Simio loses at CAFC

Of note:

We also affirm the district court’s denial of leave for a different reason: Simio failed to show good cause for seeking leave to amend only after the scheduling order’s deadline. Although the district court did not reach this issue

we may affirm on “any grounds for which there is a record sufficient to permit conclusions of law, even grounds not relied upon by the district court.” Lambertsen v. Utah Dep’t of Corr., 79 F.3d 1024, 1029–30 (10th Cir. 1996) (quoting United States v. Sandoval, 29 F.3d 537, 542 n.6 (10th Cir. 1994)) (affirming denial of motion to amend complaint because, among other things, plaintiff failed to provide an adequate explanation for its delay in seeking amendment); see Johnson, 950 F.3d at 720 (“Although the district court justified its denial of leave to amend on other bases, we may affirm on any ground supported by the record . . . .”). Here, the record supports concluding that Simio failed to show good cause for its requested post-deadline amendment. In the Tenth Circuit, parties seeking leave to amend after a scheduling-order deadline must demonstrate good cause under Rule 16(b)(4).8 Gorsuch, Ltd., B.C. v. Wells Fargo Nat’l Bank Ass’n, 771 F.3d 1230, 1240 (10th Cir. 2014); see Fed. R. Civ. P. 16(b)(4) (providing that a scheduling order “may be modified only for good cause and with the judge’s consent”).

CAFC reverses WD Washington in Loops case and gives a bit of a lecture on procedure

The CAFC reversed the district court:

Loops, LLC and Loops Flexbrush, LLC (collectively, Loops) appeal a decision of the United States District Court for the Western District of Washington sua sponte granting summary judgment of noninfringement in favor of Maxill, Inc., both the Ohio and Canadian corporations (collectively, Maxill), and subsequently denying Loops’s request for reconsideration of that decision. In granting summary judgment, the district court determined that the accused toothbrush’s elongated body was not “flexible throughout,” as required by the claims. Because the court’s noninfringement ruling was based on an incorrect understanding of the “flexible throughout” claim limitation, we reverse.
Because the district court incorrectly viewed the flexibility limitation as directed to the combination of the elongated body and head, rather than the accused product’s elongated body alone, the district court erred in determining that the accused product lacks an elongated body that is flexible throughout.

of note here
Generally, a district court may not sua sponte grant summary judgment unless the losing party had “notice and a reasonable time to respond.” Fed. R. Civ. P. 56(f). The Ninth Circuit has held that sua sponte summary judgment may be granted as long as the losing party has had a “full and fair opportunity to ventilate the issues involved in the motion.” United States v. Grayson, 879 F.2d 620, 625 (9th Cir. 1989) (internal quotation marks omitted); see also In re Harris Pine Mills, 44 F.3d 1413, 1439–40 (9th Cir. 1995) (entering summary judgment for the non-movant). Loops did not have a full and fair opportunity to argue and present its case against summary judgment of noninfringement. Because Maxill first requested that the court sua sponte grant summary judgment in its favor in its opposition to Loops’s motion, Loops was limited by both time and page length with respect to its response. After receiving Maxill’s opposition, Loops had just three days to respond and twelve pages. W.D. Wash. Local R. 7. Had Maxill filed its own summary judgment motion, Loops would have had about three weeks to respond and twentyfour pages. Id. Further, the local rules provide that motions requesting permission to file overlength briefs are due “no later than three days before the underlying motion or brief is due.” Id. Therefore, even if Loops had wanted to file a request for an overlength brief, it would not have had time.
And although the district court indicated that it would give full consideration to any reconsideration request, the court refused to consider any additional evidence and quickly dismissed Loops’s reconsideration motion as “merely rehashing” its prior arguments. Under the circumstances, we conclude, Loops did not have a full and fair opportunity to respond to Maxill prior to the district court’s sua sponte grant of summary judgment.

Apotex loses its appeal at CAFC as to “a method of administering an antifolate to a mammal"

The outcome:
Apotex, Inc. appeals from the judgment of the district court in a patent-infringement suit brought by Eli Lilly & Company under the Hatch-Waxman Act, 21 U.S.C. § 355. The district court granted Lilly’s motion for summary judgment of infringement, holding that prosecution history estoppel does not bar Lilly from asserting infringement of certain claims of U.S. Patent No. 7,772,209 under the doctrine of equivalents. Because we discern no error in the district court’s decision, we affirm.

Festo is quoted:
The district court correctly concluded that prosecution history estoppel does not bar Lilly from asserting infringement by equivalents. The intrinsic record demonstrates that Lilly did not narrow the scope of its claims when it amended the claims reciting the administration of “ALIMTA” to instead recite the administration of “pemetrexed disodium.” A narrowing amendment is required to invoke estoppel. See id. (“Prosecution history estoppel arises when a patent applicant narrows the scope of his claims during prosecution for a reason ‘substantial[ly] relating to patentability.’” (alteration in original) (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1366–67 (Fed. Cir. 2003) (en banc))).
The matter of using a tradename in a claim arose
Moreover, the prosecution history confirms that the inventors used “ALIMTA” in the original claims—and the Examiner understood the term—as Lilly’s trade name for pemetrexed disodium. Specifically, the Examiner rejected the claims of the ’821 application on the ground that the improper use of a trade name in the claims renders the claims indefinite. In doing so, the Examiner cited MPEP § 2173.05(u), which, as of the date of the rejection, provided that “[i]f the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.” MPEP § 2173.05(u) (2004). The provision further provides that the “claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product,” and that the “value of a trademark would be lost to the extent that it became descriptive of a product, rather than used as an identification of a source or origin of a product.” Id. For these reasons, the MPEP instructs examiners that “the use of a trademark or trade name in a claim to identify or describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name.” Id. Following Patent Office procedure, the Examiner in this case rejected the claims of the ’821 application as indefinite because they improperly used the trade name “ALIMTA.” In response to the rejection, Lilly canceled its claims reciting the trade name and pursued claims using the generic name for the same substance, which mooted the rejection.

Was Robert E. Lee a traitor?

In a 19 December 2020 post titled They’re Carting Robert E. Lee Out of the U.S. Capitol and It’s About Damn Time , Sophia Nelson writes The state [Virginia] has revered traitors Jefferson Davis, Robert E. Lee, Stonewall Jackson, and others The idea of Robert E. Lee as traitor was also expressed in an April 27, 2019 post by Nelson Trump’s ‘Great General’ Robert E. Lee Was a Traitor and a Bad Person which included the text Until 1862, that is, when he turned traitor and gave up his commission in the US Army for a stint as commanding general of the “Confederate States of America” after South Carolina fired on Fort Sumter, South Carolina in April 1861, as an act of war. A devoted son of Virginia, Lee returned home and took up arms against the United States of America whose Constitution he had sworn to protect and defend. What Trump does not get is that but for the grace of President Abraham Lincoln, Robert E. Lee, Jefferson Davis and their whole posse should have been hanged for treason.

As a first point, whether or not Robert E. Lee was a traitor to the United States of America depends on whether or not it was legal to secede in 1860-1861, a point which was undecided at the time. If secession were legal, Lee was not a traitor.

As a second point, Sophia Nelson makes factual errors in the above-quoted text. History.com points out that Robert E. Lee resigned his commission in the U.S. Army on April 20, 1861 (not in 1862) and Lee took a position in the Virginia state militia, not in the Confederate army: [On April 20, 1861] Colonel Robert E. Lee resigns from the United States army two days after he was offered command of the Union army and three days after his native state, Virginia, seceded from the Union. (...) Two days later, Lee was appointed commander of Virginia’s forces with the rank of major general. He spent the next few months raising troops in Virginia, and in July he was sent to western Virginia to advise Confederate commanders struggling to maintain control over the mountainous region.

If secession were legal, Lee was a citizen of the state of Virginia, but not of the United States, on April 20, 1861. Lee took command of Virginia forces, and was not, at that time, "commanding general of the Confederate States of America." Lee would take command of the Army of Northern Virginia during the battle of the Seven Days in 1862. He was not "commanding general of the Confederate States of America" at that time either.

If anyone of the "whole posse" merited being charged with treason, it would have been the completely unrepentant Jefferson Davis. Although it is true that Abraham Lincoln urged a forgiving policy to Confederate officials, Lincoln was dead by the time Jefferson Davis was indicted for treason. It was Salmon Chase who gave Davis a rather contrived defense, and Davis was neither tried nor convicted of treason. Chase was concerned that the full Supreme Court might find merit to the "not a citizen" defense, which would effectively validate secession. Ironically, the ardent abolitionist Thaddeus Stevens was willing to defend Jefferson Davis, exactly on that basis. The United States of America had an opportunity to convict Davis and/or Lee of treason while they were alive in the time after 1865. This was not done. To "convict" them more than 150 years later is inappropriate. Additionally, it is disturbing that Sophia Nelson got so many facts wrong in her argument.

The choice of what statues to send to the Capitol to represent the state of Virginia is a different matter. But that choice should not be based on incorrect facts. The timeline of what Robert E. Lee did is well-defined.

The day the experts failed

The following is a screen shot showing both what a difference three days can make and how experts can overlook what non-experts might have considered "obvious." (.................................................) Generally, Covid19 vaccination guidelines have suggested that frontline defenders (those treating/coming in contact with Covid victims) should have a tier 1 priority for getting vaccinated. However, this did not happen at Stanford Med. Note the following juxtaposition of two internet posts.

Caterpillar loses appeal of ITC decision at CAFC

The outcome: The International Trade Commission (“Commission”) determined that certain claims of U.S. Patent No. 7,140,693 (“the ’693 patent”) were invalid because of an onsale bar. Caterpillar Inc. and Caterpillar Paving Products, Inc. (collectively “Caterpillar”) appeal the Commission’s invalidity determination as to claim 28.1 We affirm. The patent related to machines that treat roadway surfaces: The ’693 patent “relates generally to work machines for the treatment of roadway surfaces, and more particularly to a planer or milling machine for asphalt and concrete.” ’693 patent, col. 1 ll. 6–8. The ’693 patent discloses a milling machine with a rear wheel or track that can be swung between a “retracted” position, in which the wheel or track is inside the frame of the machine, and a “projecting” position, in which the wheel or track is outside the frame. Id. col. 2 ll. 43–49. The invalidity argument was based on the on-sale bar as it existed BEFORE the AIA: Wirtgen argued before the administrative law judge that certain asserted claims of the ’693 patent (including claim 28) were invalid based on a prior sale of the SF 102 C machine sold by Bitelli before the critical date of the ’693 patent. Under the on-sale bar provision of pre-LeahySmith America Invents Act (“pre-AIA”) version of 35 U.S.C. § 102(b), which governs here, a patent claim is invalid if “the invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States.” The issue related to the text "in this country": Caterpillar did not dispute that the records showed that the Bitelli SF 102 C machines were on sale by the year 2000 (and does not now dispute that the machines met all of the claim limitations). But Caterpillar contended that the two Bitelli records did not show that “the sales were in the United States” and that the invoices showed that the machines were delivered in Italy. J.A. 117–18. For example, Caterpillar noted that the June 1999 invoice listed the “Port” as “Free Port Our Premises,” suggesting that the machine was delivered at Bitelli’s premises in Italy. J.A. 118. The CAFC analyzed the issue in the following way: Here, there is substantial evidence to support the Commission’s finding that the sale documented by the June 1999 invoice constituted “commercial activity directed to the United States,” J.A. 118, namely that the Bitelli SF 102 C machine was sold to a United States customer for use in this country. Several aspects of the June 1999 invoice provide evidence that the sale of the Bitelli SF 102 C machine was for use in the United States. First, the face of the invoice indicates that the sale was to a buyer with a United States address. Second, other indicia in the invoice show that this was a sale for export to the United States. The June 1999 invoice lists a “CUSTOMS TARIFF N. 84305000” in the leftmost column and notes that the “goods” were “of Italian origin.” J.A. 1493. Although 84305000 appears to refer to a tariff subheading number for the European Union, the first six digits correspond to the analogous subheading in the Harmonized Tariff System of the United States (“HTSUS”), 8430.50, which is for “[o]ther moving, grading, leveling, [or] scraping . . . machinery, for earth, minerals or ores” that are “self-propelled.” HTSUS, heading 8430 (1999). While the number 84305000 appears on an invoice to an Italian buyer of another machine, only the June 1999 invoice labels the number as a customs tariff number, and the June 1999 invoice is the only invoice that refers to a “customs tariff” number. There would be no need to note a customs tariff number for a sale between an Italian seller such as Bitelli and a buyer located in Italy or another European Union country, since the establishment of the European Union resulted in “the elimination, as between Member States, of customs duties and quantitative restrictions on the import and export of goods.” Treaty on European Union, Title II Art. G(B)(3), 1757 U.N.T.S. 3, 14 (Feb. 7, 1992). The invoice also contains a description of the Bitelli SF 102 C machine in English and identifies the currency as U.S. dollars, also some indication of a sale for export to the United States.

MIT loses to Ford Motor at CAFC in 2020-1472

Plaintiffs-Appellants ETHANOL BOOSTING SYSTEMS, LLC, MASSACHUSETTS INSTITUTE OF TECHNOLOGY, lost their case against Ford Motor in a Rule 36 affirmance.

Super-Sparkly Safety Stuff, LLC loses design patent infringment appeal at CAFC concerning “Bling It On” pepper spray canisters

Some background: Super-Sparkly owns a design patent for bedazzled pepper spray canisters, U.S. Patent No. D731,172 (“the ’172 patent”). This patent claims a design for a pepper spray canister decorated with rhinestones, in which rhinestones cover the bottom and some portion of the vertical part of a pepper spray canister. Skyline sells a line of “Bling It On” pepper spray canisters that are decorated with rhinestones. Unlike the designs claimed in the ’172 patent, the bottom surface of Skyline’s canisters is not decorated with rhinestones. In February 2017, Super-Sparkly sent Skyline a ceaseand-desist letter in which it accused Skyline’s pepper spray canisters of infringing its design patent. Skyline responded in April 2017, explaining that the accused product did not infringe Super-Sparkly’s design patent because the bottom of the canister was not decorated with rhinestones. The issues before the CAFC: This appeal requires us to resolve two issues: first, whether summary judgment was properly certified as final, thereby conferring jurisdiction on the court; and second, whether summary judgment of noninfringement was warranted. As to FRCP 54(b): When a district court certifies a decision as final under Federal Rule of Civil Procedure 54(b), we must review the finality of the judgment de novo to ensure we have jurisdiction, even if the parties agree that jurisdiction is proper. Ultra-Precision Mfg. v. Ford Motor Co., 338 F.3d 1353, 1356 (Fed. Cir. 2003) (citing W.L. Gore & Assocs. v. Int’l Med. Prosthetics Rsch. Assocs., Inc., 975 F.2d 858, 862 (Fed. Cir. 1992)). For Rule 54(b) to apply, three prerequisites must be met: “(1) multiple claims for relief or multiple parties must be involved; (2) at least one claim or the rights and liabilities of at least one party must be finally decided; and (3) the district court must find that there is no just reason for delaying an appeal.” Alfred E. Mann Found. for Sci. Rsch. v. Cochlear Corp., 841 F.3d 1334, 1347 (Fed. Cir. 2016) (citing 10 Charles Alan Wright et al., Federal Practice and Procedure § 2656 (3d ed. 2016)). While we review finality de novo, we review the district court’s determination that there is no just reason for delay for abuse of discretion. W.L. Gore, 975 F.2d at 862. Here, all three prerequisites are met. First, the case involves multiple claims, as Skyline’s counterclaims are still pending before the district court. Second, SuperSparkly’s two patent infringement claims were finally decided by the district court’s entry of summary judgment of noninfringement. Third, the district court did not abuse its discretion in determining that there is no just reason for delay. Of the substantive issue: Super-Sparkly and Skyline agree that the difference between the ’172 patent and the accused design is that the former includes rhinestones on the bottom of the pepper spray canister, whereas the latter does not. The district court did not err in concluding that that this difference precludes a finding of infringement under the ordinary observer test. Under the ordinary observer test, the claimed and accused designs may be “sufficiently distinct” and “plainly dissimilar,” such that an ordinary observer clearly would not find the two designs “substantially the same.” Egyptian Goddess, 543 F.3d at 678. When the designs are not “plainly dissimilar,” the analysis will benefit from a comparison of the claimed and accused designs with the prior art . . . . Where there are many examples of similar prior art designs . . . differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art. Id. The ’172 patent claims a very simple design, in which rhinestones are applied to two surfaces of a canister: the vertical cylinder and the bottom. Removing the rhinestones from one of these surfaces—the bottom—is a significant departure from the claimed design. The ’172 patent and the accused design are thus plainly dissimilar; because the accused design lacks rhinestones on one of the two surfaces decorated in the claimed design, an ordinary observer would not find the two designs substantially the same.

Sionyx, Harvard mostly win at CAFC in "black silicon" case

The background of the case: This appeal arises from research conducted at Harvard University by Professor Eric Mazur and his then-student James Carey. In 1998, Mazur discovered a process for creating “black silicon” by irradiating a silicon surface with ultra-short laser pulses. In addition to turning the silicon black, the process creates a textured surface, and the resulting black silicon has electronic properties different from traditional silicon. After discovering the process for making the material, Mazur worked with his students, including Carey, to study its properties and potential uses. Based on their work, Mazur and Carey filed U.S. Provisional Patent Application 60/293,590 on May 25, 2001, from which several patents eventually issued, including the ’467 patent. I. THE PARTIES’ RELATIONSHIP Around 2005, Mazur and Carey founded SiOnyx to further develop and commercialize black silicon. Thereafter, SiOnyx sought to establish relationships with companies that may be interested in its technology. Of interest is the reference to "advisory opinion" On appeal, Hamamatsu maintains that its infringement was not willful, challenging the adequacy of the evidence presented at trial to support the jury’s finding. However, given that the district court awarded no enhanced damages based on willfulness, it is not apparent what effect the jury’s finding of willfulness had on the district court’s judgment, and it is likewise not apparent what the effect a reversal by this court would be. We cannot reduce the enhanced damages awarded to SiOnyx for Hamamatsu’s allegedly willful infringement because no such damages exist. Because there is no “tangible, demonstrable consequence” to the jury’s finding of willfulness, our consideration of the issue would be tantamount to an advisory opinion, which we lack the authority to provide. Samsung Elec. Co., Ltd. v. Rambus, Inc., 523 F.3d 1374, 1380 (Fed. Cir. 2008) (quoting Chathas v. Local 134 IBEW, 233 F.3d 508, 512 (7th Cir. 2000)). Accordingly, we decline to address the willfulness issue.

Article I, section 8, clause 8 on the "Outer Limits" in September 2000

One suspects that the text of Article I, section 8, clause 8 ["To promote the progress of science and useful arts, ..."] does not appear within many television dramas. Yet, in the "Final Appeal" (part 1) episode of the "Outer Limits," first broadcast on September 3, 2000, there it was. The episode is an unusual one, depicting an appeal to the five-member U.S. Supreme Court in the year 2076. The justices are portrayed by well-known actors, including Charlton Heston, Cicely Tyson, Hal Holbrook, Robert Loggia, and Swoozie Kurtz. The solicitor general is played by Michael Moriarty, affecting an odd speech mannerism. There is time travel, and a very real embodiment of cold fusion. There are several flashbacks to previous Outer Limits episodes. One could view the episode as Shaw's "Major Barbara" on steroids.

Adam Hamilton contrasts tradition and innovation

In CareyNieuwhof post 226, CNLP 226: ADAM HAMILTON ON HOW TO REACH THINKING PEOPLE, PLANTING ONE OF THE LARGEST MAINLINE CHURCHES IN THE WORLD, AND HOW TRADITION AND INNOVATION CAN CO-EXIST, one finds the text: 1. The gospel never changes, but the church’s delivery should Adam collects computers. His prized Macintosh 512 is thirty-three years old and serves as a reminder to him of how important it is for the church to minister to a constantly changing society. Apple created an incredible product three decades ago, but had the company decided to stop there, it wouldn’t be in business today. Apple is constantly looking at change. The average church hasn’t been remodeled in 30 years. The average church’s worship hasn’t changed in thirty years. The message of the gospel will never change, but, like Apple, the church should continuously look for ways to improve how to deliver this message in an ever changing world. link: https://careynieuwhof.com/episode226/ [Note the text: Yeah. I bought it ... Let's see, when did it buy it? 1985, late 1985 and it still runs.] As may be viewed on Wikipedia, the Macintosh 512K had just been introduced in late 1985. The introductory price was $2,795, which in "today's" dollars would be $6878. The improvement of the Apple 512K over the predecessor Mac 128K was incremental: one had the same Motorola 68000 processor, but the memory was roughly quadrupled. In the days of the late 1980's, the distinction of choice between a PC and a MAC was sometimes related to a difference in religious outlook. That topic might be explored in a podcast. As to intellectual property, the distinction between "tradition" (e.g., lead acid car batteries) and innovation could be explored. December 5, 2020

Judge Wallach dissents from denial of en banc re-hearing in Australian Therapeutic

Judge Wallach wrote: I write to express my disagreement with the merits of the decision in Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC (Australian III), 965 F.3d 1370 (Fed. Cir. 2020), and to note a potential point of confusion in our case law going forward. Statutory standing is a question of “whether a legislatively conferred cause of action encompasses a particular plaintiff’s claim.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 127 (2014).1 A cause of action “extends only to plaintiffs whose interests fall within the zone of interests protected by the law invoked.” Id. at 129 (internal quotation marks and citation omitted). Australian III concerns how broad the “zone of interests” is for 15 U.S.C. § 1064—specifically, whether a prior settlement agreement may preclude a petitioner from establishing a valid cause of action. Compare Australian III, 965 F.3d at 1374–76 (concluding that a petitioner had a valid cause of action because “proprietary rights” are not required), with Australian III, 965 F.3d at 1376–81 (Wallach, J. dissenting) (concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement). See 15 U.S.C. § 1064 (providing for cancellation of registration of a trademark). The concept of "any person" -- Relevant here, “[a] petition to cancel a registration of a mark . . . may . . . be filed . . . by any person who believes that he is or will be damaged . . . by the registration of a mark[.]” 15 U.S.C. § 1064. In Empresa Cubana, we explained that, in keeping with Lexmark, we must “focus[] on [a petitioner’s] entitlement to the cause of action defined by 15 U.S.C. § 1064,” Empresa Cubana, 753 F.3d at 1274, and confirmed the continued applicability of our pre-Lexmark 15 U.S.C. § 1064 jurisprudence to determine whether “[a] petitioner is authorized by statute to seek cancellation of a mark,” id. at 1275. Under Empresa Cubana, a petitioner must show that “it has both a real interest in the proceedings . . . [and] a reasonable basis for its belief of damage” to have a valid cause of action under 15 U.S.C. § 1064. Id. (internal quotation marks and citation omitted); see Australian III, 965 F.3d at 1373–74 (similar). Recently, we clarified both that “the Lexmark analytical framework is the applicable standard for determining whether a person is eligible under 15 U.S.C. § 1064 to bring a petition for the cancellation of a trademark registration,” and that there is “no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, LLC v. SFM, LLC, No. 2019-1526, 2020 WL 6277728, at *3 (Fed. Cir. Oct. 27, 2020); see id. at *5 (explaining that “[t]he zone-of-interests requirement and the real-interest requirement share a similar purpose and application” and “a party that demonstrates a reasonable belief of damage by the registration of a trademark demonstrates proximate causation within the context of [15 U.S.C.] § 1064”).4 Judge Wallach concludes: Australian lacks a legitimate commercial interest in the NAKED mark and, therefore, a valid cause of action against Naked. Empresa Cubana, 753 F.3d at 1275; see Lexmark, 572 U.S. at 131. There is “no real controversy between the parties”—they resolved any such controversy between themselves through settlement in 2007—leaving Australian “no more than an intermeddler” in the instant action. Coach Servs., 668 F.3d at 1376 (internal quotation marks and citation omitted); cf. Gould, 866 F.2d at 1392 (“When the case between the parties has been settled, there is no actual matter in controversy essential to the decision of the particular case[.]”). En banc action is necessary to maintain the uniformity our decisions and clarify the impact of Lexmark on those decisions. See FED. R. APP. P. 35(a)(1)–(2). Accordingly, I respectfully dissent from our denial of rehearing en banc.

Cisco loses at CAFC

The outcome: Cisco Systems, Inc. appeals the Patent Trial and Appeal Board’s final written decision holding Cisco had not proven that claims 1–9 and 12 of U.S. Patent No. 6,611,231 would have been obvious. For the reasons discussed below, we affirm. Background Cisco challenges the Board’s construction of “cross-correlated signal information that is received by” the claimed adaptive antenna. We review the Board’s ultimate claim construction de novo and any underlying factual determinations involving extrinsic evidence for substantial evidence. Paice LLC v. Ford Motor Co., 881 F.3d 894, 902 (Fed. Cir. 2018). Because Cisco’s petition was filed before November 13, 2018, we give claims in the unexpired ’231 patent their “broadest reasonable interpretation” consistent with the specification. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Cisco contends the Board erred in construing the phrase “cross-correlated signal information that is received by said receiver using said adaptive antenna” as requiring that the signal information be cross-correlated before the signal information is received. It argues the claim language is ambiguous and, as properly interpreted, includes signal information that is cross-correlated after it is received. We do not agree Boilerplate language of non-limitation can be harmful: There is no requirement that “each and every claim ought to be interpreted to cover each and every embodiment.” PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). Regardless, nothing in the written description shows the patentee intended to deviate from the plain meaning of claim 1; there is no language in the written description suggesting that cross-correlating the signal information after it is received is important, essential, or necessary to the claimed invention. See Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1373 (Fed. Cir. 2014) (“[T]o deviate from the plain and ordinary meaning of a claim term . . . the patentee must, with some language, indicate a clear intent to do so in the patent.”). In fact, the written description expressly states that “the invention defined in the [] claims is not necessarily limited to the specific features or steps described.” ’231 patent at 28:66–29:2. The issue of waiver appears: Cisco further contends dependent claim 2 makes clear that claim 1 must encompass “cross-correlated signal information” that is cross-correlated after it is received. We will not reach the merits of this argument, that claim 2 causes us to deviate from the plain meaning of claim 1, because Cisco never raised this argument with the Board. Accordingly, we decline to consider Cisco’s argument made in the first instance on appeal. MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 n.3 (Fed. Cir. 2015).

Tsai's bicycle rack unhitched by CAFC

The case is about a re-examination of claims of U.S. Patent No. 7,240,816 related to a bike rack: The ’816 patent is directed to a bicycle rack for a vehicle. ’816 patent col. 1 ll. 5–6. The bicycle rack comprises a base, two beams pivotally connected with the base, at least one supporting device attached to each of the beams in order to support one wheel of the bicycle, a post pivotally connected with the base, and a hooking device attached to the post in order to hook a portion of the bicycle. The background law: We review the Board’s legal determinations de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review the Board’s factual findings underlying those determinations for substantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison Vo. v. NLRB, 305 U.S. 197, 229 (1938). The scope and content of the prior art is a question of fact. See In re Mouttet, 686 F.3d 1322, 1330 (Fed. Cir. 2012). The presence or absence of a motivation to combine references is also a question of fact. See Novartis Pharms. Corp. v. West-Ward Pharms. Int’l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019). Of a filed declaration: Tsai also contends that the Board improperly ignored the declaration of Kevin Wren (Wren Declaration). Appellant’s Br. at 19. The Board, however, correctly determined that the declaration’s arguments were non-responsive to the examiner’s rejection of the claims. J.A. 20. The Wren Declaration incorrectly stated that the “claims assert a clean and unimpeded access to the vehicle,” and also stated that a skilled artisan would want a bicycle rack post that leaned away from the vehicle to permit access to the back of the vehicle. J.A. 211–12. But as the Board found, the claims do not require such an “access” feature, nor does this contention defeat the examiner’s reasons for combining the cited references. J.A. 20. The concept of "design choice" appears: Without evidence to the contrary, the examiner reasonably found that it would have been a “mere matter of engineering design choice” for a skilled artisan to mount the rotating beams higher in the base’s walls so that the bottom does not interfere with the rotation. J.A. 482. The Board agreed with the examiner’s findings regarding SportRack, James, and Pedrini ’163. J.A. 21. Thus, substantial evidence supports the Board’s determination that the combination of SportRack, James, and Pedrini ’163 would still allow the beams of the resulting combination to rotate without interference. Is "simple physics" a variant of "common sense"? Further, “[s]imple physics would have led those in the art to the location of the likely dynamic stress points relative to the hitch mount in such a system, and routine design modifications without undue experimentation would have led to the resultant location of such wing reinforcements.” The conclusion includes some harsh language: We have considered Tsai’s remaining arguments and find them either forfeited, too skeletal and underdeveloped and/or unpersuasive. link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1347.OPINION.11-30-2020_1692523.pdf