Tuesday, March 28, 2017

Oral argument in TC Heartland case concerning patent venue provisions

The TC Heartland case pits a Supreme Court decision against later Congressional changes to venue.

The Washington Post on the Supreme Court TC Heartland case:

The justices acknowledged that their case from 1957 seemed definitive.
The problem is that Congress has altered the law about legal venues twice since then,
and the U.S. Court of Appeals for the Federal Circuit has basically rewritten the rules from what the Supreme Court set.

Justice Elena Kagan noted the unusual nature of the case. Usually when the Supreme Court rules,
“we can be pretty confident that Congress is acting against the backdrop of that decision,” she said.
“But I think that that would be an odd thing to say in this case, given that for 30 years
the Federal Circuit has been ignoring our decision and the law has effectively been otherwise.”

link: https://www.washingtonpost.com/politics/courts_law/supreme-court-debating-limits-on-where-patent-suits-can-be-filed/2017/03/27/6cf5c19a-1322-11e7-833c-503e1f6394c9_story.html?utm_term=.2ab3492ff2d8

The New York Times expanded on this:

On Monday, Justice Elena Kagan noted a curiosity about the 1990 decision: It was at odds with a 1957 Supreme Court precedent. She sounded surprisingly sanguine about this state of affairs.

“For 30 years the Federal Circuit has been ignoring our decision, and the law has effectively been otherwise,” she said.

Justice Kagan also reflected on what the case had in common with one argued earlier on Monday about pension plans. “Sometimes we have accidental theme days at the Supreme Court,” she said. “So today’s accidental theme is: When 30 years of practice goes against you, what happens?”

See also

Mr. Dabney began the oral argument:

The Court in this case is presented with an
historic choice. That choice is between upholding or
destroying venue protections that Congress provided in
28 U.S.C. 1400(b), and that this Court interpreting that
statute declared to exist in its Fourco Glass decision.
And the correct choice, we submit, is to adhere to this
Court's existing, long-established interpretation of
Section 1400(b) and to reject the new call for a new
revisionist interpretation that would render Section
1400(b) nugatory in this case and in all but the most
unusual cases.


1400(b) was enacted to restrict where patent
cases could be filed, and what we've seen in the Federal
search that's experiment since 1990 is a very good
demonstration of why patent cases need a venue statute
like 1400. If you don't have a venue statute like
Section 1400, you get the kind of litigation experiences
that are set out in the amici briefs.
The -- the law professor's brief noted that
there's a single judge in the United States that has
one-quarter of all patent cases in the United States on
his docket. This is a situation that cries out for
nothing more than upholding the venue protection that
Congress provided and that this Court announced in
Fourco, and that Congress took a very careful look at in
2011, and decided to --

Justice Kagan observed:

It seems actually that if -- if I were a
congressman, I'd think that the practical backdrop
against which I'm legislating is not Fourco; it is
instead the Federal Circuit's decision in VE Holding,
which is the decision that the practice has conformed

Mr. Dabney responded:

Well, I -- I can tell the Court
from someone who does practice that not everyone ever
acceded to VE Holding. And I think, if you look at what
actually happened in the 2011 act, it seems to me that,
in 2011, Congress took steps that indicated that they
didn't get the memo, that this Court's decision in
Fourco Glass was a nullity and that -- and that its
disregard by lower courts had somehow become the law of
the land.
First, VE Holding, the 1990 decision of the
Federal Circuit, had seized upon a prepositional phrase
in a 1988 version under this chapter. So if Congress
was thinking, oh, what I want to do is lock in a
situation in which an enormous, extreme controversial
imbalance in Federal patent litigation that goes to a
very small number of victics, it was an odd thing for
Congress to have repealed the very grab-hold that --

Justice Breyer brought up an interesting point:

And the second thing that I'd like to know
is you are not a corporation. So since you are not a
corporation, why do we have this case here deciding?
And what are we supposed to do about that? We don't
normally decide cases because Mr. Smith would like us to
decide a case involving a corporation. He's not a
corporation, nor are you. So what do we do?


You can go into that if you
want. As far as that -- might be other people are
interested in that. But I really feel I need an answer
to my second question.

MR. DABNEY: Can you remind me what that --

JUSTICE BREYER: That is, you're asking us
to decide where venue is proper for a corporation, and
you are not a corporation. Therefore, on what basis are
we supposed to decide that?

KSR comes up:

MR. DABNEY: I -- I -- I heard Justice
Souter say something like that in the KSR case, you
know, the teaching-suggestion-motivation test has been
around so long that, at some point, the mistake becomes
the law. And -- and this Court has again and again and
again stood up for its authority to declare what the law

Story of professor stealing work of student reprises the "Big Bang" episode of "Law and Order"

In an early episode of "Law and Order" entitled "Big Bang," a journal reviewer (who happened to have been an advisor to the article submitter) gave an unfavorable review and stole the work of the submitter, a former student. Fast forward twenty years, and one sees a similar (real) story in Canada.

From CBC.CA:

University of Regina engineering professor Shahid Azam has been reprimanded by Saskatchewan's engineering association for plagiarizing the work of one of his master's students.

A December 2016 report by the Association of Professional Engineers and Geoscientists of Saskatchewan (APEGS) says the evidence shows Azam published an academic paper but "failed to acknowledge the contribution of [co-author and student Arjun Paul] to the submitted academic paper."

In 2014, Azam published the article in the journal Environmental Geotechnics. When Paul saw it, he complained to the journal and APEGS, alleging his professor had plagiarized his work.


APEGS isn't the first body to have raised concerns.

Following an investigation in 2014, Environmental Geotechnics decided to withdraw the paper after concluding Azam "had not fully credited Arjun Paul's thesis."

link to Canada story: http://www.cbc.ca/news/canada/saskatchewan/u-of-r-engineering-professor-found-guilty-of-plagiarizing-student-s-work-1.4033447

IPBiz mentioning Law & Order episode:
Comparing patent examiners to academic reviewers

Note another IPBiz post, including the text:

[IPBiz notes that this plot twist of "bomb damaging wrong victim" appeared in the 1995 Law&Order episode "Big Bang," wherein a disgruntled former grad student sent a bomb to his former advisor, but ended up killing the advisor's (separated) wife. A common theme is that, in each episode, the bomb was intended for an academic. In 1995, the advisor had stolen his former graduate student's ideas. In 2008, the professor/patentee also appeared in a bad light, having lied to the woman about the reason for the test (cancer, rather than genetic screening for the gay gene.)

link: http://ipbiz.blogspot.com/2008/01/patents-and-fritz-haber-in-law-order-on.html


CAFC reverses PTAB for lack of substantial evidence in Chudik “Glenoid Implant" case

The CAFC reversed PTAB in the Chudik case, 2016-1817.

Legal standard:

Anticipation is a question of fact we review for substantial
evidence. Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1341 (Fed. Cir. 2016). Substantial evidence
is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Universal
Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951).
“Where two different conclusions may be warranted based
on the evidence of record, the Board’s decision to favor one
conclusion over the other is the type of decision that must
be sustained by this court as supported by substantial
evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960,
970 (Fed. Cir. 2007). Though our review of an anticipation
finding is deferential, we have not hesitated to reverse
the Board when substantial evidence does not
support its findings. See Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., __ F.3d __, 2017 WL 977034 (Fed
Cir. Mar. 14, 2017); In re Skvorecz, 580 F.3d 1262, 1267–
68 (Fed. Cir. 2009).

As to the Rambert reference:

Prior art that
“must be distorted from its obvious design” does not
anticipate a new invention. Wells, 53 F.2d at 539; see also
Topliff, 145 U.S. at 161 (prior art that must be modified
“to accomplish the function performed by the patent in
question” does not anticipate).4 Neither the Examiner nor
the Board described how the protruding surface of Rambert’s
element 27b is capable of engaging the surface of
the glenoid cavity without removing element 27a, i.e.,
tearing the invention apart. Therefore, substantial evidence
does not support the Board’s anticipation finding
based on Rambert.

As to the Bouttens reference:

The Board’s determination of anticipation was erroneous
because the Board failed to describe how a user
could rotate Bouttens without modification while continuing
“to accomplish the function performed by” the ’631
application. Topliff, 145 U.S. at 161. We therefore reverse
the Board’s anticipation finding as not supported by
substantial evidence. We need not resolve Mr. Chudik’s
second argument about whether the Examiner correctly
construed “articulating surface.”

The outcome:

Substantial evidence does not support the Board’s determination
that Rambert or Bouttens anticipate claims
1, 15, 18, or 33–40 of the ’631 application. We reverse the
Board’s rejection of those claims.

The LEXIS citation for the case is 2017 U.S. App. LEXIS 5267 .

Headnote 1: Anticipation is a question of fact that the United States Court of Appeals for the Federal Circuit reviews for substantial evidence. Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. Where two different conclusions may be warranted based on the evidence of record, the Patent Trial and Appeal Boards decision to favor one conclusion over the other is the type of decision that must be sustained by the Federal Circuit as supported by substantial evidence. Although the court's review of an anticipation finding is deferential, the court has not hesitated to reverse the Board when substantial evidence does not support its findings. [with the CAFC referencing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., F.3d , 2017 U.S. App. LEXIS 4416, 2017 WL 977034 (Fed Cir. Mar. 14, 2017)]

Headnote 2: A patent claim is invalid for anticipation under 35 U.S.C.S. § 102 when a prior art reference describes each and every claim limitation and enables one of skill in the art to practice an embodiment of the claimed invention without undue experimentation. Simply put, an anticipated invention is not new. By contrast, a prior art reference that must be distorted from its obvious design does not anticipate a patent claim. In other words, a prior art reference anticipates a claim only if it discloses all the elements in the same form and order as in the claim.

The citation for the first part of headnote 2 is ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012).

Saturday, March 25, 2017

Two different PTAB IPR requests on US 8,399,514 (Tecfidera/multiple sclerosis) yield different reasoning by PTAB

Back in September 2016, IPBiz had a post PTAB declines to institute IPR against Biogen's US 8,399,514 related to the MS drug Tecfidera which, among other things, questioned the logic of PTAB in asserting that evidence of decline in MRI-measured lesions did NOT establish therapeutic effectiveness:

One notes that if a study showed a product containing a mixture of fumaric acid
esters reduced the number of gadolinium-enhancing (Gd+) lesions in
patients with RRMS , then therapeutic effectiveness
has been established. The Kappos people had already found --a therapeutically effective amount--.
Optimizing amounts when the effect is demonstrated is usually considered "obvious."
MRI measurements are standards used by the FDA to judge effectiveness for many
disease-modifying MS drugs. [note: the "gadolinum" refers to an MRI scan technique,
including paramagnetic gadolinium, which is sensitive to newly-formed lesions;
this is related to the NMR relaxation time T1, and is distinct from MRI measures
related to T2, which are not necessarily solely related to "newly-formed" lesions]

When the asserted prior art showed the drug to diminish Gd-T1 lesions, therapeutic effectiveness,
as accepted by the FDA, was established, and the PTAB reasoning was problematic.

Flash forward to a different IPR against US 8,399,514 brought by Kyle Bass and others.

From Paper 63 of IPR2015-01993:

Kappos 2006 teaches both the effectiveness of the 720 mg/day dose
and that DMF is a result-effective variable:
[DMF] significantly reduces brain lesion activity, in a
dose-dependent manner, as measured by MRI in patients with
RRMS over 24 weeks of treatment.
Ex. 1003A, p. 2 (emphasis added).

Because of the reported side-effects from the treatment of with fumarates,
(Joshi ‘999, Ex. 1030, 5:29-42; Press Release, Ex. 2057, p. 1),
those working in the art would have had sufficent reason to investigate doses between 720 mg/day and 360 mg/day
in hopes of identifying effective dose with fewer side-effects.
Those working in the art would also have had
a reasonable expectation of success in determining additional therapeutically effective doses.

Suddenly, the Kappos work is recognized to establish the therapeutic effectiveness of fumarates in treating
relapsing remitting multiple sclerosis [RRMS] BECAUSE OF the MRI results.

Biogen's [prevailing] argument to PTAB in 01993 was about "unexpected results," with therapeutic effectiveness
of the drug (at the higher does) a given fact:

Biogen argues, inter alia, that “[t]he magnitude of the clinical efficacy exhibited by administering the 480 mg/day dose was unexpected.” Biogen Res., Paper 38, pp. 43-49. (...) [Studies] establish “surprisingly—that a 480 mg/day dose of DMF proved to have similar efficacy” to the 720 mg/day taught by Kappos 2006 for almost every end point measured.

The "unexpected" aspect was established by the testimony of experts

Biogen’s evidence of unexpected results includes the testimony of Ronald A. Thisted, Ph.D (Thisted Test., Ex. 2038); Richard C. Brundage, Pharm. D., Ph.D (Brundage Test., Ex. 2042) and Richard A. Rudick, M.D. (Rudick Test., Ex. 2044).


It is known to those developing new drugs or treatments that there may be a plateau in the dose-response curve in which the increase in the dose does not significantly change the effect of the drug. ICH, p. 10. However, Drs. Thisted, Brundage and Rudick, testify to the effect that one having ordinary skill in the art would not have expected the 480 and 720 mg/day doses to be on such a plateau. All three experts testify that one skilled in the art would have expected the efficacy of 480 mg/day to be closer to that of 360 mg/day, a dose which did not have a statistically significant effect, than to 720 mg/day dose described in Kappos 2006.


Consistently with the other two experts, Dr. Rudick’s testifies that one skilled in the art would have expected the efficacy of 480 mg/day to be similar to that of 360 mg/days:

based on the Phase 2 results, a person of ordinary skill would have at most expected that the efficacy of a 480 mg/day dose would be more like that of the 360 mg/day dose (which was not effective) than that of the 720 mg/day dose (which was effective). This is because a 480 mg/day dose is closer to a 360
mg/day dose than a 720 mg/day dose.

Friday, March 24, 2017

Kyle Bass loses challenge to MS drug Tecfidera on US Patent 8,399,514 in IPR2015-01993

Kyle Bass lost his attack on Biogen's MS drug Tecfidera.

The issue was one of obviousness, and the case turned on "unexpected" results.
Curiously, while the Board relied on the testimony of Biogen's experts, the Board was
somewhat dismissive of the PHOSITA standard:

We recognize that the type of description provided by the parties as to the
characteristics of the person having ordinary skill in the art is fairly typical in inter
parte proceedings. However, in our experience, such descriptions are usually of
little practical help in deciding obviousness questions. The person having ordinary
skill in the art is a hypothetical person that is presumed to be aware of all the
relevant prior art. Custom Accessories, Inc. v. Jeffrey-Allan Indust., Inc., 807 F.2d
955, 962 (Fed. Cir. 1986); Kimberly-Clarke Corp. v. Johnson & Johnson, 745 F.2d
1437, 1453 (Fed. Cir. 1984). Generalities that the person of ordinary skill is, for
example, an M.D. with three years experience in some field or another, provides
little help in establishing what that person knows or doesn’t know. It is the
relevant references, along with any other evidence specifically identifying
knowledge possessed by those working in the art, which substantially informs the
level of ordinary skill. As long as the art relied upon is from the same or
analogous fields the hypothetical person is presumed to be aware of it. In re
Gorman, 933 F2d 982, 986 (Fed. Cir. 1991). Because there is no issue raised that
the cited art is not from the same or an analogous field as the claimed invention,
the person of ordinary skill is presumed to be aware of the content of the cited
references. We hold that the cited references are representative of the level of
ordinary skill in the art.

Although the Board's observation is interesting, it is perhaps not too relevant
to the legal issue here. The PHOSITA here knew that fumarate esters were therapeutically
effective ingredients for treating relapsing remitting multiple sclerosis from the prior art.
Optimizing concentrations of a result effective variable is generally considered to be a
matter of routine experimentation, and therefore the results of this optimization should
be considered obvious, even if this optimization is good, or even if "unexpected." The PHOSITA
would have been motivated to try lower concentrations, simply to reduce side effects.

Of interest to IPBiz was one of Biogen's experts, with a Stanford
and University of Chicago connection:

Dr. Thisted testifies that he is a Professor and Vice Provost, Academic
Affairs, at the University of Chicago and holds faculty appointments in the
departments of Statistics, Public Health Sciences, and Anesthesia & Critical Care.
He received bachelor’s degrees in mathematics and philosophy from Pomona
College, and a master’s degree and a doctorate of philosophy in statistics from
Stanford University. He has more than forty years of research, academic, and
practical experience in the area of biostatistics. His research focuses on
biostatistics and epidemiology, statistical computation, and the effectiveness of
medical intervention from a statistical perspective. He has been on the faculty of
the University of Chicago since 1976.

There was much discussion in the decision of the credentials of Biogen's experts, and the case
ultimately turned on their conclusion of "unexpected" results:

Petitioner’s Reply does not effectively address Biogen’s unexpected results
argument and evidence. Petitioner responds only with a single sentence: “As
demonstrated above, success was expected, not unexpected.” Pet. Reply,
Paper 46, p. 24. Biogen’s argument, however, is not merely that it would have
been unexpected that some lower doses would have been an effective therapeutic
treatment. Rather, Biogen’s position is that the magnitude of the clinical efficacy
at the specifically claimed dose of about 480 mg/day would have been unexpected.
Biogen Res., Paper 38, pp. 43-49. Petitioner has not directed us to evidence, or
provided a reason, for us to doubt the unrebutted testimony of Biogen’s highly
qualified and credible experts. Biogen’s expert testimony on this point stands


However, as noted above, the testimony of Biogen’s experts, Drs. Thisted,
Brundage and Rudick, persuade us that the magnitude of clinical efficacy of the
480 mg/day treatment would have been unexpected by those working in the art.

We conclude, therefore, that the treatment of MS patients with 480 mg/day of
DMF would not have been obvious. “Objective indicia of non-obviousness ‘may
often establish that an invention appearing to have been obvious in light of the
prior art was not.’” Institut Pasteur, 738 F.3d at 1346. While the proof of the
optimization of a result-effective variable is generally sufficient to establish the
obviousness of a particular value of that variable, obviousness is not established
when the results of optimization are shown to result in a property or benefit that a
person of ordinary skill in the relevant art would have found to be unexpected. See
Antonie, 559 F.2d at 620. See also Procter & Gamble Co. v. Teva Pharm. USA,
Inc., 566 F.3d 989, 994 (Fed. Cir. 2009). Because the evidence established
unexpected results, we hold that Petitioner has not met its burden to show that the
subject matter of Biogen’s claim 20 would have been obvious.

But a question arises. If the desire to optimize by routine experimentation is considered
to be obvious, does the obtaining of "unexpected" results negate the obvious aspect
of seeking to optimize? If you obtain better results than in the prior art by seeking
routine optimization, does this negate the obviousness of seeking those results?

In re Williams, 36 F.2d 436, 438 (CCPA 1929)
(“It is a settled principle of law that a mere carrying forward
of an original patented conception involving only change of form,
proportions, or degree, or the substitution of equivalents doing the same thing
as the original invention, by substantially the same means, is not such an invention
as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”).

The legal question was not whether the results were unexpected by the PHOSITA, but rather whether
the PHOSITA would have engaged the routine experimentation of seeking to optimize, and thereby
uncovered the "unexpected" result?

TVIIM case at CAFC illustrates hazards of not contesting claim constructions

The CAFC affirmed ND Cal and TVIIM lost:

TVIIM, LLC (“TVIIM”) sued McAfee, Inc. (“McAfee”)
in the United States District Court for the Northern
District of California for infringement of U.S. Patent No.
6,889,168 (“’168 patent”). A jury determined that McAfee
did not infringe the ’168 patent and that the ’168 patent
was invalid. After the jury verdict, TVIIM filed motions
for judgment as a matter of law (“JMOL”) and for a new
trial. The district court denied both motions, and TVIIM
filed this appeal challenging the jury verdict and the
district court’s denial of its post-verdict motions. We
affirm because substantial evidence supports the jury’s
findings of non-infringement and invalidity under a
uniform construction of the relevant claim terms, and the
district court did not abuse its discretion in denying a new

The reference to the jury verdict was puzzling in that
anticipation/obviousness were not distinguished and the
jury should not be determining inequitable conduct:

The jury’s general verdict of invalidity did not distinguish between
obviousness and anticipation. The inequitable conduct
issue is not subject to this appeal.

Claim construction arguments had not been preserved.
Of non-infringement:

We next address whether substantial evidence supports
the jury’s verdict of non-infringement based on
using the same construction it used for its invalidity
verdict. See Harper, 533 F.3d at 1021. We conclude that
the jury verdict is supported by substantial evidence.

Of the issue of conflicting experts:

Given the
conflicting expert testimony, we find that a reasonable
mind might accept Dr. Rubin’s testimony over
Dr. Garuba’s. Thus, substantial evidence supports the
jury’s verdict of non-infringement. See Versata Software,
Inc. v. SAP Am., Inc., 717 F.3d 1255, 1263 (Fed. Cir. 2013)
(affirming jury award as supported by substantial evidence
despite competing expert testimony).

Of [possible] harmless error:

Thus, by TVIIM’s own admission, the jury’s invalidity
determination could be proper under “any single ordinary
meaning construction.” Opening Br. 73. This concession
is determinative, because even if we were to find an
inconsistent verdict, substantial evidence under “any”
construction supports the jury’s verdict of invalidity.
Consequently, any potential error by the jury regarding
non-infringement was harmless.
Cf. Senju Pharm. Co.
v. Lupin Ltd., 780 F.3d 1337, 1353 (Fed. Cir. 2015) (affirming
the district court’s invalidity finding and therefore
not reaching non-infringement arguments); MobileMedia
Ideas LLC v. Apple Inc., 780 F.3d 1159, 1173 (Fed. Cir.
2015) (holding that because the patent was invalid, the
court “need not reach Apple’s argument that its accused
iPhones do not infringe”).

Thursday, March 23, 2017

Max Planck loses its appeal for legal fees against the University of Utah

This part of the University of Utah v. Max-Planck saga over the Tuschl RNAi patents
involved a denial of an appeal by Planck to get attorneys fees:

Defendants-Appellants (“Max Planck”) appeal a decision
of the United States District Court for the District of
Massachusetts, which found that this case was not “exceptional”
within the meaning of 35 U.S.C. § 285 and thus
denied Max Planck’s motion for attorney fees. The district
court did not abuse its discretion. We therefore

Max Planck, represented by MORGAN CHU of Irell & Manella LLP, loses.

As to SCIENTIFIC PUBLICATION issues, the case is a cautionary
one for scientists publishing speculations:

In March 2000, well before the Tuschl II invention
was reduced to practice, Dr. Thomas Tuschl and his
colleagues published an article describing their various
discoveries in the field of RNAi. Less than a month later,
Dr. Brenda Bass, of the University of Utah (“UUtah”),
published a mini-review in Cell magazine that summarized
the state of RNAi research, focusing on Dr. Tuschl’s
article. In addition to summarizing current research, Dr.
Bass’ mini-review included several of her own hypotheses
about enzymatic processes that may be responsible for the
RNAi activity reported in Dr. Tuschl’s article.
One of
those hypotheses involved molecules that have a feature
called “3’ overhangs,” which are certain double-stranded
RNA (“dsRNA”) molecules with a nucleotide overhang on
the 3’ ends of dsRNA.


The district court reasoned that there was no evidence
to support a finding of collaboration between Dr. Bass and
the Tuschl II inventors. While Dr. Bass’ mini-review was
admittedly integral to the Tuschl inventors’ research, the
mini-review was already in the public domain by the time
the Tuschl inventors relied on it. Therefore, the district
court reasoned, the Tuschl II inventors’ reliance on the
mini-review could not, on its own, support a finding of
collaboration. J.A. 4068−69. The district court recognized
the evidence that Dr. Tuschl and Dr. Bass had one discussion
over dinner that may have influenced Dr. Tuschl’s
invention, but declined to find that such discussion at an
academic conference could constitute the collaboration
needed to establish joint inventorship. J.A. 4073−76.

Dr. Tuschl, not Dr. Bass, ran with the ball, and ultimately
prevailed on the inventorship issue. BUT, at what cost to Max Planck?
Winning cases costs money.

The fees in question were more than 8 million dollars, and recall that
this was simply an issue of naming inventors, not one of patent infringement.
The issues were

Max Planck sought eight million dollars in attorney
fees pursuant to 35 U.S.C. § 285, arguing that the case
was “exceptional” within the meaning of this section for
three reasons. First, Max Planck argued that, when
viewed in light of Dr. Bass’ deposition testimony, UUtah
lacked any meaningful basis for filing its correction of
inventorship suit. According to Max Planck, UUtah
either filed its complaint without properly interviewing
Dr. Bass, or filed its complaint knowing that Dr. Bass’
testimony would undermine the allegations. Second, Max
Planck argued that UUtah’s delay in withdrawing its sole
inventorship claim until the eve of summary judgment
indicates that UUtah knew its claim was meritless.
Third, Max Planck argued that UUtah’s claimed damages
were extortionately high.

Of legal significance for future cases, the CAFC rejected a contention
that Octane Fitness provides a "framework" for analysis
of these fee cases:

The district court provided a thorough explanation for
why it did not find this case to be exceptional. Max
Planck’s argument that the district court abused its
discretion in failing to follow the Octane Fitness framework
presumes that there is a precise Octane Fitness
framework. That is not correct. Octane Fitness provides
several suggestions that might guide a district court’s
discretionary decision. For example, Octane Fitness
suggests that objective unreasonableness may support the
finding of an exceptional case. Id. While the district
court agreed that UUtah’s case was weak and based on
insufficient evidentiary support, it provided a detailed
explanation as to why it disagreed that UUtah’s case was
objectively unreasonable.

Rather than providing any set formula to dictate the
district court’s consideration of this issue, Octane Fitness
defines an exceptional case as one that “stands out from
others with respect to the substantive strength of a party’s
litigating position.” Id. at 1756 The district court
explained why UUtah’s position did not stand out from
other patent cases, and Octane Fitness does not require
anything more.

Patent attorneys should note the text:

The district court also agreed that Utah’s
damages request was high, but declined to find anything
exceptional about its position. Ultimately, the district
court concluded that this case was not exceptional because:
“Although Utah may have been asking for pie in
the sky, that does not differentiate this case from most
patent cases.” J.A. 5−6.

In terms of the current discussion of whether or not
judges need to write complete opinions, the last paragraph
of the CAFC opinion states:

Max Planck presents evidence from the record suggesting
that the district court failed to take certain facts
into account and overstated the factual and legal strength
of UUtah’s position. UUtah presents evidence from the
record suggesting the contrary and defending its litigation
strategy. We should be wary to wade in such circumstantial
waters. The trial judge was in the best position to
understand and weigh these issues. She had no obligation
to write an opinion that reveals her assessment of
every consideration.
This court will not second guess her
determination. We affirm.

Monday, March 20, 2017

"Alternative facts" arising from mis-identified photos?

There was a brief flap over a posting by Major League Baseball [MLB] on 18 March 2017:

However, there was a brief moment of shock and in some instances anger after MLB Network mistakenly aired a graphic featuring Puerto Rico star Javier Baez with the Dominican Republic flag behind him.

Of lesser note was a story about CC Sabathia by FoxSports which highlighted a picture, not of CC:

Sunday, March 19, 2017

CBS Sunday Morning on 19 March 2017

The initial story was an homage to Chuck Berry done by Anthony Mason. Included within was an old videoclip of Charles Osgood interviewing Berry. The cover story was on who is the happiest country done by Faith Salie. The happiest country was deemed to be Denmark, termed a "social democracy." The key terms were hygge and "law of Jante." Salie noted that Denmark also has the highest cancer rate in the world. The almanac feature was March 19, 1982, the day Argentinian forces occupied South Georgia. The clip also featured the days April 2, April 25 (South Georgia retaken), the sinking of the Belgrano (which as a previous US ship had survived Pearl Harbor) and of the Sheffield. Almanac presented an old clip on the story done by Martha Teichner. The clip ended with sound and fury signifying the status quo. There was a piece on Marie Kondo with her trademark "spark joy."

Serena Alschul did a piece on Betsey Johnson, who made clothes which were viewed as a little costume. Lee Cowan on a museum on the (past) lights of Las Vegas. Mo Rocca on Mario Andretti, with clips of Nazareth, PA. Martha Teichner on the food of Ireland. Jim Gaffigan on winter sports.

The headlines for March 19 included FBI director Comey, Paris Orly Airport, mudslides in Peru, and Villanova losing in college basketball.

Moment of Nature was Organ Pipe National Monument.

Update. Sadly, "Sunday Morning's" report on Denmark quickly became "stale news."

Denmark ousted as world’s happiest nation

Norwegians nip past Danes as Nordics lead the pack

Also: http://www.bbc.com/news/world-39325206

Saturday, March 18, 2017

Sony's US Patent Application 20170063431: Configuration of Data and Power Transfer in Near Field Communications

Paragraph 5 of the application states:

In one aspect of this disclosure, there is provided a method for configuring wireless power and data transfer between consumer electronic (CE) devices. The method comprises identifying a plurality of antenna systems including at least a first antenna system and a second antenna system, wherein at least the first antenna system is cooperated with a first CE device and the second antenna system is cooperated with a separate second CE device, wherein each of the plurality of antenna systems comprises a power transfer antenna and one or more communications antennas, wherein the power transfer antennas is configured to enable wireless electrical power transfer between the power transfer antenna and at least one other power transfer antenna of another one of the plurality of antenna systems, and wherein each of the one or more communications antennas is configured to enable wirelessly transmitting and receiving communications with at least one further communications antenna. The method further comprises providing a graphical user interface, wherein the graphical user interface is configured to illustrate each of the identified antenna systems and communicational relationships between each of the identified antenna systems, and wherein the graphical user interface is further configured to enable a user to interact with the graphical user interface. The method comprises receiving, through the graphical user interface, user instructions corresponding to at least two of the identified antenna systems, wherein the user instructions include wireless coupling configurations dictating how at least one of the identified antenna systems is to wirelessly transfer power to at least one other of the identified antenna systems or how at least one of the identified antenna systems is to wirelessly transfer data to at least one other of the identified antenna systems. The method comprises generating configuration instructions in accordance with the wireless coupling configurations and causing communication of the configuration instructions to selected CE devices to direct each of the identified antenna systems to be configured in accordance with the configuration instructions.

The first claim of the published application:

A method for configuring wireless power and data transfer between consumer electronic (CE) devices, the method comprising: identifying a plurality of antenna systems including at least a first antenna system and a second antenna system, wherein at least the first antenna system is cooperated with a first CE device and the second antenna system is cooperated with a separate second CE device, wherein each of the plurality of antenna systems comprises a power transfer antenna and one or more communications antennas, wherein the power transfer antennas is configured to enable wireless electrical power transfer between the power transfer antenna and at least one other power transfer antenna of another one of the plurality of antenna systems; and wherein each of the one or more communications antennas is configured to enable wirelessly transmitting and receiving communications with at least one further communications antenna; providing a graphical user interface, wherein the graphical user interface is configured to illustrate each of the identified antenna systems and communicational relationships between each of the identified antenna systems, wherein the graphical user interface is further configured to enable a user to interact with the graphical user interface; receiving, through the graphical user interface, user instructions corresponding to at least two of the identified antenna systems, wherein the user instructions include wireless coupling configurations dictating how at least one of the identified antenna systems is to wirelessly transfer power to at least one other of the identified antenna systems or how at least one of the identified antenna systems is to wirelessly transfer data to at least one other of the identified antenna systems; generating configuration instructions in accordance with the wireless coupling configurations; and causing communication of the configuration instructions to selected CE devices to direct each of the identified antenna systems to be configured in accordance with the configuration instructions.

Trump's "Irish proverb": who actually authored it and who copied it?

Of the "Irish proverb" recited by President Trump, CNN made some news suggesting the proverb was actually a poem written by a Nigerian:

"My sister just brought the news to me. I didn't want to believe what she said initially,"
Albasheer Adam Alhassan, a Nigerian banker who wrote the poem in college, said.
"I posted those things when I was back in school, over 10 years ago. I never thought it would get to this level."

link to CNN post: http://www.cnn.com/2017/03/17/politics/trumps-irish-proverb-nigerian-poem/index.html

But a post from the Guardian suggests the text goes back to a time earlier than 10 years ago:

Many on Twitter were thrilled to find the poem seemed to have been written by Nigerian poet Albashir Adam Alhassan. The poem appears under his name on PoemHunter, a website which collects famous poems as well as those submitted by users. Alhassan’s was submitted on 22 January 2013.


But this poem is all over the place. And we’re not just talking random websites festooned with shamrocks and more Irish stereotypes than an Ed Sheeran track. It appears in many motivational and quote collection books.

It’s on page 388 of Crystal Inspirations by Joanne Tuttle, published in 2012. It appears on page 325 of the Speaker’s Quote Book by Roy B Zuck, published in 1997.


The earliest appearance, at least as far as Google Books is concerned, is in volume 31 of the International Stereotypers’ and Electrotypers’ Union Journal, published in 1936 in America.

The post at the Guardian St Patrick's Day: Trump's 'Irish proverb' provokes derision on the web

Thursday, March 16, 2017

CAFC addresses multiple issues in Mentor Graphics vs. Eve-USA

The Mentor v. Eve-USA decision by the CAFC encompassed many issues:

We hold there was substantial evidence to support the
jury’s infringement verdict regarding the ’376 patent and
affirm the district court’s denial of judgment as a matter
of law. We affirm the damages award. We affirm the
summary judgment that assignor estoppel bars Synopsys
from challenging the validity of the ’376 patent. We
reverse the summary judgment that Synopsys’ ’109 patent
is indefinite. We affirm the summary judgment that
Synopsys’ ’526 patent lacks patent-eligible subject matter.
We vacate the motion in limine precluding Mentor from
presenting evidence of willful infringement. We reverse
the summary judgment that Mentor’s ’882 patent lacks
written description support. Finally, we reverse the
summary judgment that Mentor’s infringement allegations
regarding the ’531 and ’176 patents are barred by
claim preclusion.

Of the one issue about the motion in limine:

The district court granted a motion in limine precluding
Mentor from presenting evidence of willful infringement
of the ’376 patent. J.A. 40,545–47. We reverse.

We review evidentiary rulings under Ninth Circuit
law, which reviews for abuse of discretion. Advance
Cardiovascular Sys. v. Medtronic, Inc., 265 F.3d 1294,
1308 (Fed. Cir. 2001).


The [distict] court held that Mentor was precluded from presenting evidence
of willfulness because it relied exclusively on post-suit
willfulness conduct, and it had not first sought a preliminary
injunction. It stated, “I think Synopsys is right
about what we will call the Seagate rule, which is if you
don’t seek an injunction, you can’t seek willful infringement
for post-filing conduct.” J.A. 40,547; see In re
Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. 2007)
(“[W]hen an accused infringer’s post-filing conduct is
reckless, a patentee can move for a preliminary injunction,
which generally provides an adequate remedy for
combating post-filing willful infringement.” (citations
omitted)). On route to this conclusion, the district court
made two errors. First, it erred in determining that the
alleged conduct was post-suit conduct because it erred in
determining the filing date of the relevant suit. Second, it
erred in concluding that Synopsys could not present
evidence of post-filing willful infringement because Synopsys
did not seek a preliminary injunction.

We hold that the district court abused its discretion in
precluding Mentor from presenting evidence of willful

The text "presumption of validity" can be excluded from patent trial proceedings [!]

From the decision of Judge Bryson (sitting by designation in ED Texas in Uropep v. Lilly) as to excluding use of the term "presumption of validity" before a patent jury [note text: Lilly contends that the phrase “presumption of validity” is potentially confusing to the jury and should not be used at trial. UroPep disagrees. ]:

What is clear from the case law, however, is that prohibiting the use of that
phrase is not error. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258-59 (Fed. Cir. 2004).


Accordingly, the Court will exclude the use of the phrase “presumption of validity” and instead will address the burden of proof in its instructions to the jury.

Of the Chiron case, the Finnegan law firm wrote:

First, Chiron argued that the district court had erred by instructing the jury on Genentech’s burden of proof without adding a jury instruction on the presumption of validity of the ‘561 patent. The Federal Circuit disagreed, stating that the presumption of validity and heightened burden of proving invalidity are different expressions of the same thing.

The Chiron case was an appeal made (and lost) by Chiron of a denial of JMOL. A JMOL is a based upon a lack of factual evidence ["A trial court should grant a motion for JMOL if substantial evidence does not
support the jury’s factual findings, presumed or express, or if those factual findings
cannot support the legal conclusions implied from the jury’s verdict. " ]. The portion of Chiron relevant to UroPep was about a jury instruction, with the lack of error based upon redundancy. [ First, Chiron argues that the district court erred by instructing the jury on Genentech’s burden of proof without also adding an instruction on the presumption of the ’561 patent’s validity. (...) the presumption of validity and
heightened burden of proving invalidity “are static and in reality different expressions of
the same thing – a single hurdle to be cleared.” (...) “[T]he presumption is one of law, not fact, and does not constitute ‘evidence’ to be weighed against the challenger’s evidence.” ] The issue in Chiron was not about the exclusion of a term before the jury.

One notes that Judge Bryson used the term "error" rather than referring to "abuse of discretion."

In cases related to FRE 403, the usual standard of review is "abuse of discretion."

In the CA11 case Bhogaita v. Altamonte Heights Condominium Ass'n, Inc. (involving the presence of an emotional support dog at trial, and thus more related to Uropep than is the Chiron case), a trial court's discretion to include or exclude material rests within

the nature of the broad discretion granted to trial courts determining evidentiary matters. Gray ex rel. Alexander v. Bostic, 720 F.3d 887, 893 (11th Cir. 2013) (explaining that the abuse of discretion standard implies a range of choices). And this discretion is particularly broad with respect to Rule 403 determinations. Sprint/United Management Co. v. Mendelsohn, 552 U.S. 379, 384–85, 128 S. Ct. 1140, 1145 (2008). A district court abuses its discretion to admit relevant evidence when its decision rests on [1] a clearly erroneous fact-finding, “an [2] errant conclusion of law, or [3] an improper application of law to fact.” Fid. Interior Constr., Inc. [v. Se. Carpenters Reg’l Council of the United Bhd. of Carpenters & Joiners of Am.], 675 F.3d 1250, 1258 (11th Cir. 2012) (internal quotation marks omitted). Nothing suggests that the district court’s decision allowing the dog to remain present as a demonstrative exhibit rested on any of the three.

In Uropep, the excluded material was a statement of law. In Bhogaita, the included material was the presence of a dog.

From CA6, in Louzon v. Ford:

Generally appellate review of a trial judge's evidentiary decision accords the trial court considerable discretion under the abuse of discretion standard of review.

But also:

a motion in limine is designed to narrow the evidentiary issues for trial and to eliminate unnecessary trial interruptions.” Louzon, __ F.3d at __ (citing Luce v. United States, 469 U.S. 38, 40 n.2 (1984);

**As to standards of review, see Upon Further Review, the Ruling on the Field Stands: Standards of Appellate Review , which includes (relevant to Chiron):

The standard of review for jury instructions depends on the type of error being claimed. The Ninth Circuit has explained that it reviews de novo whether the instruction is wrong on the law, but reviews the formulation of the instructions in a civil case for an abuse of discretion. The First Circuit has labeled this as a split standard. “We review de novo questions as to whether jury instructions capture the essence of the applicable law, while reviewing for abuse of discretion questions as to whether the court’s choice of phraseology in crafting its jury instructions is unfairly prejudicial.”

Wednesday, March 08, 2017

Monica Crowley speaks on plagiarism charges

Monica Crowley to Sean Hannity in March 2017: “What happened to me was a despicable, straight-up, political hit job, OK?”

Accusations of plagiarism against high profile people tend to be politically motivated. The various SIU matters were politically motivated; the Biden/Kinnock business was politically motivated, etc.

There remains the issue of whether there was copying without attribution.

Not much has come out about the Crowley Ph.D. thesis. But recall from USA Today College:

USA TODAY College reached out to Columbia for comment on the Crowley case. In response, Robert Hornsby, associate vice president for media relations at Columbia, e-mailed this statement:

“We have no comment on Monica Crowley’s dissertation, which was submitted in 2000 and is publicly available. The University’s process for addressing concerns raised about University research preserves the confidentiality of any review, and even the fact of a review’s existence is confidential while it is underway. Columbia is committed to upholding the very highest standards of integrity and credibility in academic research.”

link: http://college.usatoday.com/2017/01/10/plagiarism-monica-crowley-trump-columbia/

**One recalls lyrics from "Master Jack":

It's all very interesting the way you disguise
But I'd like to see the world through my own eyes

**Among news stories about Crowley / Hannity, see


CAFC has interesting take on prejudgment interest in Comcast v. Sprint

Sprint lost a jury verdict of patent infringement and filed
for JMOL/new trial and lost the appeal thereof at the CAFC.

The district court
then denied Sprint’s motion for judgment as a matter of
law (JMOL), or in the alternative, for a new trial, and
added prejudgment interest to the damages award.
Sprint has appealed various rulings from the district
court. Because we see no error in these rulings, we affirm
the district court’s entry of judgment against Sprint.

Teva gets cited as to "claim construction":

The proper construction of a patent’s claims is an issue
of Federal Circuit law, and we apply the framework
set forth in Teva Pharmaceuticals USA, Inc. v. Sandoz,
Inc., __ U.S. __, __, 135 S. Ct. 831, 840–42 (2015). E.g.,
Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
Inc., 843 F.3d 1315, 1326 (Fed. Cir. 2016). Under that
framework, intrinsic evidence and the ultimate construction
of claim terms are reviewed de novo, and underlying
factual determinations concerning extrinsic evidence are
reviewed for clear error. See id. “Where an infringement
verdict relies on incorrect construction of the disputed
claim terms, this court may grant JMOL or order a new
trial to correct the error, depending on the degree of
difference between the incorrect construction and the
correct construction.” Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323, 1333 (Fed. Cir. 2008). “If no reasonable
jury could have found infringement under the proper
claim construction, this court may reverse a district
court’s denial of JMOL without remand.” Id. (

As to damages prior to issue of patent:

The district court rejected Sprint’s argument, observing
that “both sides’ experts opined that the reasonable
royalty should be a lump sum resulting from a single
hypothetical negotiation that took place in 2006” if Sprint
were found to infringe all three patents. Id. at 66 (citing
trial transcript). Based on that agreement, the district
court concluded that “[a] hypothetical negotiation in 2006
would include each of the asserted patents, even if they
issued later
, and the resulting negotiation would include
the fact that two of the patents issued later.” Id. (citing
ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872 (Fed.
Cir. 2010)). Moreover, because of the agreed-upon methodology
of using a lump sum award for infringement of all
of the patents, the district court noted the practical problem
of assessing prejudgment interest on a per patent
basis where the lump sum verdict did not apportion the
damages for each patent. See id.

The CAFC also rejected the argument of Sprint:

Sprint contends that the district court erroneously
charged Comcast prejudgment interest from 2006 forward
even though neither the ’008 Patent nor the ’046 Patent
had issued at that point. Appellant Br. at 57–64. Specifically,
because neither of those two patents had issued yet,
there could be no infringement as a matter of law for
them in 2006. In Sprint’s view, accordingly, the district
court’s award of prejudgment interest was an abuse of
discretion because the court should have calculated prejudgment
interest from the time of first infringement of
each of the three infringed patents until judgment. In
other words, Sprint contends the district court should
have apportioned the prejudgment interest calculations
based on the royalty periods covered by the individual
patents. See id. While in other contexts Sprint’s contentions
might be well taken, they are not here.

The parties’ experts agreed that any damage award
should take the form of a lump sum royalty payment.
And, the jury was told that the lump sum royalty payment
should run from the date of the earliest relevant
hypothetical negotiation.

The jury was also told that the hypothetical
negotiators would have employed the “book of wisdom,”
looking forward in time from the date of the first
hypothetical negotiation to account for “all information
that would have been relevant to the parties in coming to
and arriving at a deal.” Id. at 66; id. at 4594–95. Both
experts agreed that this information would have included
the issuance of any later patent relating to the same
technology. Id. at 4593–95; id. at 5002–03.

Prejudgment interest runs from the earliest date of
infringement for any patent issued at the time of the
hypothetical negotiation; here, the ’916 Patent indisputably
had been issued by 2006. We see no abuse of discretion
in the district court’s assessment of prejudgment
interest against Sprint based on the entire royalty award.
See Bio-Rad Labs., Inc. v. Nicolet Instrument Corp., 807
F.2d 964, 969 (Fed. Cir. 1986) (“[T]he purpose of prejudgment
interest . . . is ‘to ensure that the patent owner is
placed in as good a position as he would have been had
the infringer entered into a reasonable royalty agreement.’”
(quoting Gen. Motors Corp., 461 U.S. at 655)); cf.
Stickle v. Heublein, Inc., 716 F.2d 1550, 1561 n.8 (Fed.
Cir. 1983) (“Since the parties treated the mechanical and
process patents as a unitary licensing property, we need
not consider damages for infringement of each patent
individually. Under other circumstances it may well be
necessary to determine damages separately for each such
patent since a patent owner has every right to demand
royalties for each patent he holds.”).

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1992.Opinion.3-6-2017.1.PDF

Monday, March 06, 2017

The CAFC in Prism v. Sprint gives a detailed exposition on admissibility of settlements under FRE 403

As to evidentiary rulings:

We see no legal error or other abuse of discretion
in the district court’s allowing of Mr. Minor’s testimony.
See Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141–43
(1997) (evidentiary rulings reviewed for abuse of discretion);
Highmark Inc. v. Allcare Health Mgt. Sys., Inc., 134
S. Ct. 1744, 1748 n.2 (2014) (decision based on legal error
is abuse of discretion); Harris v. Chand, 506 F.3d 1135,
1139 (8th Cir. 2007) (evidentiary rulings reviewed for
abuse of discretion).

Of legal vs. factual issues:

Sprint argues that the district court neglected its duty
to resolve the parties’ dispute over the scope of “Internet
Protocol network” by allowing the jury to decide whether
Sprint’s backhaul networks are sufficiently controlled to
constitute an “Internet Protocol network.” See O2 Micro
Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1360 (Fed. Cir. 2008). We disagree. The court’s order
denying Sprint’s exclusion request did not fail to resolve
the claim-construction issue; it resolved the issue. The
order makes clear the court’s determination that Mr.
Minor correctly interpreted the scope of the claims, i.e.,
that “Internet Protocol network” could indeed encompass
networks that “in the aggregate” have “no controlling
organization.” J.A. 93.

Whether Sprint’s backhaul networks actually constitute
such an aggregate network, as Mr. Minor argued,
was a question of fact, which the court properly reserved
for the jury. Sprint does not appear to dispute that there
is sufficient evidence to support an affirmative answer to that question.
Indeed, there was evidence, including from
Sprint’s witnesses, that each of the AAVs used by Sprint
(substantial in number) controls its own facilities and
may contract with other AAVs to complete backhaul
transmission paths to reach places in which it lacks its
own facilities.

Footnote 4 discusses "sufficiency of the evidence":

Sprint argues that we may order judgment in its
favor, for lack of sufficient evidence of infringement, if we
reverse the admission of Mr. Minor’s testimony—even
though it says that it is not “raising a sufficiency of the
evidence challenge,” Sprint’s Reply & Resp. Br. 7 n.1, and
does not dispute Prism’s observation that its JMOL
motion raised only a “divided infringement” argument,
outside the scope of its appeal. Although Sprint relies for
its remedy contention on Eon Corp. IP Holdings LLC v.
Silver Spring Networks, Inc., 815 F.3d 1314, 1320 & n.3
(Fed. Cir. 2016), the appellant in that case properly
preserved a sufficiency-of-the-evidence argument in the
district court, id. at 1318. In any event, we need not rule
on Sprint’s remedy contention because we reject its premise,
holding that the admission of Mr. Minor’s testimony
was proper.

As to the admission of the AT&T settlement agreement:

As we have noted, we review the court’s admission of this evidence
for legal error or other abuse of discretion. We
conclude that no such abuse occurred.

The CAFC noted that the decision to exclude evidence is explicitly
committed to the discretion of the court. This would be different, for
example, from a court "deeming" some submission to be a motion, which is not
committed to the discretion of the court. Of the exclusion:

By declaring that the district
court “may” exclude what is by assumption relevant
evidence, the Rule commits the weighing to the district
court’s “broad discretion,” which the Supreme Court has
said is “generally not amenable to broad per se rules.”
Sprint/United Mgmt. Co. v. Mendelsohn, 552 U.S. 379,
384, 387 (2008); see also Old Chief v. United States, 519
U.S. 172, 183 n.7 (1997); United States v. Abel, 469 U.S.
45, 54 (1984); United States v. Wardlow, 830 F.3d 817,
822 (8th Cir. 2016); Young Dental Mfg. Co. v. Q3 Special
Prods., Inc., 112 F.3d 1137, 1145–46 (Fed. Cir. 1997).

Of the thought process for settling, the CAFC wrote

As to settlements generally, the Supreme Court has explained
the normal settlement calculus for litigants: “Most defendants
are unlikely to settle unless the cost of the
predicted judgment, discounted by its probability, plus the
transaction costs of further litigation, are greater than the
cost of the settlement package.” Evans v. Jeff D., 475 U.S.
717, 734 (1986); Staton v. Boeing Co., 327 F.3d 938, 964
(9th Cir. 2003) (quoting Evans, 475 U.S. at 734). That
formulation—enumerating “the cost of the predicted
judgment,” “its probability,” and “costs of further litigation”—
helps identify why and when a district court,
conducting the inquiry required by Rule 403, can find
earlier patent-suit settlements admissible in valuing a
patented technology.

The CAFC makes clear that a patent is a "right to exclude" and
is not a "right to make" (i.e., a monopoly) :

A patent gives nothing but the right to exclude,
which in our system generally means a
right to call on the courts. See, e.g., Crown Die & Tool Co.
v. Nye Tool & Mach. Works, 261 U.S. 24, 35 (1923);
Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 549 (1852).
We have frequently recognized that a (non-exclusive)
license to practice a patent is in substance nothing but a
covenant not to sue: what such a license is, at its core, is
an elimination of the potential for litigation. See
TransCore, LP v. Elec. Transactions Consultants Corp.,
563 F.3d 1271, 1275–76 (Fed. Cir. 2009). Although the
potential for litigation therefore must loom over patent
licenses generally, including those signed without any
suit ever being filed, Sprint has not contested the longaccepted
proposition that a “party may use the royalty
rate from sufficiently comparable licenses.” Summit 6,
LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir.
2015); see also Ericsson, 773 F.3d at 1227;

Getting back to the "evidence exclusion" issue under FRE 403,
the CAFC observed:

But, as a logical matter, the mere
filing of a complaint—shifting from potential to actual
litigation—does not automatically turn the prejudice side
of the Rule 403 balance into one that substantially outweighs
the probativeness side. The particulars of the case
that was settled and the settlement, as well as of the case
in which the settlement is offered as evidence, matter to
the Rule 403 balance.


The district court had an adequate basis for admitting
the AT&T Settlement Agreement. That Agreement
covered the patents at issue here, though not only the
patents at issue here. In that common situation, evidence
was needed that reasonably addressed what bearing the
amounts in that Agreement had on the value of the particular
patents at issue here. See, e.g., Wordtech Sys., 609
F.3d at 1320–21. Prism supplied such evidence, including
what the AT&T Settlement Agreement itself says about
attributing amounts to particular patents and, more
reliably, creditable expert evidence about how the other
Agreement-covered patents relate to AT&T’s business


The circumstances of the AT&T Settlement Agreement
affect the Rule 403 assessment in ways that support
the district court’s admission of the Agreement. The
Agreement was entered into, not just after all discovery
was complete, but after the entire trial was finished,
except for closing arguments and jury deliberations.
Thus, the record was fully developed and thoroughly
tested in the adversarial process, enhancing the reliability
of the basis on which Prism and AT&T were assessing the
likely outcome. The timing of the settlement also means
that a very large share of litigation costs had already been
sunk, reducing (though of course not eliminating) the role
of litigation-cost avoidance in the settlement decision.
Moreover, Sprint has not suggested that enhanced damages
were at issue by the time of the settlement; and the
proposed jury instructions and verdict forms suggest that
they were not. On the other hand, validity and infringement
were still open issues at the time of the settlement.
But Sprint cannot rely on that fact: possible non-liability
is a factor that tends to make settlements too low, not too

For those reasons, we see no abuse of discretion by the
district court in this case in rejecting Sprint’s Rule 403
argument that, while the many lower-amount Prism
settlements should be admitted into evidence, the AT&T
Settlement Agreement must be excluded.

Also of interest in the context of "what is not contained
in legal opinions"

Sprint argues that, in denying Sprint’s motion for a
new trial, the district court considered only whether the
weight of the evidence supported the jury’s verdict and
ignored Sprint’s allegations of legal error. We do not infer
failure to consider Sprint’s legal-error arguments from the
district court’s opinion, which we read as reflecting only a
choice about what to discuss, not a choice about what to
consider. See Hartman v. Nicholson, 483 F.3d 1311, 1315
(Fed. Cir. 2007) (“That the court did not specifically
mention the [argument] in its opinion forms no basis for
an assumption that it did not consider [it] . . . .’ The court
may have merely concluded, for various reasons, that
discussion of the issue was neither necessary nor appropriate.”
(alterations in original) (citations omitted)). In
any event, Sprint has not shown harmful error. See 28
U.S.C. § 2111. We have reviewed all the alleged errors
Sprint has presented on appeal, and we have been given
insufficient details about other allegations of error to
suggest harmfulness.

Of the citation to the Hartman case, one notes that, although
a CAFC case, Hartman is NOT a patent case but does contain further
interesting text on the writing of decisions, not included in
Prism v. Sprint.

Of the subject matter:

The appellant, Marcellus S. Hartman, served in the Army from 1969 to 1972, including a year in Vietnam.   In 1986 he wrote to the Department's regional office that because of his post-traumatic stress disorder (“PTSD”), his time for utilizing his veteran's educational benefits should be extended.

Of what is NOT required in opinions:

Hartman primarily contends that the Veterans Court failed to consider this argument because it did not explicitly address it.  “That the court did not specifically mention the [argument] in its opinion forms no basis for an assumption that it did not consider [it]․ That a court ‘do[es] not discuss certain propositions do[es] not make the decision inadequate or suggest the ․ court failed to understand them.’ ” Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 901 (Fed.Cir.1984) (quoting Schilling v. Schwitzer-Cummins Co., 142 F.2d 82, 84 (D.C.Cir.1944)).   The court may have merely concluded, for various reasons, that discussion of the issue was neither necessary nor appropriate.

 A “ ‘litigant's right to have all issues fully considered and ruled on by the appellate court does not equate to a right to a full written opinion on every issue raised.’ ” Bernklau v. Principi, 291 F.3d 795, 801 (Fed.Cir.2002) (quoting United States v. Garza, 165 F.3d 312, 314 (5th Cir.1999)).   Here, the Veterans Court stated that “Mr. Hartman has not demonstrated that the Board committed prejudicial error in its findings of fact, conclusions of law, compliance with procedural requirements, articulation of reasons or bases, or application of the equipoise standard that would warrant reversal or remand.”  Dingess, 19 Vet.App. at 501.  “While it may be desirable in some cases to afford each issue a complete written discussion, no statute or rule compels such an approach by the Court of Appeals for Veterans Claims (or indeed any other court).”  Bernklau, 291 F.3d at 801 (citation omitted).   Hartman's contention that the Veterans Court did not properly consider his argument fails.

One notes that the thinking in Prism v. Sprint and in Hartman v. Nicholson is in tension with the viewpoint of CAFC Judge Plager:

Judge Plager stated in In re Packard, 751 F.3d 1307, 1314 (CAFC 2014) :
“I write separately because I am of the view that a petitioner to this court seeking
reversal of a decision is entitled to an explanation of why the arguments on which
he relied for his appeal did not prevail."

The "Rule 36" practice of the CAFC

Additionally, as to Sprint's argument about the damage model of Prism:

Sprint’s argument that Prism’s damages model was
not sufficiently tied to the “footprint” of the invention
misapprehends the relevant legal principles.


Although a patentee “must carefully tie proof of damages to the
claimed invention’s footprint in the market place,” Uniloc,
632 F.3d at 1317 (quoting ResQNet.com, 594 F.3d at 869),
that requirement for valuing the patented technology can
be met if the patentee adequately shows that the defendant’s
infringement allowed it to avoid taking a different,
more costly course of action. A price for a hypothetical
license may appropriately be based on consideration of
the “costs and availability of non-infringing alternatives”
and the potential infringer’s “cost savings.” Aqua Shield,
774 F.3d at 771–72; see also Hanson, 718 F.2d at 1080–81
(“Reliance upon estimated cost savings from use of the
infringing product is a well-settled method of determining
a reasonable royalty.”); Powell v. Home Depot, U.S.A.,
Inc., 663 F.3d 1221, 1240–41 (Fed. Cir. 2011); Slimfold
Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1458–59
(Fed. Cir. 1991).

Here, Prism’s damages evidence complied with those
principles. Prism’s experts Mr. Minor and Mr. Malackowski
testified that, in the absence of a license, Sprint would
have attempted to design around the patented invention
by building its own private backhaul network.

link to case: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1456.Opinion.3-2-2017.1.PDF

Friday, March 03, 2017

CAFC vacates decision of ND Cal in Huawei case

From the beginning of the decision:

The present appeals arise from five cases in the
Northern District of California. Technology Properties
Limited LLC, Phoenix Digital Solutions LLC, and Patriot
Scientific Corp. (collectively “Technology Properties”)
asserted U.S. Patent No. 5,809,336 (the “’336 patent”)
against Huawei Technologies Co., Ltd., Futurewei Technologies,
Inc., Huawei Device Co., Ltd., Huawei Device
USA Inc., Huawei Technologies USA Inc., ZTE Corp., ZTE
USA, Inc., Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc., LG Electronics, Inc., LG Electronics
U.S.A., Inc., Nintendo Co., Ltd., and Nintendo of
America Inc. (collectively “Appellees”) in five separate
litigations. After claim construction, the parties stipulated
to non-infringement based on the district court’s construction
of “an entire oscillator disposed upon said
integrated circuit substrate.” Technology Properties
appealed, and our court consolidated the appeals. Because
the district court erred in a portion of its construction
of “entire oscillator,” we vacate and remand.

Prosecution disclaimer was at issue:

An applicant’s statements to the PTO characterizing
its invention may give rise to prosecution disclaimer.
Uship Intellectual Props., LLC v. United States, 714 F.3d
1311, 1315 (Fed. Cir. 2013). Prosecution disclaimer can
arise from both claim amendments and arguments made
to the PTO. Biogen Idec, Inc. v. GlaxoSmithKline LLC,
713 F.3d 1090, 1095 (Fed. Cir. 2013). The doctrine does
not apply unless the disclaimer is “both clear and unmistakable
to one of ordinary skill in the art.” Elbex Video,
Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371
(Fed. Cir. 2007) (quotations omitted). When determining
whether disclaimer applies, we consider the statements in
the context of the entire prosecution. MIT v. Shire
Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). If the
challenged statements are ambiguous or amenable to
multiple reasonable interpretations, prosecution disclaimer
is not established. Id

Technology Properties presented clear and concise arguments
about the distinctions between Magar and the
’336 patent in its briefing to our court. Had those same
arguments been made to the Patent Office, our construction
may have been different because the patentee likely
disclaimed more than was necessary to overcome the
examiner’s rejection. But the scope of surrender is not
limited to what is absolutely necessary to avoid a prior art
reference; patentees may surrender more than necessary.
See Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361–62
(Fed. Cir. 2005); Fantasy Sports Props., Inc. v.
Sportsline.com, Inc., 287 F.3d 1108, 1114–15 (Fed. Cir.
2002). When this happens, we hold patentees to the
actual arguments made, not the arguments that could
have been made. Norian, 432 F.3d at 1361–62. The
question is what a person of ordinary skill would understand
the patentee to have disclaimed during prosecution,
not what a person of ordinary skill would think the patentee
needed to disclaim during prosecution.


The district court erred by holding that the patentee
disclaimed any use of a command signal by the entire
oscillator. Instead, the patentee disclaimed a particular
use of a command signal—using a command signal to
change the clock frequency. The patentee argued during
prosecution that Sheets was distinguishable from the
’336 patent claims because Sheets requires “a command
input . . . to change the clock speed.” J.A. 2127.


We hold that “an entire oscillator disposed upon said
integrated circuit substrate” is “an oscillator located
entirely on the same semiconductor substrate as the
central processing unit that does not require a command
input to change the clock frequency and whose frequency
is not fixed by any external crystal.” Although this minor
modification to the district court’s construction likely does
not affect the outcome in this case, because the parties
stipulated to non-infringement under the district court’s
construction, the proper course of action is for us to vacate
and remand. We vacate the district court’s construction
and remand for further proceedings.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1306.Opinion.3-1-2017.1.PDF

Plagiarism, faked data in the biofuels area

RetractionWatch has an interesting piece on the retraction of a paper in the biofuels area:

the retraction notice for “Oleaginous yeast-based production of microbial oil from volatile fatty acids obtained by anaerobic digestion of red algae (Gelidium amansii),” published in the Korean Journal of Chemical Engineering in April 2016 and retracted in January:

The Editors of the Korean Journal of Chemical Engineering have retracted this paper on request of the senior named author, Professor Jong Moon Park. The paper was written and submitted to KJCE by the corresponding author, Tsolmonbaatar Batbileg, former student of Prof Park, without the knowledge or permission of Prof Park. The second named author, Dr Xu Xu, was also unaware of the writing or submission of the manuscript. The paper contained fabricated data and a substantial amount of material plagiarised from the following published articles: Production of biodiesel from carbon sources of macroalgae, Laminaria japonica Bioresource Technology 169 (2014) 455–461 Xu Xu, Ji Young Kim, Yu Ri Oh, Jong Moon Park Bioconversion of volatile fatty acids from macroalgae fermentation into microbial lipids by oleaginous yeast Chemical Engineering Journal 264 (2015) 735–743 Xu Xu, Ji Young Kim, Hyun Uk Cho, Hye Rim Park and Jong Moon Park Professor Park apologizes to the readers of KJCE for the unethical actions of Mr Batbileg.

One remembers some of the confusion in the Hwang Woo Suk matter, in which it was not clear that the senior author was aware of all the underlying facts of the papers published in the journal Science.

link to post in retractionwatch: http://retractionwatch.com/2017/03/01/faked-data-plagiarism-no-co-author-okays-yeah-papers-retracted/