tag:blogger.com,1999:blog-74782382024-03-13T11:16:00.994-07:00IPBizIntellectual property news affecting business and everyday lifeLawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.comBlogger12453125tag:blogger.com,1999:blog-7478238.post-40176498554064747522023-06-08T10:20:00.001-07:002023-06-08T10:20:37.936-07:00CAFC does secondary considerations in Yita v. MacNeil
The coutccome:
<br><br><br>
MacNeil IP LLC is the assignee of two U.S. patents,
Nos. 8,382,186 and 8,833,834, that were the subject of decisions by the Patent Trial and Appeal Board in inter
partes reviews (IPRs) of challenges to all claims of the patents on obviousness grounds presented in petitions filed
by Yita LLC. In IPR 2020-01139, the Board rejected Yita’s
challenge to all claims (1–7) of the ’186 patent, concluding
that—although a relevant artisan would have been motivated to combine, and had a reasonable expectation of success in combining, the teachings of the asserted prior-art
references to arrive at each challenged claim—“[MacNeil’s]
evidence of secondary considerations [was] compelling and
indicative of non-obviousness.” J.A. 81. Yita appeals that
ruling. In IPR 2020-01142, the Board, while agreeing with
Yita’s challenge to claims 13–15 of the ’834 patent (a ruling
that MacNeil does not appeal), rejected Yita’s challenge to
claims 1–12. Yita appeals that ruling. For the reasons below, we reverse the Board’s judgment in the ’1139 IPR and
affirm its judgment in the ’1142 IPR.
<br><br><br>
Some law
<br><br><br>
“Obviousness is a question of law based
on underlying facts, including the scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill, and relevant evidence
of secondary considerations.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (citing
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)); see
KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406–
07, 427 (2007); Intercontinental Great Brands LLC v. Kellogg North America Co., 869 F.3d 1336, 1343–44, 1347
(Fed. Cir. 2017). Secondary considerations include
whether the claimed invention has been commercially successful, whether it solved a long-felt but unsolved need in
the art, and whether the relevant industry praised it. See
Graham, 383 U.S. at 17–18. To be relevant, such a secondary consideration must have a “legally and factually sufficient connection” (nexus) to the claimed invention. Fox
Factory, 944 F.3d at 1373. A nexus is presumed when a
commercial product (if relevantly successful, for example)
“is the invention disclosed and claimed in the patent.” Immunex Corp. v. Sandoz Inc., 964 F.3d 1049, 1067 (Fed. Cir.
2020) (quoting WBIP, 829 F.3d at 1329).
<br><br><br>
But our case law makes clear that “objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior
art’”—not necessarily well-known. Rambus Inc. v. Rea, 731
F.3d 1248, 1257 (Fed. Cir. 2013) (emphasis added) (quoting
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312
(Fed. Cir. 2006)); see also Ethicon Endo-Surgery, Inc. v.
Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016) (“[I]f the
feature that creates the commercial success was known in
the prior art, the success is not pertinent.” (quoting Ormco,
463 F.3d at 1312)). Where prior art teaches a feature and
a relevant artisan would have been motivated to use it in
combination with other prior-art teachings with a reasonable expectation of success to arrive at the claimed invention—as the Board here found—a secondary consideration
related exclusively to that feature does not logically undermine the inference from those premises that the claimed
invention would have been obvious from the full body of
prior art just because the feature was not well known.
<br><br>
Second, the Board, citing WBIP, stated that “[t]he Federal Circuit instructs that ‘it is the claimed combination as
a whole that serves as a nexus for objective evidence; proof
of nexus is not limited to only when objective evidence is
tied to the supposedly “new” feature(s).’” J.A. 75 (quoting
and citing WBIP, 829 F.3d at 1330). But in WBIP we recognized that secondary-consideration evidence “may be
linked to an individual element” of the claimed invention
or “to the inventive combination of known elements” in the
prior art. 829 F.3d at 1332. It was for the latter circumstance, which was the circumstance present in WBIP, that
this court in WBIP made the point relied on by the Board
here. But that rationale, applicable when no single feature
(but only the combination) is responsible for the secondaryconsideration evidence, does not undermine our case law,
just discussed, denying force to a secondary consideration
that is exclusively related to a single feature that is in the
prior art.
<br><br><br>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-54680647585314399432023-04-13T13:05:00.001-07:002023-04-13T13:05:12.071-07:00CAFC does trademarksThe outcome
<br><br><br>
Charger Ventures LLC appeals from a Trademark
Trial and Appeal Board decision that denied registration of
Charger’s trademark SPARK LIVING on grounds of
likelihood of confusion with an earlier registered trademark, SPARK. On appeal, Charger challenges the Board’s
likelihood of confusion determination. Because the Board’s
determination is supported by substantial evidence, we affirm.
<br><br><br>
Some text
<br><br><br>
Third, Charger argues that the Board’s finding on the
class of purchasers was improper because the consumers of
Charger’s services are substantially different from registrant’s services. Appellant’s Br. 28–29. Charger argues
that “[p]eople looking to buy a home or a condominium are
likely to take their time and make an educated decision before entering into these purchases because of the important
impact these decisions can have on their lives . . .”. Id. at
29. The Director asserts that Charger <b>fails to identify
where, in the record, it has demonstrated that residential
property owners are distinct consumers from commercial
owners. Appellee’s Br. 21. Indeed, the Director argues that
“people who seek commercial real estate services live somewhere.” Id.</b> (emphasis in original).
As the Board explained, careful or sophisticated consumers are not immune from source confusion. J.A. 12 (citing In re Rsch. and Trading Corp., 793 F.2d at 1279 (“That
the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods.”)).
Paired with the potential overlap of consumers, substantial
evidence supports the Board’s determination on this factor.
Fourth, as for the factor regarding the number and nature of similar marks in use on similar goods, Charger reiterates its evidence of third-party use showing variations
of the term SPARK in trademarks as evidence of weakness.
Charger argues that weakness of the mark “is paramount
in the likelihood of confusion analysis.” Appellant’s Br. 20.
The Director argues that all marks on the principal register are presumed valid and distinctive and that even weak
marks are entitled to protection. Appellee’s Br. 23 (citing
Conde Nast Publ’ns, Inc. v. Miss Quality, Inc., 507 F.2d
1404, 1406 (CCPA 1975)). Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-33728016669258733892023-04-12T14:52:00.001-07:002023-04-12T14:52:37.994-07:00Sanderling loses at CAFCThe outcome"
<br><br><br>
Sanderling Management Ltd. (“Sanderling”) appeals
from the district court’s dismissal of Sanderling’s patent
infringement suit against Snap Inc. (“Snap”) due to the asserted claims’ lack of patent-eligible subject matter under
35 U.S.C. § 101 (“Section 101”). Sanderling also asks us to
review the district court’s denial of its motion for leave to
amend its complaint. We affirm.
<br><br><br><br>
Footnote 6: It is within a district court’s discretion to require a
party opposing a Rule 12 motion based on Section 101 to
identify, and articulate the significance of, specific fact disputes that purportedly make granting the motion improper. A patentee’s failure to do so should, as here,
preclude the court from denying the motion simply based
on a vague pronouncement to the effect that “a factual dispute exists.”
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-88685839376347805502023-04-12T14:47:00.002-07:002023-04-12T14:47:58.931-07:00Sequoia v. Dell: mixed decisionThe outcome:
<br><br><br><br>
Sequoia Technology, LLC appeals from a stipulated
judgment of noninfringement and invalidity of U.S. Patent
No. 6,718,436 following an adverse claim construction ruling from the United States District Court for the District of
Delaware. For the reasons below, we disagree with the district court’s claim construction for “computer-readable recording medium,” and thus <b>we reverse the district court’s
ineligibility determination under 35 U.S.C. § 101</b>. In addition, we agree with the district court’s claim construction
for “disk partition” and “logical volume,” and thus <b>we affirm the district court’s noninfringement determination</b>.
<br><br><br>
Factual details
<br><br><br>
The technology at issue is digital storage. The ’436 patent explains that servers with important data can use “Redundant Array of Independent Disks” (RAID) to store the
same data on multiple hard disks. See ’436 patent col. 1
ll. 26–32. The specification further notes how a virtual
disk drive—also known as a logical volume—can encompass multiple physical disk drives. Id. at col. 1 ll. 24–28. A
logical volume manager can implement the RAID technique with software to construct a logical volume. Id. The
specification teaches that these advances were known, but
“conventional logical volume managers ha[d] problems in
that metadata is too large to manage in huge storage
<br><br><br>
(...)
<br><br><br>
In its preliminary response to Red Hat’s IPR petition,
ETRI distinguished two prior art references, Bridge and
Williams, by highlighting that instead of disk partitions,
“extents in Bridge or physical partitions in Williams, both
subsets of disk drives[,] . . . are gathered to form a logical
volume.” J.A. 1027 (quoting D.I. 178, Ex. K, at 2); see
J.A. 936 (similarly explaining that “the extents of Bridge
or the physical partitions of Williams,” not disk partitions,
are gathered to form the logical volume). Separately, ETRI
stated that “[w]hile the logical volume [in the ’436 patent]
is formed from extents, extents are added or removed from
the logical volume at the level of the disk partitions.”
J.A. 921 (emphasis added). These statements are consistent with the understanding that a logical volume in the
present invention is only constructed at the level of disk
partitions, not sub-portions of disk partitions.
Sequoia disagrees. It argues that the distinction ETRI
drew between the prior art and the claimed invention was
that Bridges and Williams lack any disk partitions (a necessary component of the claim). Appellant’s Br. 38–40. We
disagree. ETRI’s statements during prosecution distinguish the prior art based on what element is removed or
added to form the logical volume—either disk partitions or
subparts of disk partitions. Sequoia argues that ETRI’s
second statement above is consistent with “permit[ting] extents to be individually allocated (or not) to the logical volume.” Id. at 38. But ETRI’s reference to removing or
adding extents “at the level of the disk partitions” is clear.
See J.A. 921. It does not reasonably support a construction
that would allow extents—which are sub-portions of disk
partitions—to build logical volumes.
Finally, Sequoia argues that another limitation in
claim 1, directed to an “extent allocation table for indicating whether each extent in the disk is used or not used,”
supports its construction of disk partition and logical volume. Appellant’s Br. 27–29. According to Sequoia, “used
or not used” in the extent allocation table means used or
not used for constructing the logical volume. Accordingly,
if Sequoia is correct, then extents—not partitions—are the
minimum unit forming the logical volume, and the district
court’s construction of “disk partition” and “logical volume”
are incorrect. Red Hat, on the other hand, contends that
“used or not used” means used or not used for storage. As
such, under Red Hat’s construction, this claim language
does not undermine the district court’s construction of
“disk partition” and “logical volume.”
The claim language read in isolation does not clearly
support either parties’ construction. Rather, the plain language of the claim limitation “used or not used” begs the
question—used for what? Here, in light of the intrinsic evidence that logical volumes are constructed from entire
disk partitions, the extent allocation table must point to
whether extents are used or not used for storage.
<br><br><br>
(...)
<br><br><br>
This suggests that “used” does not mean used in the logical
volume; rather, it means used for storage. Were it otherwise, the extent allocation table in the preferred embodiment would be superfluous.6 While not dispositive, we find
it unlikely that an inventor would define an invention such
that an element of a preferred embodiment is superfluous.
Cf. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1583 (Fed. Cir. 1996) (explaining that interpreting a claim
such that a preferred embodiment is excluded is “rarely, if
ever, correct” because it is unlikely an inventor would define the invention in such a way).
<br><br><br>
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-2239337100803787952023-04-11T14:44:00.003-07:002023-04-11T14:44:38.512-07:00Arbutus case affirmed. Inherent anticipation found.The outcome:
<br><br><br>
Appellant Arbutus Biopharma Corporation appeals a
final written decision in an inter partes proceeding of the
Patent Trial and Appeal Board that found claims 1–22 of
U.S. Patent No. 9,404,127 invalid as anticipated. On appeal, Arbutus Biopharma Corporation challenges the
Board’s anticipation finding. We affirm.
<br><br><br>
Previous
<br><br><br>
The Patent Trial and Appeal Board (“Board”) instituted the IPR and issued a final written decision (“FWD”)
finding all 22 claims anticipated by the ’069 patent (“’069
patent” or “prior art patent”). Id. at *1. In doing so, it
found the ’069 patent to be prior art to the ’127 patent.1 Id.
at *9, 12. The Board then found several of the same components between the two patents. Both patents: are directed to the same purpose (providing SNALP, methods of
making and delivering SNALP); disclose at least the 1:57
and 1:62 formulations; explain that SNALP can be formed
by any method in the art including direct dilution, and direct the reader to rely on the ’031 publication for details on
using DDM. Id. at *7–8; ’069 patent, col. 57 ll. 50–55.
<br><br>
(...)
<br><br>
The main issue before the Board was whether claim
1(d) of the ’127 patent—wherein at least about 95% of the
particles in the plurality of particles have a <b>non-lamellar
morphology </b>(the “Morphology Limitation”)—is inherently
disclosed in the ’069 patent. Id. at *9. Moderna argued
that the Morphology Limitation, while not expressly mentioned in the prior art, is an “inherent natural property”
resulting from the lipid composition of the formulation and
formation process. Id. at *11. Arbutus disagreed, arguing
that there was no presumption of inherency and that there
was no evidence (such as testing or reasoning) showing
that the ’069 patent and its formulations would necessarily
have the same morphology as disclosed by the ’127 patent.
Id. at *12. Arbutus also submitted experimental evidence
from its expert, who prepared two 2:30 lipid formulations
from the ’069 patent, to demonstrate that the Morphology
Limitation was not met. Id. at *17. After weighing the
evidence, the Board found Arbutus’s arguments unavailing.<br>
<br><br><br>
Inherency
<br><br><br>
A limitation is inherent if it is the “natural result flowing from” the prior art’s explicit disclosure. Id. at 1379. A
patent “can be invalid based on inherency when the patent
itself makes clear that a limitation is ‘not an additional requirement imposed by the claims . . . but rather a property
necessarily present’.” Hospira, Inc. v. Fresenius Kabi USA,
LLC, 946 F.3d 1322, 1332 (Fed. Cir. 2020) (quoting In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)). Thus, inherent anticipation requires “merely that the disclosure of the
prior art is sufficient to show that the natural result flowing from the operation as taught in the prior art would result in the claimed product.” SmithKline Beecham Corp. v.
Apotex Corp., 403 F.3d 1331, 1343–44 (Fed. Cir. 2005) (internal quotation marks omitted) (modifications in the original). We have also explained that “[n]ewly discovered
results of known processes directed to the same purpose
are not patentable because such results are inherent.”
Bristol–Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d
1368, 1376 (Fed. Cir. 2001). “Insufficient prior understanding of the inherent properties of a known composition
does not defeat a finding of anticipation.” Atlas Powder Co.
v. Ireco, Inc., 190 F.3d 1342, 1349 (Fed. Cir. 1999).
<br><br><br>
Incorporation by reference
<br><br><br>
This court has also discussed the effect of incorporated
references. When a reference or material from various documents is incorporated, they are “effectively part of the
host document as if [they] were explicitly contained
therein.” Advanced Display Sys., Inc., 212 F.3d at 1282.
<br><br><br>
<br><br><br>
We have explained that the “critical question” for inherent anticipation is “whether the [prior art] patent sufficiently describes and enables one or more embodiments—
whatever the settings of their operational features—that
necessarily include or result in the subject matter of [the]
limitation. . . .” See Toro Co. v. Deere & Co., 355 F.3d 1313,
1321 (Fed. Cir. 2004). Here, because there is no error in
the Board’s determinations that the prior art teaches the
We have explained that the “critical question” for inherent anticipation is “whether the [prior art] patent sufficiently describes and enables one or more embodiments—
whatever the settings of their operational features—that
necessarily include or result in the subject matter of [the]
limitation. . . .” See Toro Co. v. Deere & Co., 355 F.3d 1313,
1321 (Fed. Cir. 2004). Here, because there is no error in
the Board’s determinations that the prior art teaches the
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-43391389186060801082023-04-09T09:02:00.002-07:002023-04-09T09:04:46.895-07:00A Civil War national holiday? Not on April 9.Steve Phillips wrote an article in the Guardian titled: The American civil war ended on this day. It should be a national holiday, which argued April 9
should be a national holiday.
<br>. <br><br>
On April 9, 1865, Lee surrendered to Grant. The Civil War did not end. Johnston's army was roaming North Carolina.
<br><br><br>
Lincoln's position in the 1860 election was against the EXPANSION of slavery, not about the elimination of slavery (recall the proposed Corwin amendment).
<br><br><br>
The significant positive event was the passage of the 13th Amendment, as opposed to the "might have been" Corwin version of the 13th Amendment.
<br><br><br>
link to Phillips article
<br><br>
https://www.theguardian.com/commentisfree/2023/apr/09/civil-war-america-april-9-national-holiday
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-58369294491546114702023-04-09T08:16:00.001-07:002023-04-09T08:35:03.103-07:00"Fake news" isn't newIn a Google search for "sermon walking," one can find the following:
<br><br><br>
Reporters and city officials gathered at a Chicago railroad station one afternoon in 1953. The person they were meeting was the 1952 Nobel Peace Prize winner. A few minutes after the train came to a stop, a giant of a man - six feet four inches with bushy hair and a large mustache stepped from the train. Cameras flashed. City officials approached him with hands outstretched. Various people began telling him how honored they were to meet him.
The man politely thanked them and then, looking over their heads, asked if he could be excused for a moment. He quickly walked through the crowd until he reached the side of an elderly black woman who was struggling with two large suitcases. He picked up the bags and with a smile, escorted the woman to a bus. After helping her aboard, he wished her a safe journey. As he returned to the greeting party he apologized, "Sorry to have kept you waiting."
The man was Dr. Albert Schweitzer, the famous missionary doctor who had spent his life helping the poor in Africa. In response to Schweitzer’s action, one member of the reception committee said with great admiration to the reporter standing next to him, “That’s the first time I ever saw a sermon walking.”
<br><br><br>
link: https://www.cybersalt.org/illustrations/a-sermon-walking, which link states "author unknown"
<br><br><br>
A different variant appears on http://threethirtyministries.org/wp-content/uploads/2010/12/A-Big-Walking-Sermon.pdf :
<br><br><br>
Albert Schweitzer was acclaimed in his day as one of the greatest men on earth. He
was a missionary in the heart of Africa. He won more honors than any living man at that
time. He won the Nobel prize in 1952. On one occasion, when he came to Chicago, a
group of prominent citizens came to welcome him. They gathered around him, gave him
the key to the city, and told him that they were greatly honored by his visit. The
reporters took notes and the photographers were getting many pictures. Suddenly the
great man excused himself. He rushed over to a little woman who was struggling with a
heavy suitcase and several packages. He picked these things up and told the woman to
follow him. He literally ran interference for her through the crowded station, put her on
the train, and wished her a pleasant journey. When he returned to the committee, he
said, “I am sorry to keep you gentlemen waiting, I was just having my daily fun.” And
one of the reporters said, “That is the first time I ever saw a big sermon walking.” 1
1W. Herschel Ford, Sermons You Can Preach on John, (Grand Rapids, MI: Zondervan Publishing House,
1958), p. 273-4.
<br><br><br>
<b>The problem with these accounts, however uplifting they are, is that they never happened.</b>
Schweitzer only visited the United States once, to appear at Aspen, Colorado giving a talk on Goethe,
and to accept an honorary degree from the University of Chicago, The year was 1949, years prior to his
receipt of the Nobel Prize.
<br><br><br>
<br><br>
See http://home.pcisys.net/~jnf/usvisit.html
<br><br><br>
<b>Albert Schweitzer made only a single trip to the United States. </b> It was during the summer of 1949, when America was enjoying mounting prosperity, Europe was struggling to recover from the devastation of World War II, and Africa was about to shed its colonial past. He came to speak in Aspen, Colorado, at a festival celebrating the bicentennial of Goethe's birth, to earn funds for a leprosy clinic at Lambarene, and to meet with American drug manufacturers about modern leprosy treatments. Acclaimed everywhere he went and invited to speak at countless dinners and assemblies, Schweitzer stuck to his original schedule, traveling relentlessly and returning to Europe after only 25 days.
<br><br><br>
Compare to text in the article --
Can We No Longer Believe Anything We See? -- URL: https://dnyuz.com/2023/04/08/can-we-no-longer-believe-anything-we-see/
<br><br><br>
Last month, some people fell for images showing Pope Francis donning a puffy Balenciaga jacket and an earthquake devastating the Pacific Northwest, even though neither of those events had occurred. The images had been created using Midjourney, a popular image generator.
<br><br><br>
People figured out the fake jacket photo very quickly. In 2023, people repeat the Schweitzer story and listeners accept the truth of it
without question.
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-42771231896389865582023-04-01T13:55:00.001-07:002023-04-01T13:55:17.756-07:00The ITC and RAI prevail in appeal to the CAFCThe outcome
<br><br><br>
RAI Strategic Holdings, Inc., R.J. Reynolds Vapor
Company, and R.J. Reynolds Tobacco Company (collectively “Reynolds”) filed a complaint at the International
Trade Commission alleging that respondents Philip Morris
Products S.A., Philip Morris USA, Inc., and Altria Client
Services LLC (collectively “Philip Morris”) violated Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, through
the importation and sale of tobacco products that infringed
certain claims of U.S. Patent Nos. 9,901,123 and 9,930,915.
After conducting a Section 337 investigation, the Commission barred Philip Morris and its affiliates from importing
products infringing the asserted patents. Philip Morris appeals, contending that the Commission failed to “consult
with, and seek advice and information from” the Department of Health and Human Services (HHS) as required by
Section 337. In addition, Philip Morris challenges the
Commission’s determinations on public interest, domestic
industry, patent validity, and infringement. For the reasons set forth below, we affirm the Commission’s decision
in full.Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-29846854437883349622023-04-01T13:51:00.001-07:002023-04-01T13:51:25.866-07:00Judge Newman dissents in Roku caseThe outcome:
<br><br><br>
Roku, Inc. appeals the Patent Trial and Appeal Board’s
final written decision holding that claims 1, 3, 5, and 7 of
U.S. Patent No. 9,716,853 had not been proven unpatentable as obvious. This case turns on a single question—
whether a person of ordinary skill in the art would have
understood the prior art’s disclosure of a listing of remote
command codes formatted for transmission via two different communication methods to be a listing comprised of at
least a first communication method and a second communication method different than the first communication
method. Because the question presented involved the
scope and content of the prior art, the Board resolved this
dispute as a purely factual question, which we review for
substantial evidence. The Board thoroughly considered the
evidence of record and found in its final written decision
that the skilled artisan would not have understood the
prior patent’s listing of remote command codes to correspond to the claim limitation at issue. Because the Board’s
finding in this close factual dispute is supported by substantial evidence, we affirm the Board’s final written decision.
<br><br><br>
Judge Newman, in dissent
<br><br><br>
I respectfully dissent, for I have concerns as to both
procedural and substantive aspects of the court’s ruling.
<br><br><br>
(...)
<br><br><br>
The decision on appeal is “that Petitioner has not established by a preponderance of the evidence that any of
claims 1, 3, 5, or 7 of the ’853 patent are unpatentable.” J.A.
24. My concern is with the majority’s implicit holding that
if the underlying findings of fact are supported by substantial evidence, then we do not review the ultimate legal
question of non-obviousness.
I believe that de novo review is appropriate for the
questions of law presented herein, along with review of any
underlying facts for support by substantial evidence.
<br><br><br>
(...)
<br><br><br>
An example is that for selecting the communications
method, the ’853 patent shows use of a “matrix” in Figure
7, and states that the matrix contains the “form of command/transmission to be used and a pointer to the required
data value and formatting information for the specific command,” Roku Reply Br. 10 (quoting the ’853 patent col. 7 ll.
26–29), while Chardon lists “both CEC-formatted command codes and a parallel set of IR-formatted command
codes.” Id. (citing Chardon, ¶¶ [0008], [0039], [0044]).
However, any difference in the selection method does not
appear in the claims.
Applying the requisite analysis of law and fact, I conclude that the ’853 patent claims at issue would have been
obvious in view of Chardon, because the methods described
in the claims and the prior art are substantially identical
and serve the same purpose and use. I respectfully dissent
from my colleagues’ contrary ruling.Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-82042519623521331472023-03-20T16:36:00.000-07:002023-03-20T16:36:22.867-07:00Hantz software; claims not asserted are not part of judgmentThe conclusion:
<br><br><br><br>
Because, in view of the foregoing, we agree that the operative complaint asserted infringement of only claims 1
and 31–33 of each asserted patent, and because Sage did
not file any counterclaim of its own (instead, it simply
moved to dismiss Hantz’s complaint), we conclude that the
ineligibility judgment should apply to only claims 1 and
31–33 of the asserted patents. We therefore vacate the district court’s judgment insofar as it held any claim other
than claims 1 and 31–33 of each asserted patent ineligible
and affirm in all other respects.
<br><br><br>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-2372346843143240842023-03-13T14:41:00.001-07:002023-03-13T14:41:31.155-07:00Stipulation vacated in Amazon caseThe outcome:
<br><br><br>
In this patent infringement action, the parties entered
into a stipulation of non-infringement based on two of the
district court’s claim construction rulings. Because the
stipulation is ambiguous and therefore defective, we vacate
and remand for further proceedings.
<br><br><br>
In past cases, we have held that stipulated judgments
are defective if they are ambiguous in material respects.
See Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1335–36 (Fed.
Cir. 2008). The stipulated judgment here provides that
Amazon does not infringe under the district court’s constructions of “cooperating service provider” and “non-blocking bandwidth.” Under the circumstances of this case, the
stipulation does not provide sufficient detail to allow us to
resolve the claim construction issues presented on appeal.
First, the stipulation does not identify which claims of
the ’471 patent remain at issue in this appeal. We have
vacated judgments that fail to identify which claims are
implicated by the judgment. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1342 (Fed. Cir. 2002) (vacating a judgment in part “[b]ecause the district court did
not . . . identify the specific claims it held to be infringed
under the doctrine of equivalents.”).
More importantly, it is unclear whether the judgment
requires the affirmance of both “cooperating service provider” and “non-blocking bandwidth,” where the interpretation of cooperating service provider includes the term
“non-blocking bandwidth.”4 It is also unclear whether affirmance requires the approval of all aspects of the construction of “cooperating service provider.”
<br><br>
It is unclear whether, under the stipulation, Amazon
prevails on infringement if either construction is correct or
only if both are correct.
At oral argument, it became apparent that the parties
have significant disagreements as to the effect of the stipulation—disagreements that render it impossible for this
court to review the judgment.
AlterWAN asserts that the judgment of non-infringement rests solely on the district court’s construction of
“non-blocking bandwidth,” a term which appears both independently and in the district court’s construction of “cooperating service provider.” AlterWAN argues that the
district court’s construction requires bandwidth to be available to the customer at all times, even when the Internet is
inoperable. Because no system can provide such a service,
Amazon cannot infringe. At oral argument, AlterWAN
took the position that the “sole reason” Amazon does not
infringe under the claim constructions at issue is because
of the exclusion of the caveat they had sought at claim construction (“while the network is operational”). This is so
because “if the internet goes down, it doesn’t provide service.” Oral Arg. at 0:30–1:14; see also Oral Arg. at 31:02–
19 (“Q: Let’s adopt your construction of non-blocking bandwidth, which doesn’t have that limitation, it only requires
that . . . available when the internet is operable, okay? Is
your view that they infringe under that claim construction?
A: Yes, Your Honor.”). In AlterWAN’s view, the core issue
on appeal is whether the district court erred by failing to
add the qualifier “while the network is operational” to its
construction of “non-blocking bandwidth.”Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-18000760653484352522023-03-13T14:37:00.000-07:002023-03-13T14:37:24.244-07:00Appellant Apple scores partial victoryThe outcome:
<br><br><br>
We affirm in part and reverse in part. We affirm the
unreviewability dismissal of plaintiffs’ challenges to the
instructions as being contrary to statute and arbitrary and
capricious. No constitutional challenges are presented.
But we reverse the unreviewability dismissal of plaintiffs’
challenge to the instructions as having been improperly
issued because they had to be, but were not, promulgated
through notice-and-comment rulemaking under 5 U.S.C.
§ 553. That challenge, we also hold, at least Apple had
standing to present. We remand for further proceedings on
the lone surviving challenge. Like the district court, we do
not reach the merits of that challenge.
<br><br><br>
Of note
<br><br><br>
We then address the remaining challenge (concerning the absence of
notice-and-comment rulemaking). We hold that neither
§ 701(a)(1) nor § 701(a)(2) bars review of the third challenge and that at least Apple has standing to press it. We
therefore reverse the dismissal as to the third challenge
and remandLawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-71143329042779346402023-03-13T14:29:00.001-07:002023-03-13T14:29:07.924-07:00Appellant Intel wins at the CAFC
Appellant Intel prevails:
<br><br><br>
The Patent Trial and Appeal Board (“Board”) determined that Intel Corp. (“Intel”) failed to show that claim 5
of U.S. Patent No. 9,250,908 (“the ’908 patent”) was unpatentable as obvious in light of prior art references Kabemoto and Bauman.1 Intel Corp. v. PACT XPP Schweiz
AG, No. IPR2020-00518, Paper 34, 2021 WL 3503434
(P.T.A.B. Aug. 9, 2021) (“Final Written Decision”). <b>We reverse and remand.</b>
<br><br><br>
Background
<br><br><br>
PACT XPP Schweiz AG (“PACT”) owns the ’908 patent,
which relates to multiprocessor systems and how processors in those systems access data. Multiprocessor systems
typically store data in several places: there’s a main
memory, where all of a system’s data is stored, as well as
various cache memories, where smaller pieces of that same
data are stored. Cache memories are closer to the processors, allowing the processors quicker access to the data
available in a given cache. And a system can use multiple
cache levels, where a primary cache is closer to the processer but can store less data than a further-away secondary
cache.
The use of multiple cache memories can pose problems
for cache coherency, though. Different caches can have local copies of the same data, so inconsistencies may arise if
one processor changes its local copy of the data and that
change isn’t propagated to the other copies of that data.
That’s why multiprocessor systems often require a mechanism to monitor and maintain cache coherency. One way
to maintain cache coherency is by “snooping” along a
shared “bus.” See J.A. 1911; Kabemoto Fig. 3. Another way
to maintain cache coherency is by using a global, segmented secondary cache. See Bauman Fig. 6. Both of these
mechanisms use a shared entity between processors to detect changes between, and ultimately make changes to, local data copies. See Kabemoto col. 17 l. 27–col. 18 l. 6;
Bauman col. 5 l. 55–col. 6 l. 40.
<br><br><br>
Intel's argument
<br><br><br>
What the prior art discloses and whether a person of
ordinary skill would have been motivated to combine prior
art references are both fact questions that we review for
substantial evidence. PAR Pharm., Inc. v. TWI Pharms.,
Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). “Substantial evidence is such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324
(Fed. Cir. 2017) (cleaned up).
Intel argues that two of the Board’s conclusions about
underlying independent claim 4 lack substantial evidence.
First, Intel asserts that substantial evidence does not support the Board’s determination that the prior art fails to
disclose the segment-to-segment limitation. And second,
Intel contends that substantial evidence does not support
the Board’s determination that there was no motivation to
combine Kabemoto and Bauman. <b>We agree on both counts.</b>
<br><br><br>
Of the second argument
<br><br><br>
Intel also argues that the Board’s rejection of its
“known-technique” rationale for a motivation to combine
lacks substantial evidence.3 Appellant’s Br. 57–63 (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)); see also
Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir.
2021) (determining that the Board’s reasons for finding a
lack of motivation to combine were not supported by substantial evidence “[u]nder applicable legal principles”). We
agree and reverse the Board’s contrary finding.
<br><br><br>
Details
<br><br><br>
Additionally, “universal” motivations known in a particular field to improve technology provide “a motivation to
combine prior art references even absent any hint of suggestion in the references themselves.” Intel, 21 F.4th
at 797–99 (cleaned up) (emphasis in original) (determining
that the Board’s rejection of “increasing energy efficiency,”
a “generic concern” in electronics, as a motivation to combine lacked substantial evidence (cleaned up)).
Similarly, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same
way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
This is the so-called “known-technique” rationale. And if
there’s a known technique to address a known problem using “prior art elements according to their established functions,” then there is a motivation to combine. Intel,
21 F.4th at 799–800. And we specify address a known
problem because “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.”
Id. at 800 (cleaned up) (emphasis in original).
<br><br><br>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-78245469438082235302023-03-08T14:51:00.000-08:002023-03-08T14:51:16.319-08:00UMinnesota loses at CAFC. "Blaze marks" interpreted.The outcome was appellant lost:
<br><br><br><br>
The Regents of the University of Minnesota (“Minnesota”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board
(“the Board”) holding that claims 1−9, 11−21, and 23−28 of
U.S. Patent 8,815,830 are unpatentable as anticipated by
the asserted prior art. Gilead Scis., Inc. v. Regents of the
Univ. of Minn., No. IPR2017-01712, 2021 WL 2035126
(P.T.A.B. May 21, 2021) (“Decision”). For the following reasons, we affirm.
<br><br><br><br>
Subject matter
<br><br><br><br>
This appeal pertains to an inter partes review (“IPR”)
in which Gilead Sciences, Inc. (“Gilead”) filed a petition
challenging claims of the ’830 patent directed to phosphoramidate prodrugs of nucleoside derivatives that prevent
viruses from reproducing or cancerous tumors from growing.
<br><br><br><br>
"Blaze marks" again
<br><br><br>
The written description requirement of 35 U.S.C. § 112
reflects the basic premise of the patent system, viz., that
one discloses an invention and, if it also fulfills the other
requirements of the statute, one obtains a patent. Quid pro
quo. Judicial gloss in the case law reflects the need that
the disclosure show that one actually made the invention
that one is claiming, i.e., that it possessed the invention as
claimed. “The purpose of the written description requirement is to prevent an applicant from later asserting that
he invented that which he did not.” Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003).
Written description of an invention claimed as a genus
of chemical compounds, as here, raises particular issues because, as we have held, written description of a broad genus requires description not only of the outer limits of the
genus but also of either a representative number of members of the genus or structural features common to the
members of the genus, in either case with enough precision
that a relevant artisan can visualize or recognize the members of the genus. See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1350−52 (Fed. Cir. 2010) (en banc). A
broad outline of a genus’s perimeter is insufficient. See id.
But Minnesota is not arguing in this case that it described a sufficient number of species to constitute a written description of the claimed subgenus. Rather,
Minnesota asserts that its earlier NP2-P1 applications literally described, or provided blaze marks to, the subgenus
of the ’830 claims in its broad outlines. The Board held that
they did not, and we agree.
<br><br>
(...)
<br><br>
Evaluating whether the written description requirement is satisfied involves “an objective inquiry into the four
corners of the specification from the perspective of a person
of ordinary skill in the art.” Ariad Pharms., 598 F.3d at
1351. For genus claims, which are present here, we have
looked for blaze marks within the disclosure that guide attention to the claimed species or subgenus. In re Ruschig,
379 F.2d 990, 994–95 (CCPA 1967); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996); see also Purdue
Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27
(Fed. Cir. 2000). (Here, the parties use language such as
genus and subgenus to refer to the various disclosures involved in this inquiry. The disclosure of NP2-P1, being
broader than claim 1 of the ’830 patent, has a relationship
of genus to the narrower subgenus of the ’830 patent
claims. We will use this language of the parties.)
The primary considerations in a written description
analysis are factual and must be assessed on a case-by-case
basis. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562
(Fed. Cir. 1991). We thus review the Board’s decision regarding written description for substantial evidence. Gartside, 203 F.3d at 1316.
<br><br><br>
And "laundry list"
<br><br><br>
The same is true here. The claims of P1 recite a compendium of common organic chemical functional groups,
<b>yielding a laundry list disclosure </b>of different moieties for
every possible side chain or functional group. Indeed, the
listings of possibilities are so long, and so interwoven, that
it is quite unclear how many compounds actually fall
within the described genera and subgenera. Thus, we affirm the Board’s decision that there is no ipsis verbis written description disclosure provided by P1 claim 47
sufficient to support the ’830 patent’s claims.
<br><br><br><br><br><br>
Ariad again
<br><br><br><br>
Minnesota further argues that the Board erred in failing to consider the holdings in Ariad. In so doing, Minnesota mischaracterizes Ariad as holding that merely
“disclosing ‘structural features common to the members of
[a] genus’ demonstrates possession of, and thereby supports, the claimed genus.” Appellant’s Br. at 5. That is not
what Ariad held.
As the Board recognized, sufficiently describing a genus under Ariad requires a description of a claimed genus
disclosing either (1) “a representative number of species
falling within the scope of the genus,” which the parties do
not dispute is lacking here, or (2) “structural features common to the members of the genus,” either of which must
enable “one of skill in the art [to] ‘visualize or recognize’ the
members of the genus.” Decision at *4; Ariad, 598 F.3d at
1350 (emphasis added). As indicated, the first requirement
is not at issue here.
As for the second, the Board addressed the question
whether one of skill in the art would have been able to visualize or recognize the members of the claimed genus by
“search[ing] for blaze marks that guide a skilled artisan to
the claimed subgenera.” Decision at *10. That was not error. Regarding whether common structural features must
exist between a claim and a putative priority disclosure,
those features must constitute the near-entirety of the
structures being compared. But the structures here are so
extensive and varied that the structures of P1 claim 47,
which, through its multiple dependencies, encompasses a
significantly larger genus than that claimed in the ’830 patent, are not sufficiently common to that of claim 1 of the
’830 patent to provide written description support.
Finding no adequate blaze marks, the Board concluded
that NP2-P1 do not provide sufficient written description
to support the ’830 patent claims.
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-29360848274595845242023-02-28T14:38:00.001-08:002023-02-28T14:38:17.001-08:00CAFC does "Ballyhoop." Attorney fee issues.An attorneyees issue:
<br><br><br>
Barracuda Tackle LLC, Florida Fishing Tackle Manufacturing Company, Inc., and David Burton Young (collectively, “Barracuda”) appeal the decision of the United
States District Court for the Middle District of Florida that
denied Barracuda attorney fees under 35 U.S.C. § 285.
Dominguez v. Barracuda Tackle LLC, No 8:20-cv-1538-
KKM-AEP, 2021 WL 5998127 (M.D. Fla. Dec. 20, 2021).
For the reasons set forth below, we affirm.
<br><br><br><br>
Some details
<br><br><br><br>
Yunior Dominguez and Salt Addict, Inc. d/b/a The Ballyhoop (collectively “Ballyhoop”) filed a complaint against
Barracuda for infringement of U.S. Patent No. 10,165,764
(“the ’764 patent”) in the United States District Court for
the Southern District of Florida. The ’764 patent is directed to a collapsible fishing bait net, i.e., a net that can
be used to capture small fish that can be used as bait to
catch larger fish. ’764 Patent col. 1 ll. 12–42. Ballyhoop
alleged that Barracuda’s bait nets infringed claims 1 and 3
of the ’764 patent directly or indirectly, either literally or
under the doctrine of equivalents.1
Barracuda filed a motion to dismiss, arguing that Ballyhoop had failed to state a claim and that the Southern
District of Florida constituted an improper venue for the
suit. Barracuda also filed a motion for claim construction,
a motion for summary judgment of non-infringement, and
a motion seeking sanctions under Federal Rule of Civil Procedure 11 against Ballyhoop for bringing a purportedly
frivolous claim. Ballyhoop responded only to the motion to (...)
<br><br><br><br>
(...)
With regard to Barracuda’s motion for sanctions, the
magistrate judge determined that Ballyhoop’s suit was not
frivolous and that Ballyhoop had demonstrated an effort to
engage in a pre-suit investigation of its infringement claim.
“Further,” the magistrate judge noted, “a reasonable juror
could conclude that the Accused Product and the collapsible bait net claimed in the ’764 Patent perform substantially the same function with substantially the same result
but just not as to the way in which each achieves that result, especially in light of the claims construction.” Id. Accordingly, the magistrate judge recommended that
Barracuda’s motion for sanctions be denied. Id.
<br><br><br>
(...)
<br><br><br>
After judgment was entered in its favor, Barracuda
filed a motion seeking an award of attorney fees under 35
U.S.C. § 285. The magistrate judge issued a Report and
Recommendation that Barracuda’s request be denied. J.A.
9–21. In reaching this conclusion, the magistrate judge rejected Barracuda’s argument that the case was exceptional
because Ballyhoop’s infringement position was unreasonable, noting that, in the context of Barracuda’s motion for
sanctions under Rule 11, the court had found Ballyhoop
had maintained a nonfrivolous claim for patent infringement and had demonstrated an effort to engage in pre-suit
investigation of the claim. J.A. 14–16. The magistrate
judge also considered and rejected Barracuda’s argument
that the case was exceptional because Ballyhoop had engaged in litigation misconduct and because Ballyhoop had
bad-faith motivation in bringing the suit. J.A. 16–18.Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-19794853410474568172023-02-28T14:30:00.000-08:002023-02-28T14:30:00.612-08:00Drug de-listing issue tackled by CAFC in Jazz v. AvadelIn Jazz v. Avadel:
<br><br><br>
Jazz Pharmaceuticals, Inc. (“Jazz”) appeals from an order of the United States District Court for the District of
Delaware granting a motion for an injunction brought by
Avadel CNS Pharmaceuticals, Inc. (“Avadel”). See Jazz
Pharms., Inc. v. Avadel CNS Pharms., LLC, No. 21-cv00691, 2022 WL 17084371 (D. Del. Nov. 18, 2022) (“Decision”). The injunction directed Jazz to take measures to
delist U.S. Patent 8,731,963 (“the ’963 patent”) from the
U.S. Food and Drug Administration’s (“the FDA’s”) Approved Drug Products with Therapeutic Equivalence Evaluations publication, more colloquially known as the
“Orange Book.” For the following reasons, we lift our stay
of the injunction and affirm.
<br><br><br><br>
The drug at issue:
<br><br><br>
Jazz holds an approved New Drug Application (“NDA”)
for the narcolepsy drug Xyrem®. J.A. 1445. Xyrem’s active
ingredient is sodium gamma-hydroxybutyrate (“GHB”),
which is also known as sodium oxybate. Id. GHB exerts a
heavily sedating effect, which is theorized to grant deepened nighttime sleep, resulting in improved daytime wakefulness. GHB is prone to heavy misuse and is infamously
known as a date-rape drug. Given that misuse, the FDA
conditioned approval of Jazz’s NDA upon development of
Risk Evaluation and Mitigation Strategies (“REMS”),
which include protocols that must be followed prior to
prescribing or dispensing Xyrem. Id. Xyrem’s REMS originally restricted distribution to a single-pharmacy system,
although the FDA waived that requirement in 2017. J.A.
5660.
The ’963 patent relates to Jazz’s single-pharmacy distribution system, which controls access to abuse-prone prescription drugs prescribed to narcolepsy patients through
a central pharmacy and computer database by tracking
prescriptions, patients, and prescribers.
<br><br><br>
Jazz loses:
<br><br><br><br>
Jazz asserts that, in 2014, the regulatory framework
permitted Jazz to list the ’963 patent, which, it says, at a
minimum fell into a category of patents neither required
nor forbidden to be listed. According to Jazz, because it
was permissive to list the ’963 patent in 2014,
§ 355(c)(3)(D)(ii)(I) does not provide Avadel with the power
to request an order to delist it now. We disagree.
As the district court correctly analyzed, the delisting
statute does not require us to consider whether the patent
holder violated the law by listing the patent in the first instance. It simply provides that those accused of infringing
a listed patent may request an order requiring the patent
holder to correct or delete listings for patents that do not
claim the drug or a method of using the drug. As the ’963
patent claims neither and has been asserted in a patent
infringement action against Avadel, § 355(c)(3)(D)(ii)(I)
provides Avadel with a delisting remedy. The district court
therefore correctly ordered Jazz to seek delisting of the ’963
patent from the Orange Book.
CONCLUSION
We have considered Jazz’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we affirm and lift our stay of the injunction requiring Jazz to ask
the FDA to delist the ’963 patent. As the original date to
comply with the injunction has expired, we modify the injunction insofar as restarting the 14-day period for compliance prescribed by 21 C.F.R. § 314.53(f)(2)(i) to be within
14 days of this decision.Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-27443924268877856802023-01-30T13:42:00.000-08:002023-01-30T13:42:04.112-08:00Mark Lemley loses at CAFC; the intersection of KSR and design patentsThe outcome of the case was that LKQ (represented by Mark Lemley; MARK A. LEMLEY, Lex Lumina PLLC, New York, NY,
argued for appellants. ) lost its appeal:
<br><br><br><br>
LKQ Corp. and Keystone Automotive Industries, Inc.
(collectively, “LKQ”) appeal from a final written decision of
the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that LKQ failed to show
by a preponderance of the evidence that U.S. Patent
D797,625 (the “’625 patent”) was anticipated or would have
been obvious over the cited prior art before the effective filing date. See LKQ Corp. v. GM Glob. Tech. Operations
LLC, IPR2020-00534, Paper 28 (P.T.A.B. Aug. 4, 2021)
(“Decision”), J.A. 1–60. For the reasons provided below, <b> we
affirm.</b>
<br><br><br><br>
Judge Lourie wrote additional views to the per curiam opinion.
<br><br><br><br>
The panel resolves this case by determining that substantial evidence supports the Board’s conclusion that the
claims of the ’625 patent are not unpatentable as anticipated or obvious. I agree. I write separately to respond to
the assertion by appellant that the Board improperly relied
on our predecessor court’s Rosen decision for its rationale
in deciding its case. Appellant argues that Rosen, whatever its validity at the time it was decided, is inconsistent
with, and hence was implicitly overruled, by the Supreme
Court in KSR. The panel resolves the case without having
to reach this issue, but I comment separately on the argument appellant raises, but which we do not reach.
Rosen was decided by the Court of Customs and Patent
Appeals in 1982, sitting with its usual en banc panel of
Judges Markey, Rich, Baldwin, Miller, and Nies, hardly a
group unversed in patent law. Rosen, in reversing the Patent Office’s Board of Appeals, stated that “there must be a
reference, a something in existence, the design characteristics of which are basically the same as the claimed design
in order to support a holding of obviousness.” In re Rosen,
673 F.2d 388, 391 (C.C.P.A. 1982) (citing In re Jennings,
182 F.2d 207, 208 (C.C.P.A. 1950)).
Appellant argues that the Supreme Court in reviewing
Teleflex, Inc. v. KSR Int’l Co., 119 Fed. Appx. 282 (Fed. Cir.
2005), a non-precedential decision of ours that recited almost as boilerplate the longstanding requirement that, in
evaluating a combination of references asserted to render
a claimed invention obvious, there must be some teaching,
suggestion, or motivation shown in the prior art to combine
the references, overruled Rosen. The Court stated, “[t]he
obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation . . . .” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). The Court did note that the teaching, suggestion,
and motivation test “captured a helpful insight,” but it
found it overly “rigid.” Id. at 418. That essentially is the
broad concept that appellant now asserts has overruled an
almost forty-year-old design patent decision that this court
has been bound to follow and has continued to follow in the
decade since KSR was decided.
I disagree. First, KSR did not involve design patents,
which is the type of patent we have here before us. Utility
patents and design patents are distinct types of patents.
Utility patents protect processes, machines, manufactures,
compositions of matter, and improvements thereof. But
their inventions must be “useful.” 35 U.S.C. § 101. A design
patent protects ornamentation, the way an article looks, 35
U.S.C. § 171. See M.P.E.P. § 1502.01. Claims and claim
construction in design patents are thus quite different compared with utility patents. See Richardson v. Stanley
Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010) (questioning how “a court could effectively construe design claims,
where necessary, in a way other than by describing the features shown in the drawings.”); Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc)
(citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)) (finding
that a design is better represented by an illustration than
a description).
<br><br><br>
While 35 U.S.C. § 103, which deals with obviousness,
does not differentiate between types of inventions, and
hence applies to all types of patents, the considerations involved in determining obviousness are different in design
patents. Obviousness of utility patents requires considerations such as unexpected properties, utility, and function.
Design patents, on the other hand, relate to considerations
such as the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Ornament is
in the eyes of the beholder. Functional utility is objective.
What is the utility or function of something that is ornamental? To be sure, it may also be functional and have
use, as do the fenders in the case before us, but that function is beside the point when considering whether its ornamental features would have been obvious. And what is an
unexpected property in the context of design patents, for it
must be related to ornament, as function is not to be considered in evaluating obviousness of a design?
Obviousness of an ornamental design thus requires different considerations from those of a utility invention.
KSR did not address any of these considerations, and it did
not even mention design patents. Surely, it did not intend
to speak to obviousness of designs, and what was said
about a test long applied to utility inventions was not
indicated to apply to design patents. It cannot reasonably
be held to have overruled a precedent of one of our predecessor courts involving a type of patent it never mentioned.
A comprehensive review of obviousness in design patents, Overcoming the “Impossible Issue” of Nonobviousness in Design Patents, supports the view that “KSR has
very limited, if any, applicability to design patents.” Janice
M. Mueller and Daniel Harris Brean, 99 KY. L. J., 419, 518
(2011). It further states that, “[m]ost of the KSR Court’s
discussion is completely irrelevant to what design patents
protect.” Id. It notes that “[t]he subject matter of a design
patent is fundamentally different from a utility patent, as
evidenced by the separate statutory provisions that define
the eligible subject matter of each type of patent.” Id. “Indeed, a patented design ‘need not have any practical utility,’ the antithesis of a utility invention.” Id.
Second, while Rosen may have overstated its point in
adding to the quoted Jennings language such as that the
primary reference must have design characteristics that
are “basically the same” as those of the claimed design, this
statement hardly reflects the rigidity the Court was condemning in KSR. 673 F.2d at 391.
And finally, Rosen was not essentially incorrect. In any
obviousness analysis, the question is whether the claimed
invention was obvious, but obvious over what. One has to
start from somewhere. See K/S Himpp v. Hear-Wear
Techs., 751 F.3d 1362, 1366 (Fed. Cir. 2014) (finding that
an examiner may not rely on his common knowledge without a supporting prior art reference) (citing M.P.E.P.
§ 2144.03).
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-75621065517592761832023-01-21T12:45:00.002-08:002023-01-21T12:48:45.305-08:00Uanticipated hazards in the court houseA lot can go wrong when one goes to court.
<br><br><br>
One thing one does not usually worry about is a killer soap dispenser, the squirts one's torso,
rather than hands.
<br><br><br><br><br><iframe allowfullscreen='allowfullscreen' webkitallowfullscreen='webkitallowfullscreen' mozallowfullscreen='mozallowfullscreen' width='320' height='266' src='https://www.blogger.com/video.g?token=AD6v5dw7ZRN-zm4pBxaqKk0WcN1vRGgN_ZYOvEUZS0tzcZNvODd2DSNg_vvsyEYrebHklZbFkPRu2K3u6hI' class='b-hbp-video b-uploaded' frameborder='0'></iframe>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-80323984627737940962023-01-19T14:00:00.000-08:002023-01-19T14:00:42.373-08:00CAFC overrules conclusion of indefiniteness in Grace Instrument caseThe outcome:
<br><br><br>
Grace Instrument Industries, LLC (Grace) appeals a
claim construction order issued by the United States District Court for the Southern District of Texas finding the
term “enlarged chamber” indefinite and construing the
term “means for driving said rotor to rotate located in at
least one bottom section.” As a result of the district court’s
order, the parties stipulated that asserted claims 1, 2, 4, 5,
7–9, 11, 14, 15, and 17 of U.S. Patent No. 7,412,877
(’877 patent) are invalid and that claims 4, 5, 7–9, 11, 14,
15, and 17 are not infringed, and the court entered final
judgment in favor of Chandler Instruments Company, LLC
(Chandler). Because the district court erred in its analysis
of the term “enlarged chamber,” we vacate the district
court’s determination that “enlarged chamber” is indefinite
and remand for further proceedings consistent with this
opinion. We affirm the district court’s construction of
“means for driving said rotor to rotate located in at least
one bottom section.”
<br><br><br>
AND
<br><br><br>
A “patent is invalid for indefiniteness if its claims, read
in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
898, 901 (2014). “The ultimate conclusion that a claim is
indefinite under 35 U.S.C. § 112, ¶ 2 is a legal conclusion,
which we review de novo.” Cox Commc’ns, Inc. v. Sprint
Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016) (citation
omitted). “As in claim construction, we review a district
court’s underlying factual determinations for clear error.”
Id. (citations omitted). Moreover, “[a]ny fact critical to a
holding on indefiniteness . . . must be proven by the
challenger by clear and convincing evidence.” Id. (alteration in original) (citation and internal quotation marks
omitted).
<br><br><br>
(...)
<br><br><br>
Thus, although “enlarged chamber” is not a term of art,
the intrinsic record sufficiently guides a skilled artisan to
the meaning of that term as used in the ’877 patent. The
district court erred in its reliance on extrinsic evidence—
i.e., dictionary definitions—that contradict the scope and
meaning of “enlarged chamber” that a skilled artisan
would ascertain by reading the intrinsic record. See Phillips, 415 F.3d at 1322–23; see also id. at 1316 (“[O]ur cases
recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from
the meaning it would otherwise possess.”); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir.
2016) (“The only meaning that matters in claim construction is the meaning in the context of the patent.”).<br><br>
<br>
THUS
<br><br><br>
In sum, we find the term “enlarged chamber” in the
’877 patent to mean “a chamber that is large enough to contain excess test sample prior to pressurization to prevent
mixing of the test sample and pressurization fluid in the
lower measurement zone when the test sample is pressurized to maximum rated pressure.” <b>We thus vacate the district court’s determination that “enlarged chamber” is indefinite</b>, vacate the district court’s invalidity determinations based thereon, and remand for further proceedings
consistent with this opinion.
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-460217747551872822023-01-19T13:46:00.001-08:002023-01-19T13:46:27.916-08:00Synqor loses at CAFC in appeal related to DC to DC conversionIn Synqor v. Vicor, the final result at the CAFC was:
<br><br><br>
In 2017, we affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board’s (Board) decision in an inter partes reexamination of U.S. Patent No.
8,023,290 (’290 patent). Vicor Corp. v. SynQor, Inc., 869
F.3d 1309, 1312 (Fed. Cir. 2017) (SynQor III). On remand,
the Board held all of the ’290 patent’s claims unpatentable
under 35 U.S.C § 103 over two different combinations of
references. Because the Board’s fact findings are supported
by substantial evidence and its unpatentability determination is correct as to the second combination of
references, we affirm.
<br><br><br>
The technology
<br><br><br>
The ’290 patent is entitled “High Efficiency Power Converter” and claims a system for DC-DC power conversion—
i.e., <b>converting a direct current (DC) source from one voltage level to another.</b> ’290 patent col. 17 l. 9 – col. 18 l. 35.
The ’290 patent is part of a patent family owned by SynQor,
Inc. (SynQor) involving DC-DC conversion, and we have
previously discussed that technology in SynQor III. See
869 F.3d at 1312–15. The ’290 patent family describes a
“two-stage architecture” for DC-DC converters, which
SynQor refers to as “Intermediate Bus Architecture” (IBA).
Id. at 1314. The ’290 patent claims a particular type of IBA
converter implemented using switching regulators. Id.;
’290 patent col. 17 ll. 26–30
<br><br><br>
Overview of arguments
<br><br><br>
We review the Board’s ultimate obviousness determination de novo and its underlying factual findings for substantial evidence. PersonalWeb Techs., LLC v. Apple, Inc.,
917 F.3d 1376, 1381 (Fed. Cir. 2019) (citation omitted).
Relevant here, factual findings underlying an obviousness determination include: (1) whether a skilled artisan
would have been motivated to modify the teachings of a reference, and (2) whether there is a nexus between secondary
considerations of nonobviousness and the claimed invention. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327, 1331–
32 (Fed. Cir. 2016). A patentee may establish nexus by
showing that the secondary considerations evidence is a
“direct result of the unique characteristics of the claimed
invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d
1366, 1373–74 (Fed. Cir. 2019) (quoting In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996)). For patents claiming combinations of prior art features, a patentee must show that
the secondary considerations evidence is “attributable to
the claimed combination of [prior art features], as opposed
to, for example, prior art features in isolation or unclaimed
features.” Id. at 1378 (citing Ethicon Endo-Surgery, Inc. v.
Covidien LP, 812 F.3d 1023, 1034 (Fed. Cir. 2016)).
<br><br><br>
Of secondary considerations
<br><br><br>
SynQor’s arguments fail because it has not shown that
its relied-on success, skepticism, adoption, or praise, etc.,
were a “direct result of the unique characteristics of the
claimed invention”—in this case, were “attributable to the
claimed combination of [prior art features], as opposed to,
for example, prior art features in isolation or unclaimed
features.” Fox Factory, 944 F.3d at 1373–74, 1378 (citation
omitted). We do not discern any showing by SynQor on appeal before this court or in the Board proceeding that there
was a nexus between its secondary considerations evidence
and the claimed combination of features in the ’290 patent—i.e., an IBA converter using switching regulators.
<br><br><br>
Of waiver of arguments
<br><br><br>
SynQor did not make either of these arguments in its opening brief, and thus these arguments are
waived. See SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1319 (Fed. Cir. 2006) (“[A]rguments not
raised in the opening brief are waived.”).
<b>AND</b>
SynQor’s remaining two arguments were not presented
to the Board: (1) skilled artisans would not have been motivated to select Steigerwald ’090’s circuit for modification
because two-stage architectures had been discredited, Appellant’s Br. 57–58; and (2) Pressman teaches away from
using a two-stage architecture, id. 61–62, 65. SynQor forfeited these arguments by not first raising them to the
Board, and we decline to address these fact-bound contentions in the first instance. See In re Google Tech. Holdings
LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (explaining that an
argument not presented to the tribunal under review is forfeited absent exceptional circumstances).
<br><br><br>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-3134117477855239832023-01-08T13:35:00.004-08:002023-01-08T13:35:59.875-08:00"Sign of the Times" in the 21st centuryIPBiz posted a "sign of the times" reference on empty showrooms of car dealers:
<br><br>
<i>
Thu, Jul 22, 2021 at 4:12 PM
IPBiz: "Sign of the Times," revisited in 2021
http://ipbiz.blogspot.com/2021/07/sign-of-times-revisited-in-2021.html
</i>
<br><br><br>
See also: https://youtu.be/rhKTqdSwx2I
<br><br><br>
Now, as to more fundamental things, such as food (rather than cars), note
the folloing
<br><br><br><br><br>
<div class="separator" style="clear: both;"><a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhEQ_W8pBVTKdGr92AxruRV3nLaIBpxri3bDcI6E1IjZfdFaMnYgh6o1CjuSGgpc1nL5SRnJn4LyhW-mAaiH7kMr4WELzqTJEoC7-OUpOhZLFaWUGkAHAmXNamySqLUan_iZ2k38R-ZcoUMjFb_7Oqd-epxmAuLipol0e2pYjHkuQI6BfUHdI4/s640/MulchHamilton.jpg" style="display: block; padding: 1em 0; text-align: center; clear: left; float: left;"><img alt="" border="0" height="400" data-original-height="640" data-original-width="480" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEhEQ_W8pBVTKdGr92AxruRV3nLaIBpxri3bDcI6E1IjZfdFaMnYgh6o1CjuSGgpc1nL5SRnJn4LyhW-mAaiH7kMr4WELzqTJEoC7-OUpOhZLFaWUGkAHAmXNamySqLUan_iZ2k38R-ZcoUMjFb_7Oqd-epxmAuLipol0e2pYjHkuQI6BfUHdI4/s400/MulchHamilton.jpg"/></a></div>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-18627788507945806222023-01-06T13:33:00.001-08:002023-01-06T13:33:47.980-08:00Dionex v. Agilent: interference caseThe outcome of the interference case:
<br><br><br>
Dionex Softron GmbH (“Dionex”) appeals the Patent
Trial and Appeal Board’s (“Board”) judgment in an interference proceeding, awarding priority to Agilent Technologies, Inc. (“Agilent”). The parties dispute priority, claim
construction, written description support, conception, and
reduction to practice. We affirm.
<br><br><br>
Claim copying
<br><br><br>
This case involves an unusual history, in which the
parties copied one another’s claims in separate attempts to
provoke an interference. First, Agilent substantially copied Dionex’s claims but, nonetheless, failed to provoke an
interference.1 Agilent then amended its claims, and Dionex subsequently copied those amended claims verbatim,
resulting in the interference at issue. The instituted interference was between Agilent’s U.S. Patent Application No.
15/965,402 and Dionex’s U.S. Patent Application No.
16/016,866.
<br><br><br>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-26316628501552674842023-01-02T15:21:00.004-08:002023-01-02T15:21:32.383-08:00Gatling guns used by bad guys in TV WesternsOn November 12, 1962, the episode of "The Rifleman" titled "The Assailents" featured a plot in which certain "assailents" planned to munder a U.S. Senator (played by Edward Platt, later "the chief" in "Get Smart"). The weapon was a Gatling gun mounted in the second floor of North Fork's big hotel. Yes, Lucas McCain did "take on" the Gatling gun. Surviving the attack, Platt gives an interesting speech at the end backing statehood for New Mexico.
<br><br><br>
On March 7, 1971, the episode of Bonanza titled "Terror at 2:00" also involves the attempted attack on Europeans and African Americans planning to sign a peace treaty. The weapon was a Gatling gun on the second floor of a hotel in Virginia City, manned by supposed newspaper men from St. Louis. The key "speech" here was a racist rant by one of the villains (played by Steve Inhat ).
Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-30126497368153999162023-01-02T15:03:00.001-08:002023-01-02T15:03:47.374-08:00The CAFC does the "collateral order" doctrineThe outcome:
<br><br><br>
Modern Font Applications LLC seeks an interlocutory
appeal to challenge an order of the United States District
Court for the District of Utah, which affirmed a magistrate
judge’s decision deeming MFA’s in-house counsel a “competitive decisionmaker” and maintaining Alaska Airlines,
Inc.’s Attorneys’ Eyes Only designations as to its source
code. Mod. Font Applications v. Alaska Airlines, No. 19-cv00561, 2021 WL 364189, at *1 (D. Utah Feb. 3, 2021)
(“Magistrate Decision”), aff’d sub nom. Mod. Font Applications LLC v. Alaska Airlines Inc., 2021 WL 3729382 (D.
Utah Mar. 2, 2021) (“District Court Order”). Because we
lack jurisdiction over MFA’s interlocutory appeal under the
collateral order doctrine, we dismiss.
<br><br><br>
Of the doctrine
<br><br><br>
The collateral order doctrine is a practical construction
of the final judgment rule that permits review of not only
judgments that “terminate an action,” but also the “small
class” of collateral rulings that are appropriately deemed
“final.” Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100,
106 (2009) (citing Cohen v. Beneficial Indus. Loan Corp.,
337 U.S. 541, 545–46 (1949)). Courts of appeals may allow
interlocutory appeals of decisions that (1) are “conclusive;”
(2) “resolve important questions separate from the merits;”
and (3) are “effectively unreviewable on appeal from the final judgment in the underlying action.” Swint v. Chambers
Cnty. Comm’n, 514 U.S. 35, 42 (1995) (citing Cohen, 337
U.S. at 546).
<br><br><br>
Judge Newman said
<br><br><br>
The panel majority holds that we do not have jurisdiction to consider this appeal of the district court’s evidentiary ruling. However, our authority to review this ruling
is not a matter of appellate jurisdiction, but of appellate
discretion. A court’s jurisdiction is established by statute,
and the question concerning this particular protective order is within our jurisdiction and subject to our discretion
to review and resolve.
I believe that in the circumstances hereof it is preferable to exercise this discretion and decide the question
concerning this protective order. Nonetheless, the panel
majority holds that we do not have jurisdiction, and relegates our decision of this aspect until after final judgment—thus creating inefficiency and possible injustice. I
respectfully dissent.
<br><br><br>
Jurisdiction is a rigorous concept, for it establishes “a
tribunal’s power to hear a case, a matter that can never be
forfeited or waived.” Union Pac. R.R. Co. v. Brotherhood of
Locomotive Eng’rs & Trainmen Gen. Comm. of Adjustment,
Cent. Region, 558 U.S. 67, 81 (2009) (quoting United States
v. Cotton, 535 U.S. 625, 630 (2002)). The Supreme Court
explained:
Recognizing that the word “jurisdiction” has been
used by courts, including this Court, to convey
“many, too many, meanings,” Steel Co. v. Citizens
for Better Environment, 523 U.S. 83, 90 (1998), we
have cautioned, in recent decisions, against profligate use of the term. Not all mandatory “prescriptions, however emphatic, are . . . properly typed
jurisdictional,” we explained in Arbaugh v. Y & H
Corp., 546 U.S. 500, 510.
Id. (citations omitted). The Court has discussed the difference between subject matter jurisdiction and a claim-processing matter, see Kontrick v. Ryan, 540 U.S. 443, 456
(2004), and the distinction between a court’s jurisdiction
founded on legislative action, and a court’s discretion to act
on matters within its jurisdiction. See Bowles v. Russell,
551 U.S. 205, 211–12 (2007) (“This Court’s treatment of its
certiorari jurisdiction also demonstrates the jurisdictional
distinction between court-promulgated rules and limits enacted by Congress.”).
<br><br><br>
Appellate courts have jurisdiction to resolve issues that
arise in cases within their appellate assignment. Appellate
review is a matter of appellate discretion, as illustrated in
Metlin v. Palastra, 729 F.2d 353, 355 (5th Cir. 1984) (“Our
jurisdiction can, in the interest of judicial economy, extend
as a matter of discretion to review of the closely related denial of qualified immunity.”). See also, e.g., Blackie v. Barrack, 524 F.2d 891, 900 (9th Cir. 1975) (“Because the record
is hazy, because we have granted the extensions, and because the issues have now been briefed and argued and are
ripe for decision, we think the preferable course is for us to
decide the appeal and provide guidance to the trial court.”).
In A. Olinick & Sons v. Dempster Bros., Inc., 365 F.2d 439
(2d Cir. 1966) the appellate court discussed its discretion
to accept or reject a certified question and applicability of
the writ of mandamus, and stated that “the Court of Appeals has total discretion—akin to that exercised by the Supreme Court on petitions for certiorari—in deciding
whether or not to permit review.” Id. at 442.
Protective orders concerning confidentiality and discovery have been reviewed, applying the standard of abuse
of discretion. The court in SEC v. Merrill Scott & Assocs.,
Ltd., 600 F.3d 1262, 1271 (10th Cir. 2010) stated that “ordinarily requests to modify [a protective order] are directed
to the district court’s discretion and subject to review only
for abuse of discretion,” quoting 8 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice &
Procedure § 2044.1 at 575–76 (2d ed. 1994), and stating:
“We conclude that we have jurisdiction to address the merits of the challenged order of the district court.” Id. at 1270.
Other circuits have acted similarly. E.g., SEC v.
TheStreet.Com, 273 F.3d 222, 228 (2d Cir. 2001) (concluding that the appellate court has jurisdiction to review modification of a protective order); Moorman v. UnumProvident
Corp., 464 F.3d 1260, 1272 (11th Cir. 2006) (“Under § 1292(b), appellate review, even for certified questions, is discretionary . . . . By extension, review by
appellate courts of noncertified questions is also discretionary.”).
We discussed this discretion in In re Convertible Rowing Exerciser Patent Litig., 903 F.2d 822 (Fed. Cir. 1990):
The granting of the appeal is also discretionary
with the court of appeals which may refuse to entertain such an appeal in much the same manner
that the Supreme Court today refuses to entertain
applications for writs of certiorari.
Id. at 822. We explained that appellate review of an interlocutory order is a matter of discretion:
It should be made clear that if application for an
appeal from an interlocutory order is filed with the
court of appeals, the court of appeals may deny
such application without specifying the grounds
upon which such a denial is based. It could be
based upon a view that the question involved was
not a controlling issue. It could be denied on the
basis that the docket of the circuit court of appeals
was such that the appeal could not be entertained
for too long a period of time. But, whatever the reason, the ultimate determination concerning the
right of appeal is within the discretion of the appropriate circuit court of appeals.
Id. (citing S. Rep. No. 2434 (1958), 85th Cong., 2d Sess. 3,
4, reprinted in 1958 U.S.C.C.A.N. 5255).
We have applied these principles to discovery matters.
In In re Deutsche Bank Trust Co. Americas, 605 F.3d 1373,
1377 (Fed. Cir. 2010), we recited that “[f]inal decisions concerning discovery matters are reviewed by this court under
the abuse of discretion standard.” See also Baystate Technologies, Inc. v. Bowers, 283 F. App’x 808 (Fed. Cir. 2008)
(per curiam) (reviewing denial of a motion to modify a protective order, applying the standard of abuse of discretion).
The collateral order doctrine is a guide to discretion, not a rule of jurisdiction
The collateral order doctrine, on which the panel majority relies, recites factors relevant to discretionary review
of aspects within the court’s jurisdiction. See Kell v. Benzon, 925 F.3d 448, 453 (10th Cir. 2019) (“[T]he collateralorder doctrine would ordinarily apply only if an appellate
court would probably not need to consider the merits a second time.”).
Applying this guidance, in Board of Regents of the University of Texas System v. Boston Scientific Corp., 936 F.3d
1365 (Fed. Cir. 2019), we held that a transfer order was
immediately appealable, rather than requiring the appellant to wait for final judgment. Id. at 1370. In Apple Inc.
v. Samsung Electronics Co., 727 F.3d 1214 (Fed. Cir. 2013),
we exercised our discretion and accepted immediate appeal
concerning the unsealing of certain discovery documents,
reasoning that the harm of erroneous unsealing could not
be undone if appeal were delayed. Id. at 1220.
The Supreme Court has explained that “[t]he collateral
order doctrine is best understood not as an exception to the
‘final decision’ rule laid down by Congress in § 1291, but as
a ‘practical construction’ of it.” Swint v. Chambers Cty.
Comm’n, 514 U.S. 35, 41–42 (1995) (quoting Dig. Equip.
Corp. v. Desktop Direct, Inc., 511 U.S. 863, 867 (1994)); id.
(“tentative, informal, or incomplete” rulings are not immediately appealable)) (quoting Cohen v. Beneficial Indus.
Loan Corp., 337 U.S. 541, 546 (1949)).
Imprecise usage of “jurisdiction” is not a new phenomenon, as the Court acknowledged in John R. Sand & Gravel
Co. v. United States, 552 U.S. 130, 134 (2008) (“As convenient shorthand, the Court has sometimes referred to the
time limits in such statutes as ‘jurisdictional.’”). My colleagues appear to have adopted this convenient shorthand,
for their holding that we do not have jurisdiction over this
appeal is otherwise unsupported.
<br><br><br>
[As to source code]
<br><br><br>
With respect to MFA’s access to Alaska’s source code,
the district court observed that the source code “contains
both sensitive and valuable information,” id. at *4, and
held that <b>MFA had not adequately explained why it needs
Alaska’s source code. It is well-recognized that source code
may be a company’s “crown jewels,” Unwired Planet LLC
v. Apple, Inc., 2013 WL 1501489, at *5 (D. Nev. Apr. 11,
2013), and “its secrecy is of enormous commercial value,”
Viacom Int’l Inc. v. YouTube Inc., 253 F.R.D. 256, 259
(S.D.N.Y. 2008). </b>In Deutsche Bank we stated:
A determination of the risk of inadvertent disclosure or competitive use does not end the inquiry.
Even if a district court is satisfied that such a risk
exists, the district court must balance this risk
against the potential harm to the opposing party
from restrictions imposed on that party’s right to
have the benefit of counsel of its choice. U.S.
Steel, 730 F.2d at 1468; Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1470 (9th Cir. 1992).
In balancing these conflicting interests the district
court has broad discretion to decide what degree of
protection is required. Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984); Brown Bag Software, 960 F.2d at 1470.
605 F.3d at 1380. These principles, as applied by the
district court, are appropriate for our review.
The panel majority states its concern that “[permitting]
MFA’s interlocutory appeal here would encourage parties
to ‘unduly delay the resolution of district court litigation
and needlessly burden’ this court by seeking appellate review of any pretrial discovery dispute in any patent case.”
Maj. Op. at 10 (quoting Mohawk Indus., Inc. v. Carpenter,
558 U.S. 100, 112 (2009)). This policy concern is not a
criterion of appellate jurisdiction, but of appellate discretion as applied to an appeal of which we have subject matter jurisdiction.
The panel majority, while denying this court’s appellate jurisdiction, discusses the merits of MFA’s argument
but nonetheless declines to make a final decision, citing
MFA’s ability to request “review[] after final judgment.”
Maj. Op. at 7. In my view, the preferable path at this stage
of this case is to exercise our discretion and finally resolve
these confidentiality and protective order issues, for if
MFA’s in-house counsel is indeed entitled to receive this
information, the information should be available before,
not after, trial.
From the ruling that we do not have jurisdiction, I respectfully dissent.Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0tag:blogger.com,1999:blog-7478238.post-36715453236816918932022-12-27T15:14:00.005-08:002022-12-27T15:15:30.183-08:00Blaming "lazy old people" for inflation????In a New York Times article <a href="https://www.yahoo.com/news/retirees-one-reason-fed-given-130713985.html"> Retirees Are One Reason the Fed Has Given Up on a Big Worker Rebound </a>, one has a hint of "blame the old people" for inflation:
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Alice Lieberman had planned to work for a few more years as a schoolteacher before the pandemic hit, but the transition to hybrid instruction did not come easily for her. She retired in summer 2021.
Her husband, Howard Lieberman, started to wind down his consulting business around the same time. If Alice Lieberman was done working, Howard Lieberman wanted to be free, too, so that the pair could take camping trips and volunteer.
The Liebermans, both 69, are one example of a trend that is quietly reworking the fabric of the American labor force. A wave of baby boomers has recently aged past 65. Unlike older Americans who, in the decade after the Great Recession, delayed their retirements to earn a little bit of extra money and patch up tenuous finances, many today are leaving the job market and staying out.
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That has big implications for the economy, <b>because it is contributing to a labor shortage that policymakers worry is keeping wages and inflation stubbornly elevated</b>. That could force the Federal Reserve to raise rates more than it otherwise would, risking a recession.
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The impact is 3.5 million "missing" workers:
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About 3.5 million people are missing from the labor force, compared with what one might have expected based on pre-2020 trends, Jerome Powell, the Fed chair, said during a speech last month. Pandemic deaths and slower immigration explain some of that decline, but a large number of the missing workers, roughly 2 million, have simply retired.
And increasingly, policymakers at the central bank and economic experts do not expect those retirees to ever go back to work.
“My optimism has waned,” said Wendy Edelberg, director of the Hamilton Project at the Brookings Institution. “We’re now talking about people who have reorganized their lives around not working.”
Millions of Americans left or lost jobs in the early months of the coronavirus pandemic as businesses laid off employees, schools closed and workers stayed home.
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Old people are responsible for 900,000 of the missing
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Among those 65 and older, on the other hand, participation lags well below its pre-pandemic level, the equivalent of a decline of about 900,000 people. [about 26% of the 3.5 million]
<br><br><br>Lawrence B. Eberthttp://www.blogger.com/profile/05616776187293753324noreply@blogger.com0