Wednesday, September 20, 2017

CAFC discusses inurement in NFC case



The CAFC noted in NFC v. Matal, 2017 U.S. App. LEXIS 18164



We note that the foregoing analysis assumes that conception is relevant under the present circumstances. Our cases that the Board read as establishing that proof of conception is relevant to inurement involved third-party recognition during testing that the invention would work for its intended purpose. See Cooper II, 240 F.3d at 1380-86; Genentech, 220 F.3d 1352-54; Cooper I, 154 F.3d at 1331-33. Here, there is no evidence that CE did anything other than fabricate the prototype. Although NFC appears to recognize this distinction, see NFC Br. 40-42, NFC only uses it to argue that interference law should not be applied to this case. As NFC has not challenged whether and to what extent conception must be shown to establish inurement under interference law in the present circumstances, we leave that question for another day.

The determination that fabrication of the prototype inures to Charrat's benefit does not resolve this case. As explained previously, the Board assumed, but did not decide, that the prototype embodied the claimed invention. That issue must be decided in order to determine whether Sears can be antedated. Thus, we remand the case for that determination in the first instance. Fortunately, whether the prototype embodied the claimed invention was a disputed issue between HTC and NFC during the initial IPR. See J.A. 455-66. Accordingly, the Board may decide the case on the briefing previously submitted.

Monday, September 18, 2017

PhishMe loses to Wombat in D. Del. on discovery issue



The court noted:



In assessing whether a proposed modification of a Protective Order would present an
unacceptable risk of inadvertent disclosure or competitive misuse of confidential information, it
would be error to deny access solely because of an in-house counsel's "general position"; instead,
"the factual circumstances surrounding each individual counsel's activities, association, and
relationship with a party ... must govern any concern for inadvertent or accidental disclosure."
US. Steel Corp. v. United States, 730 F.2d 1465, 1467-68 (Fed. Cir. 1984);see also Boehringer
Ingelheim Pharm., Inc. v. Hereon Labs. Corp., Civ.A.No. 89-484-CMW, 1990 WL 160666, at
*1 (D. Del. Oct. 12, 1990). This decision will tum, then, on a fact-intensive inquiry into whether
affected counsel (here, Mr. McGee) participates in "competitive decisionmaking" at PhishMe.
US. Steel Corp., 730 F.2d at 1467-68;In re Deutsche Bank, 605 F.3d at 1378. The Federal
Circuit has defined "competitive decisionmaking" as "counsel's activities, [*9] association, and
relationship with a client that are such as to involve counsel's advice and participation in any or
all of the client's decisions (pricing, product design, etc.) made in light of similar or
corresponding information about a competitor." US. Steel Corp., 730 F.2d at 1468 n.3; see also
In re Deutsche Bank, 605 F.3d at 1378-79.

(...)


courts have assessed the extent to which counsel--even if he or she does not
make competitive decisions-nevertheless directly advises other high level executives at the
company, who are themselves competitive decisionmakers in the subject matter areas relating to
the suit in question. See Intel Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 530-31 (N.D. Cal. 2000)
(finding that concerns about the risk of harm from competitive decisionmaking were exacerbated
where a Senior Counsel for plaintiff regularly advised the general managers of the plaintiffs
business unit that were most affected by potential licensing agreements, and advised a Vice-
President involved in competitive decisionmaking who had been denied access to confidential
information by other courts in similar cases, and finding that it would be difficult for the Senior
7 See Blackbird Tech LLC, 2016 WL 2904592, at *4

(...)

Here, it is clear that while Mr. McGee may not be the "final decisionmaker" as to issues
regarding pricing, product design or those otherwise made in light of similar information about a
competitor (like Wombat), he plays a very important role in the process that leads to those
decisions. He provides legal advice to the final decisionmakers (including the company's CEO
and its Board) on these issues. (Tr. at 8-9) Moreover, Mr. McGee is not only the sole in-house
attorney who provides that kind of advice, but in most instances, he is really the only attorney
who ever does so (since outside counsel has not traditionally played any role in that process).
This all militates in favor of denial of the Motion. 9
A third factor, one particular to the patent context,



Press releases can come back to haunt people:



The Court also notes the apparent disconnect between the way PhishMe described
Mr. McGee's role in the November 2016 press release that was issued just after he was hired, and the way it has described Mr. McGee's role since this legal issue arose. In the press release, Mr. McGee is referred to as a "strategic business partner[,]" (D.I. 99, ex. 1 at 1), but now, PhishMe seems to shy away from that kind of description, (Tr. at 10). In the press release, PhishMe also describes Mr. McGee'.s prior work at Mandiant as including "negotiat[ion] and finali[zation]" of Mandiant's sale, (D.I. 99, ex. 1 at 1); but now, PhishMe states that this description is incorrect (or perhaps, at least a bit misleading), (D.I. 103, [*19] ex. 1 at~ 5 (Mr. McGee averring that "I did not negotiate the business terms in connection with the sale ofMandiant")). At a minimum, it seems like PhishMe wanted the reader of that press release to conclude that Mr. McGee had real experience with the kinds of issues and decisions that play an important role in setting a company's future "strategic" course.


Citation: 2017 U.S. Dist. LEXIS 150862

The EZEKIEL ELLIOTT case in ED Texas



The decision observes that a PATENT trial held back the district court from a rapid response:


Because the Court was presiding over a patent trial, the Court was unable to reach the NFL's Emergency Motion within the NFL's requested time constraints which, the Court notes, was less than twenty-four hours after the briefing on the Emergency Motion was complete.

Because the Court did not issue an order on the NFL's Emergency Motion within the NFL's requested period of time, the NFL did, in fact, file an "Emergency Motion for Stay Pending Appeal" with the Fifth Circuit on September 15, 2017. In its Emergency Motion in front of the Court, the NFL is complaining that the Court essentially issued a premature order by failing to wait for the arbitrator to issue his ruling and therefore, lacked subject matter jurisdiction. Oddly, the NFL is now seeking expedited relief from the Fifth Circuit without first waiting for the Court to rule on the identical issue. The irony is not lost on the Court.



Of interest in the case:


Briefly summarized, Kia Roberts ("Roberts"), Director of Investigations, and Lisa Friel ("Friel"), Senior Vice President and Special Counsel for Investigations, investigated allegations of domestic violence made by Thompson against Elliott. After investigating the allegations and interviewing Thompson, Roberts found insufficient evidence existed to proceed with punishment. On the other hand, Friel, determined, without having interviewed Thompson, sufficient evidence existed to proceed with punishment. Roberts's views were kept from the NFLPA, Elliott, Commissioner Goodell's team of outside advisors, and possibly Commissioner Goodell himself. Conversely, Friel's views were shared with Commissioner Goodell and the outside advisors. In light of the background, the Court found that the denial of Commissioner Goodell and Thompson's testimony were gross evidentiary errors that so affected the rights of the NFLPA and Elliott, such that they were deprived of a fair hearing and it constituted misconduct by Henderson.
The Court also agrees with the NFLPA that the balance of the equitable factors weigh against granting a stay. When determining whether to grant a stay, a court must also weigh equitable factors such as the following: (1) whether the movant will suffer irreparable harm absent a stay; (2) whether the non-movant will suffer injury if the stay is granted; and (3) whether a stay serves the public interest. See In re First S. Sav. Ass'n, 820 F.2d at 704.




The outcome: It is therefore ORDERED that Respondents' Emergency Motion to Stay Injunction
Pending Appeal (Dkt. #30) is hereby DENIED



Note 3: The NFL changed the language of the standard from presenting a substantial case on the merits to "serious and substantial questions on the merits." The Court does not automatically [*12] penalize the NFL for the use of substantial questions rather than substantial case, and continues to analyze whether the NFL presented a substantial case on the merits, which is the standard imposed by the Fifth Circuit. The serious question standard applies to the legal questions presented; however if a serious legal question is presented the NFL must show a substantial case on the merits with respect to those serious legal questions. Ruiz, 650 F.2d at 565.

Note 5: The Court additionally notes that the petition to vacate will not be able to be resolved before November 5, 2017 (this would be the sixth game of Elliott's suspension if it started Week 3 of the NFL season). If the Court were to find in the NFLPA's favor and grant the petition to vacate, Elliott would have already served the entirety of the six-game suspension. The Preliminary Injunction Order preserves the status quo while the Court resolves the NFLPA's Petition.

Citation: 2017 U.S. Dist. LEXIS 150758

Saturday, September 16, 2017

US Court of Claims on "epiphany"




The suggestion that defendant's epiphany occurred only after "obtaining" discovery is less than ingenuous. The government was not obtaining discovery, it was responding to plaintiff's requests with its own information. The assertion that the government's investigation of its own records in response to plaintiff's interrogatory constitutes due diligence makes no sense; it certainly does not constitute good cause, particularly when the court has made substantive rulings which, if revisited, would penalize plaintiff, cf. RCFC 24(b)(3), or if not revisited, could potentially prejudice the third party.



from MORPHOTRUST USA, LLC et al., Plaintiffs, v. Patent infringement ice to THE UNITED STATES, 2017 U.S. Claims LEXIS 1112

Sausage war in ED Wisc gets into inequitable conduct


Defendant Klement Sausage argued that when Johnsonville Sausage withheld information about its utility patent application from Sipos, it breached its duty of candor and good faith in dealing with the PTO.

ED Wisc noted:


Klement fails to prove materiality. For the most part, it applies the wrong materiality standard, arguing that Johnsonville withheld information "material to patentability" as the PTO defines it. The PTO's definition of materiality does not apply in patent cases where inequitable conduct is raised, as it is "overly broad," "encompass[ing] anything that could be considered marginally relevant to patentability."

Id. [Therasense] at 1293-95. "[S]uch a low bar for materiality" does not reflect the seriousness and

"far-reaching consequences" of a finding of inequitable conduct. See id. at 1289, 1294. Rather, "the materiality required to establish inequitable conduct is but-for materiality," meaning that the accused infringer must show that "the PTO would not have allowed a claim" but for some nondisclosure by the applicant. Id. at 1291.
To the limited extent that Klement applies the right materiality standard, its arguments still fail. It first argues that Johnsonville's utility patent application is material because it would have shown Sipos that the curved walls of Johnsonville's tray are functional, not ornamental. This argument assumes that ornamentality [*4] and functionality are mutually exclusive. To the contrary, "[a]rticles of manufacture may possess both."

U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 1502.01 (9th ed. rev. Nov. 2015). In fact, "the design embodied in or applied to an article of manufacture (or portion thereof)" is distinct from "the article itself" and "cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional." Id. §§ 1502, 1504.01(c)(I).

Klement also argues that Gehman's rejection of Johnsonville's utility claims as anticipated and obvious and the prior art he cited are material because they would have shown Sipos that the curved walls of Johnsonville's sausage tray lack novelty and nonobviousness. But, Gehman only assessed the functional novelty and nonobviousness of Johnsonville's tray, not the ornamental novelty and nonobviousness of the design embodied in it. A design does not lack novelty or nonobviousness merely because the article in which it is embodied does. See generally id. § 1504. Further, Klement does not explain how the prior art that Gehman cited adds to the prior art that Johnsonville disclosed to Sipos. Compare U.S. Patent No. 5,820,904, and European Patent Application [*5] No. EP1997618, with '249 Patent, and '539 Patent. Prior art that

"teaches no more than . . . the prior art already before" the examiner is cumulative.

Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed. Cir. 1997)



Case cite: 2017 U.S. Dist. LEXIS 150011

WD Wisc discusses meaning of "ambiguity"




From 2017 U.S. Dist. LEXIS 149885 :



An ambiguity is "something that makes it possible to interpret a document reasonably in more than one way." Rossetto, 217 F.3d at 542. The Seventh Circuit has recognized two types of ambiguities: (1) a "patent ambiguity" is "apparent just from reading the contract without knowing anything about how it interacts with the world"; and (2) a "latent ambiguity" is "recognized as such only when a contract clear on its face -- clear that is, to the uninformed reader -- is applied to a particular dispute." Id. at 542-43.

Third, in determining whether an ambiguity exists, this court is to look at the entire contract to see if either type of ambiguity can be "disambiguated." Rossetto, 217 F.3d at 545. This search goes beyond the CBAs to include accompanying plan documents. See Barnett, 436 F.3d at 832 ("The second portion of relevant contractual language was contained in a CIPS medical plan."); Murphy, 61 F.3d at 564


Friday, September 15, 2017

CAFC affirms PTAB in IDEMITSU KOSAN CO., LTD. case: no obligation to rebut attorney argument with expert witness testimony

The technology relates to organic LEDs [ “Organic
Electroluminescence Device and Organic Light
Emitting Medium.” ]

The issue:



On appeal, Idemitsu does not appear to challenge the
Board’s factual findings with respect to the correspondence
between the ’648 patent’s components and some of
the compounds disclosed by Arakane. Rather, Idemitsu
argues that the Board erred in finding that Arakane
taught combining those particular compounds for the
purpose of creating a light emitting layer in an electroluminescent
device.



The CAFC referenced PTAB:



(“This teaching regarding the energy gap relationship, however,
does not diminish Arakane’s disclosure of the fundamental
concept of forming a light emitting layer containing a
mixture of at least two components, (A) a hole transporting
compound and (B) an electron transporting compound.”).
In other words, the Board found that Arakane
teaches that combining any of the listed HT compounds
with any of the ET compounds would produce a light
emitting layer, and that—if the combination additionally
satisfies the energy gap relationship—then it will feature
improved durability and efficiency as well. Id. at *27-29.


The CAFC noted


This back-and-forth shows that what Idemitsu characterizes
as an argument raised “too late” is simply the
by-product of one party necessarily getting the last word.
If anything, Idemitsu is the party that first raised this
issue, by arguing—at least implicitly—that Arakane
teaches away from non-energy-gap combinations. SFC
simply countered, as it was entitled to do. To the extent
Idemitsu suggests that the Board could not reach a counterargument
because it was not preemptively addressed
by the petition or institution decision, Idemitsu is plainly
mistaken. See Genzyme Therapeutic Prod. Ltd. P’ship v.
Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir.
2016) (“There is no requirement, either in the Board’s
regulations, in the APA, or as a matter of due process, for
the institution decision to anticipate and set forth every
legal or factual issue that might arise in the course of the
trial.”).
Idemitsu’s only substantive argument on appeal appears
to be that the Board should not have engaged in
fact-finding on this issue without the benefit of additional
extrinsic evidence, such as expert testimony. See, e.g.,
Appellant Br. 43–44. In some cases, that method of factfinding
could indeed be problematic. See, e.g., Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009) (“If the relevant technology were complex, the
court might require expert opinions.”); Proveris Sci. Corp.
v. Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir.
2008) (affirming the district court’s requirement of expert
testimony to prove invalidity where “th[e] subject matter
[wa]s sufficiently complex to fall beyond the grasp of an
ordinary layperson”); Brand v. Miller, 487 F.3d 862, 869-
70 (Fed. Cir. 2007) (reversing the Board’s decision to
“reject[] as unconvincing the only relevant testimony” and
independently reach the opposite conclusion).
But here, Idemitsu provided no such supporting evidence
for its own position—that Arakane teaches away
from any non-energy-gap HT/ET combinations. SFC, of
course, bears the ultimate burden of establishing unpatentability,
but it is not required as a matter of law to
rebut mere attorney argument with expert testimony in
order to satisfy that burden. The Board weighed the
parties’ competing arguments—each relying solely on the
text of Arakane itself—and found SFC’s reading to be the
more plausible one. That is precisely what the Board is
supposed to do.




Comment: in the text


First, SFC argued in its petition that "Arakane teaches (i) that the [HT] compound can be an arylamine compound corresponding to Formula (V) of claims 1 and 13, (ii) that the [ET] compound can be anthracene derivatives corresponding to Formulas (I) and (II) of claims 1 and 13, and (iii) that the [HT] compound and [ET] compound are mixed in the organic light emit-ting medium." J.A. 15-16; see also J.A. 189-91. Second, Idemitsu argued in its response that SFC failed to "explain why a skilled artisan would have been led to use" that combination, given that "[t]he energy gap relation-ship limits the combinations of the compounds . . . encompassed by Arakane to combinations satisfying the relationship." J.A. 328. Third, SFC countered in its reply that Arakane does not teach away from "the claimed combination," despite "the absence of demonstrating that the combination would possess the preferred energy gap relationship," distinguishing certain comparative exam-ples. J.A. 382-83; see also Idemitsu, 2016 Pat. App. LEXIS 13340, at *24 -25.



we seem to have a generic disclosure within Arakane rendering obvious a claimed sub-genus. An issue would be "why" one of ordinary skill would have been motivated to select the sub-genus.

Citation to case on LEXIS: 2017 U.S. App. LEXIS 17856

No jurisdiction when claim under patent law is secondary to resolving assignment issue



The outcome


First Data Corporation (“First Data”) and Frank Bisignano
(“Bisignano”) appeal from the district court’s dismissal
of their counterclaims and their declaratory
judgment action under Federal Rule of Civil Procedure
12(b)(1). See Bisignano v. Inselberg, Nos. 15-8301 (KM)
(JBC), 16-317 (KM) (JBC), 2016 U.S. Dist. LEXIS 113563
(D.N.J. Aug. 25, 2016) (District Court Opinion). They also
object to the district court’s order remanding their state
law claims to state court. Because the district court
correctly dismissed the federal claims for lack of subject
matter jurisdiction and we cannot review the remand
order, we affirm.



Of the jurisdiction issue


This court reviews de novo a district court’s order
dismissing claims for lack of subject matter jurisdiction.
Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301, 1306
(Fed. Cir. 2011). The party claiming declaratory judgment
jurisdiction has the burden to establish that jurisdiction
existed at the time the claim was filed. Id.




Citing Bell v. Hood, the CAFC noted:


There, the Court explained
that the failure to state a proper cause of action requires a
judgment on the merits rather than a dismissal for jurisdiction,
but that “previously carved out exceptions are
that a suit may sometimes be dismissed for want of
jurisdiction where the alleged claim under the Constitution
or federal statutes clearly appears to be immaterial
and made solely for the purpose of obtaining jurisdiction
or where such a claim is wholly insubstantial and frivolous.”
Id. at 682–83; see also The Fair v. Kohler Die &
Specialty Co., 228 U.S. 22, 25 (1913) (“No doubt if it
should appear that the plaintiff was not really relying
upon the patent law for his alleged rights, or if the claim
of right were frivolous, the case might be dismissed.”).



The CAFC discussed Jim Arnold:


First Data’s and Bisignano’s argument ignores the actual
context we addressed in Jim Arnold. The assignor in
Jim Arnold stated in its complaint that the assignment
was “null and void” and that the assignee was infringing
the patent. But we did not include this allegation as an
example by which an assignment would be declared null
and void “by operation of law.” See id. at 1576–77. To the
contrary, we explained that the gravamen of the complaint
was founded in state contract law. Similarly, here,
the claims focus on state law contract remedies, and
Inselberg and Interactive admit that they cannot pursue a
patent claim unless a state court grants rescission of the
assignment agreement. See, e.g., Appellees’ Br. 2 (“Eric
Inselberg and Inselberg Interactive, LLC do not own any
patents. They used to own 21 patents, and they have filed
state-law claims to try to get those patents back. But at
the time the cases below were filed, they owned zero (0)
patents.”); id. at 3 (“Inselberg and his company lack title
to the patents, and thus lack standing to bring a patent
claim.”); Oral Arg. at 13:59–14:05, http://oralarguments.
cafc.uscourts.gov/default.aspx?fl=2016-2677.mp3 (explaining
that there is no threat of an infringement claim by
Inselberg against First Data because Inselberg has “no
present ownership of any patents”).




First Data case, D. N.J. 2016-2677, 2016-2696

Thursday, September 14, 2017

Pro se plaintiff fails to establish personal jurisdiction in otherwise interesting case


Of interest is text in the decision [ 2017 U.S. Dist. LEXIS 148859 (ED Ky]:


Mike Ellig was a former owner of Montana Black Gold Inc. and is the current owner of Sight Inc. Ellig responded to Afshari's lawsuit by sending Afshari a letter via e-mail on May 11, 2016. It is that letter that is the root of this action. (DE 1-1, Ellig Letter.) Afshari asserts that, with the letter, Ellig committed various wrongs against him, including defamation, extortion, and blackmail.
In the letter, Ellig asserted that Afshari's fiber-optic bow sight patent was invalid because Afshari's design was actually nothing new; other bow sights employing the same design had been patented before Afshari's. Ellig then went on to address what he believed to be inconsistencies between Afshari's lawsuit against Bear Archery for infringement and Afshari's previous representations to the bankruptcy court that his patents had no value.
"We are also aware that you were currently suing Bear Archery for infringement of your '321 patent at the time your bankruptcy case was filed. However, you disclosed to the bankruptcy trustee that the '321 patent did not have any value." Ellig continued by explaining what he believed to be the significance of the inconsistencies. "Because you were currently suing Bear Archery for infringement, and you were planning on suing Montana Black and/or other archery equipment companies for infringement of the '321 patent, it is clear that you did not believe the '321 patent did not have any value." In Ellig's view, Afshari's actions in the bankruptcy court constituted "misrepresentation and withholding of information" and "could constitute fraud."

He then warned Afshari:
If we were to notify the [bankruptcy] trustee and she agreed to re-open the [bankruptcy] proceedings, she would most likely take control of your infringement claim and the '321 patent as well as all of your other patents. Ben, I really don't want to have to do this but you will force me to re-open your bankruptcy if you disregard all of the above evidence.



The outcome:


As to Black Gold Archery LLC, Afshari does not make any allegations explaining why Ellig's actions should be attributed to it. Afshari does not allege any relationship between Black Gold Archery LLC and Ellig at all. Ellig is a Montana resident. Afshari has submitted evidence that Black Gold Archery LLC is located in Oregon. (DE 15-4, Oregon Sec. of State Filings.) Nor does Afshari allege that any other Black Gold Archery LLC representative took any actions on its behalf. Accordingly, Afshari has not alleged any activity on behalf of Black Gold Archery LLC and the Court cannot find that it has personal jurisdiction over the company. Its motion to dismiss must, therefore, also be granted.
Because the Court has found that it cannot exercise personal jurisdiction over any of the four defendants, Afshari's claims will be dismissed without prejudice. This ruling does not address the merits of any of Afshari's claims. It simply finds that Afshari cannot bring his claims against these defendants in Kentucky

No case/controversy in US for threats of infringement made outside US on non-US patents


In Allied Mineral, 2017 U.S. App. LEXIS 17667, the CAFC addressed DJs in view of a threat of litigation from a foreign patent,

From the decision:



All of Stellar's conduct has been directed towards Allied's customers Ferro and Pyrotek, unrelated Mexican entities, and that contact was limited to Stellar's Mexican Patent and potentially infringing acts in Mexico. Stellar sent notice letters to the customers alone, and although Allied responded on behalf of its customers, Stellar never responded to Allied's letter. [*5] Stellar then sued only the customers, not the manufacturer. Stellar also limited its actions to Mexico. Stellar filed suit in Mexico, suing for infringement of a Mexican patent under Mexican laws. It has not threatened or alleged infringement of the '974 patent in the United States, much less filed suit. Stellar took no actions directed at Allied, no actions with regard to its '974 patent, and no actions under U.S. patent laws.

(...)

Considering the totality of the circumstances, we agree with the district court that there is not a substantial controversy of sufficient immediacy and reality to confer declaratory judgment jurisdiction. Stellar sent notice letters to Ferro and Pyrotek in Mexico, and it sued Ferro and Pyrotek in Mexico. Stellar did not even respond to Allied's letter about the Mexican Patent on behalf of Ferro and Pyrotek. Nor has Stellar taken any action in the United States or any action on the '974 patent. Allied has failed to establish a case or controversy regarding Stellar's U.S. patent in the United States under Article III.

In Intellectual Ventures v. Motorola, Judge Newman challenges nonobviousness finding



The outcome of the Intellectual Ventures case [ 2017 U.S. App. LEXIS 17666 ]:


We hold that substantial evidence supports the jury's verdict regarding the validity of claim 41 of the '144 patent and claims 1, 10, 11, and 13 of the '462 patent, but conclude that substantial evidence does not support the jury's verdict of direct infringement of claim 41 of the '144 patent. Since a finding of direct infringement is a predicate to any finding of indirect infringement, we reverse all of the infringement findings with respect to the '144 patent. We therefore affirm the district court's judgment in part, reverse in part, and remand for further proceedings on the asserted claims of the '462 patent.
Background




Judge Newman dissented in part:


I agree with the holding of non-infringement of the '144 patent, and join the judgment of reversal of the district court's judgment of liability with respect to that patent.1 I respectfully dissent from my colleagues' sustaining the validity of the '144 and '462 patents, for I believe that the claims in suit would have been obvious to a person of ordinary skill in the field of the invention.

(...)

Although my colleagues state that "the jury was free to disbelieve [Motorola's] expert and credit [IV's] expert," Maj. Op. at 12 (alterations in original), the court's obligation is to assure that questions of law are correctly decided, and that for factual disputes, substantial evidence on the record as a whole supports the legal conclusion. The question of law is whether a person of ordinary skill in this art would deem it obvious to combine an authenticating step as in Micali, with the process of Overend. See 35 U.S.C. § 103 (whether "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 art to which said subject matter pertains.").

(...)

Applying law and precedent, the combination of Overend and Micali renders claim 41 obvious. First, "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007). And second, "[w]hen a patent simply arranges old elements [*37] with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (internal quotation marks and citation omitted). The Court explained that "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." Id.

In light of the evidence, no reasonable jury could have found claim 41 to be nonobvious. There is not substantial evidence that a receipt confirming delivery is not a delivery confirmation message as in the prior art, especially given the express teachings of Micali's authenticating device. A "patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men." Id. at 415-16 (quoting Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152-153, 71 S. Ct. 127, 95 L. Ed. 162, 1951 Dec. Comm'r Pat. 572 (1950)).

Wednesday, September 13, 2017

Attorneys fees denied in ULTRATEC v. SORENSON COMMUNICATIONS


Defendants had prevailed on a JNOV [ After trial, the court granted defendants' motion for judgment as a matter of law that the '398 patent is invalid as obvious. ] and sought a fee award.

From the decision:



The question is not governed by clear-cut rules, but the court's discretion is guided by the purpose of fee-shifting under § 285, which is to dissuade unreasonable lawsuits and litigation tactics by compensating the prevailing party for enduring them. See, e.g., Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1930-31 (2015). The court should not award fees to punish a patent holder simply for failing to prove infringement. Gaymar Indus., Inc. v. Cincinnati Sub-Zero Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (citing Octane, 134 S. Ct. at 1753). A litigation position that seems obviously wrong after a decision on the merits might have seemed reasonable when judged without the benefit of hindsight. And fee-shifting in routine cases would deter legitimate efforts to enforce patent rights. So the court will award fees only if there has been some [*3] conduct that warrants imposing on the losing party the additional burden of paying the other side's attorney fees. The court need not find that the losing case was frivolous, or that it was brought in bad faith for an illegitimate purpose (although that would clearly warrant fee-shifting). See Lumen View Tech., LLC v. Findthebest.com, Inc., 24 F. Supp. 3d 329, 335 (S.D.N.Y. 2014), aff'd, 811 F.3d 479 (Fed. Cir. 2016). Such clearly inappropriate cases and tactics would be sanctionable pursuant to Rule 11 or the court's inherent powers even without § 285.

Because the purpose of § 285 is to compensate parties forced to defend against unreasonable litigation and to deter improper conduct, a good way to think of the question is this: was the losing party's case so unusually weak on the merits that it suggests an improper purpose or demonstrates irresponsible conduct that should be deterred? Or, is there other evidence, besides substantive weakness on the merits, that suggests an improper purpose? With these questions in mind, the court turns to the parties' arguments.
Defendants argue that plaintiffs knew their patent was invalid as obvious over their own prior art, the CapTel trials combined with U.S. Patent Publication No. 2002/0085685 (the
'685 publication), yet argued during litigation that the CapTel trials weren't [*4] prior art, but rather were an experimental use. They complain that plaintiffs mischaracterized the evidence concerning the trials and made "objectively baseless arguments that contradicted well-settled legal principles" concerning the experimental-use exception. Dkt. 735, at 13.

(...)

So although plaintiffs' position concerning the CapTel trials was not ultimately successful, it was far from unreasonable. Whether the trials were an experimental use was a close call, especially in the uncharted territory of applying the experimental use exception within the context of prior art.



citation: 2017 U.S. Dist. LEXIS 148132 (WD Wisc 2017)

Domain name case in ED Va




Before the Court are Proposed Findings of Fact and Recommendations ("Report") issued by a magistrate judge on August 24, 2017 [Dkt. No. 19]. The Report recommends that plaintiff's Motion for Entry of Default Judgment [Dkt. No. 15] be granted, that VeriSign, Inc., the registry of domain name, 411mania.com (the "Infringing Domain Name"), be ordered to require the current registrar to transfer the registrations for the Infringing Domain Name to plaintiff, 411Mania.com, LLC, and that Defendant John Doe be dismissed without prejudice. The Report advised the parties that any objection to the Report had to be filed within fourteen days of service of the Report and that failure to file a timely objection barred appeal of "any finding or conclusion accepted or adopted by the District Judge except upon grounds of plain error." Report at 19. As of September 11, 2017, no objections have been filed by any party.
Plaintiff brings an in rem action under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). Accordingly, [*2] the Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§1331 and 1338(a). Venue is proper under the ACPA because VeriSign, Inc., the domain name registry is located in this district. 15 U.S.C. §§ 1125(d)(2)(A) and (C).
The Court has in rem jurisdiction over the Infringing Domain Name pursuant to 15 U.S.C. § 1125(d)(2)(A). Under this provision, a court in the judicial district in which the domain name registry is located has in rem jurisdiction if "the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office" and the owner of the mark "is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action" under the ACPA or "through due diligence was not able to find a person who would have been a defendant" after sending notice of the claimed violation and the owner's intent to file suit to the registrant. 15 U.S.C. § 1125(d)(2)(A).




from 411 MANIA.COM, LLC, Plaintiff, 2017 U.S. Dist. LEXIS 147547

ED Texas on Daubert/Kumho issue


Plaintiff Network-1 moved to exclude certain opinions of expert Ambreen Salters, as unreliable.

However, to the extent Plaintiff disagrees with the accuracy of Salters's decision to treat the fluctuating numbers in the spreadsheet as variable costs, or her decision to be conservative by treating only 50% of the operating costs as variable based on Thompson's deposition testimony, these concerns are best addressed through vigorous cross examination at trial, not wholesale exclusion. These concerns, as well as the other concerns Plaintiff has raised in the briefing, go to the weight, not admissibility of Salters's testimony.




from NETWORK-1 TECHNOLOGIES, INC. v. RWS-KNM ALCATEL-LUCENT USA, INC., ET AL., 2017 U.S. Dist. LEXIS 147812

Tuesday, September 12, 2017

The unintended consequences of eBay


A law review article shows that the impact post-eBay on the granting of injunctions varies by industry type.
From Table 1:


Table 1. Industry classification and injunction grant rate by industry
Industry Sector Grant Rate
Other 90.6%
Chemistry /Chemical 88.9%
Pharmaceutical 84.2%
Biotech 83.3%
Consumer Goods 81.0%
Transportation 76.4%
Computers/Electronics 63.0%
Software 50.0%
Medical Devices 46.2%




from The Unintended Consequences of the Injunction Law after eBay v. MercExchange: An Empirical Study of the Effects on Injunctions in Patent Law
99 J. Pat. & Trademark Off. Soc'y 249 (2017)

One recalls in 2006 LBE wrote an article titled "Will there be Unintended Consequences from the Supreme Court Decision in eBay v. MercExchange?"

In 27 Rev. Litig. 1 (2007), Douglas Laycock wrote:


in eBay Inc. v. MercExchange, L.L.C., n6 where the Court substantially rearranged the standards for granting permanent injunctions without appearing to realize it had changed anything. Recognizing that there can be sound reasons for limiting or refusing injunctive relief, Professor Rendleman would treat those reasons as in the nature of affirmative defenses to plaintiff's prima facie entitlement to an injunction ordering defendant to obey the law. My own view is that his proposal states what the law has been in practice for a long time, n7 and that the Court's opinion has now moved formal doctrine further from reality than it was before. Litigators and trial judges would be much better off if the eBay opinion could have been assigned to Professor Rendleman.


In Modern American Remedies: Cases and Materials at 426 (4th ed. 2010) Douglas Laycock argued that there was "no traditional four-part test" and that the Supreme Court majority's citations supporting this test are misplaced in cases related to preliminary injunctions.

One notes also the text in 27 Rev. Litig. 161 (2008) :


in a very different context, the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. n13 is a spectacular example of the confusion that can result from litigating a remedies issue without a remedies specialist. But the reality is that except for consulting opportunities for law professors, the practice of law does not support remedies specialists. It is only teachers and students who have the freedom to consider remedies apart from underlying questions about liability, and thus only law professors who can specialize in remedies.


Copyright defendant wins motion for reconsideration in SD Miss



As to the law:



"A Rule 59(e) motion calls into question the correctness of a judgment." Templet
v. Hydrochem Inc., 367 F.3d 473, 478 (5th Cir. 2004). There are three grounds for
altering or amending a judgment under Rule 59(e): "(1) an intervening change in
controlling law, (2) the availability of new evidence not previously available, or (3) the
need to correct a clear error of law or prevent manifest injustice." Williamson Pounders
Architects, P.C., 681 F. Supp. 2d 766, 767 (N.D. Miss. 2008).




There was a correction of a factual error:


First, Defendant argues that the Court erred in holding that the record contains
no evidence that she paid the filing fee to accompany her application for copyright
registration. Defendant is correct. The record contains an e-mail receipt from Pay.gov
demonstrating that Defendant's attorney remitted the $35.00 filing fee. See Exhibit I
at 4, Dennis Pierce, Inc. v. Pierce, No. 2:16-CV-102-KS-MTP (S.D. Miss. July 3, 2017),
ECF No. 52-9.



Summary judgment was inappropriate:



As for the other arguments raised in Plaintiffs' Motion for Summary Judgment
- that Defendant created the mark as a "work for hire," that Dennis Pierce was a "joint
author" of the work, that the mark lacks the requisite creativity and originality to
receive copyright protection, and that Defendant granted Dennis Pierce an irrevocable
license to use the mark - the Court finds that there are genuine disputes of material
fact that preclude summary judgment on these bases. Moreover, Plaintiffs cited no
legal support for their "misuse of copyright" argument.
The Court grants Defendant's Motion for Reconsideration as to her copyright
infringement counterclaim.


See Pierce v. Pierce, 2017 U.S. Dist. LEXIS 147075

UNIFRAX I, LLC loses on JNOV at D. Delaware


There is both an issue of "argument not made" AND improper referencing in the brief:


Defendant makes the new claim construction argument that if a material serves more than
one function, such as, as both a dispersant and a carrier, then that material would count towards
the "l 00% by weight" limitation because it qualifies as a carrier. Defendant did not argue this
specific issue in its claim construction briefing. (See generally D.I. 74). Defendant had
numerous opportunities to raise this specific issue prior to trial, but Defendant did not do so.
Indeed during summary judgment arguments, Defendant represented that "the [*5] correct claim
construction is the one the Court gave which is there cannot be resin or adhesive in the vermiculite." (D.I. 282, 26: 10-17).

I do not understand Defendant's citations at D.I. 370, page 34, footnote 17 to amount to an adequate request for additional claim construction of this issue. Defendant did not preserve this specific argument as a basis for JMOL at trial either. Thus, this argument is waived. See, e.g., LG Elecs. US.A., Inc. v. Whirlpool Corp., 798 F. Supp. 2d 541, 551 (D. Del. 2011) ("A party dissatisfied with a jury verdict may not prevail on a post-verdict motion for JMOL based on grounds not raised in the pre-verdict motion for JMOL."); Dura-Last, Inc. v. Custom Seal, Inc., 321F.3d1098, 1107 (Fed. Cir. 2003) ("[I]t would be constitutionally impermissible for the district court to re-examine the jury's verdict and to enter JMOL on grounds not raised in the pre-verdict JMOL."). Even if it were not waived, I think Defendant's new construction is an overly broad interpretation of what counts towards the 100% by weight limitation. Defendant's new construction seems to contemplate that even residual dispersants could count towards this limitation. See Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) ("A claim construction that excludes a preferred embodiment is 'rarely, if ever, correct."'). [*6] For the reasons given in my Markman opinion, that cannot be the correct reading. (See, e.g., D.I. 86 at p. 14 (noting that the specification provides that "[t]he refractory layer may comprise some residual dispersant arising from incomplete drying of the platelet dispersion during manufacture")).





Of the issue of juror confusion:



During the cross-examination of Dr. Nosker, Defendant objected, "Mr. Levine is suggesting to the jury that the construction of the claim is that only resins can be carriers when, in fact, it is the carrier such as a resin or adhesive. I'm just concerned that ifhe continues to suggest that, they're [*8] going to be confused." (Tr. 1208:2-9). I overruled that objection, stating that Mr. Levine "hasn't explicitly suggested that. You know, it seems like something you could bring up on redirect." (Tr. 1208:10-13).
Before I excused the jury to begin deliberations, Defendant further requested "a corrective instruction that carriers are not limited to the examples of resins, adhesives paper or cloth. I think that Mr. Levine implied strongly that it is a limiting construction and it's not." (Tr. 1848:10-15). I overruled that objection, stating, "I think the instruction that I've given that's in the book as to what it is is sufficient, so I'm not going to give that." (Tr. 1849:2-5).
There is no miscarriage of justice here. I do not think a jury was misled to believe that a carrier can only be resins or adhesives. Mr. Levine never argued that a carrier can only be resins
or adhesives. Indeed, Mr. Levine made clear that resin and adhesives are merely examples of
carriers. (Tr. 1839: 10-19). My construction, which was provided to the jury, further served to mitigate juror confusion.



Case: DuPont v. Unifrax, 2017 U.S. Dist. LEXIS 146950


Cablz loses at CAFC. Matters of waiver and motivation to combine.




Following institution of inter partes review, the United
States Patent Trial and Appeal Board found every
claim of U.S. Patent No. 8,366,268 (“’268 patent”) unpatentable
as obvious. Cablz, Inc., the owner of the ’268
patent, appeals from this decision, arguing that substantial
evidence fails to support the Board’s obviousness
determination and that the Board failed to adequately
explain a motivation to combine the prior art. Finding no
error in the Board’s decision, we affirm



The technology relates to holding eyeglasses on:


The ’268 patent is entitled “Eye Wear Retention Device.”
As the patent explains, people have long been using
devices like chains, strings, and ropes to retain their
glasses around their necks. A significant problem is that
such devices rest directly against the wearer’s back or
neck, which can cause the device to become entangled
with clothing or coated with sweat or suntan lotion. The
’268 patent purports to solve the problem and discloses an
eyewear retainer that “extends rearward from the head of
the wearer and is suspended off the neck of the wearer.”
J.A. 40 at Abstract.



The cited prior art in this case is of interest.

The topic of waiver arose:


As an initial matter, we conclude that Cablz waived
its argument that Monroe fails to disclose a “resilient”
cable or member because it failed to raise this argument
in its briefing before the IPR oral hearing. The court
retains case-by-case discretion over whether to apply
waiver. In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed.
Cir. 2016)

(...)

As a result, we do not have the
benefit of the Board’s informed judgment on the specific
reading of Monroe that Cablz advances on appeal. The
argument is thus waived. See Watts, 354 F.3d at 1368.



Query: when the Board, or other trial court, ignores
an argument actually presented, the reviewing court is also deprived of
the benefit. Does the reviewing court then vacate?

Of motivation to combine:


We may affirm the Board’s ruling if we reasonably
discern that it followed a proper path, even if that path is
less than perfectly clear. Nuvasive, 842 F.3d at 1383
(citing Bowman Transp., Inc. v. Ark.-Best Freight Sys.,
Inc., 419 U.S. 281, 285–86 (1974)); Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
2015).
The Board’s decision provides a reasonably discernable
path for articulating a motivation to combine the prior
“one of skilled in the art would have ‘immediately recognized
that a simple substitution of the eyewear retainers
of Mackay for the attachment method employed in Monroe
would have had various advantages.’” Chums, 2016
WL 763054 at *5. The Board similarly summarized
Appellee’s arguments regarding a motivation to combine
the other prior art references. Id. at *5–6. After analyzing
the arguments, the Board concluded that achieving
the ’268 patent’s configuration required only “simple
substitution.” Id. at *11.
The Board also addressed and rejected each of Cablz’s
arguments that there was no motivation to combine the
prior art. First, the Board found no persuasive reason
why the cited combinations “taught away” from the ’268
patent’s invention. Id. at *8. Second, the Board rejected
Cablz’s argument that Mr. Sosin failed to recognize and
solve the “being in the way problem.” Id. at *8–9. Third,
the Board found the age of the references and the fact
that Appellees did not combine the references to create
their own product did not preclude a motivation to combine
the prior art. Id. at *9–10. Ultimately, the Board
concluded that Appellees provided “strong evidence of
obviousness.” Id. at *15. Taken together, we may reasonably
discern that the Board found a motivation to
combine the references because doing so would have been
a matter of simple substitution that would result in an
eyeglass retainer with certain advantages.

Monday, September 11, 2017

D. Delaware addresses Heartland venue issue in case involving BMS' Eliquis®

The Dustrict Court of Delaware noted:


On July 25, 2017, MPI moved to dismiss for improper venue under Federal Rule of Civil
Procedure 12(b)(3), contending that venue is not proper under either the residency or place of
business prongs of§ 1400(b).

(...)

Venue in a patent infringement action is governed solely and exclusively by the patent venue statute, 28 U.S.C. § 1400(b). See TC Heartland, 137 S. Ct. at 1516. The general venue statute, 28 U.S.C.
§ 1391(c), does not have any application in a patent case. See id. at 1521.
If the Court grants a Rule 12(b)(3) motion based on improper venue, the Court "shall
dismiss, or if it be in the interest of justice, transfer such case to any district or division in which
it could have been brought." 28 U.S.C. § 1406(a).

Generally, "it is not necessary for the plaintiff to include allegations in his complaint
showing that venue is proper." Great W Mining & Mineral Co. v. ADR Options, Inc., 434 F.
App'x 83, 86-87 (3d Cir. 2011). Hence, when confronted with a motion to dismiss for improper
venue, the Court may consider both the complaint and evidence outside the complaint. See 14D
Wright & Miller, Federal Practice & Procedure§ 3826 (4th ed. 2017). The Court will accept any
venue-related allegations in the complaint as true, unless those allegations are contradicted by the
defendant's [*8] affidavits. See Bockman v. First Am. Mktg. Corp., 459 F. App'x 157, 158 n.l (3d
4While § 1406(a) authorizes the Court to either dismiss or transfer a suit brought in an improper venue, for simplicity this Opinion will refer to the improper venue motion as a "motion to dismiss."

(...)

Courts are not uniform in their views as to which party bears the burden of proof with
respect to venue. Some hold that a plaintiff must prove that venue is proper in its chosen district,
while others hold instead that a defendant must prove that such district is an improper venue. See
14D Wright & Miller, Federal Practice & Procedure§ 3826 (4th ed. 2017) ("There are many
cases -predominantly, but not exclusively, from the Third and Fifth Circuits-:-- holding that the
burden is on the objecting defendant to establish that venue is improper, because venue rules are
for the convenience and benefit of the defendant.").



Case
BRISTOL~MYERS SQUIBB COMPANY and PFIZER INC v, Mylan ["MPI"], 2017 U.S. Dist. LEXIS 146372 (11 Sept 2017)

See also Boston Scientific v. Cook, 2017 U.S. Dist. LEXIS 146126, also involving Heartland LLC v. Kraft Food Group Brands LLC, 137 S. Ct. 1514 (2017).

UPDATE.
There was a post on 13 Sept 17 Frequent ANDA Filer May Have Regular and Established Place of Business in Delaware​

IPBiz notes additional text in the decision, which relied on Acorda, 817 F3d. 755:


In the Court's view, the best, most reasonable conclusion after Acorda is that an ANDA filer's future, intended acts must be included as part of the "acts of infringement" analysis for purposes of determining if venue is proper under the patent venue statute. In Acorda, the Federal Circuit plainly held that intended, planned, future acts that will occur in a district in the future (after FDA approval) are acts that must be considered now in determining whether an ANDA filer has sufficient contacts with that district right now to make Hatch-Waxman litigation in such a district appropriate from a jurisdictional perspective. See, e.g., id. at 760 ("[T]he minimum-contacts standard is satisfied by the particular actions Mylan has already taken — its ANDA filings — for the purpose of engaging in that injury-causing and allegedly wrongful marketing conduct in Delaware."). It follows, in the Court's view, that the same approach must apply in the context of a venue analysis: planned, future acts that the ANDA filer will take in this District must be considered now in determining whether venue is proper here. In the context of Hatch-Waxman, therefore, such future acts are properly considered part of the "acts of infringement" that "the defendant has committed" within the meaning of § 1400(b).



The conclusion of the case:


For the reasons stated above, the Court will deny without prejudice MPI's motion to dismiss for improper venue. MPI has committed acts of infringement in Delaware based on its submission of an ANDA to the FDA, with the intention and for the purpose of selling products in Delaware that would allegedly infringe BMS' patents. The Court is not yet able to determine whether MPI lacks a regular and established place of business in Delaware. Hence, the Court will permit venue-related discovery and allow MPI to renew its venue challenge after such discovery is completed.


Sunday, September 10, 2017

CBS Sunday Morning on 10 Sept 2017: interview with Hillary Clinton


The anticipated interview of Hillary Clinton by Jane Pauley on CBS Sunday Morning got into the matter of "deplorable":


There were some memorable verbal gaffes, including when she said at a campaign appearance: "You could put half of Trump's supporters into what I call the basket of deplorables."

"Why do you think that word deplorable had been circulating in your mind?" Pauley asked.

"Well, I thought Trump was behaving in a deplorable manner," Clinton said. "I thought a lot of his appeals to voters were deplorable. I thought his behavior, as we saw on the 'Access Hollywood' tape, was deplorable. And there were a large number of people who didn't care. It did not matter to them. And he turned out to be a very effective reality TV star."

Clinton says she thinks her rival's opponents were "already energized" before her "deplorable" comment but conceded: "I'm sorry I gave him a political gift of any kind."

"It was a gift," Pauley said.

"I don't think that was determinative," Clinton said.




Notice that Pauley asked "why" the word "deplorable" was on Clinton's mind, rather than "why" Clinton lumped half of Trump supporters into a "basket of deplorables."

**One year ago [Saturday, Sept. 10, 2016], the NY Daily News wrote:


Clinton ripped 50% of Trump supporters during a LGBT fund-raiser in lower Manhattan Friday evening, grouping them into a "basket of deplorables."

"You know, to just be grossly generalistic, you could put half of Trump's supporters into what I call the basket of deplorables," Clinton said to laughter from the "LGBT for Hillary" crowd. "The racist, sexist, homophobic, xenophobic, Islamaphobic - you name it."




On the same day, the Christian Scientist Monitor wrote:


Presidential candidate Hillary Clinton told the country what she really thinks about many Donald Trump supporters when she lumped "half" of them into a xenophobic, homophobic, racist, and sexist "basket of deplorables" on Friday.

Although she cautioned her comments were "grossly generalistic," the blunt commentary at a New York City fund-raiser specifically targeted the nebulous alt-right movement that Mr. Trump has courted, whose philosophical leaders in a press conference this week outlined their plans for an ethno-state where Jews might or might not be welcome.

Mrs. Clinton has never painted Trump as holding such views. But she has used the word "deplorable" to describe some of Trump's rhetoric and last month said the Republican candidate is "taking hate groups mainstream" by turning alt-right websites with 11,000 views to ones with 11 million hits, a notion she repeated Friday night.

But using the quantifier "half" to describe some of his supporters crossed a new line, say critics. It was likened to the 2008 comment by Barack Obama claiming some Americans bitterly "cling" to guns and religion, and Mitt Romney's 2012 statement that "47 percent" of Americans can be written off as unapologetic welfare moochers.


**The Guardian on 10 Sept 2017 noted:


On Sunday, Clinton was unapologetic for the context of her remarks and said Trump's base was "already energized" by his divisive rhetoric before her words became public.

"I thought Trump was behaving in a deplorable manner," she said. "I thought a lot of his appeals to voters were deplorable.



**There may be something odd about the transcript. The first mention of the Clinton home on television referred to a suburb (not explicitly Chappaqua) but the transcript reads:


And then, on what she thought would be her first day as president-elect, Hillary and Bill Clinton headed to their home in Chappaqua, New York.



link: https://www.cbsnews.com/news/hillary-clinton-what-happened-sunday-morning-jane-pauley/

Saturday, September 09, 2017

Southwire wins a legal point on inherency but otherwise loses at the CAFC


Southwire lost at the CAFC on an appeal of an inter partes re-exam decision:



Southwire Co. (“Southwire”) appeals from the decision of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) in an inter partes reexamination concluding that claims 1–42 of U.S. Patent 7,557,301 (“the ’301 patent”) are unpatentable under 35 U.S.C. § 103. See Cerro Wire, Inc. v. Southwire Co., No. 2015-004351, 2015 Pat. App. LEXIS 10285 (P.T.A.B. Sept. 29, 2015) (“Final Decision”); Cerro Wire, Inc. v. Southwire Co., No. 2015-004351, 2016 Pat. App. LEXIS 1942 (P.T.A.B. May 2, 2016) (decision on request for rehearing). For the reasons that follow, we affirm.



Of inherency in obviousness:


Southwire argues that, as an initial matter, the Board erred in relying on “inherency” in making its obviousness determination. Second, Southwire argues that Summers does not inherently teach the “at least about a 30% reduction” in pulling force limitation because a limitation is not inherent in a reference unless it is necessarily, i.e., always, present. Thus, Southwire argues, the Board’s finding that a “skilled artisan would have had reason to select [lubricant] concentrations that did” achieve the 30% reduction in pulling force is the antithesis of inherency, which requires certainty, not experimentation. Final Decision, 2015 Pat. App. LEXIS 10285, at *21




The CAFC noted:


First, we agree with Southwire that the Board erred in relying on inherency in making its obviousness determination. We have held that “the use of inherency in the context of obviousness must be carefully circumscribed because ‘[t]hat which may be inherent is not necessarily known’ and that which is unknown cannot be obvious.” Honeywell Int’l v. Mexichem Amanco Holding S.A., No. 2016-1996, —F.3d—, 2017 WL 3254943, at *10 (Fed. Cir. Aug. 1, 2017) (quoting In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)). While “[w]e have recognized that inherency may supply a missing claim limitation in an obviousness analysis,” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014) (collecting cases), we have emphasized that “the limitation at issue necessarily must be present” in order to be inherently disclosed by the reference, id. (emphasis added). The Board cited no evidence that a reduction of 30% in the pulling force would necessarily result from the claimed process, which contains no steps that ensure such reduction.



BUT




However, we also conclude that the Board’s error was harmless because, although it improperly invoked inherency, it need not have. It made the necessary underlying factual findings to support an obviousness determination. It found that the claimed method simply applies the same process for the same purpose as disclosed in Summers— i.e., to reduce the pulling force on a cable for ease of installation. See, e.g., J.A. 169


YES, In re Best arose:



... except for the functionally expressed [limitation at issue],” the PTO can require an applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (emphases added) (internal quotation marks omitted). The court noted that
“[w]hether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, [or] on ‘prima facie obviousness’ under 35 U.S.C. § 103, . . . the burden of proof is the same.” Id.

(...)

In the absence of any evidence that the claimed 30% reduction would have been unexpected in light of the Summers disclosure, there is no indication that the limitation is anything other than mere quantification of the results of a known process.



Of In re Best, the CAFC had cited it previously [ 2012 U.S. App. LEXIS 7897 ] for the proposition:


The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254-55 (C.C.P.A. 1977)



The Best case itself was about zeolites. Claim 3 contained a "functional" limitation:


cooling the steamed zeolite to a temperature below 350 degree C. at a rate sufficiently rapid that the cooled zeolite exhibits an X-ray powder diffraction pattern having the d-spacing corresponding to the Miller Indices, hkl, of 331 at least as strong in intensity as that corresponding to the Miller Indices 533, prior to any post-steaming ion exchange treatment.



The CCPA wrote:


Also with respect to Hansford, the examiner believed the cooling rate of the zeolite after stabilization to be within the [page 1254] terms of the appealed process claims. The claimed product being the unique result of the claimed process, the examiner, therefore, rejected both process and product claims as anticipated by Hansford, or, in any case, as obvious in view of Hansford.

In sustaining the rejection, the board added its view of Hansford.
All the positive process limitations are expressly disclosed except for the functionally expressed rate of cooling. However, there is nothing to indicate that this rate of cooling in any way differs from the normal rate resulting from removal of the heat source. Thus, the examiner's conclusion that those parameters of the resultant product which are recited in the appealed claims but are not expressly disclosed in the reference would be inherent is a reasonable one, absent convincing evidence to the contrary. Appellants have presented no such convincing evidence. No comparison has been made between appellants' process and product and the process and product disclosed in the Hansford patent. The comparative data contained in appellants' specification and in an affidavit under 37 CFR 1.132 do not relate to the reference but merely illustrate the result of deviating from appellants' process. Such deviations appear to be also outside the scope of the Hansford teaching.



But the "rub" in Best (and in Southwire) is how to compare when the reference is silent:


The appellants urge that, because Hansford is silent on appellants' crucial cool-down step and on his apparatus, a direct comparison between the claimed process and that of Hansford is impossible. Appellants correctly state that indirect comparisons, based on established scientific principles, can validly be applied to distinguish a claimed chemical process or product from that disclosed in the prior art. In re Blondel, 499 F.2d 1311, 182 USPQ 294 (CCPA 1974). However, our analysis of the comparative data offered by appellants convinces us that the burden of rebutting the PTO's reasonable assertion of inherency under 35 USC 102, or of prima facie obviousness under 35 USC 103, has not been met.
Our reading of Hansford leads us to conclude, as did the board, that all process limitations of claim 3 are expressly disclosed by Hansford, except for the functionally expressed rate of cooling. Because any sample of Hansford's calcined zeolitic catalyst would necessarily be cooled to facilitate subsequent handling, the conclusion of the examiner that such cooling is encompassed by the terms of the appealed claims was reasonable.



The CCPA further noted:


Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be [page 1255] an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. [58 CCPA at 1031, 439 F.2d at 212-13, 169 USPQ at 229.]

(...)

In view of Hansford's silence on cool-down rate and on his apparatus, appellants need only have shown that the cool-down rate, for a typical laboratory-scale sample when employed in Hansford's process, would not yield a cooled zeolite with the X-ray diffraction pattern of claim 3. Appellants failed to do even that.

(...)

Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, supra. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, 4 the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972





562 F.2d 1252; 195 U.S.P.Q. 430 (CCPA 1977)

***Of the Best case, one notes that the functional limitation ("cooling rate") was defined in terms of x-ray diffraction parameters (" exhibits an X-ray powder diffraction pattern having the d-spacing corresponding to the Miller Indices, hkl, of 331 at least as strong in intensity as that corresponding to the Miller Indices 533 " ). The Hansford reference has no x-ray diffraction information, and defines the invention in the following way:


Briefly stated, the novel stabilizing treatment of the invention comprises a calcining step carried out preferably at above about 800 F. during which the partial pressure of water vapor is maintained at a level above about 0.4 p.s.-i.a. Following this hydrothermal stabilization treatment, the resulting zeolite can be contacted with water or Water vapor at substantially any temperature below about 1,200 F.-, without undergoing appreciable losses in surface area or crystallinity.



The first claim of Hansford:


A method for stabilizing the crystal structure of a hydrogen zeolite of the Y crystal type against hydrothermal degradation without substantial reduction in surface area thereof, said hydrogen zeolite being initially unstable and subject to loss of at least about 10% of its surface area and crystallinity when heated in its hydrated state at temperatures between 300 and 500 F. and containing less than about 3% by weight of Na O, at least about 40% of the ion-exchange capacity thereof being satisfied by hydrogen ions, which comprises subjecting said hydrogen zeolite to a hydrothermal stabilization treatment by heating the same at temperatures between about 700 and 1,200 F. in contact with a vapor phase comprising at least about 0.4, but not more than about 10, p.s.i.a. partial pressure of water vapor, there having been substantially no previous contacting of said hydrogen zeolite with water vapor of greater than about 2 p.s.i. partial pressure within the temperature range of about 300-500 F.


Friday, September 08, 2017

The CAFC addresses inequitable conduct and misprints in articles




CAFC affirms ND Ill in Intercontinental v. Kellogg:


Kraft Foods Global Brands LLC (now called Intercontinental Great Brands) owns U.S. Patent No. 6,918,532, which issued in 2005 and was supplemented with additional claims on reexamination in 2011. The ’532 patent describes and claims a food package that, after opening, can be resealed to maintain the freshness of the food items inside. Kraft brought this patent-infringement suit against Kellogg North America Co., Keebler Foods Co., and affiliates (collectively, Kellogg) in the Northern District of Illinois. The district court held that Kellogg was entitled to summary judgment of invalidity for obviousness of the asserted claims of the ’532 patent. Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 118 F. Supp. 3d 1022, 1027–42 (N.D. Ill. 2015). The court also held that Kraft was entitled to summary judgment rejecting Kellogg’s counterclaim of unenforceability of the patent due to alleged inequitable conduct by Kraft, chiefly in an ex parte reexamination proceeding. Id. at 1044–45. We affirm.




Text within footnote 3 is of interest:


In this court, Kellogg makes only what amounts to a bare assertion of error on this point, not a meaningful argument for why the district court erred. Kellogg’s Opening Corrected Br. 56–57. For record evidence on the point, Kellogg cites only “Sec. V(C), supra,” which does not exist, and J.A. 4924–26, which does not address inequitable non-disclosure during prosecution. Kellogg has forfeited the point and certainly has not shown error. We do not further address this aspect of the inequitable-conduct issue.



Of interest:


Kraft contends that objective indicia must be evaluated before drawing a conclusion about whether a reasonable jury could find that a relevant skilled artisan had a motivation to combine the prior art, not merely before drawing the ultimate obviousness conclusion. But it cites no precedent so holding. Kraft does cite authorities confirming that, in some cases, objective indicia can be important evidence of obviousness, sometimes even the most important evidence. See, e.g., Plantronics, 724 F.3d at 1355; Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir. 2010). And it cites authorities that say, consistent with KSR and Graham, that objective indicia must be considered and given “fair weight” before a legal conclusion on obviousness is drawn.




Of prior art previously considered by the USPTO:



The “enhanced burden” point certainly confirms a practical truth about litigation: persuading a fact finder that an expert agency is incorrect on a proposition is likely to be a greater forensic challenge to the advocate than showing the proposition to be incorrect in the absence of a contrary expert-agency determination. See Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260–61 (Fed. Cir. 2012) (“[I]t may be harder to meet the clear and convincing burden when the invalidity contention is based upon the same argument on the same reference that the PTO already considered. Importantly, whether a reference was before the PTO goes to the weight of the evidence, and the parties are of course free to, and generally do, make these arguments to the fact finder.”). This court has not, however, ascribed any larger meaning to the “enhanced burden” point, which, the court has explained, does not mean that something more than clear and convincing evidence is required. Id.

In any event, this is not a case in which what the PTO concluded makes a difference, for at least two reasons. First, as the district court explained, the only express analysis of the Machinery Update articles was by the examiner, who rejected the claims. The Board, which upheld the claims, did not expressly consider those articles, but relied instead on a sentence in Packaging News that does not appear in the Machinery Update articles. Intercontinental, 118 F. Supp. 3d at 1028–29. There is no basis for attributing to the Board an implied assessment of the Machinery Update articles. The record before the Board indicates that the Board simply accepted a premise that those articles were redundant of Packaging News, requiring no separate consideration. There is no specific PTO determination of nonobviousness based on the particular prior art now at issue.



30(b)(6) testimony was involved in the cross-appeal by Kellogg:


In its cross-appeal, Kellogg argues that the district court erred when it granted Kraft summary judgment rejecting Kellogg’s inequitable-conduct charge.9 The only issue here concerns the arguments Kraft made about Packaging News to the Board during reexamination. We see no reversible error in the district court’s conclusion that Kellogg’s evidence was insufficient to permit a finding of the intent required for inequitable conduct based on Kraft’s reexamination arguments.

Kellogg’s charge rests on a sentence in the Packaging News article—a short article that was the central focus before the Board, including during oral argument, when the Board was specifically looking at and asking about the brief text. The relevant sentence in that article describes the Re-Seal It packaging as not using “conventional wrapping film.” J.A. 4713. Kellogg says that the sentence is a misprint and that Kraft committed inequitable conduct by not so informing the Board.

(...)

The only alleged wrong is Kraft’s omission of any statement that the sentence in the Packaging News reference on which the Board was directly focusing was actually a misprint. But even if the sentence was a misprint, the district court properly concluded that the record does not
support an inference of deceptive intent under the Therasense standard. Kellogg presents no admission or anything similar indicating that any relevant Kraft officer or representative during the reexamination actually believed the sentence to be a misprint. Kellogg asks for an inference as to what Kraft had to believe, given the disparity of language between the Packaging News article (“without conventional wrapping film,” J.A. 4713) and the 2002 Machinery Update article (“with conventional wrapping film,” J.A. 4424), that Kraft’s counsel had read both articles, and that a representative of a company selling packaging machines that counts Kraft as one of its biggest customers (affiliated with the reexamination requester) testified that, since “we run with conventional film,” it was obvious that the Packaging News sentence was a misprint, J.A. 6427, 6441. But without more evidence of Kraft’s belief, one reasonable inference on the record—especially given Kellogg’s burden of persuasion—is that Kraft did not believe that there was a misprint. Kellogg’s evidence from the deposition of Kraft’s counsel provides no suggestion of any awareness of a misprint. See J.A. 6941–45. The same is true as to Kraft’s inventor—appearing also as Kraft’s official company witness under Fed. R. Civ. P. 30(b)(6)—who testified that she did not recognize a misprint in Packaging News at all, much less one based on the difference in language between it and the 2002 Machinery Update, believing that “they were different packaging in different articles,” J.A. 6388, and that if there had been a misprint, it would have been corrected, J.A. 6382–83. In the reexamination, moreover, neither the ex parte requester nor the examiner suggested that the Packaging News article contained a misprint. The absence of such a statement indicates that the alleged misprint was not as obvious as Kellogg claims.




The partial dissent of Judge Reyna highlights one key issue in the case:



For too long, this court has turned a blind eye to what I consider to be a grave concern: the application of a prima facie test that necessarily achieves a legal determination of obviousness prior to full and fair consideration of evidence of objective indicia of non-obviousness

(...)

I would find that the district court improperly found a prima facie case of obviousness before considering Kraft’s evidence of objective indicia of nonobviousness. I therefore respectfully dissent from Part IIA of the majority opinion



Also, of a changed claim construction:



That midstream change was dispositive, and because Kraft had no opportunity to address the new construction, the district court’s summary judgment was erroneous. I dissent.

Monday, September 04, 2017

Will Andrei Iancu be more "pro-patent" than Michelle Lee?


A story on patents in the Financial Times ends with the text





Still, the pendulum may be about to shift again. The Trump administration has nominated Andrei Iancu, an LA-based lawyer who has worked with clients in both pharma and Big Tech, to be head of the USPTO. The US Supreme Court will also soon hear a case questioning the legality of the entire non-court patent adjudication system.

It will be a chance for lawmakers to think about exactly what kind of digital ecosystem they want to create.





link: https://www.ft.com/content/74114a6c-8f28-11e7-9084-d0c17942ba93

Of Andrei Iancu, Law360 wrote:


In the 2008 article [in JPTOS], co-authored like most of his writings with an associate at his firm, Iancu noted that the rapid pace of development in the software industry makes it difficult for the patent office to search for prior art. That means that patents of "suspect validity" are often used as a "bargaining tool to charge exorbitant fees" from those who license them, he wrote.

"Since computer software, in its most base form, is nothing more than a series of algorithms and mental processes, it is not clear that software, in any form, is patentable subject matter," Iancu wrote, adding that "it may be up to Congress to rescue the patentability of computer programs — if that is deemed desirable."

Later, in a 2010 article in the Northwestern Journal of Technology and Intellectual Property, Iancu noted the importance of software to modern technology and suggested drawing a distinction between patents on software and those on methods of doing business.

"Software patents present an altogether different set of issues than business methods, and the two need not be addressed in the same way,” he wrote. “Lumping the two together creates a risk that the patentability of software will be unnecessarily limited.”




link: https://www.law360.com/articles/958799/uspto-pick-s-writings-give-hints-to-his-patent-views

Friday, September 01, 2017

Mickey: You think you've got the right but I think you've got it wrong



There is no mention of copyright in the yahoo news post about a lawsuit by Toni Basil:



Toni Basil, the one-hit wonder behind “Mickey,” filed suit in L.A. Superior Court on Thursday (Aug 31) alleging that the song has been used without her permission for decades.

According to the suit, Basil recently became aware that the song was used in an episode of “South Park,” in a Forever 21 ad, and on an episode of “RuPaul’s Drag Race.” She was particularly offended that the Forever 21 campaign was in support of a line of Disney products, associating her song with Mickey Mouse.

“Basil was never consulted and would never consent to the use of her voice, persona, image, or name coupled with Disney products,” the suit states.

Since finding that her song was misused, Basil has become “withdrawn, despondent, and physically ill,” the suit alleges, and has experienced “sleep deprivation, nightmares, and anxiety.”



link: https://www.yahoo.com/celebrity/toni-basil-claims-mickey-used-without-her-permission-015823717.html

The Guardian points out:

Basil was 39 at the time of release (1982)

Mickey is already a cover version of “Kitty”, a 1979 song by a band called Racey from Weston-super-Mare.


link: https://www.theguardian.com/music/shortcuts/2017/sep/01/pay-mickey-why-toni-basil-is-suing-almost-everyone

CARDIAQ largely prevails at CAFC


The case is about a joint venture gone bad:


The joint work ended after about one year, but
during that year, Neovasc secretly launched its own TMVI
project. Neovasc eventually secured a patent on its
TMVI, U.S. Patent No. 8,579,964, without naming anyone
from CardiAQ as co-inventors.

(...)

In May 2009, shortly after the collaboration ended,
Neovasc filed a provisional patent application that ultimately
issued as the ’964 patent, which describes and
claims a TMVI with many of the same features as CardiAQ’s
design. Neovasc plans to market its device under
the brand name “Tiara.”1 CardiAQ discovered that Neovasc
was developing its own device in December 2011,
when Neovasc’s patent application was published
. The
’964 patent issued in November 2013. CardiAQ brought
this suit against Neovasc in June 2014, seeking correction
of inventorship under 35 U.S.C. § 256 and damages and
injunctive relief for, among other things, misappropriation
of trade secrets and breach of the non-disclosure
agreement.



The outcome at the CAFC:


The district court held that CardiAQ had also shown by
clear and convincing evidence that its employees were
entitled to be named as co-inventors on the ’964 patent.
Id. at *15–19. The court denied CardiAQ’s motion for
injunctive relief in part; specifically, it refused to require
Neovasc to suspend its TMVI project for eighteen months.
Id. at *7–10. On Neovasc’s appeal as to inventorship,
misappropriation, and damages, and CardiAQ’s crossappeal
as to the denied injunctive relief, we agree with
the district court’s well-reasoned decisions and affirm.



Of the law


To prevail under 35 U.S.C. § 256, the plaintiff
must show, by clear and convincing evidence, that the
unnamed but alleged co-inventor made a contribution to
the conception of at least one claim of the patent “that is
not insignificant in quality, when that contribution is
measured against the dimension of the full invention.”
Acromed Corp. v. Sofamor Danek Grp., Inc., 253 F.3d
1371, 1379 (Fed. Cir. 2001) (quoting Pannu v. Iolab Corp.,
155 F.3d 1344, 1351 (Fed. Cir. 1998)). It is not enough
under that standard if the alleged co-inventor “merely
explain[ed] to the real inventors well-known concepts
and/or the current state of the art.” Id. (quoting Pannu,
155 F.3d at 1351); see Ethicon, 135 F.3d at 1460. Here,
the parties have not differentiated Dr. Quadri from Mr.
Ratz in the co-inventorship dispute, and they have fo-
cused on claim 1, the only independent claim of Neovasc’s
patent.
The jury in this case, having been asked to make an
advisory factual determination, found that Dr. Quadri
and Mr. Ratz contributed to the conception of the ’964
patent.



The Ewen appears:


Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir.
2004) (“[A] person will not be a co-inventor if he or she
does no more than explain to the real inventors concepts
that are well known [in] the current state of the art.”
(second alteration in original) (emphasis added) (quoting
Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.
Cir. 1997));

CAFC votes against en banc review of MENTOR GRAPHICS case


One day after the CAFC voted for en banc review in the NantKwest case, the CAFC voted against
en banc review in MENTOR GRAPHICS v. SYNOPSYS EMULATION .

See also
pbiz.blogspot.com/2017/08/nantkwest-panel-decision-on-uspto.html

Of bloggers, 47 USC 230(c)(2), and failure to file briefs

Eric Goldman's post Blogger Isn’t Liable for Anonymous Comments–Griffith v. Wall discussed 47 USC 230(c)(2).

In the case before the Court of Appeals, Merlene Wall is the appellee (a public figure bringing a defamation case against a blogger), and Griffith is the blogger who failed to file a brief before the LAMAR COUNTY CIRCUIT COURT (and lost and has appealed to Court of Appeals, where he wins) . Thus, of interest in the case [ 2017 Miss. App. LEXIS 497 ] is the following:



Whenever the appellee has failed to file a brief, a reviewing court is presented with two options: "The first 'is to take the appellee['s] failure to file a brief as a confession of error and reverse.'" McGrew v. McGrew, 184 So. 3d 302, 306 (¶10) (Miss. Ct. App. 2015) (quoting Miller v. Pannell, 815 So. 2d 1117, 1119 (¶7) (Miss. 2002)). "This should be done when the record is complicated or voluminous, and the appellant has presented an apparent case of error." Id. The second is to disregard the appellee's failure to file a brief and affirm the [judgment]." Id. "This option is reserved for situations where there is a sound and unmistakable basis upon which the judgment may be safely affirmed." Id. (internal quotations omitted).

After reviewing the record, we find that the circuit court erred in taking Griffith's failure to file a brief as a confession of error. First, we find that the record on appeal is neither complicated nor voluminous. And even if it were, we find that Wall—the appellant at the circuit court level—failed to present an apparent case of error. In fact, the record shows that in her brief to the circuit court, Wall relied solely on a federal statute in an attempt to somehow tie the anonymous comments made on Griffith's blog to Griffith himself. The federal statute Wall relies on—titled "[p]rotection for private blocking and screening of offensive material"—states in part:

No provider or user of an interactive computer service shall [*6] be held liable on account of . . . any action voluntarily taken in good faith to restrict access to or availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable, whether or not such material is constitutionally protected . . . .
47 U.S.C. § 230(c)(2)(A).


AND



Wall contends that this statute placed an obligation on Griffith to remove offending material published—by anonymous posters—on his blog. A quick glance at the statute's text suggests otherwise. For one thing, HN2Go to this Headnote in the case.section 230(c)(1) explicitly protects a user of an interactive computer service from being "treated as the publisher or speaker of any information provided by another information content provider."3 Indeed, nowhere in the text of either section 230(c)(1) or (c)(2)(A) does the statute place any obligation on a provider or a user to screen offensive material. What is more, the title of the statute clearly previews a statutory protection, not a mandate. By its very terms, the title denotes protection for private blocking and screening of offensive materials. One may chose to block or screen offensive material; he, however, is under no obligation to do so.



The outcome was that Wall, as a public figure, lost:


In her brief to the circuit court, and even before us, Wall's only claim of error was based on the control of the anonymous comments. Wall did not, for example, claim that the county court erred in finding that she was a public figure, that it erred in determining that she failed to prove that Griffith's post contained false statements of fact, or that it erred in finding that she failed to prove actual malice. Indeed, Wall's only hope was to attempt to [*9] use an inapplicable federal statute as a vehicle to attach ownership of these anonymous comments to Griffith. The county court found that there was insufficient proof in the record to find that Griffith had control over the posting of anonymous comments in his blog—and was thus not responsible for their content. Wall's use of the federal statute does not change that conclusion. With all this in mind, we find that the circuit court could have safely affirmed the judgment of the county court.

In conclusion, we find that because the record was neither complicated nor voluminous, coupled with the fact that Wall failed to make out an apparent case of error, the circuit court should have affirmed the judgment of the county court—even though Griffith failed to file a brief. In reaching this end, it is not our intent to condone a litigant's failure to file a brief. Nor do we encourage future litigants to approach the appellate process in a careless manner; for when a litigant does so, he does so at his own peril. Yet we find that in this specific case, with these specific facts, a case of error was not made. Therefore, we reverse and render the judgment of the circuit court. The judgment [*10] of the county court is reinstated.