Thursday, March 31, 2011

Pregis: another cross-appeal case

Cross-appeals are for expanding rights.

Cross-reference, Aventis v. Apotex

Retraction vindicated? [?]

A headline at The Scientist is Retraction vindicated? A definition of "vindicate" is To provide justification or support for. One might thus read the headline as prefacing a story wherein further evidence is found to support the retraction.

No. The new evidence undermines the retraction. Also, one has to go deep into the article in The Scientist to learn that the new evidence is presented by the author of the retracted paper. This author, by the way, did not consent to the retraction, which was by the journal Cell. [In passing, Hwang Woo Suk did not consent to the retraction, by Science, of his two papers, but they were retracted anyway.]

Within the piece in The Scientist, as to the new papers (published in PLoS ONE paper and in PLoS NTD):

But not everyone is convinced. Much of the evidence presented in all three papers is based on PCR, which revealed bits of hybrid DNA containing genetic sequences from both the trypanosome and its host. But PCR is highly prone to artifacts, said Dunning Hotopp. "Any time you do a PCR and you have a sequence that's common between two pieces of DNA, you have the potential to create a chimera," which is then amplified during the subsequent rounds of PCR, she explained. "The results of the method could be chimeras that look like lateral gene transfer. I don't think that's what happening," she added, "but I think that's still a black mark against the paper."

According to some researchers, Teixeira and his team could easily quell the controversy surrounding the three papers. To validate the PCR results, Feschotte noted, it's important to use specific primers located in the regions flanking the suspected insertion and verify the sequence. "That would really be the nail in the coffin," he said, but "they don't do that."

Another potential validation is to visualize the suspected integration sites using a technique known as a southern blot, something Teixeira and his team did. Unfortunately, some researchers did not find the results of these tests conclusive.

There was one comment:

I'm confused. Why the controversy? This is not technically challenging to complete(subclone genome DNA, pull out insertions, sequence to identify insertion site, check prior to infection, possibly for chimerism in the infected subject and for genome-wide insertion in progeny). If the authors provided that, then it's pretty much a done deal. If the authors did not provide that, then it shouldn't be published. Have we collectively somehow lost the essence of experimental design, execution and conclusions? It's embarassing that we'd be even having this discussion in an online forum.

FOIA request as to emails of professors at public institutions

Of a FOIA request for emails of professors at public universities, USAToday reported:

"I know it's not the same as a private e-mail account. I know the university owns my e-mail. But I'm not sure how I feel about" having it subjected to a public records request, [ Peter Berg, a labor studies professor at Michigan State University ] said.

For the Mackinac Center, public employee e-mail is another day at the office.


Mackinac Center lawyer Patrick Wright said the center's requests for public information should be considered no more remarkable than those filed by news organizations or citizens. Seeking information about public employee activity that is potentially criminal — like using public resources for political purposes — is at the heart of what the law was designed for, he said.

IPBiz had mentioned the Mackinac Center in a previous post, concerning plagiarism by a Michigan State researcher:

Followup on Michigan State University plagiarism

Organic farmers sue Monsanto over GM seed

In a bit of a turnabout, organic farmers are suing Monsanto over genetically modified crops. From Mass High Tech:

Organic farmers have been angered by the use of genetically modified seed because it competes with their organic seed when it spreads. According to the statement, organic canola seed has become virtually extinct since Monsanto introduced genetically modified canola seed, and “organic corn, soybeans, cotton, sugar beets and alfalfa now face the same fate.”

See the complaint filed in SD NY

Paragraph 106 of the complaint notes:

Monsanto   zealously   enforces   its   transgenic   seed   patents.     Published   reports   and  
Monsanto’s   own   statements   suggest   that   roughly   500   farmers   are   investigated   for   patent  
infringement   each   year.     Between   1997   and   April   2010,   Monsanto   filed   144   lawsuits   against  
farmers in at least 27 different states for alleged infringement of its transgenic seed patents and/or  
breach of its license to those patents.  

Some House members are questioning patent reform

In a post titled Lawmakers Question Patent Reform Bill, Grant Gross presents some of the downsides to the present patent reform bill ("America Invents Act"; S.23 in the Senate).

Mel Watt [D-NC] questioned whether the bill's proposed change, which would award a patent to the first person to file an application instead of the first person to create the invention, would hurt small inventors.

The bill would also expand so-called prior user rights, the right of an inventor or company that's been using an invention without patenting it to continue using it after another company patents it.

An expansion of prior user rights would discourage inventors from sharing their knowledge and reward those who "don't contribute to the progress of science," said Representative Jim Sensenbrenner, a Wisconsin Republican.

The expansion of prior user rights would apply to companies outside the U.S. and would reward the theft of U.S. intellectual property, Sensenbrenner added. "How does that help America compete?" he said. "The prior user rights expansion is going to end up giving China a get-out-of-jail-free card."

USPTO Director David Kappos disagreed, saying the lack of prior user rights in the U.S. hurts manufacturers that set up plants inside the country. Many other countries have prior user rights, giving U.S. manufacturers incentives to open plants in those countries, he said.

It does not appear Kappos denied the truth of what Sensenbrenner said.

Of first to file, note the previous IPBiz post
Why "first to file" is wrong
, which discusses the numbers of Dennis Crouch on Rule 131 declarations. Note separately
Gene Quinn's post titled Patent Reform in the House. Demagoguing of First to File? which ignored this prior art:

Unfortunately, the Patent Office does not keep track of 131 affidavits separately. They are keyed into the system generally as an affidavit, without regard to what type of affidavit. So I wasn’t able to obtain any useful data from the Patent Office. I then asked around to a number of colleagues and the consensus seems to be that 131 affidavits are filed in less than 1% of patent applications.

One notes Crouch found the overall number is less than 1%, but also found the use of 131 declarations is technology specific.
In biotechnology and organic chemistry - one found a Rule 131 affidavit in the file history of 1.43% of the cases.

But who cares what the frequency of use is? For example, do we eliminate various provisions of patent law based on a low frequency of use? Do "public use proceedings" have to go? It's the underlying concept that matters. Do we reward the person who invented first, or the person who filed first? Will intervening publications defeat an invention? The answer should be yes or no.

Within the article by Gross, one finds text from Mark Chandler of Cisco:

It's not practical to file a patent application for every change a company makes to a product, but in a first-to-file system, competitors may try to beat the inventing company to the patent office, he said.

"The alternative for us is to rush to massively increase our patent filings, not to exclude competitors from copying our products, but to protect ourselves against those who would use our own inventions against us in court," Chandler said. "That would be a totally unproductive distraction."

Thus, Chandler recognizes "first to file" by itself is a " totally unproductive distraction ". But prior user rights will more likely help a big entity than a garage inventor.

The patent reform bill is manifestly designed to help those who have already made inventions, and are trying to protect the status quo. It discriminates against the little guy with a step out invention.


A Radical Alternative Patent Reform Proposal: Eliminating The Non-Obvious Requirement on the Google Doodle patent

Dissing competitors in a patent application

Within published US application 20110076733 (assigned to Gevo), one finds the text:

[0010]Isobutanol has been produced in recombinant microorganisms expressing a heterologous, five-step metabolic pathway (See, e.g., WO/2007/050671 to Donaldson et al., WO/2008/098227 to Liao et al., and WO/2009/103533 to Festel et al.). However, the microorganisms produced have fallen short of commercial relevance due to their low performance characteristics, including, for example low productivity, low titer, low yield, and the requirement for oxygen during the fermentation process. Thus, recombinant microorganisms exhibiting increased isobutanol productivity, titer, and/or yield are desirable.

The applicant for WO/2007/050671 ( PCT/US2006/041602: FERMENTIVE PRODUCTION OF FOUR CARBON ALCOHOLS ) is Du Pont, and priority is claimed to 60/730,290. A Du Pont US case claiming priority to 60/730,290 is application serial number 11/586315 (20070092957 ), which application produced US 7,851,188, issued on December 14, 2010. Exactly one month later,
on January 14, 2011, the entity Butamax (a joint venture of Du Pont and BP) sued Gevo on the claims of US 7,851,188.
[ Butamax (TM) Advanced Biofuels LLC v. Gevo Inc, Filed January 14, 2011, District Court Delaware, Doc. No. 1:11cv54 ]

US 20110076733 (Gevo) derives from application serial number 12/855276, filed August 12, 2010, and priority is claimed to U.S. Provisional Application Ser. No. 61/272,058, filed Aug. 12, 2009, and U.S. Provisional Application Ser. No. 61/272,059, filed Aug. 12, 2009 .

See previous IPBiz post

Gevo's response to Butamax infringement assertion re: US 7,851,188

Wednesday, March 30, 2011

Infringement defendants win in Radar v. Cleveland

If you ever wondered what a "clevis link" was:

Clevis links are
used in a variety of manufacturing contexts, including in
automobile manufacturing where they connect the auto-
motive radiator to the engine. The patented clevis links
are considered an improvement over the prior art because
they are stamped from a single piece of sheet metal rather
than forged from heavier metals, making them more
economical and lightweight.

There was a marking issue in this case:

On August 20, 2009, Cleveland Die moved for sum-
mary judgment that the accused links were not properly
marked under 35 U.S.C. § 287(a), which requires a patent
holder to mark all patented articles sold “for or under” it
in order to obtain infringement damages.2

There was a licensing issue:

Radar, on the other hand, contended
that neither Standard Products nor Cleveland Die sold
clevis links “for or under” Radar because, contrary to its
earlier position, a Have Made agreement never in fact
existed. The district court granted summary judgment on
March 4, 2010, concluding that Standard Products was
licensed and that the patent notice statute foreclosed any
claim for damages in recovery of all relief sought in the
infringement action.

Yes, the case is complicated:

The arguments of the parties in this case are unusu-
ally convoluted.
The question of whether Radar was
obligated to mark the clevis links under § 287(a) depends
entirely on whether Radar authorized Standard Products
to produce the clevis links (i.e. whether Standard Prod-
ucts had an express or implied license). If Standard
Products was authorized, there is no need to address the
notice issue. An express or implied license is a defense to
infringement. See Carborundum Co. v. Molten Metal
Equip. Innovations, Inc., 72 F.3d 872, 878 (Fed. Cir.
The district court did not err in finding that there was
a license. In De Forest Radio Telephone & Telegraph Co.
v. United States, 273 U.S. 236, 241 (1927), the Supreme
Court held that a patent license did not require a formal
written agreement (...)

The DDB case is cited:

In return, Radar enjoyed substantial consid-
eration from the sales of the more profitable tie bar busi-
ness. See, e.g., DDB Techs., L.L.C. v. MLB Advanced
Media, L.P., 517 F.3d 1284, 1292 (Fed. Cir. 2008)
(“[W]hen a contract is ambiguous, conduct of the parties
which indicates the construction that the parties them-
selves placed on the contract may . . . be considered in
determining the parties' true intent.”) (quotation marks
and citations omitted); Sanchez v. Eagle Alloy, Inc., 658
N.W.2d 510, 517 (Mich. Ct. App. 2003) (stating that,
under the applicable contract law of Michigan, a meeting
of the minds “can be found from performance and acquies-
cence in that performance”); see also Restatement (Sec-
ond) of Contracts § 202(5) (1981) (noting the import of the
parties' course of performance and course of dealing to an agreement).

An evidence issue arose:

In fact, because the declaration was made
“under penalty of perjury,” it is equivalent to an affidavit
and can support or oppose a motion for summary judg-
ment. 28 U.S.C. § 1746.

Statements by counsel are underwhelming:

Under these circumstances, we think the
district court properly declined to find that Cleveland
Die’s earlier legal position raised a genuine issue of
material fact. See, e.g., Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 812 (Fed. Cir. 1999) (“Factual
assertions by counsel in motion papers, memoranda,
briefs, or other such ‘self-serving’ documents, are gener-
ally insufficient to establish the existence of a genuine
issue of material fact at summary judgment.”) (quoting
Nieves v. Univ. of P.R., 7 F.3d 270, 276 n.9 (1st Cir.


t is well-settled law
that a party opposing summary judgment “must point to
an evidentiary conflict created on the record; mere denials
or conclusory statements are insufficient.” SRI Int’l v.
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed.
Cir. 1985). Here, we conclude that Zmyslowski’s declara-
tion was wholly conclusory and insufficient to raise a
factual dispute as to whether the agreement covered the
Two Interrogatory Links or the Other Links.5


Tolbert v. Queens Coll., 242 F.3d 58, 75 (2d Cir.
2001) (“It is a ‘settled appellate rule that issues adverted
to in a perfunctory manner, unaccompanied by some effort
at developed argumentation, are deemed waived.”) (quot-
ing United States v. Zannino, 895 F.2d 1, 17 (1st Cir.


Because we hold that Standard Products had a Have
Made license, its suppliers, including Cleveland Die,
cannot be sued for infringement with respect to any
accused products made for Standard Products.

"False advertising" claim fails in Seat Sack v. Childcraft

This was an internet-era case: Appellant provided evidence that Childcraft’s
website was programmed so that, at least during some
period of time, a visitor entering the term “Seat Sack” into
the website’s search engine was directed to a webpage
showing only the Seat Pocket.

The CAFC said of the false advertising matter in "Seat Sack":

No requirement of a trademark to pursue "false advertising":

Unlike a
claim for unregistered trademark infringement, a plaintiff
claiming false advertising under the Lanham Act need not
demonstrate that it has protectable trademark rights.
See Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 112–113
(2d Cir. 2010) (setting out elements for Lanham Act false
advertising claim, which do not include a requirement
that a party possess trademark rights); see also J. Thomas
McCarthy, 5 McCarthy on Trademarks and Unfair Com-
petition § 27:9 (4th ed. 2010) (discussing the separate “two
prongs” of § 1125(a) for trademark infringement and false
advertising and their separate substantive rules and
elements). The district court’s conclusion that the Seat
Sack mark was not inherently distinctive and had not
acquired secondary meaning is not dispositive of this
Lanham Act claim.

As to "false advertising" in the Second Circuit:

Nevertheless, the district court properly granted
summary judgment on appellant’s false advertising claim.
To succeed on a false advertising claim for damages, a
plaintiff must “introduce evidence of actual consumer
confusion” unless it can prove intentional deception. See
Res. Developers, Inc. v. Statue of Liberty-Ellis Island
Found., Inc., 926 F.2d 134, 139 (2d Cir. 1991). Appellant
did not prove intentional deception, as it provided no
evidence to contradict two declarations by Childcraft
employees which stated that Childcraft did not purpose-
fully change the automated search protocols to yield
results for Seat Pockets in a search for Seat Sacks.
Therefore, appellant has to prove actual consumer confu-
sion to receive damages. Where, as here, the statement is
not literally false or false by necessary implication, to
obtain an injunction on a false advertising claim, a plain-
tiff must also prove “by extrinsic evidence, that the chal-
lenged [advertisements] tend to mislead or confuse con-
sumers” and must “demonstrate that a statistically sig-
nificant part of the commercial audience holds the false
belief allegedly communicated by the challenged adver-
tisement.” Merck Consumer Pharm. Co. v. Smithkline
Beecham Corp., 960 F.2d 294, 297–98 (2d Cir. 1992).

The party asserting "false advertising" lost on summary

In opposing summary judgment, appellant did not
point to any specific evidence of customer confusion. It
merely stated that “[p]ublic confusion is clearly set forth
in the facts of this case.” Appellant’s Memorandum of
Law in Opposition to Defendants’ Motion to Dismiss and
in Support of Plaintiff’s Cross Motion for a Preliminary
Injunction at 9, Seat Sack, Inc. v. Childcraft Educ. Corp.,
No. 07-CV-3344 (July 24, 2007), ECF No. 26. Appellant
failed to raise a genuine issue of material fact on the
Lanham Act false advertising claim concerning the exis-
tence of customer confusion. The district court did not err
in granting Childcraft’s motion for summary judgment.

As to "how" the CAFC got this case:

Appellant timely appealed the
district court’s decision to the United States Court of
Appeals for the Second Circuit, which transferred the case
to this court because of our exclusive jurisdiction under 28
U.S.C. § 1295(a)(1) flowing from the design patent in-
fringement claim.

The fallacy of linking citations to quality

A post at IAM begins:

The United States remains the world’s dominant force in science, according to research published yesterday by the UK’s Royal Society. Knowledge, Networks and Nations reports that the US spends more on R&D than any other country and publishes more scientific papers while, crucially, there are more citations of US scientific works than those from any other country. It all means that the US wins not only on quantity but, much more importantly, on quality as well.

Criticisms of linking the proxy "citations to an article" with "quality of the article" have appeared before. Further, the source of the citation data (ISI) tends to favor US journals over third world journals.

And, yes, as to patents, citations have been used to measure "quality."

It's sad.

Previous IPBiz post:

Tuesday, March 29, 2011

Letterman says MSU beat Butler last year

David Letterman mistakenly referred to Michigan State beating Butler in the NCAA finals last year.

Butler lost to Duke in the finals, after beating MSU.

In the "top 10" list on political dinners, Letterman did not include the Powers matter at the Biden dinner in Winter Park, FL.


CAFC notes that "legal argument" should not be deemed confidential

Within the decision:

The marking as confidential of legal argument con-
cerning the propriety of a decision by the court is gener-
ally inappropriate given the strong presumption of public
access to court proceedings and records.

An example of the problem:

One of the most blatant examples of improper confidentiality
markings involves case citations and parentheticals
describing the cited cases which are used to support the
proposition that “parol evidence should have been exam-
ined to resolve the ambiguity and determine the intent of
the parties.” See id. at iii–iv.


No good faith reading of our rule
could support Sun’s marking of its legal arguments as
confidential. The action of Sun’s counsel bespeaks an
improper casual approach to confidentiality markings
that ignores the requirements of public access, deprives
the public of necessary information, and hampers this
court’s consideration and opinion writing.

Bottom line:

Monetary sanctions in the amount of $1,000.00 are
imposed on Daniel P. Shapiro, counsel for Sun Pharma-
ceutical Industries, Ltd. and Caraco Pharmaceutical
Laboratories, Ltd., payable within thirty days to the clerk
of this court for the violation of Federal Circuit Rule 28(d).

Professor handout material as 102(b) prior art

In a post titled Patentee loses argument about "printed publication" in reexam appeal, AllThingsPros brings up the BPAI case of Ex parte i2 Technologies

The invalidating reference in question was handout material that was freely distributed to 600 students in a class. Additional copies were sold to anyone who asked. Further, the material (textbook) was cited in a number of journal articles and the material was sold to journal readers who contacted the professor about the material.

The patent involved is US 5,930,156, and the re-exam is 90/008,645. A relevant case is TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004).

See previous IPBiz post on Klopfenstein:
CAFC uses an American Lawyer article as 102(b) art

Kodak prospering

In a post titled Kodak Advances After Winning Latest Round in Patent Dispute, Bloomberg notes:

A victory may allow Kodak to extract $1 billion from Apple and RIM should it win the case, Chairman and Chief Executive Officer Antonio Perez said in an interview last week.

Kodak stock has increased 5%.

Citigroup v. Capital City Bank: the DuPont factors

In the "patent reform" business of 2011, there is advocacy of post-grant review (aka opposition). To see how a bigger entity can use such a procedure against a smaller entity, see the trademark case of Citigroup v. Capital City Bank.

The final conclusion:

We conclude that no likelihood of confusion would
arise from the registration of CCB’s marks for banking
and financial services and Citigroup’s marks for the same
services. We affirm the T.T.A.B.’s denial of Citigroup’s
opposition to the registration of CCB’s marks.

Cross-reference: Application of E.I.
DuPont De Nemours & Co., 476 F.2d 1357, 1362 (CCPA
1973) (“DuPont”).

UPDATE. 11 August 2011:

The following is from a letter from former Senator Bayh (of Bayh-Dole) written in July 2011:

Big companies armed with savvy lawyers can now use the reexamination process as a way of quashing smaller companies; it costs little to file a re-exam petition and a lot to defend a patent. In the past four years, the number of re-exams filed with the U.S. Patent and Trademark Office has increased dramatically, and most of those requests are routinely granted. This trend has placed huge demands on a patent office that is underfunded and under-resourced.

See Patently unjust, which also included the text:

In effect, powerful unscrupulous players have court-approved legal immunity to abuse a patent reexamination system already showing signs of strain. Sen. Jon Kyl (R-Ariz.) observed recently that mere fact of re-examination, regardless of its outcome, can be "a death sentence for a patent."

More on In re Jung and Wood

Concerning the CAFC decision In re Jung and Wood of 28 March 2011, if one looks up application 10/770,072 (published application 20050167572 ) on the USPTO database, one finds the correspondence address to be INTELLECTUAL VENTURES, LLC, BELLEVUE, Washington. If one looks up the case In re Jung and Wood on the CAFC database, one finds the attorneys for Jung and Wood to be identified as

ROBERT G. STERNE, Sterne, Kessler, Goldstein & Fox,
PLLC, of Washington, DC, argued for appellants. With
him on the brief were JON E. WRIGHT and BYRON L.
PICKARD. Of counsel on the brief were CLARENCE T.
lectual Ventures, Management, LLC, of Bellevue, Wash-

Yet, in the post on The Patent Prospector (PatentHawk) blog titled No Controller one finds the

To their great credit, the CAFC is generous in taking pro se appeals, which often amounts to airing the airheads out, as in this case.

This case was NOT a pro se case. What is Gary Odom thinking? Or is Gary referencing the non-pro se IV folks as airheads?

There were three amici briefs mentioned for this case:

DALE C. BARR, Constellation Law Group, PLLC, of
Tracyton, Washington, for amicus curiae Constellation
Law Group, PLLC.

MARGARET M. ANDERSON, of Austin, Texas, for amicI
Curiae Margaret Anderson and Electronic Inventory
Solutions, Inc.

BRAD D. PEDERSEN, Patterson, Thuente, Skaar &
Christensen, P.A., of Minneapolis, Minnesota, for amicus
Curiae Minnesota Intellectual Property Law Association.

See previous IPBiz post

CAFC smacks down application of Intellectual Ventures

Monday, March 28, 2011

CAFC smacks down application of Intellectual Ventures

In re Jung and Wood is about US application 10/770,072 and the "Wood" in the caption is Lowell Wood, and yes CLARENCE T.
TEGREENE of Intellectual Ventures is one of the attorneys.

The bottom line of the case: Because the examiner properly established a prima facie
case of invalidity, and because the Board did not act
improperly as a “super-examiner,” this court affirms.

Patent applicants lose.

Procedurally, on September 14, 2005, the examiner issued a first
office action, rejecting all claims of the ’072 application for
anticipation or single-reference obviousness over U.S.
Patent No. 6,380,571 (“Kalnitsky”).

At the appeal:

Jung frames this appeal much as he framed the
appeal to the Board, as a challenge only to the existence
of a prima facie case of invalidity, as distinct from the
ultimate conclusion of invalidity.

Of the prima facie case:

As this court has repeatedly noted, “the prima facie
case is merely a procedural device that enables an appro-
priate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Patent and Trademark Office (“PTO”) satisfies its initial
burden of production by “adequately explain[ing] the
shortcomings it perceives so that the applicant is properly
notified and able to respond.” Hyatt, 492 F.3d at 1370. In
other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies
35 U.S.C. § 132, in “notify[ing] the applicant . . . [by]
stating the reasons for [its] rejection, or objection or
requirement, together with such information and refer-
ences as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recog-
nizing and seeking to counter the grounds for rejection.”
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

The patent applicant was clearly in trouble at the CAFC:

Jung, without any basis, would have this court
impose additional prima facie procedural requirements
and give applicants the right first to procedurally chal-
lenge and appeal the prima facie procedural showing
before having to substantively respond to the merits of
the rejection. Such a process is both manifestly inefficient
and entirely unnecessary. Indeed, Jung’s arguments as to
why the examiner failed to make out a prima facie rejec-
tion are the same arguments that would be made on the
There has never been a requirement for an examiner
to make an on-the-record claim construction of every term
in every rejected claim and to explain every possible
difference between the prior art and the claimed invention
in order to make out a prima facie rejection. This court
declines to create such a burdensome and unnecessary
requirement. “[Section 132] does not mandate that in
order to establish prima facie anticipation, the PTO must
explicitly preempt every possible response to a section 102
rejection. Section 132 merely ensures that an applicant
at least be informed of the broad statutory basis for the
rejection of his claims, so that he may determine what the
issues are on which he can or should produce evidence.”
Chester, 906 F.2d at 1578 (internal citation omitted).


It is well-established that the Board is free to affirm
an examiner’s rejection so long as “appellants have had a
fair opportunity to react to the thrust of the rejection.” In
re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). See also
In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (“In
calculating the overlapping values, the Board found facts
not found by the examiner regarding the differences
between the prior art and the claimed invention, which in
fairness required an opportunity for response.”). Before
the examiner, Jung merely argued that the claims dif-
fered from Kalnitsky, and chose not to proffer a serious
explanation of this difference. The examiner disagreed,
and rejected the claims, equating Kalnitsky’s controller
and the well-charge-level controller in the claims. It was
not until he arrived at the Board that Jung explained the
difference more thoroughly, implying that his claims
should be read as limited to a preferred embodiment
wherein the controller “more or less continuously adjust[s]
the control signal inputs,” in contradistinction to Kalnit-
sky’s reset controller.

An Ex parte Frye is cited:

Finally, Jung argues that the Board gave improper
deference to the examiner’s rejection by requiring Jung to
“identif[y] a reversible error” by the examiner, which
improperly shifted the burden of proving patentability
onto Jung. Decision at 11. This is a hollow argument,
because, as discussed above, the examiner established a
prima facie case of anticipation and the burden was
properly shifted to Jung to rebut it. Moreover, even
assuming that the examiner had failed to make a prima
facie case, the Board would not have erred in framing the
issue as one of “reversible error.” As recently acknowl-
edged by the Board, it has long been the Board’s practice
to require an applicant to identify the alleged error in the
examiner’s rejections, and the Board’s actions in this case
were entirely consistent with that long-standing practice.
See Ex Parte Frye, Appeal no. 2009-006013, at 9-10
(B.P.A.I. Feb. 26, 2010) (precedential), available at
6013.pdf (“The panel then reviews the obviousness rejec-
tion for error based upon the issues identified by appel-
lant, and in light of the arguments and evidence produced
thereon.”). See also Oral Arg. at 22:23-24:23, available at
1019_1142010.MP3 (acknowledging that “reversible
error” means that the applicant must identify to the
Board what the examiner did wrong, but that the Board
reviews the examiner de novo, and the examiner retains
the burden to show invalidity).

Wilmshurst libel matter

Science discussed the Wilmshurst libel matter:

Wilmshurst, a U.K. citizen, is one of a group of scientists and science reporters whose legal troubles have served as a rallying point for libel-reform advocates. His troubles began with a 2007 presentation he gave in the United States, during which he claimed that a heart device on which he had previously been the lead researcher was dangerous and that its manufacturer, Boston-based NMT Medical, covered up two studies that were unfavorable to the device. When a Canadian newspaper quoted him in a story, NMT issued three separate libel claims against Wilmshurst; that case is still pending.

The story also includes the text:

The original case is still pending, and Barry says that Wilmshurst has "declined to respond in detail" to "cogent evidence … that NMT did not attempt to conceal data and that Dr Wilmshurst knew this when he made his accusations."

There is a WILMSHURST, Martin, Philip; listed as an inventor on PCT/EP2010/062303 ( WO/2011/023680) with applicant CYTOS BIOTECHNOLOGY AG.

Missing trademark tattoos foil "passing off" scheme

Those who remember the "War at the Shore" between Canseco and Sikahema will find Canseco's latest scam amusing.

In a post titled Jose Canseco gets punchy, sends twin brother to fight in his place, one has the text:

"We discovered the Canseco who showed up was Ozzie when he took off his shirt and didn't have José's tattoos on the biceps that appear in our advertising," a Celebrity Boxing representative told El Nuevo Herald.

Wow, the absence of the trademark tattoos snagged Jose. A clear case of passing off foiled by the missing mark. Is this an IP story or what?

If you don't remember the "War at the Shore"

"The War at the Shore": Sikahema v. Canseco

More on Sikahema and Canseco

And, per Sikahema's "Rutgers is Wrong," Rutgers football was terrible in 2010.

Sunday, March 27, 2011

L'Affaire Powers

The Daily Mail talked about the Powers incident in Winter Park, Florida:

Orlando Sentinel reporter Powers was ushered into the closet inside wealthy property developer Alan Ginsburg’s Winter Park mansion, after being told that Joe Biden and Senator Bill Nelson had not yet arrived. (...)

Powers told The Drudge Report: ‘When I'd stick my head out, they'd say, “Not yet. We'll let you know when you can come out.”’
After 90 minutes he was allowed out to hear Biden and Nelson speak for 35 minutes, before being taken back to the closet for the remainder of the event.
From inside his temporary prison Powers emailed his office from his cell phone: ‘Sounds like a nice party.’

As to "false imprisonment," Florida law notes:

787.02 False imprisonment; false imprisonment of child under age 13, aggravating circumstances.—
(1)(a) The term “false imprisonment” means forcibly, by threat, or secretly confining, abducting, imprisoning, or restraining another person without lawful authority and against her or his will.

"60 Minutes" on March 27, 2011

"Parking profits overseas" was an issue addressed by Lesley Stahl on March 27, 2011. In 1980s and 1990s, Bermuda and the Caymans were destinations. Lesley talked about Zug, Switzerland. Taxes are 15-16% in Zug. The population of Zug is 26,000. Transocean moved to Zug two years ago. They have 12-13 employees in Zug. Weatherford is also located in Zug. After the threat of law change, executives of Transocean and Weatherford are located in Geneva. John Chambers, head of Cisco, was interviewed by Stahl. Economist Martin Sullivan was interviewed, who noted moves of companies to Switzerland and Ireland. 600 American companies have a presence in Ireland. There is a trend to shift patents to affiliates in foreign countries. Pfizer's tax rate was lowered to 17% and GE's tax rate lowered even further. The tax law forces companies to keep the profits outside the US. Thus, money earned outside the US stays outside the US. Cisco has $40 billion overseas. All companies 1.2 trillion. Chambers placed the issue as "give us a level playing field."

"One Child at a Time" was a story about a woman (Elissa Montanti ) helping children with medical needs. The "60 Minutes" story featured Wa'ad. The Global Medical Relief Fund is the name of Elisa's entity.

"The Sage of St. Anthony" was about Bob Hurley, the basketball coach. Hurley has been at the job for 39 years. Valuable lesson learned here.

Andy Rooney: life can be dangerous to your health. 30 years ago, coffee caused cancer. Now, 3 cups of coffee is good for you. Drink up, because they might say tomorrow it's bad. Andy is waiting for a study that ice cream lowers your cholesterol.

Harry Coover, of SuperGlue and programmed innovation, died on 27 March 2011

Harry Coover discovered SuperGlue. Cyanoacrylate, the chemical name for the glue, was first uncovered, as a chemical, in 1942 in a search for materials to make clear plastic gun sights for World War II, but it would not be until 1958 that the chemical was marketed as SuperGlue. Coover worked as a chemist for Eastman Kodak until 1973 and as Vice President of the company from 1973-1984. Coover was later a consultant on programmed innovation methodology.

Coover died at age 94 on March 27, 2011.


Lincoln the commutator

Concerning the article Five myths about Abraham Lincoln which contains the text:

Much has been made by poet and Lincoln biographer Carl Sandburg and other historians over the notion that Lincoln was a serial pardoner. This is untrue - Lincoln not only approved the execution of deserters, but 38 alleged Indian raiders were hanged by his order in Mankato, Minn. on Dec. 26, 1862, still the largest mass execution on U.S. soil.

one notes of the Mankato matter, from wikipedia:

In early December, 303 Sioux prisoners were convicted of murder and rape by military tribunals and sentenced to death. Some trials lasted less than 5 minutes. No one explained the proceedings to the defendants, nor were the Sioux represented by a defense in court. Pres. Abraham Lincoln personally reviewed the trial records to distinguish between those who had engaged in warfare against the U.S., versus those who had committed crimes of rape and murder against civilians.

Henry Whipple, the Episcopal bishop of Minnesota and a reformer of U.S. policies toward Native Americans, urged Lincoln to proceed with leniency.[10] On the other hand, General Pope and Minnesota Senator Morton S. Wilkinson told him that leniency would not be received well by the white population. Governor Ramsey warned Lincoln that, unless all 303 Sioux were executed, "[P]rivate revenge would on all this border take the place of official judgment on these Indians." In the end, Lincoln commuted the death sentences of 264 prisoners, but he allowed the execution of 39 men.

There were consequences to Lincoln for the commutation of 264 sentences:

This clemency resulted in protests from Minnesota, which persisted until the Secretary of the Interior offered white Minnesotans "reasonable compensation for the depredations committed." Republicans did not fare as well in Minnesota in the 1864 election as they had before. Ramsey (by then a senator) informed Lincoln that more hangings would have resulted in a larger electoral majority. The President reportedly replied, "I could not afford to hang men for votes."[11]

One of the 39 condemned prisoners was granted a reprieve.[9]:252-259[12] The Army executed the 38 remaining prisoners by hanging on December 26, 1862, in Mankato, Minnesota. It remains the largest mass execution in American history.

Thus, the post by Harold Holzer, in omitting the fact of the 264 commutations, is a bit deceptive.

See also Execution 150 Years Ago Spurs Calls for Pardon

Intel on patent reform

from :

Intel vice president for global public policy Peter Cleveland said CEO Paul Otellini was in Washington last week for a private meeting with House Judiciary Chairman Lamar Smith to discuss the issue.

"This is an area where something could get enacted into law and Intel is right in the middle of it, very hopeful about legislation," Cleveland said during an upcoming episode of C-SPAN's "The Communicators."

Cleveland praised the Senate's recent passage of Judiciary Chairman Patrick Leahy's (D-Vt.) patent reform bill, calling the vote of 95-5 a good consensus.

Cleveland said several of the bill's provisions, including a switch to a first-to-file system rather than first-to-invent, and allowing the U.S. Patent and Trademark Office to keep its fees, are improvements.

However, he said Intel would like to see the House bill include a process known as an inter partes review, through which disputes over how patents are issued can be handled administratively rather than via litigation. Cleveland said the process would save tech firms millions on legal costs.

"We spend $125 million on patent litigation, oftentimes down in Texas. We fight and we fight hard," Cleveland said, noting Intel holds more than 46,000 patents in its portfolio.

"This is a drag on our ability to innovate. It is frivolous litigation and we're not the only ones that suffer from this; Microsoft and other tech companies suffer like we do."

Credit for dancing in "Black Swan"

Inside Movies reports on the role of Sarah Lane in "Black Swan"; “Of the full body shots, I would say 5 percent are Natalie,” says Sarah Lane, 27, an American Ballet Theatre soloist who performed many of the film’s complicated dance sequences, allowing Portman’s face to be digitally grafted onto her body. “All the other shots are me.”

Of the misrepresentation angle: They wanted to create this idea in people’s minds that Natalie was some kind of prodigy or so gifted in dance and really worked so hard to make herself a ballerina in a year and a half for the movie, basically because of the Oscar,” says Lane.

In the current discussion on patent reform, the "first to file" proposal can be viewed as an effort to diminish the role of the true inventor.

CBS Sunday Morning on March 27

Fast Draw illustrated idea that remote cameras can be used to generate revenue via fines. Google Earth used to find unapproved swimming pools and generated $70K. Traffic camera used to scan license plates to find outstanding traffic tickets.

David Edelstein reported on Elizabeth Taylor. As alive on screen as anyone before or after. The trait of "certainty." The grown-up steadiness. Father of the Bride. A Place in the Sun. Cat on a Hot Tin Roof. Giant. The Cleopatra "triple whammy." Reflections in a Golden Eye. "She knew what she wanted, and got it."

The National Cherry Blossom Festival in DC. Peak next Tuesday through Friday. The project took off in 1909. March 27, 1912 was the day of planting of replacement trees that "took." First festival in 1935.

The first "Arthur" was in 1981. The Sunday Morning profile was on Russell Brand, the actor in the new Arthur. Forgetting Sarah Marshall. Of drugs: I've been clean for 8 years.

Pulse. Plan spring cleaning? Yes. Men 55%, Women, 70%.

Nancy Giles on freedom of speech commented on the video by a UCLA student on Asian students. Alexandra Wallace. Giles noted: UCLA.=United Caucasians Lost Among Asians.

41 years ago, Taylor and Burton sat for an interview on 60 Minutes with Charles Collingwood. Having a fight is one of the great exercises in marital togetherness. Burton: don't attack the soft spot in the underbelly. Taylor: I'm a professional Jew. Burton: Jesus Christ was unquestionably Welsh. Taylor talked about 17 year old son. Taylor and Burton were wearing onks.
69 carat Cartier diamond. Richard was nominated for his 6th Academy Award that year (Anne of a Thousand Days). Of Oscars, does the best performer win? Butterfield 8 was sympathy vote. Burton on Oscars: Part sentiment, part affection, part of the business. Richard Burton never received an Oscar.

Bob Schieffer had reported on "what we didn't know" about the Reagan assassination attempt.

CBS Sunday Morning Moment of Nature: forest in Central Oklahoma where migrating birds are headed back north.


The Reagan shooting: A closer call than we knew

"Rawhide Down: The Near Assassination of Ronald Reagan" by Del Quentin Wilber (Henry Holt)

Saturday, March 26, 2011

Kodak gets a shot at the ITC

The ITC said on Friday, March 25, that it will review a decision in January by the Administrative Law Judge or ALJ, who had found there was no occurrence of infringement and turned down Kodak's patent infringement suit.

Laura Quatela is Kodak's chief intellectual property officer.

Qatar learns that the Simpsons already did it

A post on contains the text:

The head of mechanical and industrial engineering at Qatar University announced plans this week to develop an "artificial cloud" that will be positioned in the sky to provide shade and help reduce the heat in stadiums for the 2022 World Cup. The incredible plan has made news around the world with many wondering how Qatar University could come up with such a fantastical concept. Well, it didn't. The Simpsons did.

And how long before the Simpsons are applied as prior art at the USPTO?

When innovation is marketing based

**Of a different "prior art" story, recall Donald Duck and carbene:

In 1963, in an article about Methylene published by Californian Institute, the Carbene element is explained in detail, with a note “Among experiments which have not, to our knowledge, been carried out as yet is one of a most intriguing nature suggested in the literature” referencing the Donald Duck comic. One year later , in another article, Carbene is explained a bit more in detail by a scientist named Greenwald. He refers to Donald Duck also

“ Let me say that carbenes can be made but not isolated; i.e. they cannot be put into a jar and kept on a shelf. They can, however, be made to react with other substances. Donald was using carbene in just such a manner, many years before 'real chemists' thought to do so.”

see also
"So I shouldn't care if I come up with an idea, and the Simpsons already did it"

Friday, March 25, 2011

Duramed vs. Watson: summary judgment of nonobviousness reversed

Duramed is the owner of U.S. Patent 7,320,969, and won
summary judgment as to nonobviousness before the district court.
This decision was reversed by the CAFC, so that Watson
gets another chance to prove obviousness.

The CAFC noted:

We agree with Watson that the district court erred in
its obviousness analysis and, as a result, incorrectly
granted summary judgment of nonobviousness. Specifi-
cally, the district court erred in assessing the content and
scope of the prior art, leading it to incorrectly analyze
each prior art reference in isolation without considering
the prior arts’ teaching as a whole in light of the creativity
and common sense of a person of ordinary skill. The court
also appears to have applied an incorrect evidentiary
standard on summary judgment. Finally, the court failed
to make any finding on the level of skill in the art.

A reference is prior art for all that it discloses:

A reference, however, is prior art for all that it
discloses, and there is no requirement that a teaching in
the prior art be scientifically tested, see PharmaStem
Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1363-64
(Fed. Cir. 2007), or even guarantee success, see Alza Corp.
v. Mylan Labs., Inc., 464 F.3d 1286, 1295 (Fed. Cir. 2006),
before providing a reason to combine. Rather, it is suffi-
cient that one of ordinary skill in the art would perceive
from the prior art a reasonable likelihood of success. Id.

On motivation:

However, the question is not whether there existed a
consistent COC regimen in the art, but rather whether
one of ordinary skill in the art would have been motivated
to combine the Kovacs regimen with 7 days of low-dose,
unopposed estrogen with the reasonable expectation that
the addition of low-dose estrogen would successfully
reduce the incidence of estrogen-withdrawal headaches
during the hormone-free period.

KSR and common sense played a key role:

Accordingly, the district court failed to prop-
erly consider the collective teaching of the prior art in
light of the common sense and creativity of the person of
ordinary skill in the art. See KSR, 550 U.S. at 419-21.

Burden of proof was discussed:

The district court also appears to have applied an in-
correct evidentiary standard on summary judgment,
incorrectly placing the burden of proof on the nonmoving
party, Watson, to show clear and convincing evidence of
invalidity as a matter of law. In this case, Duramed
moved for summary judgment of nonobviousness, and
thus the burden rested with Duramed to show that Wat-
son had failed to come forth with clear and convincing
evidence of an essential element of its prima facie case of
obviousness. See Eli Lilly, 251 F.3d at 962. Although the
ultimate evidentiary burden of showing clear and convinc-
ing evidence does not change on summary judgment,
Watson could defeat summary judgment by showing a
genuine issue of material fact, which, if believed by the
finder of fact, could provide clear and convincing evidence
of a motivation to combine the prior art references. See
Freedman Seating, 420 F.3d at 1364; see also Monarch
Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d
877, 881 (Fed. Cir. 1998) (“If facts remain in dispute, this
court weighs the materiality of the dispute, i.e., whether
resolution of the dispute one way or the other makes a
difference to the final determination of obviousness.”).
That is the standard the district court should have made
clear it was applying on summary judgment.

Level of skill in the art:

A determination of obviousness requires a factual
finding of the level of ordinary skill in the pertinent art,
35 U.S.C. § 103(a); Graham, 383 U.S. at 17, which the
district court failed to make in this case.
When a finding
of the level of skill affects the court’s ultimate conclusion
under § 103, the failure to make such a finding consti-
tutes reversible error
. See Kloster Speedsteel AB v. Cruci-
ble Inc., 793 F.2d 1565, 1574 (Fed. Cir. 1986), overruled
on other grounds by Knoff-Bremse Systeme v. Dana Corp.,
383 F.3d 1337 (Fed. Cir. 2004). The district court granted
summary judgment of nonobviousness based on an un-
specified level of skill, but a finding of a higher level of
skill could have altered this ruling because, in general, an
invention may be more obvious to one of higher skill than
it might have been to one of lower skill. See Union Car-
bide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir.

As to an expert:

Since a deter-
mination of obviousness is made from the vantage point of
a legal construct, a hypothetical person having ordinary
skill in the pertinent art, In re Rouffet, 149 F.3d 1350,
1357 (Fed. Cir. 1998), a person of extraordinary skill may
opine on the knowledge of this hypothetical person, see
Moore v. Wesbar Corp., 701 F.2d 1247, 1253 (7th Cir.
1983) (holding that an expert of “more than the ‘ordinary
skill’ required by the statute” was “well suited to assist
the court in deciding what would be obvious to such a
person”). Accordingly, Thomas’s credentials as a tenured
professor who actively participates in endocrinology
research do not disqualify him from opining on what an
ordinary person of lesser skill, whether a medical doctor
with less research experience or a nurse practitioner,
would have understood from the prior art.

On conclusory testimony:

Finally, contrary to Duramed’s claim, Thomas’s expert
testimony was not merely conclusory. He connected each
claim limitation with disclosures in the prior art, and his
opinion on a motivation to combine rests on factual sup-
port in the record. J.A. 823-26, 836-38; cf. Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1331 (Fed.
Cir. 2009) (holding expert testimony insufficient to raise a
genuine issue of fact when it relied on irrelevant prior art
and failed entirely to address one claim limitation).
Accordingly, this testimony should not have been disre-
garded on summary judgment. See KSR, 550 U.S. at 427
(“In considering summary judgment on th[e] question [of
obviousness] the district court can and should take into
account expert testimony, which may resolve or keep open
certain questions of fact.”).

The Juicy Whip case is cited:

A decision to exclude evidence raises an issue not
unique to patent law, and thus we apply the law of the
regional circuit in which the district court sits, in this
case, the Ninth Circuit. Juicy Whip, Inc. v. Orange Bang,
Inc., 382 F.3d 1367, 1370 (Fed. Cir. 2004).

And, of the testimony:

The district court excluded Thomas’s testimony re-
garding his prior use of the claimed invention as uncor-
roborated in light of the “general rule” that “corroboration
of oral testimony regarding prior invention or use is
required before the evidence is admissible.” Duramed,
701 F. Supp. 2d at 1166-67 (citing Texas Digital Sys., Inc.
v. Telegenix, Inc., 308 F.3d 1193, 1217 (Fed. Cir. 2002),
and Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d
1368, 1371 (Fed. Cir. 1998)). Watson does not argue that
the testimony on prior use was in fact corroborated, but
rather argues that because Thomas’s testimony was not
the sole evidence of obviousness, it should not have been
excluded. Watson claims that although uncorroborated
oral testimony alone is insufficient to meet the clear and
convincing standard for invalidity, it may contribute to
the clear and convincing evidence standard when not the
sole evidence of invalidity.

Yet, Watson acknowledged that it was not relying on
this testimony to support either its opposition to summary
judgment or its prima facie case of obviousness. Oral Arg.
at 22:25-23:35. We therefore decline to decide to what
degree such evidence may or may not contribute to a
determination of obviousness by clear and convincing
evidence, concluding instead that Watson failed to meet
its “particularly high hurdle” to demonstrate that the
district court abused its discretion in excluding testimony
on prior use. Texas Digital, 308 F.3d at 1218.

The Calvo-Goller case of the libelous book review?

See the discussion on IPOsgoode.

Trolling the oceans for alguronic acid?

Note the article in the New York Times on 24 March 2011 titled Trolling the Oceans to Combat Aging which includes text:

Mrs. Slater [of Sephora] added that it made sense to her that alguronic acid (a compound that protects microalgae cells, according to Algenist’s maker, Solazyme) could also protect middle-aged faces from environmental assault. “Think about how algae can live anywhere, live in the coldest of places, or the harshest of places, and think about translating that to skin care,” she said. (...)
According to Jonathan Wolfson, the chief executive of Solazyme, the alternative-energy company that makes Algenist, the product came about after a fortuitous suggestion roughly six years ago by Arthur Grossman, a microalgae expert who’s now an adviser to the brand. At first, Solazyme executives had a good chuckle about the idea of getting into skin care, Mr. Wolfson said. “I really never thought I’d be standing in a store like this,” he told a gathering of reporters during a preview at Sephora Fifth Avenue, amid shiny display cases of primer and volumizing mascara.

Within the article, the New York Times managed to get into peer review and patent applications:

Studies conducted by an independent lab and commissioned by Algenist, none of which have been published in a peer-reviewed journal, showed alguronic acid increased cell regeneration and the synthesis of elastin (which gives skin that snap-back youthful quality). This testing also demonstrated that alguronic acid provided protection against cell damage induced by ultraviolet rays, and inhibited the enzymes that break down elastin.

After reviewing press materials and Solazyme’s 84-page patent application, Dr. David McDaniel, a dermatologist and the director of the Institute of Anti-Aging Research in Virginia Beach, Va., said he was impressed by the in-vitro testing of alguronic acid. “In the petri dish, their data seems to show some substantial benefits to their active ingredient,” he said. But he cautioned that in-vitro testing does not demonstrate how a final formulation works off the shelf.

IPBiz already discussed Solazyme's published US application 20090069213 [
Algae and the cosmetic business
] Note also US 20090274736, with inventors
including Harrison Dillon and Jonathan Wolfson and US 20070166266.

Note separately that US 20070166266 received a nonfinal rejection from the US Patent Office
on 13 Aug 2010. Previously, there had been an appeal brief filed on 4 June 2010, which brief
caused the USPTO to alter the rejections. In the current nonfinal rejection, the examiner did cite
to In re Best, 195 USPQ 430 and to In re Fitzgerald, 205 USPQ 594, to shift the burden of evidence
to the patent applicant. There is also a conditional double patenting rejection over application

Some papers by Arthur Grossman:

2009: Dubini Alexandra; Mus Florence; Seibert Michael; Grossman Arthur R; Posewitz Matthew C
Flexibility in anaerobic metabolism as revealed in a mutant of Chlamydomonas reinhardtii lacking hydrogenase activity.
The Journal of biological chemistry 2009;284(11):7201-13.

2008: Katherine R. M. Mackey, Adina Paytan, Arthur R. Grossman and Shaun Bailey
A photosynthetic strategy for coping in a high-light, low-nutrient environment
Limnol. Oceanogr., 53(3), 2008, 900–913

2007: Mus Florence; Dubini Alexandra; Seibert Michael; Posewitz Matthew C; Grossman Arthur R
Anaerobic acclimation in Chlamydomonas reinhardtii: anoxic gene expression, hydrogenase induction, and metabolic pathways.
The Journal of biological chemistry 2007;282(35):25475-86.

Separately in passing
J. P. Zehr, et al., Globally Distributed Uncultivated Oceanic N2-Fixing Cyanobacteria Lack Oxygenic Photosystem II, 322 Science 1110 (2008)

Some patent applications to Sapphire:




Plagiarism and copyright infringement are not the same thing!

A post at creativeboom begins with the text:

Plagiarism, or copyright infringement to give it its legal term, may be rife over the internet but that is not to say that it is fine to copy the work of others.

Refer to various IPBiz posts to learn that "copyright infringement" is NOT the legal term for plagiarism.

For example,
The distinction between plagiarism and copyright infringement
which includes

Although some have used plagiarism and copyright infringement
interchangeably, plagiarism and copyright infringement are not the same

House not going to accept S.23 "as is"?

A post at the National Journal suggests the House of Representatives may not accept S.23 on patent reform as written by the Senate-->

The draft includes major changes incorporated in the Senate patent-reform bill that passed earlier this month, including first-to-file and fee-setting authority for the Patent and Trademark Office.

Another episode in the make-believe world of CIRM

California's CIRM has long dwelt in a fantasy world. When Proposition 71 was presented to the voters, unrealistic promises were made [
Did campaign ads for Proposition 71 violate fair trade laws?
]. Now, to pay the CIRM chairman a salary of $400K per year, some more sleight-of-hand is planned. Californiastemcellreport notes:

Under terms approved last month by the CIRM board, the new chair could be paid as much as $400,000, which is nearly seven times the median California household income of $61,000. The Klein proposal calls for only $150,000 of the $400,000 to come from "taxpayer" funds. The remainder would come from so-called "private" funds donated to CIRM several years ago by philanthropists. In fact, those "private" funds are now "taxpayer" funds, just as any gift becomes the property of the recipient, and the cash is in state/CIRM coffers.

Klein is a lawyer, and should know about the law on gifts. [For a more interesting case on gifts see More on Phillips v. Irons
and Man Receives Oral Sex, Ordered to Pay Child Support ]

The current scheming to trick California voters as to the salary of the chairman of CIRM is just another chapter in a long history of doublespeak at CIRM. At the end of the day, it is clear CIRM did not deliver.

The journal Nature discusses California's CIRM

Kodak appeal of ITC decision

In January 2011, an ITC judge ruled that Kodak's patent, asserted against Apple and RIM over cameras in mobile phones, was invalid. The full ITC will announce on March 25 whether it will review the decision of the ALJ.

Thursday, March 24, 2011

ExxonMobil biofuel ad banned in England

A post on Euractiv noted

In the ExxonMobil ad, a scientist said that "in using algae to form biofuels, we're not competing with the food supply, and they absorb CO2, so they help solve the greenhouse problem as well".

But a complainant, who noted that any carbon dioxide absorbed by algae would be re-released back into the atmosphere when it was burned as fuel, objected that the ad misleadingly implied that the technology would reduce CO2 levels.

The ad was not acceptable in England:

However, the UK Advertising Standards Authority (ASA) considered that the ad's claim "went beyond stating the mitigation benefit".

According to the authority, the scientist's statement may mislead viewers to conclude that it was due to the absorption of CO2 from the atmosphere that using algae to form biofuels helped "solve the greenhouse problem," by acting as a carbon sink.

"Technology Patent Portfolio Strategy"

See the flowchart "Technology Patent Portfolio Strategy"

Although this post suggests the Patent & Trademark Office must be run by geezers , readers of Fark know better.
Fark on patent examiners at the patent office

Patent protection for stem cells in Europe?


from ScienceBusiness:

Brüstle was granted a German patent relating to his method in 1999, but this was subsequently challenged by the environmental pressure group, Greenpeace, on the basis that the human embryonic stem cell lines used originated from fertilised human eggs and so offended public morality, as set out in the EU Biotechnology Directive on the protection of biotechnology inventions.

In 2006, the German Federal Patent Court partially invalidated the patent, prompting Brüstle to appeal to the German Federal Supreme Court. The Federal Court referred questions about the scope of the Biotechnology Directive to the CJEU, in particular seeking clarification on whether the exclusion of the human embryo from patentability concerns all stages of life from the fertilisation of the ovum, or whether other conditions must be satisfied, such as the attainment of a certain stage of development.

Meanwhile, out at the California stem cell ranch:

Simmering beneath the surface of California's financial crisis is the possibility that the state's $3 billion stem cell agency [CIRM] could become a victim, waylaid as state leaders look for more ways to cut state spending.

Lawmakers and others are discussing the likelihood of a continued suspension of sales of state bonds, which are the lifeblood of the $3 billion California stem cell agency. Without the funds from the bonds, the agency has no cash for its ambitious grant programs.

[from californiastemcellreport]

CAFC: "Apotex’s conduct in this case is particularly egregious"

One has to wonder "why" Apotex filed a cross-appeal in the case Aventis v. Apotex.
Apotex had won at the district court level: all the asserted claims of
the patents in suit were invalid for obviousness and
unenforceable due to inequitable conduct.
The CAFC, in dismissing the cross-appeal noted:

Apotex’s conduct in this case is particularly egregious
given that Aventis explained that TypeRight prohibits
exactly the type of cross-appeal filed
. Given an opportu-
nity to withdraw the improper cross-appeal, Apotex
instead claimed it could distinguish TypeRight from the
present case. Apotex’s distinctions are unavailing:
merely styling their appeal as a conditional cross-appeal
does not distinguish TypeRight.

Similarly, Apotex’s argument that TypeRight is lim-
ited to cases where the trial court previously declined to
reach the other grounds for affirming the judgment is
incorrect. TypeRight explains, as a general matter, that a
finding of invalidity means there is “no basis for a cross-
appeal” of non-infringement or additional claims of inva-
lidity. TypeRight, 374 F.3d at 1157.

Yes, Aventis had contacted Apotex:

Aventis also pointed out that our precedent in TypeRight
indicates that it is improper to use a cross-appeal to seek
review of either non-infringement or alternative invalidity
arguments when the relevant claims of a patent are found
invalid. TypeRight Keyboard Corp. v. Microsoft Corp., 374
F.3d 1151, 1156-57 (Fed. Cir. 2004).

And, to all those lawyers who say email can't be used as
a communication medium:

In an email dated November 3, 2010, Apotex ex-
plained that it still believed its cross-appeal was proper,
and claimed (without citation or explanation) that
TypeRight could be distinguished. It also claimed (again
without citation) that Federal Circuit precedent sup-
ported their position, and that other appellate courts
allow conditional cross-appeals. Aventis subsequently
moved to dismiss the cross-appeal.

As to cross-appeals:

A cross-
appeal may only be filed “when a party seeks to enlarge
its own rights under the judgment or to lessen the rights
of its adversary under the judgment.” Bailey v. Dart
Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002); see
also TypeRight, 374 F.3d at 1156 (“A party may cross-
appeal if adversely affected by the appealed judgment in
some particular which it seeks to have modified.”). In
Bailey we explained that an unwarranted cross-appeal
“unnecessarily expands the amount of briefing,” and also
gives “the appellee an unfair opportunity to file the final
brief and have the final oral argument, contrary to estab-
lished rules.” Bailey, 292 F.3d at 1362.

Google to translate European patent texts

Bloomberg reports:

Google will have access to existing translations held by the European Patent Office, the company said in a statement, and will provide its translation technology without charge on the patent office’s website. Google’s program will translate patents to and from Chinese, Japanese, Korean and Russian as well as the 28 languages recognized by the European Union, it said.


Rainer Osterwalder, a spokesman for the patent office in Munich, said the translation tool “does not replace a translation where it is required by the law” and cannot be used for applying for a European patent.

See also

Google, Patent Office Launch Translation Cooperation:

Google Inc. and the European Patent Office Thursday [24 March 2011] signed a long-term agreement to provide free access and translations to 70 million patents registered with the EPO through the patent office's website.

Wednesday, March 23, 2011

Vistaprint decision/distinction leads to mandamus grant/transfer in Verizon

The CAFC in the Verizon case cited Vistaprint:

We recently advised
against such ironclad rules in In re Vistaprint Ltd., 628
F.3d 1342, 1347, n.3 (Fed. Cir. 2010) and we heed that
advice on these facts. In Vistaprint, we stated:
Our holding today does not mean that, once
a patent is litigated in a particular venue the
patent owner will necessarily have a free
pass to maintain all future litigation
involving that patent in that venue.
However, where, as here, the trial court
performed a detailed analysis explaining
that it is very familiar with the only asserted
patent and the related technology, and
where there is a co-pending litigation before
the trial court involving the same patent-in-
suit, and pertaining to the same underlying
technology and accusing similar services, we
cannot say the trial court clearly abused its
discretion in denying transfer.

The mandamus petition in Verizon was granted. Case moved.

Recall, in VistaPrint, mandamus was denied:

In Vistaprint, we denied mandamus to overturn a
denial of transfer and determined that the district court
properly considered both its previous experience
construing claims of the patent at issue and co-pending
litigation before the district court involving the same
patent and underlying technology. In this case, there is
no assertion that there is an additional pending lawsuit in
the Eastern District involving the patent and technology
Absent that, we deem the Eastern District's previous
claim construction in a case that settled more than five
years before the filing of this lawsuit to be too tenuous a
reason to support denial of transfer.

Why "first to file" is wrong

In a piece titled Patent system reforms could squeeze out start-ups , the Milwaukee Journal Sentinel says this about "first inventor to file":

One of its most controversial provisions is a "first to file" rule, which would grant patent rights to whoever gets to the Patent Office first - terminating the existing "first to invent" practice, which honors applicants who can document that they were first to conceive an idea or technology.

A related provision imposes new risks for entrepreneurs who explore business partners, prototypes and investors during the 12 months that precede an application, a "grace period" during which current law offers some protection that would not exist under the reform proposal. The proposal could force start-ups to race to the U.S. Patent and Trademark Office with a flood of premature and poor-quality applications - even as patent examiners remain heavily overburdened, with a backlog of more than 1.2 million patent applications awaiting resolution at the start of this year.

"Patent reform is going to drive the PTO's backlog through the roof," predicts David Boundy, a Boston-based patent attorney who has worked with start-ups and venture capitalists.

An argument has been made, most recently by David Kappos, that we are already effectively a "first to file" country, because there are few patent interferences taking place. This ignores Rule 131, wherein a piece of art published BEFORE the filing date can be eliminated from consideration by "swearing behind" to the invention date. In a first to file regime, this cannot be done.

Dennis Crouch wrote an article giving some statistics on Rule 131 usage [IS NOVELTY OBSOLETE? CHRONICLING THE IRRELEVANCE OF THE INVENTION DATE IN U.S. PATENT LAW, 16 Mich. Telecomm. Tech. L. Rev. 53 (2009)]

Relevant to Rule 131, Dennis gathered data from the file histories of 21,000+ utility patent applications filed between 2000 and 2007. One thing that immediately caught my eye was the text: Among the completed cases, n82 76% of applications with a Rule 131 declaration resulted in an issued patent as compared with 70% of all completed cases in the data set. [Query: what was the patent grant rate between 2000 and 2007?]

Dennis found a low frequency of use of Rule 131:

Of the 21,000+ file histories in the data set, only 0.7% (138) included a Rule 131 affidavit asserting invention-date-based novelty rights. n75 Typically, applicants filed these affidavits years after filing the initial patent application. Both the average time and median time for filing a Rule 131 affidavit were 33 months after filing the initial application. n76 Table 1 reports the rate of Rule 131 affidavit filing by the USPTO Technology Center n77 for applications filed between 2000 and [p. 71] 2005. n78 Applications in Technology Center 1600 - inventions related to biotechnology and organic chemistry - had the highest likelihood of containing a Rule 131 affidavit in the file history at 1.43%, while applications in Technology Center 2800 - inventions relating to semiconductors, electrical, and optical systems and components - had the lowest likelihood at 0.41%. n79

Of the text:

To put this in perspective, a steadily prolific patent prosecutor may draft and prosecute 800 or so patent applications in a twenty-year career. During her entire career, we would expect her to file fewer than one Rule 131 declaration that directly leads to an issued patent.

I myself have filed more than one Rule 131 declaration. The most recent did NOT cause the application to be granted BUT the application was granted for other reasons. Keep in mind, to be successful with a 131 declaration, one has to have well-documented evidence, early in time, showing the presence of all claim elements, as written later in time. In a situation with an evolving invention, this can be difficult. Further, there is an interesting time trap involved when one tries to overcome an obviousness rejection, involving art published at different times.

As a general observation, I find that arguments suggesting patent policy decisions be made based on the "low frequency" of certain events to be less than persuasive. Yes, small entity inventors usually lose interferences, and yes most patent prosecutions don't involve declarations under Rule 131. If you change to "first to file," they will lose 100% of the time. Do we abandon the patent system because 90%+ of issued patents never make money and never change the world?

In the past, the US has granted priority to the person who comes up with an idea, and who diligently pursues it. Chester Carlson advanced xerography because of his persistence, and the reality that no one else believed in it. In some alternative universe, with published applications and first to file, he might have been buried. Wilbur Wright literally was buried by the patent litigations. Further, imagine an alternative universe wherein the Wrights hadn't filed their application early in 1903 (before the flight in Dec. 1903), and Curtiss persuaded the court that Langley's Aerodrome had flown. The currently proposed rules would produce the "wrong" outcome.

**As an aside, some of the "ex post" patent arguments evoke current discussion of Charles Barkley.

**See also

What Are the Provisions of the Proposed "First-Inventor-to-File" System in S. 23?

Google's impending IP disaster?

Note a post at bnet titled Google Android: the IP Litigator’s Full Employment Act with text:

Google has been cavalier with the intellectual property of others, as is clear from the number of times copyright owners have successfully sued the company for using material without permission. (Yesterday, for example, a federal judge tossed the settlement in a class action suit brought against Google by publishers and authors over the company’s scanning of copyrighted books.)

Although Google has some interesting patents, it has failed to build a portfolio sufficient to go head-to-head with others in the mobile industry.

IPBiz: what, no traction for the Google Doodle patent?

Filing claims with provisional patent applications?

In a post on 16 Sept 2005 titled Including Claims in Provisional Patent Applications?, Patently-O suggested including claims in provisionals was advisable because of the CAFC decision in Phillips v. AWH. The thinking here is that terms in a claim have to be defined, and one doesn't know what to define until the words in the claim are written.

There was a reference to Russ Krajec. The relevant post is titled Claims in Provisionals and the relevant text is:

Many people, myself included, draft claims before drafting the specification of a patent application. For me, this exercise allows me to completely define the invention in the claims, then draft the specification and figures to match. I make sure that every limitation included in the claims is discussed in the spec and shown on the drawings.

This serves two purposes. The first is that it creates a thorough and enabling disclosure. The second purpose is that it only includes enough information to support the claims. There is usually no need to disclose extra material, which would otherwise be a trade secret.

However, I never include claims when I file a provisional application. I do this because only bad things can happen: prosecution history estoppel Festo-style may come to haunt you. There is no upside.

IPBiz makes a query: can there be prosecution history estoppel based on something termed a "claim" in a provisional? As Bill Clinton might say, it depends on what you mean by the word "claim."

We all know that claims are not required in provisional patent applications.

35 USC 111 (b) [Provisional application] states in (2): CLAIM.-A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.

So a claim is not required, but if one puts something called a "claim" in a provisional application, is it a claim for purposes of establishing estoppel? Very likely not.

35 USC 111 (b)(1)(a) is about "a specification as prescribed by the first paragraph of section 112 of this title."

37 CFR 1.75, which applies to nonprovisionals, states the specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.

There is no statute or rule saying there must be a a claim in a provisional particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The specification required by 35 USC 111 (b)(1)(a) must support claims in the later-filed nonprovisional. If there is material in the specification broader in scope than later filed claims, or even irrelevant to later filed claims, who cares?

There is later assertion of prosecution history estoppel issues from claims in provisional applications. Some of this is discussed in the IPBiz post
Factors influencing the decision to file a provisional application; the issue of claims in a provisional
. As a legal matter, there has never been a case on this topic. If there were, the likely conclusion would be: there is no estoppel created by amending from a "claim" in a provisional application, because there is no such thing as a claim defining the subject matter of an invention in a provisional patent application.

Other IPBiz posts on provisional applications

Low cost provisional applications?

Presumptions about provisionals

***Background on provisional applications


Introduced into U.S. law in 1995, provisional applications offer applicants a lower filing fee and an additional twelve months beyond the grace period in which to determine whether to file a regular non-provisional application for a patent. n133 Provisional applications also protect an applicant's right to file in other countries as long as the provisional application is filed before the invention is disclosed to the public. n134 The provisional application is not examined by the USPTO and simply lapses after twelve months, with no further effect unless a regular non-provisional application is filed before that time. Provisional applications are attractive to TTOs precisely because of the embryonic nature of most university inventions. Funding and staffing are perpetual problems for most university TTOs, and provisional applications provide benefits in both areas. For a university, the filing fee for a provisional application is $ 100, while com-bined filing, search, and examination fees of $ 500 are required for non-provisional patent applications. n135 Moreover, since the provisional application will not be examined, TTOs may choose to spend less time and money on the drafting of the provisional application based on an understanding that in a year's time, many will lapse because the covered tech-nology ultimately will not justify the cost of filing a further non-provisional application.

Although the USPTO does not report the number of provisional applications filed by type of entity in its statistical reports, the AUTM now provides provisional application filing data in its annual survey. n136 According to the survey, in fiscal year 2004, of the 8286 new U.S. utility applications filed by U.S. universities, hospitals, and research institutes, 75% were provisional applications. n137 Conversely, the USPTO reports that provisional application filings for fiscal year 2004 only accounted for approximately 30% of total utility application filings across all applicants. n138 This suggests that universities may indeed rely much more heavily on provisional applications than other types of patent applicants.

from Margo A. Bagley, The Need for Speed (and Grace): Issues in a First-Inventor-to-File World, 23 Berkeley Tech. L.J. 1035 (2008)

footnote 81: Provisional applications offer applicants a lower filing fee and an additional twelve months beyond the grace period in which to determine whether to file a regular nonprovisional application for a patent. Provisional applications also protect an applicant's right to file in other countries as long as the provisional is filed before the invention is disclosed to the public. Also, the provisional application is not examined by the USPTO, will simply lapse after twelve months, and will have no further effect unless a regular nonprovisional application is filed in time. Provisional applications are attractive to TTOs precisely because of the embryonic nature of most university inventions.

from the conclusion, on first inventor to file ["FITF"]: As discussed above, a move by the United States to a FITF system will likely have negative ramifications for small entity inventors. Delaying a move to FITF until it can be used to facilitate the adoption of a one-year grace period in other countries will allow the United States to make the bitter pill of the race to the patent office considerably easier for many researchers and entrepreneurs to swallow by providing them with something very useful in return. The adage "haste makes waste" surely applies here: a hasty move to FITF may waste our best hope for obtaining from other countries the grace period that is so critical for small entity innovation, academic discourse, and prompt dissemination of information.

Judge Denny Chin rejects Google Books deal on 22 March 2011

Of the proposed settlement agreement among authors, publishers, and Google about digitizing books, the New York Times reported:

But citing copyright, antitrust and other concerns, Judge Denny Chin said that the settlement went too far. He said it would have granted Google a “de facto monopoly” and the right to profit from books without the permission of copyright owners.

The Washington Post wrote:

The decision comes as regulators in this country and in Europe scrutinize Google’s supremacy in the search business. The judge’s thinking, laid out in a 48-page filing, echoed many of the antitrust arguments made by the Department of Justice when it criticized the deal a year ago.

Google vowed on Tuesday to continue digitizing books, only a portion of which are affected by the settlement, which would have allowed Google to sell access to millions of out-of-print books to consumers and libraries.

See also Setback for Google Books Settlement

US 7,912,915: the "Google Doodle" patent

On March 22, 2011, US 7,912,915, titled Systems and methods for enticing users to access a web site , issued to Sergey Brin of Google. The underlying application, 09/843,923 , was filed April 30, 2001.

The first claim, and only independent claim. states:

1. A non-transitory computer-readable medium that stores instructions executable by one or more processors to perform a method for attracting users to a web page, comprising: instructions for creating a special event logo by modifying a standard company logo for a special event, where the instructions for creating the special event logo includes instructions for modifying the standard company logo with one or more animated images; instructions for associating a link or search results with the special event logo, the link identifying a document relating to the special event, the search results relating to the special event; instructions for uploading the special event logo to the web page; instructions for receiving a user selection of the special event logo; and instructions for providing the document relating to the special event or the search results relating to the special event based on the user selection.

The background art section notes:

Today, many operators of web sites on the Internet use animated images, such as animated Graphic Interchange Format (GIF) images, in web pages to make the web pages more dynamic and visually appealing to users. The philosophy is that if the web pages are visually appealing, then the users will visit the web site often.

There are disadvantages, however, to using animated images. For example, if a user visits a site regularly, the user quickly begins to ignore the animated images. In other words, although animated images can make web pages more appealing to users initially, they typically do not entice the users to return to the web page.

With many web sites, it would be desirable to have users access the web site frequently. Online businesses, for example, would benefit from having users (i.e., customers) return to their web site on a regular basis. Additionally, web sites that display advertisements can obtain more revenue from their advertisers if users regularly visit the web sites.

As a result, there exists a need for mechanisms that entice users to return to a web site on a regular basis.

***As a separate matter

Also on March 22, the company Butamax (a venture of BP and DuPont) was awarded its second US patent, 7,910,342, titled Fermentive production of isobutanol using highly active ketol-acid reductoisomerase enzymes
with first claim:

A method for conversion of acetolactate to dihydroxy-isovalerate comprising: a) providing a microbial host cell comprising a genetic construct encoding a polypeptide having ketol-acid reductoisomerase specific activity greater than 1.1 .mu.moles/min/mg wherein the genetic construct encoding a polypeptide having ketol-acid reductoisomerase activity is isolated from Pseudomonas or Vibrio; and b) contacting the host cell of (a) with acetolactate wherein 2,3-dihydroxy-isovalerate is produced; wherein the ketol-acid reductoisomerase specific activity greater than 1.1 .mu.moles/min/mg is based on purified protein as measured by: A) NADPH consumption assay, run under the following conditions: i) pH of 7.5; ii) a temperature of C.; and iii) a reaction buffer comprising a) 100 mM potassium-HEPES; b) 10 mM MgCl.sub.2; c) 2.25 mM (R,S)-acetolactate; and d) 200 .mu.M NADPH; and B) purified protein concentration as determined by absorbance at 280 nanometers.

Butamax has accused the biofuels company Gevo of infringing claims of its first patent, US 7,851,188.

Tuesday, March 22, 2011

REAL wins remand in patent litigation over US 5,032,989

The technical area of the patent involved in the appeal to the CAFC
was real estate and claim 1 of US 5,032,989 stated:

A method using a computer for locating available
real estate properties
comprising the steps of:

a) creating a database of the available real estate
b) displaying a map of a desired geographic area;
c) selecting a first area having boundaries within
the geographic area;
d) zooming in on the first area of the displayed
map to about the boundaries of the first area to
display a higher level of detail than the displayed
e) displaying the zoomed first area;
f) selecting a second area having boundaries
within the zoomed first area;
g) displaying the second area and a plurality of
points within the second area, each point repre-
senting the appropriate geographic location of an
available real estate property; and
h) identifying available real estate properties
within the database which are located within the
second area.

Procedurally, the patentee REAL ESTATE ALLIANCE LTD. ["REAL"] was the
defendant in a declaratory judgment [DJ] action and the appellant
before the CAFC.

The outcome was that the patentee/appellant (represented by
Cadwalader, Wickersham & Taft, LLP, of New York, New York) won a
remand on claim construction issues.

Yes, IPBiz covered this case in 2005.

A patent impacting the real estate industry: US 5,032,989

At the CAFC, disavowal came up:

REAL also argues that the district court’s construc-
tion improperly limits “database” to databases having
tables and fields, and that the term database is broad
enough to encompass a sequential list database with no
tables or fields—e.g., a flat file. We agree. Nothing in the
specification limits the term database to any particular
type of database. “Absent a clear disavowal or contrary
definition in the specification or the prosecution history,
the patentee is entitled to the full scope of its claim lan-
guage.” Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d
1352, 1358 (Fed. Cir. 2004). Nothing before us indicates
that the inventor disavowed any particular database
implementation. Accordingly, we conclude that step (a)
means creating a database containing data representingtwo or
more available real estate properties.

The scope of claims relative to the specification was mentioned:

Move’s position is that “selecting” encompasses causing a bound-
ary to be superimposed over the map (with an unspecified
tool) because the “‘claims cannot be of broader scope than
the invention that is set forth in the specification.’”
Appellee’s Br. 32 (quoting On Demand Mach. Corp. v.
Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006)).
position is that “selecting” encompasses causing a bound-
ary to be superimposed over the map (with an unspecified
tool) because the “‘claims cannot be of broader scope than
the invention that is set forth in the specification.’”
Appellee’s Br. 32 (quoting On Demand Mach. Corp. v.
Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006)).

But REAL won the argument:

REAL further asserts that the
district court improperly imported these limitations from
the ’576 claims, which recite using the selection cursors to
define the selected areas, into the claim at issue which
does not have any such limitations. We agree.

MOVE lost the disavowal argument:

The characterization was
not made by REAL, nor did it acquiesce in the examiner’s
characterization. J.A. 998-99, 1007-09. Finally, Move’s
arguments relating to the prosecution of the ’576 patent
do not amount to a clear disavowal of claim scope for
claim 1 of the ’989 patent. While statements made during
prosecution of a parent can certainly limit a later applica-
tion, we conclude that the statements cited by Move in the
’576 prosecution pertained to very different patent claims
with different limitations. Claim 1 of the ’989 patent does
not contain the first area selection cursor limitation of the
’576 and the ’576 claims do not recite selecting an area.
We conclude that the prosecution history cited by Move
does not clearly disavow selecting an existing area.
Accordingly, we conclude that selecting an area having
boundaries does not require defining the boundaries.

REAL won on pinpointing:

We agree with REAL that the pinpointing limitation
should not be imported into the definition of an appropri-
ate geographic location. The claim recites no such limita-
tion. Furthermore, the specification gives us no reason to
conclude that every listing in the claimed database must
be entered by this create and update procedure.

Bottom line: For the forgoing reasons, we vacate the district court’s
judgment of noninfringement and remand for further
proceedings consistent with this opinion.