomatic that a device meriting its own patent does not infringe any other patents."
which includes the text:


From Merges and Nelson, 90 Colum. L. Rev. 839 , on blocking patents:

Two patents are said to block each other when one patentee has a broad patent on an invention and another has a narrower patent on some improved feature of that invention. The broad patent is said to "dominate" the narrower one. In such a situation, the holder of the narrower ("subservient") patent cannot practice he invention without a license from the holder of the dominant patent. At the same time, the holder of the dominant patent cannot practice the particular improved [p. 861] feature claimed in the narrower patent without a license. n96



A screenshot of the relevant Sherkow text:

***Separately, on CRISPR,

see

Robin Feldman, Imagining the Legal Landscape: Technology and the Law in 2030: The CRISPR Revolution: What Editing Human DNA Reveals About the Patent System's DNA, 64 UCLA L. Rev. Disc. 392 (2016)

Benjamin C. Tuttle, The Failure to Preserve CRISPR-Cas9's Patentability post Myriad and Alice, 98 J. Pat. & Trademark Off. Soc'y 391 (2016)

Steve Connor , Crispr-Cas9: Bitter row breaks out over 'official history' of gene-editing breakthrough;
The two main protagonists are both giants in their respective fields, The Independent, January 25, 2016 Monday 1:46 PM GMT, including the text:


Experts in the field have suggested that Professor Lander has downgraded the achievements of Charpentier and especially Doudna, who is mentioned almost in passing in one or two paragraphs, while Feng Zhang, a scientist working on Crispr at Professor Lander's own Broad Institute, is allotted a full page of the eight-page history in Cell.

The article, called "The Heroes of Crispr", also suggests that Doudna required the "assistance" of a Harvard University researcher, George Church, to get an aspect of the Crispr technique to work. Meanwhile, Zhang is given lengthy praise for his efforts to refine the gene-editing process into something practical that works reliably in human cells, which Zhang and the Broad Institute have successfully patented - although that is now subject to a legal dispute.

Meanwhile, commentators have criticised Dr Lander's alleged slant towards the Broad work at the apparent expense of Doudna's at UC Berkeley.



And from the 16 Nov 2016 Philadelphia Inquirer:


Three researchers will share a venerable Philadelphia science award for their pioneering work on a powerful new gene-editing technique that is expected to enable dramatic advances in the field of medicine.

Not listed on Friday's program? The lawyers.

CAFC in Medgraph v. Medtronic discusses the meaning of "and" and "or"

The issue


Medgraph argues that the district court erred in construing
the claim limitation “and” to mean “and” instead
of “or.” Under the district court’s construction, claim 16
requires both computer (e.g., Internet) and telephone
capabilities for receiving and transmitting data. Medgraph
maintains that the written description supports a
disjunctive construction because it repeatedly states that
the invention transmits data either through “a common
network, over telephone lines, or over the Internet.” See,
e.g., ’124 patent col. 2 ll. 32–33 (emphasis added).

Medtronic responds that the district court correctly
held that “and” means “and” because claim terms are to
be given their plain and ordinary meaning. Additionally,
Medtronic argues, the written description teaches that
the invention possesses both computer and telephonic
capabilities, but only uses one at a time. See, e.g., id. col.
6 ll. 32–41 (describing the “high-tech” and “low-tech”
“utilization[s]” of the invention).




From the decision:


Because the written description does not compel a
disjunctive construction for “and,” the claim term should
be given its plain and ordinary meaning. Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). We
therefore conclude that the district court correctly construed
the limitation “and” to mean “and,” rather than
“or.”

It is undisputed that Medtronic’s CareLink System is
not capable of transmitting patient data by telephone.
Because claim 16, as properly construed, requires that the
means for receiving and transmitting data include both
computer and telephonic capabilities, we conclude that
the district court correctly granted summary judgment of
noninfringement of claim 16 of the ’124 patent.

Who really created the PHOSITA, the Frankenstein monster?

As discussed in the IPBiz post
PHOSITA, the Frankenstein from the US Supreme Court? , a 1966 article by Soans used the word "Frankenstein" to describe PHOSITA, which creature was supposedly created by the courts. In Kimberly-Clark, Judge Giles Rich mentions
-- the statutory hypothetical "person having ordinary skill in the art" -- suggesting the "creature" was created by Congress in the 1952 Patent Act.

In Kimberly-Clark v. Johnson &Johnson, 745 F.2d 1437 (CAFC 1984), Judge Giles Rich wrote:


As the above collection of quotations makes clear, the courts were constantly faced with situations where the applicant or patentee had actually made a new and useful invention, and therefore was an inventor, in every sense of the word but one -- he had invented something which the courts, viewing prior art, felt did not involve the quality of "invention" and a reason for denying a patent had to be rationalized. There seems to have been a felt need to find a reason for saying the applicant or patentee either had not made an "invention" or should not be called "an inventor." In the lack of novelty cases it was easy enough to say the "statute is inexorable," because it required novelty; but in a "lack of invention" case there was no statute and to show that "an invention" had not been made, or that the requirement for "invention" had not been met, the applicant or patentee was, in effect, viewed from on high and treated as though he knew things he really did not know in order to determine his rights from a social point of view. There was no one other than the inventor to pin it on. By presuming he knew all the prior art, he could be said not to have made "an invention" and, not being "an inventor," he could be denied a patent or, if he had one, it could be invalidated, as well-developed law required. This line of reasoning having been once established, the courts, including our predecessor court as in Winslow, mentioned above, decided cases on the basis of the axiom -- the applicant (or patentee) is presumed to have knowledge of all material prior art -- without giving the situation further thought. But a bad axiom is like a noxious weed, a thriving plant in the wrong place interfering with the growth of more desirable plants.

Basing the rationalization of decisions on a fiction -- which the presumption of knowledge is -- it has been unusual that opinions have explained the real reason for the denial of patent rights, which is the basic principle (to which there are minor exceptions) that HN9Go to this Headnote in the case.no patent should be granted which withdraws from the public domain technology already available to the public. Graham v. John Deere Co., 383 U.S. 1, 6, 148 U.S.P.Q. (BNA) 459, 462, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966). It is available, in legal theory at least, when it is described in the world's accessible literature, including patents, or has been publicly known or in the public use or on sale "in this country." 35 USC § 102(a) and (b). That is the real meaning of "prior art" in legal theory -- HN10Go to this Headnote in the case.it is knowledge that is available, including what would be obvious from it, at a given time, to a person of ordinary skill in an art. Society, speaking through Congress and [*1454] the courts, has said "thou shalt not take it away."

Since January 1, 1953, the effective date of the 1952 Patent Act, the implementation of that social policy has not required courts to use the legal fiction that an inventor must be presumed to know the "prior art." The inventor, for the purposes of legal reasoning, has been replaced, as some courts have discovered, by the statutory hypothetical "person having ordinary skill in the art" 5 who has been provided by 35 USC § 103. Since that date, there has been no need to presume that the inventor knows anything about the prior art.

[footnote 5 is to the Soans 1966 article in IDEA.]

Since we believe that progress in legal thinking is not only possible but highly desirable when it simplifies such thinking, we believe the time has come to discontinue this particular fiction of the patent law. Congress has given us in § 103 a substitute for the former "requirement for [**45] invention," which gave rise to the presumption, and that substitute, being statutory, should be used exclusively. HN11Go to this Headnote in the case.We hereby declare the presumption that the inventor has knowledge of all material prior art to be dead.



In Standard Oil v. American Cyanamid,774 F.2d 448 (CAFC 1985) Judge Giles Rich wrote:


The issue of obviousness is determined entirely with reference to a hypothetical "person having ordinary skill in the art." It is only that hypothetical person who is presumed to be aware of all the pertinent prior art. The actual inventor's skill is irrelevant to the inquiry, and this is for a very important reason. The statutory emphasis is on a person of ordinary skill. Inventors, as a class, according to the concepts underlying the Constitution and the statutes that have created the patent system, possess something -- call it what you will -- which sets them apart from the workers of ordinary skill, and one should not go about determining obviousness under § 103 by inquiring into [***298] what patentees (i.e., inventors) would have known or would likely have done, faced with the revelations of references. A person of ordinary skill in the art is also presumed to be one who thinks along the line of conventional wisdom in the art and is not one who undertakes to innovate, whether by patient, and often expensive, systematic research or by extraordinary insights, it makes no difference which. See the last sentence of § 103, supra.

It was up to the court here to determine the level of skill of the hypothetical person of ordinary skill and what that person would have been able to do when in possession of the prior art, the scope and contents of which the court has also determined. For a more extensive, and the latest, discussion of this court's views on who is presumed to know the prior art, see Kimberly-Clark Co. v. Johnson & Johnson, 745 F.2d 1437, 1449-1454, 223 U.S.P.Q. (BNA) 603, 610-614 (Fed. Cir. 1984).



Footnote 3 of Standard Oil alludes to the prior decision, written by Judge Rich, in Winslow, 365 F.2d 1017 (CCPA 1965) :


We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references - which he is presumed to know - hanging on the walls around him. One then notes that what applicant Winslow built here he admits is basically a Gerbe bag holder having air-blast bag opening to which he has added two bag retaining pins. If there were any bag holding problem in the Gerbe machine when plastic bags were used, their flaps being gripped only by spring pressure between the top and bottom plates, Winslow would have said to himself, "Now what can I do to hold them more securely?" Looking around the walls, he would see Hellman's envelopes with holes in their flaps hung on a rod. He would then say to himself, "Ha! I can punch holes in my bags and put a little rod (pin) through the holes. That will hold them! After filling the bags, I'll pull them off the pins as does Hellman. Scoring the flap should make tearing easier."

Thus does appellant make his claimed invention merely by applying knowledge clearly present in the prior art. Section 103 requires us to presume full knowledge by the inventor of the prior art in the field of his endeavor. We see no "hindsight reconstruction" here, but only selection and application by the examiner of very pertinent art. That is his duty



The text in Standard Oil was re-affirmed in Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) ("The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art."). "The policy behind this presumption of knowledge is clear enough. In order to discourage wasteful or duplicative original inventive activity, the patent laws impose an absolute duty to research the entire pertinent prior art for a solution to a problem at hand." Chisum, supra note 47, 5.04[1], at 5-270.

-->Other mentions of monsters-->

**From footnote 301 of Abbott, 57 B.C. L. Rev. 1079 (2016) :

See Dan L. Burk, The Role of Patent Law in Knowledge Codification, 23 BERKELEY TECH. L.J. 1009, 1025 (2008) ("[T]he PHOSITA is a fictional composite, a conceptual construct imagined for the purpose of assessing the claimed invention against its technological antecedents."); Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10 PAT. TRADEMARK ©. J. RES. & ED. 433, 438-39 (1967) (railing against the judicially created "superhuman Frankenstein monster Mr. Phosita").



**From footnote 21 of Whisner, 108 Law Libr. J. 483 (2016), speaking of --"primarily geographically deceptively misdescriptive," PHOSITA, transformativeness --:

The four-word tongue-twister is right out of the Trademark Act, 15 U.S.C. § 1052(e)-(f) (2012). "PHOSITA" stands for Person Having Ordinary Skill In The Art. The acronym was coined by Cyril Soans, who asked rhetorically: "Would the patents subcommittee of the House Judiciary Committee have approved H.R. 3760 of the 82nd Congress if they had known that the person skilled in the art in Section 103 of the 1952 Act would turn out to be the superhuman Frankenstein monster Mr. Phosita? I think not." Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10 IDEA 433 (1966-1967). My thanks to Zahr Said, who offered these gems of jargon.


**


See also the 2007 post on IPBiz Was the TSM test rejected as a prerequisite for finding obviousness?


Also, from In re Joly, 376 F.2d 906 (CCPA 1967) :


Judge Rich in his Kirk dissent demonstrates that chemists of ordinary skill in the art would have no difficulty in using new and unobvious chemical products and processes once they are disclosed as required by section 112. They are "useful," under section 101, as tools, just as other professions have their particular "tools" with which to work. A judge needs no directions for using a new text or a new digest. In appellants' case they have invented or discovered and disclosed a process for the preparation of a product which is described to the steroid chemist as steroids carrying an ester function of an enol on ring A in position 2. Appellants point out that their process is "particularly simple and advantageous because it gives high yields while operating at room temperatures for both steps of the process." The Patent Office ignores this teaching, as does the majority, in reaching the conclusion that appellants' claimed inventions are "useless." Is this action warranted under section 101? I think not.

In this connection, it is interesting to note a recent advertisement of The Eastman Kodak Company which appeared on page 133 of the New Yorker Magazine for March 25, 1967. It describes in part the activities of what are termed "Two executives in charge of eagerness." The advertisement points out that the Eastman line consists of "some 5,000 organic chemicals for laboratory use." The text then continues:

* * * the fewer the starting materials, the more laborious the work. The more compounds that can be purchased from us, the more time our learned customers can put on research instead of preparing for research. * * *

As further pointed out in this advertisement, "Availability governs feasibility for many a research idea in its fetal stages."



Also, from BIG FOUR AUTOMOTIVE EQUIPMENT CORPORATION, 184 U.S.P.Q. (BNA) 80 (1974) :


The condition is unobviousness, but that is not all. The unobviousness is as of a particular time and to a particular legally fictitious technical person, analogous to the "ordinary reasonable man" so well known to courts. To protect the inventor from hindsight reasoning, the time is specified to be the time when the invention was made. To prevent the use of too high a standard - which would exclude inventors as a class - the invention must have been obvious at that time to "a person having ordinary skill in the art to which said subject matter [i.e., the invention] pertains." But that is not all; what must have been obvious is "the subject matter as a whole."



Also, from Saulsbury, 16 Mich. Telecomm. Tech. L. Rev. 439 :



See In re Gay, 309 F.2d 769, 772 (C.C.P.A. 1962). For example, consider a hypothetical inventor of the incandescent light bulb. She could satisfy the enablement requirement without revealing her preferred filament material, so long as the PHOSITA could discover how to make and use a bulb with that type of filament without undue experimentation.



**Separately

For the day of 10 Dec 2016

For the week

Etienne Klein of the Ecole Centrale in Paris responds to charges of copying without attribution

On 5 December 2016, Le Monde reported on plagiarism charges against Etienne Klein, Professor at the Ecole Centrale in Paris, Director of Research at the Office of the Atomic Energy Commission (CEA), President of the Institute of Advanced Studies for Science and Technology and presented a response by Professor Klein:

From a translation of the original French:

The readers of scientific works are not unaware of the fact that the scientists in general and physicists in particular share ways to say their knowledge, which are so to say become canonical. It can inform, explain a physical law or a principle, but we cannot reformulate what has been stated with accuracy. When writing that the earth revolves around the Sun, we do not put quotation marks, no more than it does not cite the names of Copernicus, Galileo and Foucault (Léon, the man of the pendulum). A philosopher, Michel Foucault, a good summary of the Thing:

"I quote Marx without saying it, without putting in quotation marks, and since they are not able to recognize the texts of Marx, I pass to be the one who does not quote Marx. Does a physicist, when doing physics, feel the need to cite Newton or Einstein? He uses them, but he does not need quotation marks, footnotes or commendatory approval that proves how faithful he is to the master's thought. "

This argument is obviously valid for Roger Balian, with whom, according to L'Express, I would have plagiarized an illustration of the second principle of thermodynamics, set out in the mid-nineteenth century. Roger Balian is a colleague of the CEA [Atomic Energy Commission] and a friend of thirty, with whom I participated in August 2001 at the e2phy summer school, "energy in all these forms" , Aimed at helping secondary school teachers fight the disaffection of young people for scientific studies. The two sentences, quite "classical", which the weekly blames me for having copied in the book The Energy of Tomorrow (EDP Sciences, 2005) were pronounced by Roger Balian during the course he gave On this occasion to the professors, then successively taken up by various researchers in various internal seminars of the CEA. "

**As to the matter related to Le pays qu’habitait Albert Einstein (Actes Sud, 2016)

By dint of reading and re-reading certain authors, one ends up internalizing them, to the point, sometimes, to take back some of their expressions or metaphors without realizing it. Hence the presence in my book of four expressions or phrases, very short, of Gaston Bachelard, Paul Valéry and Stefan Zweig, three of the writers who nourished me most. This explanation is not an excuse, but I believe the process, I would even say the process, sufficiently widespread in the world of ideas, that of literature, and that of publishing in general, Nail down all those, and they are legion, who borrow unconsciously or consciously from the authors whom they admire and with whom they maintain a sort of inner conversation.

I turn to the other phrases that L'Express accuses me of having borrowed without citing their author, namely François Cassingena, Philippe Claudel, Louis Aragon, or Roman Jacobson.

Contrary to what is said in the weekly, Roman Jacobson is quoted on page 234 of my book, in quotation marks and with the reference of the work in note.

There remains a sentence of Philippe Claudel, one of Louis Aragon, two of François Cassingéna (who very kindly wrote me that I was "absolved"). I acknowledge that I acted there with negligence and haste. To write this book, I took many notes, consisting of many files, to the point that I was able to mislead some sources or tangle my brushes. These are mistakes and I regret them.

Finally, it seems crucial to point out that it is not the sentences involved (a dozen lines in total, on 240 pages) that make my essay on Einstein, nor did they inspire my approach, My journey on the European traces of the father of relativity, nor the hypothesis that I develop. Every reader is in a position to realize this. These sentences will be placed in quotation marks and referenced in the next edition, or possibly deleted, without my work being altered. "

**Refer to the original text, in French, in Le Monde:

http://www.lemonde.fr/idees/article/2016/12/05/etienne-klein-se-defend-contre-des-accusations-de-plagiat_5043699_3232.html

**As to the initial La Croix matter, one recalls that Abraham Lincoln quoted from the Bible in "The House Divided" speech, but was generally not accused of plagiarism. Most in the audience probably understood the reference.

From AbrahamLLincoln online:

"A house divided against itself cannot stand," a concept familiar to Lincoln's audience as a statement by Jesus recorded in all three synoptic gospels (Matthew, Mark, Luke).

(...)

[Herndon to Lincoln] - 'Mr. Lincoln -- why in the world do you not say to Mr. Douglas, when he is making capital out of your speech, -- 'Douglas why whine and complain to me because of that speech. I am not the author of it. God is. Go and whine and complain to Him for its revelation, and utterance.' Mr. Lincoln looked at me one short quizzical moment, and replied 'I can't.'"

link: http://www.abrahamlincolnonline.org/lincoln/speeches/house.htm

CAFC vacates PTAB obviousness decision in Nuvasive [IPR2013- 00506. ]. A lack of articulation.

The conclusion of Nuvasive reads:


We have considered the parties’ remaining arguments
and find them unpersuasive. For these reasons, the Final
Written Decision of the U.S. Patent and Trademark
Office’s Patent and Trial Appeal Board is
VACATED AND REMANDED



As to standards:


We review the PTAB’s factual determinations for substantial
evidence and its legal determinations de novo.
See In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
“Substantial evidence is something less than the weight of
the evidence but more than a mere scintilla of evidence.”
In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) (citation
omitted). It is “such relevant evidence as a reasonable
mind might accept as adequate to support a concluconclusion.”
In re Applied Materials, Inc., 692 F.3d 1289,
1294 (Fed. Cir. 2012) (



Of background law on obviousness, the CAFC observed:


A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the [relevant]
art [(‘PHOSITA’)] . . . .” 35 U.S.C. § 103(a) (2006).4 The
ultimate determination of obviousness is a question of
law, but that determination is based on underlying factual
findings. See Gartside, 203 F.3d at 1316. The underlying
factual findings include (1) “the scope and content of
the prior art,” (2) “differences between the prior art and
the claims at issue,” (3) “the level of ordinary skill in the
pertinent art,” and (4) the presence of secondary considerations
of nonobviousness such “as commercial success,
long felt but unsolved needs, failure of others,” and unexpected
results. Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966); United States v. Adams, 383 U.S. 39, 50–52
(1966).

In assessing the prior art, the PTAB “consider[s]
whether a PHOSITA would have been motivated to
combine the prior art to achieve the claimed invention.”
In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed.
Cir. 2016) (internal quotation marks, brackets, and citation
omitted); see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“[I]t can be important to identify a reason
that would have prompted a [PHOSITA] to combine the
elements in the way the claimed new invention does.”).
Although we review this factual finding for substantial
evidence, “[t]he factual inquiry whether to combine references
must be thorough and searching,” and “[t]he need
for specificity pervades [our] authority” on the PTAB’s
findings on motivation to combine. In re Lee, 277 F.3d
1338, 1343 (Fed. Cir. 2002) (internal quotation marks and
citations omitted); see id. (stating that “[t]his precedent
has been reinforced in myriad decisions[] and cannot be
dispensed with” and listing supporting precedent).




NuVasive won because PTAB did not well articulate a motivation to combine:


NuVasive argues that, inter alia, the PTAB’s Final
Written Decision did not make adequately explained
findings as to why a PHOSITA would have been motivated
to combine the prior art references and place the
radiopaque markers on the medial plane. Appellant’s
Br. 27–28. According to NuVasive, the PTAB relied on
only one conclusory statement by Medtronic’s expert that
the modification would provide “additional information.”
Id. (emphasis omitted). We agree with NuVasive.



And, a Supreme Court case is invoked:


Two distinct yet related principles are relevant to our
review. First, the PTAB must make the necessary findings
and have an adequate “evidentiary basis for its
findings.” Lee, 277 F.3d at 1344. Second, the PTAB
“must examine the relevant data and articulate a satisfactory
explanation for its action including a rational
connection between the facts found and the choice made.”
Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins.
Co., 463 U.S. 29, 43 (1983) (internal quotation marks and
citation omitted); see Synopsys, Inc. v. Mentor Graphics
Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that,
as an administrative agency, the PTAB “must articulate
logical and rational reasons for [its] decisions” (internal
quotation marks and citation omitted)

This explanation enables the court to exercise its duty
to review the PTAB’s decisions to assess whether those
decisions are “arbitrary, capricious, an abuse of discretion,
or . . . unsupported by substantial evidence . . . .” 5 U.S.C.
§ 706(2)(A)–(E) (2012); see Dickinson v. Zurko, 527 U.S.
150, 152 (1999) (holding that § 706 governs our reviews of
the USPTO’s findings of fact and providing the framework
for this review). We “cannot exercise [our] duty of review
unless [we] are advised of the considerations underlying
the action under review.” SEC v. Chenery Corp., 318 U.S.
80, 94 (1943). Indeed, “the orderly functioning of the
process of review requires that the grounds upon which
the [PTAB] acted be clearly disclosed and adequately
sustained.” Id. Although we do not require perfect explanations,
we may affirm the PTAB’s findings “if we may
reasonably discern that it followed a proper path, even if
that path is less than perfectly clear.” Ariosa Diagnostics
v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
2015) (citation omitted).

(...)
The PTAB must provide “a reasoned basis for the
agency’s action,” and “we will uphold a decision of less
than ideal clarity if the agency’s path may reasonably be
discerned.” Bowman Transp., Inc. v. Ark.-Best Freight
Sys., Inc., 419 U.S. 281, 285, 286 (1974). The PTAB’s own
explanation must suffice for us to see that the agency has
done its job and must be capable of being “reasonably
. . . discerned” from a relatively concise PTAB discussion.
In re Huston, 308 F.3d 1267, 1281 (Fed. Cir. 2002).
We have, however, identified some insufficient articulations
of motivation to combine. First, “conclusory
statements” alone are insufficient and, instead, the finding
must be supported by a “reasoned explanation.” Lee,
277 F.3d at 1342, 1345. Second, it is not adequate to
summarize and reject arguments without explaining why
the PTAB accepts the prevailing argument. See
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
(Fed. Cir. 2016)




The CAFC addresses "common sense":


Third, although reliance
on common sense may be appropriate in some circumstances,
see KSR, 550 U.S. at 421 (“Rigid preventative
rules that deny factfinders recourse to common
sense . . . are neither necessary under our case law nor
consistent with it.”), the PTAB cannot rely solely on
common knowledge or common sense to support its findings,
see Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
1362 (Fed. Cir. 2016) (“[R]eferences to ‘common
sense’ . . . cannot be used as a wholesale substitute for
reasoned analysis and evidentiary support . . . .”); see also
In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (explaining
that the Board of Patent Appeals and Interferences
cannot simply invoke “the high level of skill in the
art” as proof positive of its findings).



Of adopting the arguments of a party:


The PTAB avers that it “effectively” adopted Medtronic’s
arguments, Oral Argument at 14:52–15:11,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
15-1670.mp3, but the PTAB neither expressly did so nor
provided reasoned explanations for crediting the arguments.
Medtronic’s arguments amount to nothing more
than conclusory statements that a PHOSITA would have
been motivated to combine the prior art references to
obtain additional information. In its summary of Medtronic’s
arguments, the PTAB never articulated why the
additional information would benefit a PHOSITA when
implanting a posterior lumbar interbody fusion implant,
such as the implants disclosed by the SVS-PR brochure
and the Telamon references. It also failed to explain the
type of additional information a PHOSITA would obtain
or how the PHOSITA would use that informatio


Of a waiver issue:


NuVasive abandoned its
challenge to the public accessibility determination even
though the PTAB had warned NuVasive that this would
result in waiver. J.A. 201–02 (where the PTAB indicated
in a scheduling order that “[t]he patent owner is cautioned
that any arguments for patentability not raised
and fully briefed in the response will be deemed waived”).




**Separately, of the US Supreme Court on "abuse of discretion"


the Supreme Court has noted that the discretion is not unbridled;
a cogent explanation for the use of discretion is required and
there must be a rational connection between the facts found and the choice made.

"There are no findings and no analysis here to justify the choice made,
no indication of the basis on which the [agency] exercised its expert discretion.
(…) Expert discretion is the lifeblood of the administrative process, but
'unless we make the requirements for administrative action strict and demanding,
expertise, the strength of modern government, can become a monster which
rules with no practical limits on its discretion.' New York v. United States,
342 U.S. 882, 884 (dissenting opinion)" (footnote omitted). (…)
We have frequently reiterated that an agency must cogently explain why
it has exercised its discretion in a given manner, [p. 49]
Atchison, T. & S. F. R. Co. v. Wichita Bd. of Trade, 412 U.S., at 806;
FTC v. Sperry & Hutchinson Co., 405 U.S. 233, 249 (1972);
NLRB v. Metropolitan Life Ins. Co., 380 U.S. 438, 443 (1965);
and we reaffirm this principle again today.
from MOTOR VEHICLE MANUFACTURERS v. STATE FARM MUTUAL AUTOMOBILE INSURANCE, 463 U.S. 29, 48-49 (1983).

Oral argument in CRISPR interference on December 6, 2016

The Scientist discussed the hearing of December 6, 2016 in the CRISPR interference battle.

Jeff Akst wrote


Just after 10:00 a.m., three USPTO judges entered and took their seats in front of the packed room. A few minutes later, Steve Trybus of law firm Jenner & Block in Chicago began his arguments on behalf of the Broad. He emphasized that it’s not obvious how to take a pathway from prokaryotes and plug it into eukaryotic cells—that there was strong motivation for doing so, but no reasonable expectation of success. He said that it seemed Doudna herself didn’t think this extension was obvious, quoting from a 2012 interview, in which she stated that she wasn’t sure if it would work in eukaryotic cells, which have a nucleus, and that she had experienced “many frustrations” in getting CRISPR to work in human cells. Despite having first filed its provisional patent in May 2012, Doudna’s group didn’t succeed in getting the gene editor to work in eukaryotic cells until October 2012, Trybus said. That’s “the antithesis of something that would have been obvious,” he told the judges.



In the obviousness analysis, the focus seems to be on how predictable the outcome of going from prokaryotes to eukaryotes:


It’s clear that the real issue here is about the “obviousness,” Mark Rohrbaugh, the National Institutes of Health’s special advisor for technology transfer, said at a panel discussion held at the American University Washington College of Law following the hearing. “Was this the system that just happened to successfully easily move from a prokaryotic to eukaryotic system? Were they just lucky in that? Or was it predictable and obvious based on the prior art that it could move from one system to the other?”



The O'Farrell case had been a milepost for "reasonable expectation of success" and included discussion of what would not be obvious:


when what was ‘obvious to try’ was to explore a new
technology or general approach that seemed to be a
promising field of experimentation, where the prior art gave
only general guidance as to the particular form of the
claimed invention or how to achieve it. Id. (citing O’Farrell,
853 F.2d at 903).”



KSR had noted to find obviousness:



“there is a recognized problem or need in the art; there are a finite number of identified, predictable
solutions to the recognized need or problem; and one of ordinary skill in the art could have pursued these known
potential solutions with a reasonable expectation of success.”

PHOSITA, the Frankenstein from the US Supreme Court?

The 717Madison blog had a post mentioning the use of the word "Frankenstein" in oral argument at the CAFC.

That appellation goes back some time, and the first court "attacked" with this verbiage was the US Supreme Court:


Prior to the establishment of the U.S. Federal Circuit, Cryil A. Soans colorfully portrayed the Supreme Court's PHOSITA interpretation in a 1966 article as a Frankenstein monster created by the Supreme Court. This mythical character with supernatural power enabling him to know all of the tools and practices known to any and all persons working in his field anywhere in the U.S. and having all of the printed publications (in his field) in all libraries of the world. He can read all languages and can understand all that he reads and never forgets. In addition, he tests the claim of inventors when they apply for patents and when they try to enforce them. n27 These characteristics did not originate with Soans, but derived from the Supreme Court's ruling in Mast-Foos & Co. v Stover. n28



From the Rutgers Law Record, 2010-11 [ 38 Rutgers L. Rec. 1 ]

AND, in footnotes from JOLT [ 23 Harv. J. Law & Tec 227 ] :


n29 Cyril A. Soans coined the term PHOSITA fourteen years later in an article in which he discussed "Mr. Phosita," a personification of the hypothetical person having ordinary skill in the art. Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10 IDEA 433, 438-39 (1966) (offering an invective against the Court-created "superhuman Frankenstein monster Mr. Phosita," who had powers extending far beyond those of the ordinarily skilled artisan).

n30 The Federal Circuit adopted the term "PHOSITA" in 1984. See Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 n.5 (Fed. Cir. 1984) (discussing Soans's article). The term PHOSITA is now firmly established in patent law scholarship, although most recent allusions to "Mr. Phosita" have dropped the honorific "Mr." and placed the remaining acronym in all capital letters.




**Separately, the "Alice" decision invited other literary comparisons

from 98 JPTOS 374 (2016)
Lewis Carroll, Alice's Adventures in Wonderland 15 (The Macmillan Company 1920) (1898). Alice's exclamation of bewilderment at the confusing world in which she finds herself aptly captures the sentiment behind the Federal Circuit's attempts to make sense of the Supreme Court's unclear decision in Alice v. CLS Bank.


**And, from 46 U. Louisville L. Rev. 113 (2007) ,


And, on the more general side, recent scholarship has examined how mentions of Kafka appear in judicial opinions, though the purpose of this survey was primarily to demonstrate ways that judges have stylistically appealed to Kafka garnish their prose. See Parker B. Potter, Jr., Ordeal by Trial: Judicial References to the Nightmare World of Franz Kafka, 3 Pierce L. Rev. 195, 196 (2005).

"Motivation to combine" analyzed by CAFC in Dako v. Leica

From the decision:


The existence of a motivation to combine is a factual
determination. Star Sci., Inc. v. R.J. Reynolds Tobacco
Co., 655 F.3d 1364, 1374–75 (Fed. Cir. 2011). Under a
substantial evidence standard of review, we must draw all
reasonable inferences in favor of the Board’s decision that
are supported by the record and should take care not to
make credibility determinations or to weigh the evidence.
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,
150 (2000). “[A]lthough the court should review the
record as a whole, it must disregard all evidence favorable
to the [appellant] that the [factfinder] is not required to
believe.” Id. at 151.



AND


The question before us is whether, based on all of the
evidence before the Board, a reasonable factfinder could
find that there was a motivation to combine Tseung and
Muller. The answer to this question is “yes.” A motivation
to combine can be found in “any need or problem
known in the field of endeavor at the time of the invention
and addressed by the patent.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). “[T]he analysis need not
seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
In its analysis, the Board primarily relied on Tseung’s
statement that “some staining techniques can be enhanced
by providing heat so that either incubation or
drying times are shortened, thereby increasing the speed
of the overall operation.” No. 15-1997 J.A. 17 (quoting
Tseung, col. 12 ll. 6–9). According to the Board, this both
provided a reason to use heating in Tseung and adapt it to
use Muller’s individual heaters. Given the disclosures of
Tseung and Muller, this conclusion is supported by substantial
evidence.



Of the "mere existence" of a patent:


The speech does not describe the features
of the product Ventana ultimately released, and the mere
existence of Ventana’s patent does not necessarily imply
that the patent is based on the specific product referred to
in Mr. Schuler’s statement. Because a reasonable factfinder
could interpret the evidence Dako presented as
failing to provide a nexus, the Board’s conclusion is supported
by substantial evidence.



Teva v. Sandoz is cited:


Claim construction is an issue of law based on underlying
factual considerations. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 838 (2015). We review the
Board’s ultimate construction de novo, and any underlying
factual determinations for substantial evidence.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297
(Fed. Cir. 2015). In inter partes reexamination proceedings,
claims are given their “broadest reasonable interpretation”
consistent with the specification. In re Rambus,
Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014).