Thursday, July 19, 2018

BASF loses on jurisdictional argument in NOx case

The issue in BASF was jurisdictional:

BASF now asks this court to vacate and remand the
two ’662 Patent IPR appeals on jurisdictional SAS
grounds.5 Specifically, BASF argues that “the Board’s
decisions with respect to at least the 662 patent are
improper, i.e., ultra vires, as they are not final decisions
as required by § 318(a)” and as such, “appellate review by
this Court of those decisions pursuant to § 319 is no
longer available.” Appellant’s Supp. Br. at 8. Therefore,
BASF asks this Court to “dismiss the [’662 IPR appeals]
as moot” and “direct the Board to vacate those decisions
on remand” on the sole ground that “reviewable, final
written decisions by the Board do not exist” in the two
’662 IPR proceedings. Appellant’s Supp. Br. at 9, 11.
Importantly, BASF does not seek the Board’s evaluation
of the non-instituted claims.


In short, BASF provides no substantive
reason to warrant remand.6 It argues only jurisdictional
For this important reason, BASF’s request is controlled
by PGS Geophysical AS v. Iancu, where this court
rejected the jurisdictional challenge and proceeded to
review the merits of the Board’s decision. This case—like
PGS Geophysical—is a straight challenge to this court’s
authority to hear the appeal. In PGS Geophysical, we
specifically held that “the combination of the noninstitution
decisions and the final written decisions on the
instituted claims and grounds ‘terminated the IPR proceeding[s]’”
such that those decisions were final and
reviewable for purposes of this court’s jurisdiction. 891
F.3d at 1361 (citing Arthrex, Inc. v. Smith & Nephew, Inc.,
880 F.3d 1345, 1348 (Fed. Cir. 2018)). The same reasoning
applies here.
This court further held in PGS Geophysical that a
partial institution error is not one we are required to “act
on in the absence of an appropriate request for relief on
that basis.” Id. at 1362 (emphasis added). Such a request
should include a substantive claim of harmful error,
which is absent here. Id. (“Moreover, the Supreme Court
in SAS characterized the error at issue here as an error
under 5 U.S.C. § 706, but errors under that provision are
generally subject to a traditional harmless-error analysis,
with challengers of the agency action having the burden
of showing prejudice”) (citing Shinseki v. Sanders, 556
U.S. 396, 406, 409 (2009) and Suntec Indus. Co. v. United
States, 857 F.3d 1363, 1368 (Fed. Cir. 2017)). BASF has
not argued prejudice at all; it does not request to have the
Board address the non-instituted claims. Thus, we see no
reason to vacate and remand on the ’662 Patent IPR

Of some text about NO reduction:

Zones discloses using a copper-based CHA zeolite for
the “reduction of oxides of nitrogen contained in a gas
stream in the presence of oxygen.” Zones, col. 1 ll. 55–56,
col. 8 ll. 16–17. Zones Inventor Dr. Stacey Zones stated
that this phrase “refers to and teaches a number of different
reactions, including . . . the selective catalytic reduction
of NO in the presence of an ammonia reducing agent
and oxygen.” Appx3033. Umicore expert Dr. Lercher
testified to the same. Appx3389 (36:16–37:25). BASF
agreed in its Patent Owner’s Preliminary Response that
“reduction of oxides of nitrogen” in Zones “encompasses a
number of reactions,” including ammonia SCR, and again
agreed in oral argument before the Board that the ammonia
SCR reaction is “encompassed within that phrase.”
Appx541, n.5; Appx202 (46:6–23).

Maeshima explains that zeolite catalysts can be used
with either hydrocarbons or ammonia as the reducing
agent. Maeshima, col. 1 ll. 15–21, col. 2 ll. 4–8. Maeshima
teaches that ammonia SCR is preferred because less
of the reducing agent can be used and “nitrogen oxides
can be removed at a high ratio.” Id. at col. 1 ll. 21–24.

Wednesday, July 18, 2018

US Patent 9,790,490 challenged by Benson Hill Biosystems

In another skirmish in the CRISPR wars, Benson Hill Biosystems has filed a petition for
post grant review of US 9,790,490.

CAFC in In re SWARTZ: cold fusion and collateral estoppel

Within the decision:

Similarly, in In re Swartz, 232 F.3d 862, 864 (Fed.
Cir. 2000) (“Swartz I”), this court held that the claims of
Swartz’s U.S. Patent Application No. 07/760,970 were
unpatentable for failure of utility and enablement. The
at-issue ’765 application is a continuation of the ’970
application, and the representative claims in the two are
nearly identical.

The core requirements for collateral estoppel are that:
the issue in question is identical to an issue previously
decided, the issue was actually litigated in the prior
proceeding, the resolution of the issue was necessary to
the prior judgment, and the party challenging the issue
must have been given a full and fair opportunity to litigate
the issue in the prior proceeding. Jet, Inc. v. Sewage
Aeration Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000).
Swartz argues that the district court wrongly applied
estoppel here because he submitted new references not
present in the previous appeals to show utility, and
because the applications here no longer include explicit
references to cold fusion.

Neither the new references nor the elimination of explicit
reference to cold fusion avoids the application of
collateral estoppel. Swartz has not shown that these
differences “materially alter the question of invalidity.”
See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
1342 (Fed. Cir. 2013). Substantially identical claims were
previously found to be invalid as lacking utility and not
enabled. That holding is binding on Swartz.


As discussed above, applications that suggest inherently
unbelievable inventions satisfy the Board’s initial burden
to show lack of utility, and we have previously held that
Dr. Swartz’s LENR-related inventions here properly fall
within that realm.

The decision was per curiam, Before PROST, Chief Judge, NEWMAN and LINN, Circuit

Walmart's US Patent 10,020,004, "Listening to the Frontend": "A need exists for ways to capture the sounds resulting from people in the shopping facility"

The background section of US 10,020,004 states

Many different types of sounds result from people in a shopping facility. For example, guests of the shopping facility may talk amongst each other or with employees of the shopping facility. Additionally, guests and employee movements and activities can generate additional sounds. A need exists for ways to capture the sounds resulting from people in the shopping facility and determine performance of employees based on those sounds.

The first claim states

A system in a shopping facility for determining a performance metric for an employee, the system comprising: one or more sound sensors distributed throughout at least a portion of the shopping facility and configured to receive at least sounds resulting from activity in the shopping facility; and a control circuit communicatively coupled to the one or more sound sensors, the control circuit being configured to: receive, from at least one of the one or more sound sensors, audio data, wherein the audio data includes sounds associated with items being scanned and sounds associated with bags; determine, based on the sounds associated with bags, a number of bags used; determine, based on the audio data associated with items being scanned, a number of items scanned; calculate, based on the number of bags used and the number of items scanned, a number of items per bag; receive an indication of an employee; correlate the audio data and the indication of the employee; and determine, based at least in part on the audio data and the indication of the employee, the performance metric for the employee, wherein the performance metric for the employee is based on the number of items per bag.

There is no expectation of privacy when shopping at WalMart.

The assignee is WALMART APOLLO, LLC (Bentonville, AR) .

PCT; App. No. PCT/US2017/028823; International Search Report and Written Opinion dated Jul. 13, 2017.

Lawsuits related to Facebook

Here are two related to pictures on Facebook:


Dennis v Napoli, 2015 N.Y. Misc. LEXIS 3020, 2015 NY Slip Op 31540(U) (N.Y. Sup. Ct. August 12, 2015) (Links to an external site.)Links to an external site.
The complaint alleges that since discovering the affair Marie has launched a campaign to ruin plaintiff's personal and professional life. Specifically, the complaint alleges that Marie has sent numerous letters, emails, texts and Facebook messages to plaintiffs family, friends, employers and future employers defaming plaintiff as well as posting vicious and insulting comments on plaintiff's Facebook (Links to an external site.)Links to an external For instance, the complaint alleges that within a month of plaintiff arriving at her new job in Houston, Marie sent several identical letters to the wives and family members of the partners at her current employer, wherein she, among other (Links to an external site.)Links to an external site.things, referred to plaintiff as a "sexual predator" and "sex addict,"
These pictures depict plaintiff with her classmates at the Trial Lawyers College and three of her professors. Several of these people are also tagged in the photos and, thus, Marie's comments can be seen by these classmates and professors and anyone they are "friends" with on Facebook. In her comments, Marie again refers to plaintiff as a "slut" and claims that plaintiff was fired from the Firm for being a "slut." As these communications are specifically (Links to an external site.)Links to an external site.directed at plaintiff's colleagues, it is clear that if they are continued they are capable of injuring plaintiff's standing and reputation in her professional life.
Separately, from
Chesney v. State, 165 So. 3d 498, 2015 Miss. App. LEXIS 277 (Miss. Ct. App. May 19, 2015) (Links to an external site.)Links to an external site.
On 08-23-11[,] Mrs. Stewart came to the [police department] to file a complaint on identity theft. Mrs. Stewart stated that someone had stole[n] a picture of her off her Facebook page and created another Facebook on her. This person has since defrauded, slander[ed], used her identity in such a way[,] which [**12] (Links to an external site.)Links to an external site. became harmful to the job . . . which Mrs. Stewart held. I sent Facebook a subpeona and received back information on a[n] Amanda Warren. I have since received information from John Paul Dove from Meridian[,] M[ississippi,] stating that it was in fact a Stan Chesney who was using the name of Sherri Stewart. Mr. Dove stated it started back in 2010 with different users and then Sherri Stewart's name with the same messages and pattern as before.

Tuesday, July 17, 2018

Pro se Appellant Burnett loses in a 12(b)(6)/101 case

The outcome was that pro se appellant Burnett lost:

Carl M. Burnett (“Burnett”) appeals an order of the
United States District Court for the District of Maryland
dismissing Burnett’s amended complaint for failure to
state a claim upon which relief can be granted. Burnett v.
Panasonic Corp., No. 17-cv-0236 (D. Md. Nov. 1, 2017)
(“District Court Decision”). Specifically, because the
district court held that claims 1 and 9 of U.S. Patent No.
7,107,286 (“the ’286 patent”) are invalid as directed to
ineligible subject matter under 35 U.S.C. § 101, it concluded
that dismissal pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure was appropriate. Burnett
argues that the asserted claims are patent-eligible,
that the district court erred procedurally when it failed to
construe five allegedly disputed claim terms, and that the
district court violated Burnett’s due process rights when it
failed to hold Rule 12(b)(6) and claim construction hearings.
We affirm.

As to 12(b)(6), the CAFC noted:

The Fourth Circuit reviews de novo a dismissal under
Rule 12(b)(6). Monroe v. City of Charlottesville, Va., 579
F.3d 380, 385 (4th Cir. 2009). “We have held that patent
eligibility can be determined at the Rule 12(b)(6) stage,”
but “only when there are no factual allegations that,
taken as true, prevent resolving the eligibility question as
a matter of law.”
Aatrix Software, Inc. v. Green Shades
Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
Here, the district court appropriately assessed eligibility
at the pleading stage because the asserted claims are
patent-ineligible even when accepting as true all factual
allegations pled in Burnett’s amended complaint

Of abstract idea:

Like the concept of using a formula to convert binarycoded
decimals into pure binary numerals, which the
Supreme Court found to be an abstract idea in Gottschalk,
409 U.S. at 72, the concept of using a formula to convert
geospatial coordinates into natural numbers, if found
eligible, “would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm
itself.” Claims 1 and 9 are both directed to a
similarly abstract idea.

Of Alice:

The remainder of Burnett’s arguments related to his
proposed claim constructions stand for the proposition
that “the claims recite significantly more than the purported
idea of a ‘mathematical methodology.’” Appellant
Br. at 46. But that a claim allegedly contains more than
an abstract idea does not mean the claim survives step
one, because, under that inquiry, it is enough that the
claims are directed to a mathematical methodology at all;
rather, Burnett’s argument is more appropriately assessed
under our inquiry in step two. Alice, 134 S. Ct. at
2355 (assessing under step two whether additional features
in a claim transform an otherwise a patentineligible
concept into a patent-eligible concept).


As the district noted, these additional features effectively
do no “more than simply state the [abstract idea]
while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
The preambles of both claims, as construed by Burnett,
instruct a user to implement the mathematical methodology
or instruct using a “geospatial media recorder” to do
the same. Such “wholly generic computer implementation
is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract
idea] itself.’” Alice, 134 S. Ct. at 2358 (quoting Mayo, U.S.
at 77); accord Gottschalk, 409 U.S at 70–72.

CAFC finds D. Del. erred in claim construction in Blackbird v. ELB; Judge Reyna dissents

The outcome was that the D. Delaware decision of Judge Andrews of noninfringement was vacated:

Blackbird Tech LLC (“Blackbird”) appeals the U.S.
District Court for the District of Delaware’s entry of
judgment of noninfringement of claim 12 of U.S. Patent
No. 7,086,747 (“’747 patent”) based on its construction of
“attachment surface.” Because the court erred in construing
“attachment surface,” we vacate and remand.

This was an appeal by the patentee Blackbird, owner of the ’747 patent, which is directed to
energy efficient lighting apparatuses.

This case went to the CAFC so that a claim construction issue could
be resolved:

The parties disputed the meaning of “attachment surface,”
specifically whether the attachment surface must be
secured to the ballast cover. Blackbird proposed construing
“attachment surface” as “layer of the housing to which
the illumination surface is secured,” and Defendants
proposed “layer of the housing that is secured to the
ballast cover and to which the illumination surface is
secured.” J.A. 7. The district court construed “attachment
surface” as “layer of the housing that is secured to
the ballast cover.” J.A. 7–9.

Following claim construction, Blackbird stipulated to
, and the district court entered judgment
in favor of Defendants. Blackbird timely appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).

By a vote of 2-1, the CAFC found D. Delaware erred:

We conclude that the district court erred in construing
“attachment surface” to be secured to the ballast cover.
By its plain language, claim 12 does not require the
attachment surface to be secured to the ballast cover.

Judge Reyna dissented:

Claim 12 does not expressly require that the attachment
surface be attached to anything other than to the
illumination surface. However, claim 12 does expressly
describe a lighting apparatus “for retrofit with an existing
light fixture having a ballast cover.” ’747 patent col. 11 ll.
26–27 (emphases added). The majority fails to give
meaning to these claim terms by holding that “attachment
surface” means “layer of the housing to which the
illumination surface is secured,” and concludes that the
patent owner is entitled to patent scope that is neither
described in nor supported by the specification.
The plain language of claim 12, read in the context of
the specification, implicitly requires that the attachment
surface be secured to the ballast cover to achieve the
retrofit function. Apart from the preamble, which the
parties agree is limiting, claim 12 contains no reference to
the ballast cover, the existing light fixture, or where or
how the apparatus is retrofit with the existing light
fixture. Because the only feature of the existing light
fixture described in claim 12 is the ballast cover, a person
of ordinary skill would necessarily conclude that the
attachment surface is secured to the ballast cover of the
existing light fixture. This would not be a big leap.


Taken collectively, these disclosures in the claims
and the specification—and the lack of any reference in the
intrinsic record showing the attachment surface being
secured to anything other than the ballast cover—teach a
skilled artisan that the attachment surface described in
claim 12 is secured to the ballast cover of the existing
light fixture. See MBO Labs., Inc. v. Becton, Dickinson &
Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007) (“The words of
patent claims have the meaning and scope with which
they are used in the specification and the prosecution

Judge Reyna also noted:

The majority’s construction thus opens the door for
the ’747 patent to be subsequently invalidated for failure
to satisfy the written description requirement. Stated
differently, the majority’s construction is a route towards
rendering the patent invalid. See Carman Indus., Inc. v.
Wahl, 724 F.2d 932, 937 (Fed. Cir. 1983) (“Claims should
be so construed, if possible, as to sustain their validity. If
such a construction would result in invalidity of the
claims, the appropriate legal conclusion is one of noninfringement,
not invalidity.”). The majority likewise
invites an enablement challenge; under the majority’s
approach, the retrofit aspect of the invention is merely an
afterthought, one for which a skilled artisan must figure
out for themselves the means by which the retrofit function
of the invention shall be achieved, without any guidance
from the patent. See Maj. Op. at 9. This result is
absurd, given that when the patent is read as a whole,
such guidance is clearly provided.
Worse still, because the majority’s construction “does
not recite how the lighting apparatus is installed into an
existing light fixture,” id., the majority effectively reads
the retrofit function out of claim 12 and claim 29, the
retrofitting method claim. Claim 29, while not at issue in
this case, is instructive. See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Because claim
terms are normally used consistently throughout the
patent, the usage of a term in one claim can often illuminate
the meaning of the same term in other claims.”).
Claim 29 contains the same “attachment surface” limitation
at issue in claim 12:

Sunday, July 15, 2018

Steve Hartman does "CBS Sunday Morning" on 15 July 2018

Steve Hartman both hosted the 15 July 2018 "Sunday Morning" and had a story therein about Robert Moore of Ponca City, OK.

The choice for Almanac was unusual, recalling the murder on 15 July 1997 of Giovanni Maria "Gianni" Versace. Implicitly, there are intellectual property themes here, both as to the mark Versace and as to inventions. Of the latter, from wikipedia

Among Versace's most famous innovations was his 1982 invention of a type of super-light chainmail called 'Oroton', which became a signature material in his outfits. His suits were inspired more by his experience in female tailoring, departing from masculine Savile Row models by crafting suits which accentuated the male form and "insisted on men as sex objects.

Sunday Morning also noted the deaths of Tab Hunter and Nancy Sinatra, Senior.

The Milepost recalled the death of Emmett Till in 1955, and noted the case had been re-opened.

Sunday Morning recycled an October 2017 story on Peter Bellerby and globe making.

Of Jennifer Garner, CBS noted she attended Denison University in Granville, Ohio, where she changed her major from chemistry to theater, CBS did not note that, while growing up, she attended a local United Methodist Church every Sunday and went to Vacation Bible School. (see wikipedia)

The moment of nature feature was elephants in Tanzania.

The cover story was on iGen, and discussed the impact of the prevalence of smart phones on middle schoolers, including 8th graders.

There was an upbeat report on soccer (Axelrod) which did not mention the low tv ratings. From the LA Times:

The 48 group stage telecasts on Fox and FS1 averaged 2.069 million viewers, according to Nielsen Media Research. That is down 42% from the 3.54 million average on ESPN, ESPN2 and ABC four years ago and down 15% from the 2.429 million average on ESPN, ESPN2 and ABC eight years ago.

Sunday Morning included a plug for an interview of President Trump by Jeff Glor, to appear later in the morning on "Face the Nation." [EU as a "foe".]

Saturday, July 14, 2018

"The Happenings," then and now

Of the concept of a "happening," the website observes:

In October 1959, artist and Rutgers professor Allan Kaprow presented 18 Happenings in 6 Parts at the Reuben Gallery in New York’s East Village. Although he had experimented with the form earlier, this marked the first use of the term “Happening.”
The Happenings burned bright and fast, tapering off in 1963 when Kaprow moved on. Grooms and Oldenburg had already left to pursue other projects. News of the novel art form had started to travel—there were “thrill clubs” that came from Long Island to experience the Happenings and, for Oldenburg, the “audience became less and less interesting to me. I couldn’t really reach them.” The term “Happening” became such an accepted part of 1960s vernacular that it was used as a title for a song by girl group The Supremes.


The song referenced by, "The Happening," was the theme song for the 1967 movie "The Happening," which starred, among others, Faye Dunaway, Anthony Quinn, and George Maharis. Oscar Homolka, frequently cast as a heavy (by Hitchcock in Sabotage, Reward to Finder), also appeared. did not mention the musical group The Happenings, comprised of graduates from a high school in Paterson, New Jersey, most notably Bob Miranda. The Happenings were big around 1966-1967. Of relevance to intellectual property, their big hits were cover songs, of previously recorded songs. From wikipedia:

The band's original concept and much of its commercial success came as a cover band playing classic songs in a unique style. Said Miranda, the group's concept was to "take a song that's already proven it could be a hit and put our spin on it."


The group's major hits were "See You In September" (1966), which was originally recorded by The Tempos in 1959, and a cover version of the George Gershwin/Ira Gershwin song, "I Got Rhythm" (1967), updated for the group's sunshine pop musical style. "See You In September" and "I Got Rhythm" were on the Billboard Hot 100 Singles charts for 14 weeks in 1966 and 13 weeks in 1967, respectively, forming musical bookends for the 1966-1967 school year, based on their Hot 100 #3 peak dates.

As an update, Bob Miranda & The Happenings appeared at Duke Island Park in Bridgewater, New Jersey on July 8, 2018.

Friday, July 13, 2018

CAFC affirms PTAB in Jazz Pharmaceuticals

The outcome:

Jazz Pharmaceuticals, Inc. (“Jazz”) appeals from six
inter partes review (“IPR”) decisions of the United States
Patent and Trademark Office Patent Trial and Appeal
Board (the “Board”).1 Collectively, the decisions held
certain claims of Jazz’s U.S. Patents 7,668,730 (“’730
patent”), 7,765,106, 7,765,107, 7,895,059, 8,589,182,
8,457,988 (“’988 patent”), and 8,731,963 (“’963 patent”)
(together, the “patents in suit”) invalid as obvious. Because
the Board did not err in its conclusions of obviousness,
we affirm.

TSM arises at the end of the opinion

We also agree with Amneal that Jazz misinterprets
both the Supreme Court’s decision in KSR and this court’s
obviousness precedent. KSR did not impose a rigid requirement
to identify both a problem to be solved in the
art and a finite universe of potential options. Rather, the
Supreme Court rejected the teaching, suggestion, or
motivation test, because the Court considered that the
test was a “[r]igid, preventative rule[] that den[ies] factfinders
recourse to common sense.” KSR, 550 U.S. at 421.

Furthermore, the Supreme Court also rejected the “assumption
that a person of ordinary skill attempting to
solve a problem will be led only to those elements of prior
art designed to solve the same problem.” Id. at 420. We
have similarly recognized that persons of ordinary skill
have diverse motivations, including “[t]he normal desire
. . . to improve upon what is already generally known.” In
re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017); see
also Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280,
1291 (Fed. Cir. 2012) (“New compounds may be created
from theoretical considerations rather than from attempts
to improve on prior art compounds.”).
KSR did state that “[w]hen there is a design need or
market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options
within his or her technical grasp.” KSR, 550 U.S. at
421. But it did not set forth such factors as part of a
mandatory formula. To treat them as such would be
inconsistent with KSR’s holding and our own case law.
Thus, the Board did not err in concluding that implementing
the ACA materials’ centralized database system on
multiple computers “would have been a predictable use of
a known distributed data system according to its established
function.” ’730/’988 Decision, 2016 WL 7985458, at
*25 (citing KSR, 550 U.S. at 417). As Jazz has presented
no other arguments challenging the Board’s finding of a
motivation to modify, we affirm its holdings with respect
to claims 2 and 10 of the ’988 patent and claims 24, 26,
and 27 of the ’963 patent

CUSTOPHARM INC. loses its appeal against Endo

The CAFC affirmed the "not invalid" determination of Judge Robinson of D. Delaware:

After a four-day bench trial on invalidity, the
district court concluded that Custopharm had not proven
that the claims were invalid under 35 U.S.C. § 103.
Custopharm appealed. For the reasons below, we find no
reversible errors in the district court’s conclusion and
accordingly, we affirm

Of review standards:

“Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). We review the district court’s conclusions of
law de novo. Eli Lilly & Co. v. Teva Parenteral Meds.,
Inc., 845 F.3d 1357, 1372 (Fed. Cir. 2017). And we review
the district court’s factual findings for clear error. Par
Pharm., 773 F.3d at 1194.

There was an issue of "which guidelines":

First, Custopharm’s overdose argument is predicated
on the assumption that a skilled artisan would have
applied the AACE Guidelines to the exclusion of other
guidelines that existed at the time, including the FDA
Guidelines. Under the FDA Guidelines, the range of
normal testosterone is 300 to 1000 ng/dl or 10 to
35 nmol/l. The record evidence sufficiently demonstrates
that the most prevalently applied guidelines in clinical
practice were the FDA Guidelines, not the AACE Guidelines.
The studies underlying the Articles all employed
the FDA Guidelines.

Of motivation

Second, Custopharm argues that the obviousness of
an invention does not require using the “best” motivation8;
only a “suitable” motivation is required. Par
Pharm., 773 F.3d at 1197–98. But this is a misunderstanding
of Custopharm’s burden. While the FDA Guidelines
do not teach away from using the AACE Guidelines,
the district court found that Custopharm had not shown,
by clear and convincing evidence, that a skilled artisan
would have recognized that patients injected with
1000 mg TU were being overdosed. To meet its burden,
Custopharm needed to do more than merely show that the
prior art does not preclude lowering the dose of TU.
Custopharm needed to affirmatively demonstrate that a
skilled artisan would have been motivated to lower the
dose of TU despite no clear evidence of overdosing under
the FDA Guidelines. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007) (“[T]he burden falls on
the challenger of the patent to show by clear and convincing
evidence that a skilled artisan would have been
motivated to combine the teachings of the prior art references
to achieve the claimed invention . . . .”).

Of inherency:

To establish that a prior art reference inherently—
rather than expressly—discloses a claim limitation, “the
limitation at issue necessarily must be present, or [is] the
natural result of the combination of elements explicitly
disclosed by the prior art.” Par Pharm., 773 F.3d at 1196.
Here, Custopharm argues that the vehicle formulation
was “necessarily present” in the Articles because it was
later revealed to be the actual formulation the authors of
the Articles used in their reported clinical studies. We
An inherent characteristic of a formulation can be
part of the prior art in an obviousness analysis even if the
inherent characteristic was unrecognized or unappreciated
by a skilled artisan. See In re Kao, 639 F.3d 1057,
1070 (Fed. Cir. 2011). But, inherency “may not be established
by probabilities or possibilities.” Par Pharm., 773
F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)). “The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. (citing In re Rijckaert, 9 F.3d 1531, 1533–34 (Fed. Cir.
1993); Oelrich, 666 F.2d at 581 (“[M]ere recitation of a
newly discovered function or property, inherently possessed
by things in the prior art, does not distinguish a
claim drawn to those things from the prior art.”); In re
Shetty, 566 F.2d 81, 86 (CCPA 1977) (“[T]he inherency of
an advantage and its obviousness are entirely different
questions. . . . Obviousness cannot be predicated on what
is unknown.” (quoting In re Spormann, 363 F.2d 444, 448
(CCPA 1966))).

Footnote 9 delves into waiver:

Custopharm, however, did not respond to Endo’s contention
that Custopharm waived this argument by failing to
raise it before the district court. We agree with Endo. In
its reply brief, Custopharm argued that Helsinn
Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., is a
pertinent intervening case, but did not explain how it is
an intervening change in law to the inherency doctrine,
especially given that it is an on-sale bar case. 855 F.3d
1356 (Fed. Cir. 2017).

Wednesday, July 11, 2018

Czech politician Mala resigns over accusations of plagiarism

Tatana Mala, who briefly served as justice minister in the Czech Republic, resigned over possible
plagiarism issues in two theses (of widely divergent subject matter).

One: Microclimatic conditions of rabbit breeding at the Mendel University (allegation of copying 11 pages of text from a thesis of another student, who wrote about a similar topic two years before she did; recall the Martin Luther King issue at Boston University.)

The other: before Faculty of Law at the Pan-European University in Bratislava. The Prague Daily Monitor noted:

The university declared on Friday that her thesis was pass the system for uncovering plagiarism and was classified as original. According to available information, the Slovak university's system did not work with Czech sources, however.


See also:

**As to King's thesis at Boston University:

Worse, in the view of most academic standards, was King's appropriation of works by other writers about Tillich, including a 1952 doctoral dissertation by another Boston University student. In the general bibliography of his thesis, King referred to the other student's dissertation but did not cite particular passages.

--the 1952 thesis was that of Jack Stewart Boozer


See also:

Of Boozer:

CAFC finds Board applied wrong legal standard in Apple v. ContentGuard

Apple Inc. and Google LLC appeal from the Patent
Trial and Appeal Board’s decision to grant ContentGuard
Holdings, Inc.’s motion to amend in a covered business
method review of U.S. Patent 7,774,280. Because the
Board applied the wrong legal standard to determine
whether the ’280 patent qualified as a covered business
method, we vacate and remand for further proceedings.

As we explained in Unwired Planet, the mere possibility
that a patent can be used in financial transactions is
not enough to make it a CBM patent. 841 F.3d at 1382.
Although the ’280 patent describes embodiments where
the claimed DRM system is used to monetize digital
works, it also explains how the claimed invention can be
used in ways that do not involve financial transactions.
For instance, the specification describes how the claimed
invention can manage healthcare records.


Instead, we hold only that it is not enough for the specification to describe
how the invention could, in some instances, be used to
facilitate financial transactions.
Petitioners and the Patent and Trademark Office, as
intervenors, argue that the Board also determined the
claims are “financial in nature” in its final written decision.
Accordingly, petitioners and the Patent and Trademark
Office maintain that we can sustain the Board’s
determination on that alternative ground. However,
references to the “incidental to” or “complementary to”
standard appear throughout the Board’s final written
decision. See, e.g., J.A. 7–8, 11, 12. On the record before
us, we are unable to discern whether the Board would
have concluded that the ’280 patent qualifies as a CBM
patent had it not applied this standard. On remand, the
Board must determine whether the ’280 patent qualifies
as a CBM patent in the first instance without relying on
the “incidental to” or “complementary to” standard.

Thus, the conclusory "alternative ground" argument was rejected
because the decision seemed to rest on the non-alternative ground.

The CAFC second guesses CD Cal on relative strength of invalidity theories; remand asks for a more complete explanation

In Polara Engineering v. Campbell, invalidity theories
of defendant Campbell were rejected, but enhanced damage
analysis by CD Cal was rejected.

Campbell Company (“Campbell”) appeals from the final
judgment of the United States District Court for the
Central District of California entering judgment in favor
of Polara Engineering Inc. (“Polara”) on its claim for
infringement of claims 1–4 (“the asserted claims”) of U.S.
Patent 7,145,476 (“the ’476 patent”) and its decision,
following a jury trial, denying Campbell’s post-trial motions
for judgment as a matter of law of invalidity and no
willfulness, and granting Polara’s motion to enhance the
damages award. See Polara Eng’g, Inc. v. Campbell Co.,
237 F. Supp. 3d 956 (C.D. Cal. 2017) (“Post-trial Motions
Opinion”); Judgment, Polara Eng’g, Inc. v. Campbell Co.,
No. SACV-13-00007 (C.D. Cal. Mar. 31, 2017), ECF No.
499 (J.A. 83–84). For the following reasons, we affirm in
part, vacate in part, and remand.1

An argument of invalidity through public use by Campbell
was rejected:

We agree with Polara that substantial evidence supports
the jury’s finding of experimental use that negates
application of the public use bar.
The jury could have properly based its finding of
experimental use on the need for testing to ensure the
durability and safety of the claimed APS. In City of
Elizabeth v. American Nicholson Pavement Co., the Supreme
Court held that testing an inventive pavement for
“usefulness and durability” for six years on a public
roadway constituted experimental use. 97 U.S. 126, 133–
34 (1877). We have similarly recognized as sufficient to
negate the statutory bar experimental use testing performed
“to perfect features inherent to the claimed invention,”
such as “durability.” Electromotive Div. of Gen.
Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417
F.3d 1203, 1211–12 (Fed. Cir. 2005) (collecting cases);
accord Manville Sales Corp. v. Paramount Sys., Inc., 917
F.2d 544, 551 (Fed. Cir. 1990) (“When durability in an
outdoor environment is inherent to the purpose of an
invention, then further testing to determine the invention’s
ability to serve that purpose will not subject the
invention to a section 102(b) bar.”).
The factual situation here bears a striking similarity
to the situation in City of Elizabeth.

The relative strength of the public use defense was a factor used
by the CAFC to vacate enhanced damages:

The district court referred to Campbell’s invalidity
theories generally in the closeness of the case Read factor.
In determining that this factor was “neutral,” the district
court merely observed that “obviousness was a close call”
and that the “other invalidity theories were weaker.”
Post-trial Motions Opinion, 237 F. Supp. 3d at 993. This
explanation is insufficient for us to determine why the
court viewed this factor as “neutral.” The court’s use of
the relative term “weaker” provides little insight because
it did not explain its reasons for viewing the other defenses,
especially public use, as comparatively “weaker.” We
view the public use defense, which the court did not
explicitly address, as a closer call than obviousness.
Thus, to the extent the district court determined that the
public use defense was weak in this case, the court clearly

Accordingly, we vacate the award of enhanced damages
and remand. See, e.g., Whitserve, LLC v. Comput.
Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) (remanding
“for a determination of whether enhanced damages
are warranted and an explanation of the grounds for that
determination”); S.C. Johnson & Son, Inc. v. CarterWallace,
Inc., 781 F.2d 198, 202 (Fed. Cir. 1986) (“vacat[ing]
the decision refusing [enhanced] damages under
35 U.S.C. § 284, and remand[ing] for clarification by the
district court”). On remand, we instruct the district court
to provide a more complete explanation, including a
discussion of the public use defense, in exercising its
discretion. We express no view on whether damages
should be enhanced or, if so, by what amount

Note also footnote 1:

Although Polara noticed a cross-appeal from certain
determinations of the district court, it has not pursued
those issues in its briefing before this court.
Accordingly, Polara has not properly raised any issue on
cross-appeal, and we need not address the cross-appeal.

Tuesday, July 10, 2018

Intersil wins at the CAFC on damages issue

This case initially did involve patent infringement, but a large
part of this CAFC opinion relates to trade secrets:

TAOS then
sued Intersil in federal district court for infringement of
U.S. Patent No. 6,596,981, as well as for trade secret
misappropriation, breach of contract, and tortious interference
with prospective business relations under Texas
state law. After a trial held in early 2015, a jury returned
a verdict for TAOS and awarded damages on all four
claims. The court ruled on the parties’ post-trial motions
and entered final judgment, and both parties appealed

Although the CAFC found one ground of liability for trade secret misappropriation,
the damages award was vacated because
there was no evidence of "how much" the award should be on this one ground:

The monetary award for trade secret misappropriation
must be vacated because we have determined that
misappropriation liability here can properly rest on only
one of the three grounds that TAOS presented to the jury.
TAOS’s calculation of monetary relief did not distinguish
among those grounds. TAOS’s expert testified that the
“trade secrets [were] the – the drivers of sales.”
J.A. 21137–38. But he did not explain which of the trade
secrets contributed to what amount of profit to be disgorged;
he assigned all profits to the misappropriation of
all trade secrets. On this record, we have no basis to
conclude that the remaining ground for liability—the
photodiode structure trade secret—supports the entire
award. This is one reason for vacating the award.

There is a second, independent reason. As to the loss
of trade secret status, the unrebutted evidence at trial
showed that TAOS’s 1:1 interleaved photodiode array was
accessible to Intersil by proper means long before the time
of many of the sales included in TAOS’s request for mone-
tary relief. Such accessibility existed no later than January
2006, when Intersil successfully reverse-engineered
the TSL2560, and perhaps as early as February 2005,
when TAOS “released” the TSL2560.8 We need not pinpoint
the date to know that it predated many of the sales
included in the calculation of monetary relief put before
the jury by TAOS’s expert.

Accessibility by proper means rendered the photodiode
array structure no longer a protected secret. See E.I.
duPont deNemours & Co. v. Christopher, 431 F.2d 1012,
1015 (5th Cir. 1970) (“[T]he Texas rule is clear” that
“[o]ne may use his competitor’s secret process if he discovers
the process by reverse engineering applied to the
finished product.”). Secrecy protection terminated at the
end of the period of time it would have taken Intersil,
after Intersil’s permissible discovery of the photodiode
structure, to recreate that structure in its own products.
See Research Equip. Co. v. C. H. Galloway & Sci. Cages,
Inc., 485 S.W.2d 953, 956 (Tex. Civ. App. 1972) (explaining
that “the trial court was called upon to determine that
period of time which would have been required for one
having no background in the cage manufacturing business
to launch such an enterprise”); see also Injunction Order,
2016 WL 1615741, at *3 (in denying TAOS’s motion for an
injunction based on the misappropriation, the trial court
acknowledged that “[w]hatever potential ‘head start’
[Intersil] may have gained from its misappropriation of
[TAOS]’s trade secrets occurred years ago and has no
bearing on any future harm”).

For those reasons, we vacate the jury’s monetary
award for misappropriation of trade secrets. On remand,
any determination of sales-based monetary relief for trade
secret misappropriation requires evidence and a determination
of the time at which the trade secret became
properly accessible to Intersil and the duration of any
head-start period.

Of 7th Amendment/equity issues:

TAOS does not dispute Intersil’s premise that Intersil
had a right to a non-jury decision on disgorgement unless
TAOS had a Seventh Amendment right to a jury decision
on disgorgement. We therefore proceed on that premise.
The parties debate whether TAOS has a Seventh
Amendment right to a jury decision on its request for
disgorgement of Intersil’s profits. We conclude that TAOS
does not have such a right, and we therefore vacate the
disgorgement award on this ground as well. Intersil is
entitled to a decision on disgorgement by the trial court,
with findings of fact and conclusions of law duly entered
in accordance with Rule 52.

Sunday, July 08, 2018

Difficulties with Parthasarathy's "U.S. patent system out of step"

An article titled U.S. patent system out of step with today’s citizens appears in Finance & Commerce, but pointing to an earlier post at The Conversation , which in turn states of the article -- This is an updated version of an article originally published on July 31, 2015. --, thus, about three years old.

The Finance-Commerce post includes the text:

It is worth observing that while the U.S. system was initially conceived as a democratic improvement upon the European systems of the time, today’s pan-European patent system is far ahead of its U.S. counterpart in terms of both its public engagement and its attention to the implications that citizens care about.

If the U.S. patent system wants to maintain public trust, it has to realize that the 21st-century citizen is quite different from her 18th-century forebears. Today’s citizen cares about the ethical and socioeconomic implications of patents and the technologies they cover and is not content to assume that the system’s benefits eventually trickle down. And she seeks to have an active role in decision-making.

Taking this citizen seriously will require serious patent system reforms. Possible reforms include increasing opportunities for the public to participate in patent decision-making, allowing more legal and bureaucratic challenges on behalf of the public interest, and incorporating more emphasis on ethical and socioeconomic implications into our patent and innovation policies.

There is a lot which can be questioned about the analysis by Shobita Parthasarathy, a professor at the University of Michigan.

**As to opportunities for the "public" to challenge, and to participate, recall the patent wars over stem cells, which took place more than ten years before Parthasarathy's 2018 article. The journal Science had reported:

WARF's patents were first challenged in October 2006 by two citizens' groups, who claimed that the approach for getting primate ES cells was "obvious" and could have been successfully applied by anyone with the necessary resources. Last April, the U.S. Patent and Trademark Office (PTO) accorded the patents a preliminary rejection and agreed to reexamine them.


The consumer group was beaten so badly that it changed its name. See the 2008 post on IPBiz FTCR changes its name after stem cell defeat The group, renamed as Consumer Watchdog, did make later legal history, in defeat, as to a standing issue. Consumer Watchdog / PubPat seek Supreme Court review of standing issue in stem call case concerning WARF's US 7,029,913

Disregarding the unfavorable outcome for the consumer group, the point, apparently not recognized by Parthasarathy, is that the "public" has been participating in the patent process for a long time. [And, of course, sometimes the "public" involvement can involve a hedge fund guy; see for example Kyle Bass IPR petition against Lialda granted for review of U.S. Patent No. 6,773,720

**in a comment to The Conversation post, Parthasarathy wrote:

Especially in recent decades, there has been a slowdown in health care innovation (e.g., as defined by new drug compounds available to substantially improve health) while patent rates have increased. There's also an argument that patents actually hurt innovation in some cases, especially in the US, because they are too broad in scope and make it difficult for other innovators to "invent around" them (this is a particular concern in the area of biomedicine).

Parthasarathy apparently is unfamiliar with drug development in the area of multiple sclerosis. The first drug to modulate the effect of the disease appeared in 1993. Now there are over 15 drugs. Sufferers of MS now face an incredibly more favorable expectation of lifestyle than in 1993.

In this, one has to appreciate that the bigger cost in bringing a drug to market is testing, rather than simply identifying a drug candidate. The patent system, which can protect rights in the drug and/or method of use, allows a drug innovator to re-coup the significant expense of drug testing.

**Maybe it is Parthasarathy who is out of step?

Wednesday, July 04, 2018

Fairchild's appeal against Power Integrations. Infringement affirmed; damages vacated

The outcome: infringement affirmed, damages under the "entire market value rule" vacated:

We affirm the district court’s judgments of infringement.
We conclude that the entire market value rule
cannot be used here to calculate damages. We vacate the
damages award and remand for further proceedings.

Fairchild tried to attack the jury verdict on infringement:

Fairchild argues that the jury verdict is not supported
by substantial evidence because none of the Fairchild
products has a “fixed switching frequency” according to
the language of the claims or a “non-varying frequency”
under the district court’s claim construction, because even
during “fixed” frequency mode, the products operate with
5% to 15% variance in frequency. This variance is due to
operating conditions, such as temperature and input
voltage. The question is whether this variability renders
the products non-infringing.

The CAFC determined that "fixed frequency" did not mean
absolutely fixed at one value:

Fairchild’s argument is unpersuasive. The district
court’s construction of “fixed switching frequency” as
“non-varying” does not exclude the possibility of natural
variation because doing so would impermissibly render
the claims inoperable. See Ecolabs, Inc. v. FMC Corp., 569
F.3d 1335, 1345 (Fed. Cir. 2009) (finding that where claim
language permits an operable construction, the inoperable
construction is wrong).5 Here, the parties offered expert
testimony to address the knowledge of persons of ordinary
skill in the art. The expert testimony demonstrated that
no real-world power supply controllers could operate with
an absolutely fixed, or non-varying, frequency. Indeed,
Fairchild seems to concede that there is always some
variation in frequency due to operating conditions. Moreover,
technical marketing documents from products sold
by Fairchild, Power Integrations, and third parties label
these controllers as “fixed frequency” products despite the
undisputed, minor variations in frequency. Since the term
“fixed” is not unambiguously defined in the claims, the
fact that power supply controllers cannot operate without
any variation supports that the plain and ordinary meaning
of “fixed” encompasses minor environmental variations.

Thus, the jury could have properly concluded that the
terms “fixed frequency” and “non-varying” left open the
possibility for minor frequency variations due to operating
conditions. A reasonable jury could have found that the
accused products have a “fixed” or “non-varying” frequency
despite slight variance due to operating conditions.

Of issue waiver:

Power Integrations argues that because Fairchild did
not seek additional claim construction at the district court
and chose to litigate this issue as a factual dispute about
infringement, Fairchild has waived its “per second” claim
construction argument. Fairchild responds that it did not
waive its claim construction argument because the claim
construction it proposes now is the same as the claim
construction it proposed during the Markman hearing,
which did not contain the “per second” limitation.
We have held that a party does not waive a claim construction
argument by failing to object during trial when
the construction proposed on appeal is the same as the
construction proposed in a Markman hearing. O2 Micro
Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1359 (Fed. Cir. 2008); see also D’Agostino v. Mastercard
Int’l Inc., 844 F.3d 945, 950 (Fed. Cir. 2016); In re Pabst
Licensing Dig. Camera Patent Litig., 778 F.3d 1255, 1266
(Fed. Cir. 2015). “When the claim construction is resolved
pre-trial, and the patentee presented the same position in
the Markman proceeding as is now pressed, a further
objection to the district court’s pre-trial ruling may indeed
have been not only futile, but unnecessary.” Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371,
1381 (Fed. Cir. 2004). However, this rule only applies
when “issues were fully litigated and decided at the
Markman stage of the litigation.” O2 Micro, 521 F.3d at

The problem for Fairchild is that the issue of the appropriate
time interval over which to measure frequency
was not fully litigated—or even raised as an issue in
dispute—at the Markman stage of this proceeding. During
the Markman proceedings, there was no dispute about
the time interval. Neither Fairchild nor Power Integrations
proposed a construction with the “per second” limitation.
The district court added this limitation to the
construction on its own without providing a clear explanation.
Because the district court had not specifically addressed
this issue in its claim construction order, in order
to preserve an objection to the district court’s claim construction,
Fairchild was required to raise the issue before
submission to the jury. Yet even when this dispute arose
at trial, Fairchild did not ask the district court to modify
or clarify its claim construction with regard to “per second,”
nor did it object to the jury instructions. Instead,
Fairchild waited until this appeal to argue that the district
court’s claim construction was erroneous.
It is well-settled that a party cannot reserve a new
claim-construction argument for the post-trial motion
stage of litigation. Lazare Kaplan Int’l, Inc. v. Photoscribe
Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010);
Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 694
(Fed. Cir. 2008); Hewlett-Packard Co. v. Mustek Sys., Inc.,
340 F.3d 1314, 1320 (Fed. Cir. 2003).


By failing either to request
that the district court modify or clarify its claim construction
earlier in the litigation proceedings or to object to the
jury instructions, Fairchild has waived this new claimconstruction

Because Fairchild has waived its “per second” claim construction
objection, we only review whether substantial
evidence supported the jury verdict under the court’s
construction. See Lazare, 628 F.3d at 1376; HewlettPackard,
340 F.3d at 1320.

**As to the '908 patent:

Prosecution-history estoppel limits the application of
the doctrine of equivalents. If a patentee surrenders
certain subject matter during prosecution, the patentee is
then barred from using the doctrine of equivalents to
recover for infringement based on that same subject
matter. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 535 U.S. 722, 733–34 (2002). Prosecution-history
estoppel can occur either when the patentee makes a
narrowing amendment to the claim or surrenders claim
scope through argument to the patent examiner. Conoco,
Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1363
(Fed. Cir. 2006). Here there was no claim amendment, so
Fairchild relies on argument-based estoppel. To invoke
argument-based estoppel, the prosecution history must
evince a “clear and unmistakable surrender of the subject
matter.” Id. at 1364. The application of prosecutionhistory
estoppel is a question of law that we review de
novo. Intendis GMBH v. Glenmark Pharm. Inc., USA, 822
F.3d 1355, 1365 (Fed. Cir. 2016)

Of damages:

In its JMOL motion, Fairchild argued that the evidence
presented by Power Integrations was insufficient as
a matter of law to invoke the entire market value rule,
pointing to our decision in LaserDynamics. The district
court noted that three prior cases relied on evidence that
“LaserDynamics . . . arguably would find inadequate to
support EMVR,” and that the evidence presented by
Power Integrations was comparable to the evidence in the
prior cases. J.A. 26; see Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1361 (Fed. Cir. 2001); Tec Air, Inc. v. Denso Mfg.
Mich. Inc., 192 F.3d 1353, 1362 (Fed. Cir. 1999); Fonar
Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1552–53 (Fed. Cir.

Despite the district court’s suggestion to the contrary,
there is no conflict between LaserDynamics and these
earlier cases, and subsequent cases have relied on LaserDynamics.
See VirnetX, 767 F.3d at 1326–27; Commonwealth
Sci. & Indus. Research Org. v. Cisco Sys., Inc.,
809 F.3d 1295, 1301–02 (Fed. Cir. 2015); Versata Software,
Inc. v. SAP Am., Inc., 717 F.3d 1255, 1268 (Fed. Cir.
2013). L


As LaserDynamics, Versata, and VirnetX held, the entire
market value rule is appropriate only when the
patented feature is the sole driver of customer demand or
substantially creates the value of the component parts.
LaserDynamics, 694 F.3d at 67; Versata, 717 F.3d at
1268; VirnetX, 767 F.3d at 1326. The burden of proof in
this respect is on the patent holder. LaserDynamics, 694
F.3d at 67. The question is whether the accused product,
compared to other products in the same field, has features
that would cause consumers to purchase the products
beyond the patented feature, i.e., valuable features.
Where the accused infringer presents evidence that its
accused product has other valuable features beyond the
patented feature, the patent holder must establish that
these features are not relevant to consumer choice. A
patentee may do this by showing that the patented feature
“alone motivates customers to purchase [the infringing
product]” in the first place. See id. at 69. But when the
product contains multiple valuable features, it is not
enough to merely show that the patented feature is
viewed as essential, that a product would not be commer-
cially viable without the patented feature, or that consumers
would not purchase the product without the
patented feature. Id. at 68. When the product contains
other valuable features, the patentee must prove that
those other features did not influence purchasing decisions.
Here, the power supply controllers had other valuable
features, such as jittering. The district court noted that
“there is evidence in the record that other features are
important and are highlighted by the respective parties”
and that “there is no question that . . . there are other
valuable features.”6 J.A. 1764. In fact, Power Integrations
sought infringement damages from Fairchild on the
jittering feature in these same products in a separate
lawsuit based on different patents, and we affirmed the
judgment of infringement. See Power Integrations, Inc. v.
Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed.
Cir. 2016). Moreover, many of Fairchild’s technical marketing
documents specifically mention the jittering feature
and other features in addition to the ’079 patented
feature. There is no proof that these features, including
jittering, did not affect consumer demand. Without such
proof, Power Integrations did not meet its burden to show
that the patented feature was the sole driver of consumer
demand, i.e., that it alone motivated consumers to buy the
accused products.7


Because the evidence presented by Power Integrations
was insufficient as a matter of law to invoke the
entire market value rule, we vacate the award of damages
and remand for a new trial. In light of this disposition, we
need not address Fairchild’s other arguments about the
sufficiency of the reasonable-royalty evidence.

Tuesday, July 03, 2018

26(b)(1) proportionalty factor ruling: parties' relative access to relevant information and the parties' relative resources outweighs small amount in issue


The proportionality factors espoused by Fed. R. Civ. P. 26(b)(1) are the following: "the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit." Fed. R. Civ. P. 26(b)(1). As to the first factor, the importance of the issues at stake, the discovery requested by Plaintiffs goes to the core of their claims. The gravamen of Plaintiffs' allegations is that, during the course of their respective employments with Defendants, they worked overtime hours and did not receive overtime pay. Certainly documents reflecting the hours worked and the amounts paid are important to the issues. The third and fourth factors, the parties' relative access to relevant information and the parties' resources, also both weigh in favor of Plaintiffs' position. As the employer, Defendants would have the highest level of access to information [*12] regarding payroll, as those types of records would generally be kept in the usual course of business. Plaintiffs, on the other hand, may or may not retain pay stubs, and the Court is not aware of any obligation for them to retain these records. The last factor, whether the burden or expense of the proposed discovery outweighs its likely benefits, also weighs in favor of Plaintiffs for the same reason as the first factor. That is to say, the discovery sought by Plaintiffs goes to the core of their claims against Defendants such that its likely benefits are high, and Defendants have made no substantive showing regarding the burden or expense, other than to assert it is burdensome.

The only factor that potentially favors Defendants is their claim that the amount at issue does not exceed $15,000. However, considering the Court's finding that the remainder of the factors favor Plaintiffs' position, and nowhere in Plaintiffs' Complaint is their claim limited to $15,000, this factor does not tip the scales in favor of Defendants. In fact, in Reply, Plaintiffs dispute Defendants' assertion that there is no disagreement as to the amount of overtime at issue. (R. Doc. 21 at 3-4).

Why few women are granted U.S. Patents.

Jennifer Hunt of Rutgers was involved in a 2012 study by the National Bureau of Economic Research [NBER] which found that just 7.5 percent of patents were granted to women.

The Christian Science Monitor did a follow up.


With 1/3 ownership of “Let’s Get It On”, Structured Asset Sales goes after Sheeran's “Thinking Out Loud”

The mag "People" wrote of the Sheeran case:

Ed Sheeran is facing a $100 million plagiarism lawsuit alleging that his 2014 hit “Thinking Out Loud” borrowed too heavily from Marvin Gaye‘s sultry bedroom classic, “Let’s Get It On.”

According to TMZ, Structured Asset Sales has filed a suit claiming the monster single from Sheeran’s X album uses melodic, harmonic, rhythmic, instrumental and dynamic elements taken from Gaye’s 1973 song. A rep for Sheeran did not respond to PEOPLE’s request for comment.


the Townsend family has sold a third of their shares in “Let’s Get It On” to Structured Asset Sales, the organization is relaunching the suit.


Adidas gets remand under SAS in Nike case: the petitioner, not the Director gets to define the contours of the IPR proceeding

From the CAFC:

We hold that remand is appropriate here. The Court
explained in SAS that in establishing inter partes review,
Congress set forth “a process in which it’s the petitioner,
not the Director, who gets to define the contours of the
proceeding.” 138 S. Ct. at 1355. The Court held that if
the Director institutes review proceedings, the review
must proceed “in accordance with or in conformance to the
petition,” id. at 1356 (internal quotations omitted), a
“petition describing ‘each claim challenged’ and ‘the
grounds on which the challenge to each claim is based,’”
id. at 1355 (quoting 35 U.S.C. § 312(a)(3)). “Nothing
suggests the Director enjoys a license to depart from the
petition and institute a different inter partes review of his
own design.” Id. at 1356 (emphasis in original). The
Court found that “the petitioner’s petition, not the Director’s
discretion, is supposed to guide the life of the litigation,”
id., and “that the petitioner’s contentions, not the
Director’s discretion, define the scope of the litigation all
the way from institution through to conclusion,” id. at

Sunday, July 01, 2018

Department of Labor's fiduciary rule for investment advisers killed by Fifth Circuit Court of Appeals

CNBC noted of the Fifth Circuit decision on the DOL fiduciary rule:

The U.S. Fifth Circuit Court of Appeals confirmed on Thursday 28 June 2018][its decision to vacate the Department of Labor's so-called fiduciary rule.


In April, the SEC said it planned to propose a best-interest standard for investment advisers and broker-dealers that make recommendations to retail investors. The agency also opened the proposal up for a 90-day comment period.

The Securities Industry and Financial Markets Association, a trade group that represents banks and asset management and securities firms, praised the court's decision.

"We are pleased the Fifth Circuit today issued its mandate," SIFMA president and CEO Kenneth E. Bentsen, Jr. said in a prepared statement. "The SEC, not the DOL, is the appropriate regulator in this area, and we look forward to working with the SEC on the current proposed rule-making to establish a best interest standard across all accounts, and not just retirement accounts."

Knut Rostad, president of the Institute for the Fiduciary Standard, a non-profit research, education and advocacy organization, called the court's decision "tragic."

"It's clear consumers are on their own," Rostad said.

From the dissent in 885 F.3d 360; 2018 U.S. App. LEXIS 6472; 63 Employee Benefits Cas. (BNA) 1957

Over the last forty years, the retirement-investment market has experienced a dramatic shift toward individually controlled retirement plans and accounts. Whereas retirement assets were [**65] previously held primarily in pension plans controlled by large employers and professional money managers, today, individual retirement accounts ("IRAs") and participant-directed plans, such as 401(k)s, have supplemented pensions as the retirement vehicles of choice, resulting in individual investors having greater responsibility for their own retirement savings. This sea change within the retirement-investment market also created monetary incentives for investment advisers to offer conflicted advice, a potentiality the controlling regulatory framework was not enacted to address. In response to these changes, and pursuant to its statutory mandate to establish nationwide "standards . . . assuring the equitable character" and "financial soundness" of retirement-benefit plans, 29 U.S.C. § 1001, the Department of Labor ("DOL") recalibrated and replaced its previous regulatory framework. To better regulate conflicted transactions as concerns IRAs and participant-directed retirement plans, the DOL promulgated a broader, more inclusive regulatory definition of investment-advice fiduciary under the Employee Retirement Income Security Act of 1974 ("ERISA") and the Internal Revenue Code ("the Code").

Despite [**66] the relevant context of time and evolving marketplace events, Appellants and the panel majority skew valid agency action that demonstrates an expansive-but-permissible shift in DOL policy as falling outside the statutory bounds of regulatory authority set by Congress in ERISA and the Code. Notwithstanding their qualms with these regulatory changes and the effect the DOL's exercise of its regulatory authority might have on certain sectors of the financial services industry, the DOL's exercise was nonetheless lawful and consistent with the Congressional directive to "prescribe such regulations as [the DOL] finds necessary or appropriate to carry out [ERISA's provisions]." 29 U.S.C. § 1135. Because I do not share the panel majority's concerns about the DOL's amended regulatory framework, I respectfully dissent.


Of patent relevance, note the beginning of the Edith Jones opinion in Chamber of Commerce v. DOL:

As might be expected by a Rule that fundamentally transforms over fifty years of settled and hitherto legal practices in a large swath of the financial services and insurance industries, a full explanation of the relevant background is required to focus the legal issues raised here.

and then think about the rise, and fall, of ED Texas for patent litigation.

link to cnbc story story:

Separately, from blawgsearch on 1 July 2018: