Tuesday, May 31, 2011

US 7,935,528: Liver stem cell

First claim:

A primary liver stem cell, wherein said stem cell (a) is obtained from normal liver tissue, (b) is isolated from an isolated liver cell cluster comprising a hepatocyte and said stem cell, wherein said hepatocyte and said stem cell are joined by a desmosomal junction, (c) expresses OV6, and (d) does not express OC2, wherein said stem cell comprises a DNA encoding a heterologous protein.

Meanwhile, at the Apple ranch, US 7,954,110 , with first claim:

A method for providing an application programming interface in an object-oriented programming platform, the method comprising: registering a first object comprising at least one property with a second object to observe one or more properties associated with said second object, said second object having a set of methods associated therewith, wherein the set of methods comprises routines used by the second object to do at least one of access data or perform an action, wherein a value of the at least one property of the first object is tied to a value of the one or more properties associated with the second object; replacing a first implementation of a method in the set of methods associated with said second object with a second implementation of the method that automatically sends a notification to said first object; and storing said first and second object into a database, each object of said first and second objects forming the basis for a record in the database, and each record containing fields which respectively identify the pointers and the methods with which the record is associated.

and US 7,954,065 [ Two-dimensional timeline display of media items ]

A computer-implemented method comprising: receiving, in a digital media system, a media item for display in a plurality of thumbnails that collectively represent the media item, wherein the media item includes a plurality of frames, and wherein each thumbnail represents a portion of the plurality of frames of the media item, each portion including at least two frames; displaying, within a media pane that is displayed within a user interface in the digital media system, an initial one or more thumbnails of the plurality of thumbnails in a first row extending across the media pane in such that a first thumbnail of the initial one or more thumbnails is displayed substantially adjacent to a left vertical edge of the media pane and subsequent thumbnails of the initial one or more thumbnails are displayed substantially adjacent to one another to the right of the first thumbnail in the first row; determining that a last thumbnail of the initial one or more thumbnails is displayed substantially adjacent to a second vertical edge of the media pane, and in response to the determining, displaying a next thumbnail that follows the last thumbnail in a second row vertically displaced from the first row, wherein a position on a thumbnail corresponds to a frame included in a portion of the plurality of frames that the thumbnail represents; detecting that a position indicator is placed at a position on a first thumbnail of the plurality of thumbnails; and displaying, within the first thumbnail, the frame of the media item to which the position of the position indicator on the first thumbnail corresponds, in response to the detecting.

Monday, May 30, 2011

Innovations come in other than anticipated areas of use

The imaging technology for license plate scanning was conceived primarily as a counterterrorism tool, but it is now used in other applications.

See Camera Scans of Car Plates Are Reshaping Police Inquiries

License Plate Scanners Locate Vehicle Sought After Hit and Run : Then, at 10:15 p.m. on Friday, one of the city’s roughly 240 license plate readers spotted the BMW from inside a police car on East 79th Street between First and Second Avenues, Mr. Browne said. An alarm went off, and officers pulled over the car.

The Hot Springs National Park trademark caper

At issue was a trademark which included the text
"Hot Springs National Park" within a geometric design.
The National Park Service objected to the registration.
The relevant statute as issue was section 2(e)(2) of the
Lanham Act which prohibits registration of a mark is merely
geographically descriptive.

For the government as petitioner to establish
that respondent’s mark is primarily geographically descriptive,
it must show
-->that the mark is the name of a place known generally to the
public, and
-->that the public would make a goods/place
association, i.e., believe that the goods or services for
which the mark is registered originate in that place.

The TTAB framed the issue:

We must therefore determine
whether the primary significance of the mark, as a whole, is
a generally known geographic location. See In re Save
Venice New York Inc., 259 F.3d 1346, 1352, 59 USPQ2d 1778,
1782 (Fed. Cir. 2001).

The government lost:

We find, therefore, that petitioner has failed to
establish that the mark as a whole is the name of a place
known generally to the public. Rather, the evidence of
record supports a finding that only the disclaimed wording
in the mark is the name of a geographic location. Thus, the
disclaimed geographically descriptive wording HOT SPRINGS
NATIONAL PARK ARKANSAS in respondent’s mark is a separate
element from the inherently distinctive design. See
generally TMEP §1210.06(a).

And, of the bigger issue:

Because petitioner has failed to establish the first
element of its claim of geographic descriptiveness, namely,
that the mark as a whole is the name of a place known to the
public, we find that petitioner cannot prevail on its
pleaded ground for cancellation, and we need not consider
whether the public would make a goods/place association,
i.e., believe that the goods or services for which the mark
is registered originate in that place. Cf. In re Societe
Generale des Eaux Minerals de Vittel, S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); and In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).

Turnabout in Apple Inc. v. Samsung Electronics Co.?

In this odd litigation wherein Apple is suing its biggest supplier, Samsung has asked to see future Apple products, making the argument that it must see the iPhone and iPad models under development to "evaluate whether a likelihood of confusion exists."

Needless to say, Apple objected: "A preliminary injunction motion will be based on Apple’s current intellectual property rights, not on future products. Because Apple’s future products have no relevance to a preliminary injunction motion, we reject your request that Apple provide samples of such future products."

Therasense issues like those faced by UVa with Honor Code

Part of the basis for the 6-4 split in Therasense was the application of a "one penalty fits all" approach [unenforceability] to situations with a gradation of bad acts. The one concurring judge suggested that courts, employing the equitable doctrine of "inequitable conduct", could temper the situation on a case-by-case basis. That approach obtained one vote.

LBE, in weighing in on the proposed revisions to the Honor Code at the University of Virginia in the wake of the Routman affair, took a similar tact to that of the concurring judge. Changing the definition of plagiarism at UVa [much like the majority of six in Therasense replaced Rule 56 with a "but for" standard] does not solve the problem of plagiarism, but does make it harder to prove. As the dust settles in the patent world, one will find certain types of bad acts, once discouraged by an enforceable Rule 56 standard, will become accepted behavior, but there will be less litigation in that area.

Of course, as recognized by the concurring judge, this change was driven by policy, not by law. Interstitial rule-making. If, hypothetically, this case is reviewed by the Supreme Court, we will get to see how the "but for" standard fares.

A previous IPBiz on the UVa Honor Code:
University of Virginia to change definition of plagiarism?

A previous IPBiz post on Therasense: http://ipbiz.blogspot.com/2011/05/therasense-v-becton-dickinson-death-of.html

Solicitor Chen's oral argument

Sunday, May 29, 2011

Wegner on Therasense: USPTO should support it

Harold Wegner has a post on IPFrontline titled A Post-Therasense Rule 56 Duty of Disclosure which tells the USPTO to accept the majority opinion of the 6-4 vote:

It is important that a stable situation be reached where Rule 56 and the Federal Circuit are on the same page, and that this situation be reached as soon as possible. If there is an immediate move by the Patent Office to reconcile Rule 56 with Therasense, this should provide such stability.


If on the other hand the Patent Office moves quickly to stabilize the situation and is supportive of Therasense then the likelihood that review will be granted would be sharply dimiished and the patent community can embrace Therasense as a truly final decision and move on with a smoother and more efficient patent procurement regime.

Rarely does the leader of the Patent Office have a chance to make a monumental decision, a change of course in how the patent system operates. Since the late 1970’s when the Dann Administration made the fatal mistake of creating a "fraud squad" and the inequitable conduct was made an in terrorem tool to compel voluntary citation of prior art the Patent Office has been stuck in a Rule 56 rut of incomprehensible rules and regulations that today swamps the Patent Office with reams of unusable prior art.

Sunday Morning on May 29

End of an era for shuttle, and NASA

"Book of Mormon": Taboos broken, tickets scarce

Bill Whitaker interviewed Iron Mike Tyson on the Sunday profile. He's now 44 and in Las Vegas, with pigeons. A line: addicted to chaos.

The Indy 500 turns 100. Euaa Mitchell gives a view of the raceway from a car. Since 1911, the qualifying speeds have tripled. Donald Davidson is the historian. The concept of the rear view mirror was introduced in the first race, in 1911. Fifteen of 732 competitors have lost their lives. 500 miles is the Camelot of automobile racing.

Pulse. Memorial Day 2011. 22% of people plan a family get-together, and 11% will just stay home.

Stone from Danby, Vermont on the marble mine under Dorset Mountain. Mike Blair is the manager of the mine, which opened in 1902. Pennsylvania Ave. could well be called Vermont marble avenue. 13 X 4 X 42 headstones. Frank W. Buckles died at age 110, the last veteran of World War I, and is buried in Arlington.

Next week on Sunday morning: bedbugs.

Moment of nature by Pradaxa: the wild horses of Assateague Island, Maryland.

Site with pictures of Assateague Island, MD

Of a science issue, from wikipedia:

The feral horse population of Assateague Island is alternately known as the Assateague horse in Maryland and the Chincoteague Pony in Virginia. This distinction, made both on per-breed and per-individual basis, is sometimes a matter of disagreement. The traditional definition of a horse or a pony is based on whether the animal in question falls over or under 14.2 hands (58 inches, 147 cm). The equines on the island tend to be under 14.2, but have a horse phenotype. It is argued that their relatively small size is primarily due to environmental, rather than genetic conditions.


Ebenezer Butterick, the inventor of the tissue paper dress pattern, was born on May 29, 1826.

as noted on UPI

Friday, May 27, 2011

Solazyme IPO on May 27, 2011

Note San Jose Mercury News headline: Bay Area biofuel IPO: Solazyme climbs 15% in debut

Online WSJ noted: Solazyme's stock opened at $20 a share on the Nasdaq, up 11% from its initial public offering price of $18, and was changing hands recently at $21.20, up 17.8%. It sold 10.98 million shares, 1 million more than planned, at a price above its expected $15 to $17 range.

Based in South San Francisco, Solazyme uses microalgae to create a variety of oils out of plant-based sugars. The company is targeting three markets: fuel and chemicals, nutritional oils, and oil used for personal-care products.

At stake in Therasense: the attorney fees award

The headline on the storey on the Therasense en banc decision of the CAFC in The American Lawyer was Federal Circuit Guts Inequitable Conduct Defense, Patent Plaintiffs Rejoice .

There is mention of a possible appeal to the Supreme Court, but one is reminded of other facts in the case. The relevant claims of the patent of Therasense (Abbott) were found invalid. If the claims are already invalid, the vacating of the unenforceability decision does not alter the infringement issue.

Money wise the issue is an attorneys fees award. The AmLaw story noted: "The only issue here is inequitable conduct, and at stake is the $6 million attorneys fee award," Becton counsel Bradford Badke of Ropes & Gray said.

Because of the differences on interpretation of Supreme Court law between majority and dissent, this case should go to the Supreme Court. Whether it will is a different matter.

The convergence of Therasense (Rule 56) with first to file

IPBiz received an email on 27 May 2011 concerning an allegation that certain patent attorneys stole inventions from their clients. The matter is not new, and, for example, was discussed on TechDirt on 29 Jan 2006 in the post MPEG Lawyers Accused Of Taking Inventions They Reviewed And Patenting Them

One wonders about issues relating to "theft of inventions" in a world wherein Rule 56 isn't enforced (Therasense) AND in which one has first to file?

Thursday, May 26, 2011

"We certainly would not request a trademark on a SEAL team that doesn't exist, like SEAL Team 6"

Online WSJ talked about an attempt by Disney to trademark the term "SEAL Team 6":

Walt Disney Co. said Wednesday (25 May 2011) that it would pull an application with the U.S. Patent and Trademark Office in which the entertainment giant sought the exclusive right to use the term "SEAL Team 6" on items ranging from toys and games to snow globes and Christmas stockings.

The article concludes by mentioning activities of the Navy in the trademark area:

Yet Navy officials didn't file a request for "SEAL Team Six."

The Navy confirms the existence of SEAL Teams 1, 2, 3, 4, 5, 7, 8 and 10. The Navy has never acknowledged the existence of Team 9 while SEAL Team 6, the service's most elite hunter-killer team, is officially called the United States Naval Special Warfare Development Group, or DevGru.

Unofficially, DevGru is widely known as SEAL Team 6.

"We certainly would not request a trademark on a SEAL team that doesn't exist, like SEAL Team 6," said a Navy official.

Sadly, the Los Angeles Times can't tell the difference between a patent and a trademark. From a post titled Disney withdraws patent application for SEAL Team 6!

Walt Disney Co. said it will withdraw an application to patent the term "SEAL Team 6," the name of the military unit that took out Osama bin Laden. Less than a week after the Navy SEAL team's successful mission, Disney moved to patent the name in the hopes of exploiting it for toys and entertainment, making the company the butt of jokes for its greed and annoying the Navy.

Therasense v. Becton, Dickinson: the death of Rule 56?

The en banc case of Therasense v. Becton, Dickinson was the "big deal" case on inequitable conduct. The Northern District of California had found U.S. Patent No. 5,820,551 (“the ’551 patent,” of Therasense (Abbott)) unenforceable due to inequitable
conduct. Therasense, Inc. v. Becton, Dickinson & Co., 565 F. Supp. 2d 1088 (N.D. Cal. 2008). Six judges of the CAFC voted to vacate the decision of ND Ca. Four dissented. Judge O'Malley filed a concurring-in-part and dissenting-in-part opinion.

The majority opinion was written by Chief Judge Rader. The majority opinion noted the changing nature of the case law:

As inequitable conduct emerged from unclean hands,
the standards for intent to deceive and materiality have
fluctuated over time. In the past, this court has espoused
low standards for meeting the intent requirement, finding
it satisfied based on gross negligence or even negligence.
See Driscoll v. Cebalo, 731 F.2d 878, 885 (Fed. Cir. 1984)
(“Where they knew, or should have known, that the
withheld reference would be material to the PTO’s consid-
eration, their failure to disclose the reference is sufficient
proof of the existence of an intent to mislead the PTO.”);
Orthopedic Equip. Co., Inc. v. All Orthopedic Appliances,
Inc., 707 F.2d 1376, 1383-84 (Fed. Cir. 1983) (requiring
only gross negligence to sustain a finding of intent). This
court has also previously adopted a broad view of materi-
ality, using a “reasonable examiner” standard based on
the PTO’s 1977 amendment to Rule 56. See Am. Hoist &
Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362
(Fed. Cir. 1984); see also 37 C.F.R. § 1.56 (1977) (a refer-
ence is material if “there is a substantial likelihood that a
reasonable examiner would consider it important in
deciding whether to allow the application to issue as a
patent”). Further weakening the showing needed to
establish inequitable conduct, this court then placed
intent and materiality together on a “sliding scale.” Am.
Hoist, 725 F.2d at 1362. This modification to the inequi-
table conduct doctrine held patents unenforceable based
on a reduced showing of intent if the record contained a
strong showing of materiality, and vice versa. In effect,
this change conflated, and diluted, the standards for both
intent and materiality.

Unintended consequences arose:

This court embraced these reduced standards for in-
tent and materiality to foster full disclosure to the PTO.
See id. at 1363. This new focus on encouraging disclosure
has had numerous unforeseen and unintended conse-
quences. Most prominently, inequitable conduct has
become a significant litigation strategy. A charge of
inequitable conduct conveniently expands discovery into
corporate practices before patent filing and disqualifies
the prosecuting attorney from the patentee’s litigation
team. See Stephen A. Merrill et al., Nat’l Research Coun-
cil of the Nat’l Academies, A Patent System for the 21st
Century 122 (2004).

Judge Rader self-cited:

Perhaps most importantly, the remedy for inequitable
conduct is the “atomic bomb” of patent law. Aventis
Pharma S.A. v. Amphastar Pharm., Inc., 525 F.3d 1334,
1349 (Fed. Cir. 2008) (Rader, J., dissenting).

And, dire problems:

Left unfettered, the inequitable conduct doctrine has
plagued not only the courts but also the entire patent
system. Because allegations of inequitable conduct are
routinely brought on “the slenderest grounds,” Burlington
Indus., 849 F.2d at 1422, patent prosecutors constantly
confront the specter of inequitable conduct charges. With
inequitable conduct casting the shadow of a hangman’s
noose, it is unsurprising that patent prosecutors regularly
bury PTO examiners with a deluge of prior art references,
most of which have marginal value. See Brief for the
United States as Amicus Curiae at 17 (submission of nine
hundred references without any indication which ones
were most relevant); Brief of the Biotechnology Industry
Organization as Amicus Curiae at 7 (submission of eight-
een pages of cited references, including five pages listing
references to claims, office actions, declarations, amend-
ments, interview summaries, and other communications
in related applications).

PTO backlog is mentioned:

While honesty at the PTO is essential, low standards
for intent and materiality have inadvertently led to many
unintended consequences, among them, increased adjudi-
cation cost and complexity, reduced likelihood of settle-
ment, burdened courts, strained PTO resources, increased
PTO backlog, and impaired patent quality. This court
now tightens the standards for finding both intent and
materiality in order to redirect a doctrine that has been
overused to the detriment of the public.

Thus, proof of a "deliberate" decision to deceive will be

To prevail on a claim of inequitable conduct, the ac-
cused infringer must prove that the patentee acted with
the specific intent to deceive the PTO. Star, 537 F.3d at
1366 (citing Kingsdown, 863 F.2d at 876). A finding that
the misrepresentation or omission amounts to gross
negligence or negligence under a “should have known”
standard does not satisfy this intent requirement.
Kingsdown, 863 F.2d at 876. “In a case involving nondis-
closure of information, clear and convincing evidence
must show that the applicant made a deliberate decision
to withhold a known material reference.” Molins, 48 F.3d
at 1181 (emphases added). In other words, the accused
infringer must prove by clear and convincing evidence
that the applicant knew of the reference, knew that it was
material, and made a deliberate decision to withhold it.

Intent and materiality are separate items:

Intent and materiality are separate requirements.
Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d
1354, 1359 (Fed. Cir. 2003). A district court should not
use a “sliding scale,” where a weak showing of intent may
be found sufficient based on a strong showing of material-
ity, and vice versa. Moreover, a district court may not
infer intent solely from materiality. Instead, a court must
weigh the evidence of intent to deceive independent of its
analysis of materiality. Proving that the applicant knew
of a reference, should have known of its materiality, and
decided not to submit it to the PTO does not prove specific
intent to deceive. See Star, 537 F.3d at 1366 (“the fact
that information later found material was not disclosed
cannot, by itself, satisfy the deceptive intent element of
inequitable conduct”).

But, as to proving intent:

Because direct evidence of deceptive intent is rare, a
district court may infer intent from indirect and circum-
stantial evidence. Larson Mfg. Co. of S.D., Inc. v. Alu-
minart Prods. Ltd., 559 F.3d 1317, 1340 (Fed. Cir. 2009).
However, to meet the clear and convincing evidence
standard, the specific intent to deceive must be “the single
most reasonable inference able to be drawn from the
evidence.” Star, 537 F.3d at 1366.

Inequitable conduct is a doctrine in equity:

As an equitable doctrine, inequitable conduct hinges
on basic fairness. “[T]he remedy imposed by a court of
equity should be commensurate with the violation.”
Columbus Bd. of Educ. v. Penick, 443 U.S. 449, 465
(1979). Because inequitable conduct renders an entire
patent (or even a patent family) unenforceable, as a
general rule, this doctrine should only be applied in
instances where the patentee’s misconduct resulted in the
unfair benefit of receiving an unwarranted claim. See
Star, 537 F.3d at 1366 (“[j]ust as it is inequitable to
permit a patentee who obtained his patent through delib-
erate misrepresentations or omissions of material infor-
mation to enforce the patent against others, it is also
inequitable to strike down an entire patent where the
patentee committed only minor missteps or acted with
minimal culpability”).

The concurring opinion is discussed:

The concurrence mischaracterizes this exception for
affirmative egregious acts by limiting it to the example
provided – the filing of an unmistakably false affidavit.
Based on this misunderstanding, the concurrence asserts
that this court’s test for materiality is unduly rigid and
contrary to Supreme Court precedent. In actuality,
however, the materiality standard set forth in this opin-
ion includes an exception for affirmative acts of egregious
misconduct, not just the filing of false affidavits. Accord-
ingly, the general rule requiring but-for materiality
provides clear guidance to patent practitioners and courts,
while the egregious misconduct exception gives the test
sufficient flexibility to capture extraordinary circum-

Rule 56 arises:

This court does not adopt the definition of materiality
in PTO Rule 56. As an initial matter, this court is not
bound by the definition of materiality in PTO rules. See
Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50 (Fed.
Cir. 1996) (“[T]he broadest of the PTO’s rulemaking
powers . . . does NOT grant the Commissioner the author-
ity to issue substantive rules.”); see also 57 Fed. Reg. 2021
(Jan. 17, 1992) (The PTO stated that Rule 56 “do[es] not
define fraud or inequitable conduct.”). While this court
respects the PTO’s knowledge in its area of expertise, the
routine invocation of inequitable conduct in patent litiga-
tion has had adverse ramifications beyond its effect on the
PTO. As discussed above, patent prosecutors, inventors,
courts, and the public at large have an interest in reining
in inequitable conduct.


This court declines to adopt the current version of
Rule 56 in defining inequitable conduct because reliance
on this standard has resulted in the very problems this
court sought to address by taking this case en banc.

Copyright law is invoked:

Moreover, if this court were to consider standards of
materiality in other contexts, the most analogous area of
law is copyright. See Sony Corp. of Am. v. Univ. City
Studios, Inc., 464 U.S. 417, 439 (1984) (finding it appro-
priate to draw an analogy between copyrights and patents
“because of the historic kinship between patent law and
copyright law”). But-for proof is required to invalidate
both copyrights and trademarks based on applicant

The Rule 56 business determined the outcome of this case:

In this case, the district court held the ’551 patent un-
enforceable for inequitable conduct because Abbott did not
disclose briefs it submitted to the EPO regarding the
European counterpart of the ’382 patent. Trial Opinion
at 1127. Because the district court found statements
made in the EPO briefs material under the PTO’s Rule 56
materiality standard, not under the but-for materiality
standard set forth in this opinion, this court vacates the
district court’s findings of materiality. Id. at 1113, 1115.

The "but for" standard will apply:

On remand, the district court should determine whether
the PTO would not have granted the patent but for Ab-
bott’s failure to disclose the EPO briefs.


Because the district court did not find intent
to deceive under the knowing and deliberate standard set
forth in this opinion, this court vacates the district court’s
findings of intent. Id. at 1113-16.

Judge O'Malley noted:

It is at this point that my views, respectfully, diverge
from those of both the majority and the other dissenters.
This is so because, when addressing the types of conduct
that should be deemed of sufficient concern to allow for a
finding of inequitable conduct, both the majority and
dissent strain too hard to impose hard and fast rules.
“The essence of equity jurisdiction has been the power
of the Chancellor to do equity and to mould each decree to
the necessities of the particular case.” Weinberger v.
Romero-Barcelo, 456 U.S. 305, 312 (1982) (quoting Hecht
Co. v. Bowles, 321 U.S. 321, 329 (1944)).


I do not weigh in on the policy debate between the ma-
jority and the dissenters. There are merits to the con-
cerns expressed by each, and they may be relevant, in
varying degrees, to the exercise of a court’s discretion in a
particular case. Policy concerns cannot, however, justify
adopting broad legal standards that diverge from doc-
trines explicated by the Supreme Court.
A desire to
provide immutable guidance to lower courts and parties
similarly is not sufficient to justify the court’s attempt to
corral an equitable doctrine with neat tests.

The dissent observed:

However, on the remaining issue—the proper stan-
dard to apply in determining whether the conduct at issue
is sufficiently material to render the patent in suit unen-
forceable—there is sharp disagreement. That disagree-
ment is what divides the court in this case. The majority
takes the position that nondisclosures should be deemed
sufficiently material to trigger the defense of inequitable
conduct only if, had the matter in question been disclosed,
the applicant would not have obtained a patent.
position, however, marks a significant and, I believe,
unwise departure from this court’s precedents.

A key point:

the higher standard of materiality
adopted by the majority will not provide appropriate
incentives for patent applicants to comply with the disclo-
sure obligations the PTO places upon them.


If a failure to disclose
constitutes inequitable conduct only when a proper disclo-
sure would result in rejection of a claim, there will be
little incentive for applicants to be candid with the PTO,
because in most instances the sanction of inequitable
conduct will apply only if the claims that issue are invalid
anyway. For example, under the “but for” test of materi-
ality, an applicant considering whether to disclose facts
about a possible prior use of the invention would have
little reason to disclose those facts to the PTO.

So, what are the consequences for violating Rule 56?

It is unrealistic to expect that other means will pro-
vide an effective deterrent to ensure that material infor-
mation will not be withheld during patent prosecutions.
The PTO advises us that the prospect of enforcing the
duty of disclosure other than through the threat of inequi-
table conduct claims is not possible or practical.
prospect of agency disciplinary action for disclosure
violations is unrealistic, the PTO explains, because the
Office is required by statute to file any charges within five
years, see 28 U.S.C. § 2462, and it seldom learns of ineq-
uitable conduct within that period of time. In addition,
the PTO explains that it rarely has access to relevant
facts regarding inequitable conduct, because it lacks
investigative resources. As a result, the PTO has con-
cluded that a court is the best forum in which to consider
alleged breaches of the disclosure duty in the context of
an inequitable conduct defense. See Patent and Trade-
mark Office Implementation of 37 C.F.R. § 1.56, 1095 Off.
Gaz. Pat. & Trademark Office 16 (Oct. 11, 1988).

The dissent brought up Hazel-Atlas Glass Co. v. Hartford-
Empire Co., 322 U.S. 238 (1944). The patentee, encounter-
ing resistance to issuance of the patent by the Patent
Office, arranged for the publication of an article in a trade
publication that described the invention as a remarkable
advance in the field. The article purported to be the
product of a disinterested party, even though it was
actually written by one of the patentee’s lawyers. The
patent ultimately issued. The article was also used in
court, where it assisted the patentee in obtaining a favor-
able judgment from an appellate court. The patentee
subsequently went to considerable lengths to ensure that
the truth regarding the authorship of the article would
not emerge. The efforts at concealment failed, however,
and the accused infringer sought relief in the lower court
based on the misconduct.

The dissent criticized the majority's reliance on Corona, which
was a swearing behind case:

Although the majority cites Corona as support for its
narrow interpretation of the materiality requirement for
inequitable conduct, Corona is of little relevance to that
issue. Corona predates the creation of the inequitable
conduct doctrine and has never been cited by the Supreme
Court in any case addressing unclean hands or inequita-
ble conduct. Apart from the fact that the decision ad-
dressed the issue of validity, rather than enforceability,
the Court’s decision was based on its conclusion that the
affidavit in question was not material because what
mattered was that the method had been used to vulcanize
rubber, not that it had been used to vulcanize rubber that
was in turn used to make particular goods.

The dissent noted:

Shortly after the decisions in the Keystone, Hazel At-
las, and Precision Instrument cases, the Supreme Court
made a further observation that bears directly on the
responsibilities of attorneys and applicants who appear
before the PTO. The Court endorsed the statement that,
“By reason of the nature of an application for patent, the
relationship of attorneys to the Patent Office requires the
highest degree of candor and good faith. In its relation to
applicants, the Office . . . must rely upon their integrity
and deal with them in a spirit of trust and confidence . . .
.” Kingsland v. Dorsey, 338 U.S. 318, 319 (1949). Because
the PTO lacks the investigative and research resources to
look behind representations by applicants and their
counsel, it necessarily relies on those representations as
to many facts that arise during the prosecution of patent
applications, including experimental results obtained by
the applicants, the state of the prior art, and the knowl-
edge of persons of skill in the art in the field in question.

**With respect to the comment below, a finding of inequitable conduct
renders claim unenforceable; it does NOT invalidate the claims.

The imagery of a "plague" goes back to Burlington v. Dayco,
849 F.2d 1418 (CAFC 1988) in an opinion written by
Senior Circuit Judge Nichols, with the relevant text:

We add one final word: the habit of charging
inequitable conduct in almost every major patent case has
become an absolute plague. Reputable lawyers seem to
feel compelled to make the charge against other
reputable lawyers on the slenderest grounds, to represent
their client's interests adequately, perhaps. They get
anywhere with the accusation in but a small percentage of
the cases, but such charges are not inconsequential on
that account. They destroy the respect for one another's
integrity, for being fellow members of an honorable
profession, that used to make the bar a valuable help to
the courts in making a sound disposition of their cases,
and to sustain the good name of the bar itself. A patent
litigant should be made to feel, therefore, that an
unsupported charge of "inequitable conduct in the Patent
Office" is a negative contribution to the rightful
administration of justice. The charge was formerly known
as "fraud on the Patent Office," a more pejorative term,
but the change of name does not make the thing itself
smell any sweeter. Even after complete testimony the
court should find inequitable conduct only if shown by
clear and convincing evidence.

Within the decision, one notes a reference to the examiner:

Mr. Robert A. Vanderhye, the patent attorney who
prosecuted the application, asserted in an affidavit that he
used the shorter formulation, as illustrated in Claim 3 as
"shorthand" for a "complicated concept." He
"unconsciously" inserted the word "bundles" after the
word "fiber." We do not have any explanation by the
examiner of his mental attitude, but it is difficult to
believe he did not share in the patent attorney's mistake.
He must be charged with notice of the actual contents of
the patent, as issued with his approval, and it is difficult
to believe he would not have noticed the confusion, and
demanded a clarification, if he had ever consciously
adverted to there being a difference in meaning between
impregnating an individual fiber and impregnating a
The trial court, after the controversy had arisen,
and with the "20-20 vision of hindsight," read the patent
entirely differently than did those concerned with its
issue, and we wonder how anybody skilled in patent
law and practice could have generated such
confusion without a sinister purpose. That is the
fascinating puzzle this case presents.


Rather than anyone being a crook, it is surely a
permissible inference that both the applicant's attorney
and the examiner were alike confused, not being
possessed of the analytical vision of hindsight.

Procedurally, in the Burlington case, a summary judgment
finding inequitable conduct was vacated, and the case remanded.
The CAFC was commenting on deciding this case on summary judgment,
wherein the the accused attorney denied the charge.

However, it is interesting to note that "but for" the attorney's
affidavit in Burlington, the claims were unpatentable. The Burlington
case would fall within the "but for" approach of Therasense. However,
the issue would still be the "intent" of the attorney, whether in
1988 or 2011.

Also of note in the decision:

In a classic statement, it is said the inventor may
be his own lexicographer. Autogiro Company of America
v. United States, 181 Ct. Cl. 55, 384 F.2d 391, 397, 155
USPQ 697, 702 (Ct. Cl. 1967). But he must use his words
consistently in the claims and in the specifications. Fonar
Corp., 821 F.2d at 632, 3 USPQ2d at 1113.


We cannot improve on the
discussion of this in KangaROOS, Inc., supra, and
incorporate what is there said by reference herein.

See also article by Hanft and Kerns


“Controlling the ‘Plague’: Reforming the Doctrine of Inequitable Conduct"

Wednesday, May 25, 2011

Minor speech copying issue in Ireland

For comparison:

Enda Kenny said in May 2011: "If there's anyone out there who still doubts that Ireland is a place where all things are possible; who still wonders if the dream of our ancestors is alive in our time; who still questions our capacity to restore ourselves, to reinvent ourselves and to prosper, well today is your answer."

Barack Obama in November 2008 said: "If there is anyone out there who still doubts that America is a place where all things are possible; who still wonders if the dream of our founders is alive in our time; who still questions the power of our democracy, tonight is your answer."

If one's audience can recognize "who" spoke/wrote the initial text, attribution is understood to be present, and it's not plagiarism.

Recall Abraham Lincoln's House Divided speech, taken from the Bible.

Hershey drops color trademark suit against Mars

Hershey had asserted that an orange background had been trademarked for Reese’s Peanut Butter cups and Reese’s Pieces, and was being infringed by the orange background of Mars Dove candies. The initial suit and a DJ action have been dismissed.

Tuesday, May 24, 2011

CAFC tackles UCL § 17204 in ALLERGAN case

In tackling an element of California state law, the CAFC had jurisdiction pursuant to 1295(a)(1):

Although the patent claims are not presently at issue, they give rise to this court’s jurisdiction over the appeal. See 28 U.S.C. § 1295(a)(1) (stating that this court has jurisdiction “of an appeal from a final decision of a district court of the United States . . . if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title . . . .” (emphases added)). We therefore have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

As to the issue:

Subsequent to the adoption of Proposition 64—a California voter’s amendment that restricted the scope of standing under section 17204—California courts required an additional limitation for a plaintiff to have standing under the UCL: namely, that the party asserting the claim must allege an injury compensable by restitution. As discussed below, the recent California Supreme Court decisions in Kwikset Corp. v. Superior Court of Orange County, 246 P.3d 877 (Cal. 2011) and Clayworth v. Pfizer, Inc., 233 P.3d 1066 (Cal. 2010), make clear that section 17204 only requires that a party allege an injury in fact and that the injury was caused by the defendant. Moreover, section 17204 does not mandate a “business dealings require-ment,” as the defendants argue.

The McInnis plagiarism business: how to spell Rollie's last name?

In a post on the McInnis plagiarism business titled Scott McInnis plagiarism scandal no big deal to attorney disclipline czar , Alan Prendergast notes the infrequency of actual discipline in complaints against attorneys:

the OARC isn't known for zealous enforcement actions. Of the 5,000 complaints the agency receives each year, less than 10 percent are considered worthy of actual investigation, and only a small fraction of those cases lead to a public hearing.

The dispositive issue for Mr. Gleason of OARC was that McInnis had no knowledge of the copying done by his researcher Rollie Fisher (Fischer). No knowledge means no intent to copy without attribution.

What did not bother Mr. Gleason at all was that McInnis passed off the writing of Fisher as that of McInnis. There was no mention of Fisher in the work "authored" by McInnis.

This, sadly, confirms what Alan Dershowitz has said to the effect that the legal profession promotes a culture of copying.

In his post, Prendergast wrote:

But this line of argument neatly sidesteps one huge honking piece of evidence in the case -- the memo McInnis sent to Seeme Hasan on December 2, 2005, in which he declared, "The articles have been carefully documented, proofed and again at your insistence, written at a level that non-water experts could easily understand... All the Articles are original and not reprinted from any other source."

Documented? Nope; the absence of footnotes is one of its few charms. Proofed, maybe, but it's hard to tell, given the weird quirks of grammar and punctuation that seem to pass for the congressman's style. But by putting his name at the top, McInnis was representing that the stuff was indeed original. Acknowledging the aid of a research assistant, or even a ghost writer (which the project badly needed) doesn't absolve the principal of the duty to insure that what's being warranted as original is, in fact, original. In authorship and politics, the buck stops at the big guy's desk.

Any high schooler knows that passing off somebody else's work as your own is unethical. But that's real-world ethics. Attorney ethics operate in a more elevated realm -- somewhere between here and the 63 moons of Jupiter.

The Denver Post has an article titled Ex-GOP gubernatorial candidate Scott McInnis won't be disciplined in plagiarism complaint which raises some issues about the analysis by Mr. Gleason. One thing that is not stressed, but which is curious, is the spelling of the researcher's last name. The Denver Post indicates the name is Fischer, in contrast to the Gleason report which has the name as Fisher. The Denver Post wrote of the key piece of evidence, wherein McInnis disclosed Fischer to the Hasan Foundation:

Glenn Merrick, the foundation's attorney, said the only communication the foundation turned over to investigators that mentioned Fischer was a 2005 fax cover sheet from McInnis to Hasan. In it, McInnis said he was sending the foundation article No. 8 and that he believed the series was reaching its goal of educating the public.
"On a regular basis I have been assisted by Rolly Fischer, and his confidence that we are reaching our goal is high as well," the cover sheet states.

The problem with this plagiarism case is the political dimension. It became a big deal because of "who" was involved rather than "what" was involved, as was the situation with Glenn Poshard at SIU. This case had political consequences for McInnis, unlike Biden's Syracuse Law School plagiarism or Poshard's Ph.D. thesis plagiarism.

***UPDATE. Editorial of May 25, 2011
Editorial: Strange twist in McInnis dispute
The Denver Post emphasizes: McInnis, it has been asserted, specifically admonished a research assistant not to plagiarize when compiling a series of water policy articles that came to be so controversial.

One notes that all people are generally under guidelines "not to plagiarize." Did explicitly telling Fischer "not to plagiarize" really change anything? No. The background presumption would be "not to plagiarize."

***Separately, on bad things that can happen to lawyers

Who is the Client?: Advising Inventors, their Spouses, and their Start-Up Companies

Monday, May 23, 2011

TESSERA, INC. appeal of ITC decision to CAFC fails

Of the Tessara case at the ITC, the CAFC noted:

Because the Commission’s
decision is supported by substantial evidence and is not
contrary to law, this court affirms the determination of no
violation with respect to the ’106 patent, and vacates as
moot the Commission’s decision regarding the ’977 and
’627 patents, which have now expired.

Tessera had argued:

Tessera argues that the Commission erred in finding
that the accused wBGA products do not infringe claim 1 of
the ’106 patent. Specifically, Tessera argues that the
Commission erred when it found that the “top layer” of
claim 1 cannot include the solder mask layer of the ac-
cused wBGA products. In doing so, according to Tessera,
the Commission improperly modified its construction of
“top layer.” The Commission construed “top layer” to
mean “a layer disposed on the active side of the chip and
which carries the terminals.” Final Determination at 20.
Because the construction does not explicitly exclude
“solder mask,” Tessera argues that the Commission erred
by refusing to consider the accused solder mask layer as
part of the claimed “top layer.”

Of the intervenors:

Intervenors argue that the Commission incorrectly
found that the asserted claims of the ’106 patent were not
anticipated by U.S. Patent Nos. 5,136,336 (“Worp”),
5,218,759 (“Juskey”), and 4,868,349 (“Chia”). Tessera
responds that numerous claim elements are absent from each reference.


To invalidate the asserted claims of the ’106 patent on
the grounds of anticipation, the Intervenors must prove
by clear and convincing evidence that a single prior art
reference discloses each and every limitation of the ’106
patent. The ALJ’s detailed and well reasoned analysis of
the asserted prior art and his determination that the ’106
patent is not anticipated is supported by substantial
record evidence. This court therefore affirms the Com-
mission’s determination that the ’106 patent is not antici-
pated by Worp, Juskey, or Chia.

The conclusion:

Based on the foregoing, this court finds that the
Commission provided a sufficient basis for finding no
section 337 violation and its actions were not arbitrary,
capricious, an abuse of discretion, or otherwise not in
accordance with law. Because the Commission’s decision
regarding the ’106 patent was supported by substantial
evidence and contained no errors of law, this court affirms
that portion of the Final Determination. Because the ’977
and ’627 patents have now expired, this court vacates that
portion of the Final Determination and remands with
instructions to dismiss as moot the portion of the com-
plaint relating to those patents.

Confidentiality issues related to Palin book by Frank Bailey

A post at news.yahoo titled AP Exclusive: Former Palin aide pens tell-all
gets into issues of confidentiality:

The Alaska attorney general's office has said it's investigating Bailey's use of the emails. Executive ethics laws bar former public officials from using information acquired during their work for personal gain if the information hasn't been publicly disseminated.

One is free to discuss what is in the public domain.

And, of Bailey's book on Palin:

In February, the book project also made headlines when a draft manuscript was leaked. An attorney for Bailey and his co-writers accused author Joe McGinniss, who has his own Palin book coming out this year. McGinniss' attorney acknowledged McGinniss selectively shared the manuscript, but said the manuscript included no request for confidentiality.

Universities related to Intellectual Ventures [IV]

As noted by the American Lawyer, Intellectual Ventures was compelled to disclose investors in the context of the Xilinx litigation:

IV was compelled to file the list of investors under court rules requiring disclosure of interested parties in the litigation. The company's lawyers pushed to make the disclosures under seal, arguing in an April motion that the list "contains highly confidential business information" and that IV and its funds are "contractually obligated to maintain the confidentially of their investors."

Early on in the list were the University of Texas, Stanford, and Brown. One also had Cornell, Grinnell College, Northwestern, the University of Pennsylvania, the University of Southern California (USC), and the University of Minnesota. There was an entry for Dore Capital and affiliate of Vanderbilt University.

Edward Jung, a founder of IV, is on the list. Nancy B. Peretsman is on the list.

**UPDATE. see IAM post titled Digging deeper into that list of IV investors ... including the text: there has been a longstanding rumour that IV’s licences are true-up licences and that some of their licensees don’t “true up”

**Are the universities merely investors, or licensees worried about possible patent infringement suits?

McInnis cleared of disciplinary charges in plagiarism business

Of the Scott McInnis plagiarism business, the Denver Daily News reported:

But the Attorney Regulation Counsel of the Colorado Supreme Court said on Friday [20 May 2011] that there is “not clear and convincing evidence of a violation of the disciplinary rules” stemming from the incident.. A further conclusion:

“For all these reasons, there is no clear and convincing evidence Mr. McInnis knowingly engaged in dishonest conduct by either: (1) plagiarizing Justice Hobbs’ work, or (2) reporting to the Foundation that the articles were his original work,” states the report.

This is an incident wherein blame is placed on the subordinate research assistant (here, Rolly Fisher (Fischer)), rather than on the "author" who placed his name on the work:

According to the counsel’s findings, Fischer was responsible for the plagiarism, not McInnis.

“Mr. Fischer alone chose to import large sections of text previously written by the Honorable Justice Gregory Hobbs into one of the articles drafted for Mr. McInnis, without credit citation,” states the results of the investigation.

There is an interesting finding of fact in the report:

Mr. Fisher expected Mr. McInnis to treat the articles as his own work product without any reference or credit to Mr. Fisher.

Thus, one finds an irony in Mr. McInnis instructing Mr. Fisher "not to plagiarize" when Mr. McInnis intended to plagiarize the work of Fisher. Thus, McInnis ran into trouble because of derivative plagiarism: McInnis copied the work of Fisher, who in turn copied the work of Hobbs. This derivative copying was likely also involved in the plagiarism incident involving Laurence Tribe of Harvard Law. In that case, there was more of an understanding that ghost writing in itself is a form of plagiarism, which produced the convoluted apology of Tribe.

There is confusion between plagiarism and copyright infringement expressed by Fisher:

Fischer apparently argued that the use was not plagiarism because he believes the article is part of the “public domain,” according to the investigation, compiled from interviews with Fischer.

The May 20 letters of John S. Gleason, the Regulation Counsel, are on the internet.

Previous IPBiz post
Colorado Supreme Court justice victim of plagiarism

Was this incident politically motivated? You bet. But, authors have to take responsibility for what goes out under the name of the author. The handling of the McInnis incident re-enforces the Dershowitz remark about law being a culture of copying. It's sad that Mr. Gleason did not see the ghost writing as plagiarism.

Chemistry on the internet: the McNugget

A post on the internet about the horrors of the McDonalds chicken McNugget includes the following text:

But perhaps the most alarming ingredient in a Chicken McNugget is tertiary butylhydroquinone, or TBHQ, an antioxidant derived from petroleum that is either sprayed directly on the nugget or the inside of the box it comes in to "help preserve freshness." According to A Consumer's Dictionary of Food Additives, TBHQ is a form of butane (i.e. lighter fluid) the FDA allows processors to use sparingly in our food: It can comprise no more than 0.02 percent of the oil in a nugget. Which is probably just as well, considering that ingesting a single gram of TBHQ can cause "nausea, vomiting, ringing in the ears, delirium, a sense of suffocation, and collapse." Ingesting five grams of TBHQ can kill."

An organic chemist would not consider tertiary butylhydroquinone a form of "butane."

Wikipedia notes --tert-Butylhydroquinone (TBHQ), tertiary butylhydroquinone) is an aromatic organic compound which is a type of phenol. It is a derivative of hydroquinone, substituted with tert-butyl group. --

Lighter fluid is pressurized n-butane, whereas the substituent in TBHQ is a tert-butyl group.

The analysis on rense.com is below the level of a "low quality" patent application.

Sunday, May 22, 2011

"60 Minutes" on May 22, 2011

Scott Pelley spoke about Tyler Hamilton on Lance Armstrong. Tyler started by saying he told his family for the first time four days before the "60 minutes" interview. In June, Tyler was served a subpoena forcing him to testify. EPO, testosterone, and a blood transfusion. Armstrong was using EPO in 1999, 2000, and 2001 to prepare for the tour. Tyler said team management encouraged the doping. The doping was directed and systematic. Cortisone was also mentioned. Tyler said Armstrong used andriol in 1999. There was mention of "white lunch bags," which might contain EPO. A doctor told Hamilton it would be a good idea to "take some therapy," meaning take EPO. I was so close to the goal. Hamilton felt if he didn't take the EPO, he wouldn't make the "A team." Andrieu talked about how "one didn't have a choice." [not to take EPO.] The hematocrit was being tested, and Tyler's was too low. Tyler reached out to Lance Armstrong, who arranged for Tyler to get some EPO. Lance helped out a friend (Tyler). Most riders had a second phone; EPO had a code name "Poe" or Edgar Allan Poe. The 60 Minutes story also talked about blood doping. Hamilton said he encountered blood doping in the year 2000. The doping was done in Valencia, Spain. 450 cc of blood was extracted, and during the tour the fresh blood was tranfused back to the rider. Tyler Hamilton got limited immunity from prosecution in return for his grand jury testimony. Pelley asked "how is it possible that he (Lance) got away with it?" Pelley noted Armstrong declined an interview. Of the investigation, the Armstrong team said the time had long passed for this investigation to be done.

An issue in the case concerns "fraud against the United States" because of promises made to the US in return for US sponsorship.
In the Tour of Switzerland in June 2001, Armstrong apparently tested positive. Hamilton talked about 50-60 people who would lose their jobs on the team. But, "people took care of it." Figured out a way to make it go away. In International Cycling Union is the authority. The initial letter described the test result as suspicious. The Swiss lab director has given a sworn statement to the FBI. The sophisticated doper can beat the test. The example of Miriam Jones was given. Armstrong donated money to the Cycling Union. There was discussion of Dr. Mikhaily Ferrari. There was a doping schedule for taking EPO.

60 Minutes compiled videoclips of Lance Armstrong. Explain to me how we've passed so many tests if we're so dirty. There was mention of Floyd Landes. Tyler Hamilton won a gold medal at the US Olympics in 2004. Tyler said he was not doping at the Olympics. Hamilton retired from cycling in 2009. Last Wednesday, Hamilton surrendered his gold medal to US anti-doping authorities.

CBS Sunday Morning on May 22, 2011

Charles Osgood previewed the stories for May 22, 2011, the design issue, presented from Columbus, Indiana. The cover story is about "cities are back." Returning to the city is the only way to go. Why is city life so appealing? The next story was "In the doghouse," about design of places for pets. The next story was by Anthony Mason on Diane von Furstenburg. The next story was on French lingerie (Less is More). The next story was by Bill Geist on golf carts (a la cart). Also: Get a grip; Sydney opera house.

Russ Mitchell did the news, starting with Mitch Daniels. Herman Kane did announce. Obama starts an international trip. Pope giving blessings to astronauts. Volcanic eruption in Iceland. Result of 136th Preakness. World end on May 21. Russ did the weather for the week: a lot of rain.

Columbus, Indiana has 44,000 people. J. Irwin Miller, of Cummins Engine, plowed profits into architecture in Columbus. I. M. Pei did the Columbus Library. Eliell Saarinen did church. Excellence ought to be pursued in everything you do. A standout small town by design. The story switched to Seth Doane on cities. By 2050 3/4 of people will live in cities. Seth interviewed someone (Connie Curran) went from suburbs to San Francisco. "I'm living life" (middle age at 62?). Many urbanites are healthier. Drive less; live in smaller space; use less energy. Connie has lucite stairwell. Edward Glaeser: city workers make 30% more. Unbelievably productive part of America. 250 million Americans (3/4) share 3% of our land area. Olive Branch MS is fastest growing city in US. Cow Penn to Olive Branch, is just outside of Memphis, and now has 34,000 people. Most of fastest growing cities are Southern cities. "January temperature." America 1900 relied on Great Lakes. Randy and Shannon Taylor moved to Olive Branch. Janice Turner is life long resident in Olive Branch. The largest 25 cities in the world account for more than half of the world's wealth.

The personal residence of the Millers includes a "conversation pit." The home was donated to the Indianapolis Museum of Art.
The next story was about selling homes, and difficulties thereof. A secret weapon for sellers: staging. Can't waste time on ugly houses. Staging is a facelift. The first impression: need to immediately feel comfort. Lived in turned into "longed for." The most important changes are the easiest. Staging can involve changing the furniture. Re-thinking the whole place. 1 in 4 homes on the market are staged. Professional staging can cost 3% of asking price. Changing paint; changing carpet.

Smile. Richard Roth started with a clip from "Friends," and talked about teeth. The artistry in modern dentistry is in a smile that is hardly noticed. Dentist Todd Bartsky of Miami. The Institute for Age Management and Intervention. More than a drill and fill. "I kind of look at myself as an architect." A precise calibration of shape and color. Symmetrical restoration but not too perfect. Jason Kim is a dental ceramist in New York. Kim adds translucence to his porcelain "forgeries." 1 out of 20 middle age people are missing teeth.

Charles Osgood (wearing mustard colored pants) presented the Columbus Philharmonic. Then Rita Braver in Sydney Australia.
7 million visitors per year. 22 stories high; 67,000 square feet of glass, from Sweden. The competition to design the building started in 1955. The engineers initially decided the building could not be done. Instead of 3 years to build, it took 14 years. The building opened in 1973. In 1999, the architect reconciled with opera house management.

Osgood began the next clip in the dining room of the Miller house. The clip was on "smart design" on kitchen utensils. David Stoll. French white line of Corning Ware. Sam Farber called about potato peeler. Bike handle added to potato peeler. The Oxo signature product. Make the task easier or faster. A novel jar opener. Some of these sit in MOMA. Smart Design helped design the Flip camcorder. Worked with Ford on instrument panel. At the end of the story was an image of a US Patent.

Osgood, in the awful mustard colored pants, introduced a Teichner piece on jewelry design. Wings form earrings and tail becomes broach. "Set in Style" of Cooper-Hewit Museum in New York. Arthur van Cleef and Arpels on "art deco." Peony broaches; mystery setting. Van Cleef store shown to be next to Bergdorf's. Jewelry from Elizabeth Taylor: the amethysts matched her eyes. Duchess of Windsor: a necklace that zips. The youngest diamond is over 900 million years old [?] The show moved immediately into French lingerie. Aubade. There was an interview with the "brand director." It can take two years from going from concept to consumer. One design has to fit 19 separate sizes. Egyptians originated lingerie. American patented first bra in early 20th century. spandex. Advertising became daring. First bra for a teenager (90 euros in cost).

Doll house by Alexander Gerard introduced piece on dog houses. Barkitecture. Brian Pickard designed postmodern doghouse. People can afford mini-modern architecture (ie, a doghouse). moderncat.net. Guinea pig houses. Chicken coop by James Ramsey. Americans will spend $50 billion on pets next year. [Nothing in the story on parrots.]

Osgood notes he was once a soda jerk. What's old is new again, introduced Diane von Furstenburg. The legendary designer is hot again. Born in Brussels. In 1974, the wrap dress. Michelle Obama wore a wrap dress in a picture used in Christmas card. Marriage was never a destination for me. A new home fashion line. The von Furstenburg bed. Bed is superimportant. I'm not tired of who I am; that would be sad.

Landscape gardens at the Miller's home laid out in the 1950's. Leading to the gardens of Kyoto, Japan. Sand gardens. Zen masterpiece. One of 15 stones is always out of view. A sandlot in the middle of the jungle. A 500 year old tea garden. A tokonoma (alcove). World Heritage Temple. Gardens exist to please the eye and soothe the soul. When it comes to gardens, nothing is written in stone.

Central Fire Station and a Stutz fire engine introduced piece by Bill Geist on golf carts. A village designed with 90 miles of golf cart paths. Golf cart life style. 2/3 of golf carts never see golf course. Deborah Moffet heads the street rod association. The Villages, Florida. Historic Side of LaGrande Plaza. near the Post Office across 27/441.

Moment of nature in St. Augustine, Florida. Roseate spoonbill and other birds.

*** As a footnote on Cummins, from the post How Cummins Does It

In India, the two-year-old Cummins Research & Technology India center in Pune is playing an important role in helping the company slash development costs and time in its bid to best such arch-rivals as Caterpillar Inc. (CAT ) in building a new generation of diesel engines. Cummins is tapping India's immense pool of skilled, low-cost engineers.


Cummins engineers in the West do similar work, of course. But because such labor is so expensive, "we had to be very selective in the past," says O'Halloran. "You can come up with hundreds of things to simulate in a computer. But we were constrained by the number of engineers, so you had to decide which tasks were most critical."


Investing in local manufacturing. Grooming managers for the long term. Exporting when it makes sense, and tapping local engineering brainpower. Many multinationals are now emulating these strategies in China and India. Cummins figured it out well before the competition.

Saturday, May 21, 2011

Still plagiarizing with pride?

Take a look at the commentary on the Harvard B-school at
Porn, piracy, and personal data: Universities providing more than just education…

Gametime IP rips Google's patent analytical skills

Of interest is the post on gametimeip titled Google Patent Blunder: Country’s Best Legal Department Green-Lights World’s Worst Patent Acquisition

At least Google's IP head is a registered patent attorney, which is more than can be said of Cisco's IP leader.

“It’s sort of like ‘Pirates of the Caribbean’; the rules are more like guidelines”

In a story on the IMF at CNBC, one has the text:

“It’s sort of like ‘Pirates of the Caribbean’; the rules are more like guidelines,” said Carmen M. Reinhart, a prominent female economist who served as the I.M.F.’s deputy director for research from 2001 to 2003. “That sets the stage, I think, for more risk-taking.”

In At World's End, Captain Teague, the Keeper of the Pirate Code, the "Pirata Codex," said "The code is the law!" In the film, when the first mate of the Pirate Lord of India says to "Hang the code" Teague immediately shoots him.

Separately, in World's End, Jack Sparrow said:

Can we, in fact, pretend that she is anything other than a woman scorned, like which fury Hell hath no? We cannot. Res ipsa loquitur, tabula in naufragio, we are left with but one option. I agree with, and I cannot believe the words are coming out of me mouth... Captain Swann. We must fight.

"Does plagiarism constitute betrayal of public trust?

In an initial Congress committee vote, the Phillippines said "yes."

From abs-cbnNEWS.com:

House justice committee chairman Niel Tupas Jr. said he expects a spirited debate on the issue after the panel voted 11-10-1 that the impeachment complaint against del Castilo was "sufficient in form."

There is more to come:

He said the justice committee vote on the sufficiency of substance of the impeach complaint will set a precedent, whatever the outcome. The committee will vote on the complaint's sufficiency in substance Wednesday next week.

"Under the law, it should be the person issuing the judgment that writes the decision. That's one of the points raised. Now if this is dismissed as a matter of substance, it will be precedent setting, that plagiarism is not an impeachable offense. But if it does pass the vote, that would be interesting because plagiarism is now considered a betrayal of public trust," he said.

Jonathan Y. Thomas for CIRM chair

The californiastemcellreport notes that

California Lt. Gov. Gavin Newsom plans to nominate Southern California investor Jonathan Thomas for chair of the California stem cell agency, according to the San Francisco Business Times.

Included is a link to the Sacramento Bee which includes the text:

Topic: Jonathan Thomas
Topic Pages by:

Stories on sacbee.com
Capitol Alert: Stem cell institute's board receives nominee...
May 05, 2011

Jonathan Thomas Wikipedia Information
Jonathan Thomas (born 27 December 1982 in Pembroke) is a Welsh rugby union player who plays at flanker for the Ospreys at club level and at number 8 for Wales.He launched his club career at Swansea RFC and played for Wales at Under 16, Under 19 and Under 21 level. He made his international debut against Australia in 2003. He became noticed by many during the 2003 Rugby World Cup in the...

One suspects that the nominated Jonathan Y. Thomas is not a rugby player.

The qualifications (and background) of Thomas are not totally apparent from the various posts made so far. At least Klein had a law degree from Stanford.

**In passing, LBE's comment re-appeared:

Merely fyi, as something to watch:

The European Court of Justice (ECJ) is poised to make a decision regarding the patent-eligibility of human embryonic stem cells (hESCs) in Europe, and that decision will be "no" if the court follows the recommendation of the court's advocate general.

[from PatentDocs blog]


Note the letter of May 23, 2011 by Thomas describing his background.

The letter notes that Thomas has an undergrad degree from Yale, a doctorate from Oxford [examining the role of disease and medicine in the expansion of the British into East Africa ] and a law degree from Yale. Thomas has been an investment banker for the last 26 years [since about 1985]. He led early round financing for ACT.

IP issues drive Kodak stock price up?

An AP/BusinessWeek story on Kodak begins: Shares of Eastman Kodak Co. shot up almost 15 percent in unusually heaving trading Wednesday [18 May 2011] after CEO Antonio Perez told employees that recent Kodak stock purchases reflect management's faith in the photography pioneer's future.

Were intellectual property issues the cause? The story had text:

"I assume that something must be happening on the intellectual-property front -- I can't explain it any other way," said Ulysses Yannas, a broker with Buckman, Buckman & Reid in New York. "It has to be institutional investors with that kind of trading -- 24 million shares are not bought by the public."

A transformative, nano-enabled life sciences franchise – a 21st century oil company?

A private company pre-IPO report appearing on seekingalpha has some interesting text:

The ongoing advances in biotechnology and nanotechnology are ushering in a new age of synthetic nanobiology that promises to profoundly alter the global economic landscape in coming years. Scientists have come to recognize that much of biology is executed at the nanoscale level. (...) We are reaching a stage in the evolution of synthetic nanobiology where we are likely to see an acceleration of product innovation and commercialization in the years ahead. Solazyme is an emerging pioneer of synthetic nanobiology in the life sciences. We think of the company as the poster child for Juan Enriquez’s visionary and provocative book, “As the Future Catches You” (Crown Business, 2000, 2001). Led by CEO Jonathan Wolfson and President and CTO Harrison Dillon, both experienced entrepreneurs who have built a top-notch team over the past several years, Solazyme is in the early stages of building out a transformative, nano-enabled life sciences franchise – a 21st century oil company – that is creating fundamentally new ways of producing high value fuels, chemicals, skin and personal care products, and nutritional products that have the potential to change the way people live, work and play.

The text the potential to change the way people live, work and play. relates to what business people call innovation.

Yes, the topic of patents appears in the report:

Solazyme’s technology platform enables a new paradigm that allows for the production of tailored oils containing fatty acid profiles that are not found in natural plant oils or animal fats and cannot be achieved through blending alone. The company has a large patent portfolio with 125 patents issued or pending.

One also finds the following:

It is important to emphasize that Solyazme’s process for producing oil from microalgae is unconventional. More conventional approaches have not proven to yield a path to profitability and there are good reasons to be skeptical about the economic feasibility of conventional oil from algae technology.

Professor James Richardson, an agricultural economics professor at Texas A&M, has evaluated many different types of conventional algae technology using advanced statistical techniques. Dr. Richardson’s research shows that most conventional biofuel technologies have negative investment return profiles and are unlikely to achieve profitability. It is instructive to note that Solazyme reportedly nearly went bust several years ago following a more conventional approach to producing oil from algae.

One thing one does NOT find in the report is a reference to US Patent 7,905,930 (to Genifuel), the first claim of which includes an element b) producing oil by heterotrophic growth of algae wherein the heterotrophic algae growth is achieved by introducing a sugar feed to the oil-producing algae. See IPBiz post US 7,905,930 to Genifuel : sugar to heterotrophs to oil

Of Professor Richardson, one finds the following from a meeting in Toronto in May 2011:

Abstract: James Richardson

Cost of Producing Algae Oil in the Desert Southwest

The technology for producing algae oil is progressing on many fronts. Test ponds exist or are being constructed in California, Arizona, New Mexico and Texas. In time these test ponds will improve our ability to estimate the costs of building and operating commercial size algae farms. But until that time investors, DOE, and researchers need estimates of the costs to build and operate commercial size algae farms.

We use a Monte Carlo simulation model for simulating alternative types of micro algae farms/raceways to estimate probability distributions of production costs for algae oil. Stochastic variables, such as: production, oil content, nutrient use, prices for nutrients, temperature, and by-product prices will be used in the model. Variables for location are included in the model to account for longitude and latitude for solar radiation and weather effects. The resulting costs are probability weighted cost of production, that are used to estimate confidence intervals for cost estimates.

The complete model estimates the probability that a commercial algae farm will be economically viable over 10 years. Probabilistic forecasts of the Income Statement, Cash Flow Statement and Balance Sheet are developed for a proposed algae farm. Viability of an algae farm is good for a farm that maintains a positive cash flow more than 75% of the time and increases real net worth more than 90% of the time.

To date, there are three issued US patents to Solazyme, the most recent of which is US 7,935,515 (titled: Recombinant microalgae cells producing novel oils , issued 3 May 2011) , with first claim

A cell of the genus Prototheca comprising one or more exogenous gene, wherein the exogenous gene is a sucrose invertase gene, a fatty acyl-ACP (acyl carrier protein) thioesterase gene, a fatty acyl-CoA/aldehyde reductase gene, a fatty acyl-CoA reductase gene or a fatty aldehyde decarbonylase gene and is integrated into a nuclear chromosome of the cell, and wherein the sucrose invertase gene encodes a sucrose invertase having a catalytic activity of hydrolyzing sucrose to glucose and fructose, the fatty acyl-ACP thioesterase gene encodes a fatty acyl-ACP thioesterase having a catalytic activity of hydrolyzing a fatty acyl-ACP substrate, the fatty acyl-CoA/aldehyde reductase gene encodes a fatty acyl-CoA/aldehyde reductase having a catalytic activity of reducing a fatty acyl-CoA molecule to a primary alcohol, the fatty acyl-CoA reductase gene encodes a fatty acyl-CoA reductase having a catalytic activity of reducing a fatty acyl-CoA molecule to an aldehyde, and the fatty aldehyde decarbonylase gene encodes a fatty aldehyde decarbonylase having a catalytic activity of converting a fatty aldehyde to an alkane or alkene.

Claim 18 explicitly requires SUCROSE as carbon source:

A method of making a triglyceride composition comprising cultivating the cell of claim 11 under heterotrophic conditions suitable for lipid production, thereby producing the triglyceride composition, wherein the cell further comprises an exogenous gene encoding a sucrose invertase and sucrose is provided as a carbon source.

**In passing, biological cells are roughly in the micron size range, not in the nano size range.

CAFC finds re-examined claims of U.S. Patent 6,142,927 obvious

One James Hoyt Clark appealed a decision of the BPAI to the
CAFC, but lost relating to the obviousness of the appealed re-examined
claims from U.S. Patent 6,142,927.

The appealed invention related to the application
of electromagnetic radiation to the body in the form of
signals of nonionizing, nonthermal, low energy, frequency
specific electromagnetic radiation or low voltage alternat-
ing or direct current.”

A reference is available for all that it teaches:

Instead, Clark primarily argues that the CEDS96
publication does not teach a modulation transmitter
because the reference incorrectly states that the LISTEN
system employed an FM transmitter and transmitted an
FM signal. However, absent an obvious error on the face
of the reference, a reference is prior art for what it dis-
closes, even if the commercial system that the reference
describes operated differently than disclosed in the refer-
ence. See In re Garfinkel, 437 F.3d 1005, 1008 (C.C.P.A

The observant reader will note an "obvious" error in the citation
to Garfinkel. No case decided by the CCPA appears in F.3d.
The actual citation for Garfinkel is In re Garfinkel, 437 F. 2d 1000,
168 USPQ 659 (CCPA 1971), so the CAFC also got the initial page wrong,
in addition to the F.3d error.

The Garfinkel case is usually cited for a somewhat different proposition:

Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).” [from MyPatentBar.com]

MPEP 715 puts it this way:

Where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art. In this case, that subject matter may be used as a basis for rejecting his or her claims and may not be overcome by an affidavit or declaration under 37 CFR 1.131. In re Hellsund, 474 F.2d 1307, 177 USPQ 170 (CCPA 1973); In re Garfinkel, 437 F.2d 1000, 168 USPQ 659 (CCPA 1971); In re Blout, 333 F.2d 928, 142 USPQ 173 (CCPA 1964); In re Lopresti, 333 F.2d 932, 142 USPQ 177 (CCPA 1964).

See also Anything You Say Can Be Used Against You: Admissions of Prior Art , 82 J. Pat. & Trademark Off. Soc'y 347 (2000)

Of "substantial evidence":

In sum,
substantial evidence supports the Board’s underlying
factual findings on the scope and content of the prior art
and the differences between the prior art and the reexamined claims.

KSR appears at the end of an obviousness analysis:

In light of these factual findings, we conclude that the
reexamined claims would have been obvious to one of skill
in the art when Clark filed the patent application that
issued as the ’927 patent. Conventional modulation
transmitters were known in the art in 1998, and nothing
in the LISTEN manual precludes the use of a conven-
tional modulation transmitter or indicates that the use of
a modulation transmitter would render the LISTEN
system inoperable. In addition, the CEDS96 publication
motivated those of skill in the art to use an FM transmit-
ter with the LISTEN system because the article states
that an FM transmitter is required “[i]n order for this
technology to work” and expressly states that the LISTEN
system employed an FM transmitter and transmitted an
FM signal. Id. Finally, the CEDS96 publication states
that, in addition to the LISTEN system, other electro-
magnetic therapy systems developed by Clark used an
FM transmitter and transmitted FM signals. Id. at 272–
74. In total, the evidence shows that equipping the
LISTEN system disclosed in the LISTEN manual with an
FM transmitter in 1998 involved the combination of
familiar elements according to known methods and would
yield predictable results. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).

There was also a rejection for lack of written description:

Clark appealed the rejections to the Board, and the
Board affirmed. With regard to written description, the
Board found that the specification failed to disclose to
those skilled in the art that Clark possessed a “modula-
tion transmitter” when he filed the original specification
in 1998. Id. at 8–13.

The CAFC did NOT reach the issue of written description.

Thursday, May 19, 2011

CAFC reverses ND Ga in Arris case; MedImmune interpreted

The CAFC found there was a controversy in the case:

The United States
District Court for the Northern District of Georgia dis-
missed for lack of subject matter jurisdiction, finding that
there was no Article III case or controversy between the
parties. Arris Group, Inc. v. British Telecomm., PLC, No.
1:09-CV-671-CAP, slip op. at 5–8 (N.D. Ga. Feb. 18, 2010).
Because we conclude that an actual controversy existed
between Arris and BT, we reverse the district court’s
decision and remand for further proceedings.

The issue:

This case again presents a question of standing to
bring a declaratory judgment action for a determination of
non-infringement and invalidity. In MedImmune, Inc. v.
Genentech, Inc., the Supreme Court rejected our prior,
more stringent standard for declaratory judgment stand-
ing insofar as it required a “reasonable apprehension of
imminent suit.” 549 U.S. 118, 132 n.11 (2007); see also
ABB Inc. v. Cooper Indus., LLC, No. 2010-1227, 2011 WL
553603, at *2 (Fed. Cir. Feb. 17, 2011) (recognizing
MedImmune’s rejection of the reasonable apprehension
test); Teva Pharm., 482 F.3d at 1338–39 (same); SanDisk
Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1378–79
(Fed. Cir. 2007) (same). Under the Court’s new standard,
an Article III case or controversy exists when “the facts
alleged, under all the circumstances, show that there is a
substantial controversy, between parties having adverse
legal interests, of sufficient immediacy and reality to
warrant the issuance of a declaratory judgment.”

The CAFC noted:

We have recognized that, where a patent holder ac-
cuses customers of direct infringement based on the sale
or use of a supplier’s equipment, the supplier has stand-
ing to commence a declaratory judgment action if (a) the
supplier is obligated to indemnify its customers from
infringement liability, or (b) there is a controversy be-
tween the patentee and the supplier as to the supplier’s
liability for induced or contributory infringement based on
the alleged acts of direct infringement by its customers.5
Though there was no express indemnification agreement
here, Arris contends it risks being held liable to Cable
One for indemnification under Georgia’s Uniform Com-
mercial Code (“UCC”).

Bottom line:

From our consideration of “all the circum-
stances,” MedImmune, 549 U.S. at 127, there is an Article
III case or controversy between Arris and BT regarding Arris’
potential liability for contributory infringement.


The Excela portion of the case:

Exela is in a different position. Unlike Apotex, Exela
appeals the district court’s finding that the product pro-
posed in its ANDA infringes Allergan’s patent rights.

The issue turned on pH:

Allergan asserted only the ’834 patent against Exela.
Claims 7 and 16 of that patent recite a 0.15% brimonidine
solution including SCD as a preservative adjusted to a pH of
7.0 or greater. The only issue in this case is whether the
product described in Exela’s ANDA infringes that pH limita-
tion. Both Exela and Allergan agree that the highest pH at
which Exela requests permission to manufacture and sell its
proposed product is 6.7.

There was some conjecture:

The district court reasoned
that Exela would take this 0.5 unit drop in pH into account
when manufacturing its brimonidine formulation. To
produce a product that will maintain a pH greater than 6.5,
the district court concluded that Exela would necessarily
manufacture its product at an infringing pH of 7.0 or above.

Some legal references:

The infringement action is a hypothetical case
that asks the factfinder to determine whether the drug that
will be sold upon approval of the ANDA will infringe the
asserted patent. Bayer AG v. Elan Pharm. Research Corp.,
212 F.3d 1241, 1249 (Fed. Cir. 2000). In Abbott Laborato-
ries v. TorPharm, Inc., we explained that “[b]ecause drug
manufacturers are bound by strict statutory provisions to
sell only those products that comport with the ANDA’s
description of the drug, an ANDA specification defining a
proposed generic drug in a manner that directly addresses
the issue of infringement will control the infringement
inquiry.” 300 F.3d 1367, 1373 (Fed. Cir. 2002).

Excela won: We cannot assume that Exela will not act in full
compliance with its representations to the FDA

Wednesday, May 18, 2011

North Carolina law school grad speech plagiarized

See NC Student Accused Of Plagiarism In Graduation Speech, with the text: The North Carolina Central student, Preston Mitchum, said he meant to credit the speaker but did not.

Biofuels Digest on Solazyme IPO

The last part of the text of the Biofuels Digest post on the Solazyme IPO:

Ultimately, at oil company margins and price-revenue ratios (see Shell’s data), survivor companies, we believe, will have a minimum value of $2.74 billion. So there’s around a 66 percent “not going to make it to prime time” discount on Solazyme, the way we see it.

In the patent area, note the previous IPBiz post

US 7,905,930 to Genifuel : sugar to heterotrophs to oil

Boston Scientific wins patent award from Cordis

A Delaware jury awarded Boston Scientific $19.5 million from Cordis in one of the skirmishes in the stent patent wars.

[Recovered from blogspot on May 18.]

Rea pushes "America Invents Act"

From a guest post by Teresa Stanek Rea at the Kappos blog:

In order to hear ideas directly from entrepreneurs, senior Administration officials have traveled to cities throughout the Nation, holding Startup America: Reducing Barriers roundtable discussions and assessing what Federal regulations should be changed to create an environment most conducive to small business growth and job creation. That’s why we are currently working with Congress to pass the America Invents Act, which aims to simplify the process of securing patent rights and empower small and independent inventors to distribute their ideas, products, and tools faster.

Rea received a Juris Doctor degree from Wayne State University and a Bachelor of Science degree in pharmacy from the University of Michigan.”

link: http://www.ip-watch.org/weblog/2011/02/17/pharma-lawyer-is-new-deputy-director-at-uspto/

Query: Does small business support S.23//America Invents Act?

After the raid on patent office funds in April 2011, does anyone believe fee diversion will be stopped?

Who is kidding whom here?

Does Kappos fight patent reform opposition with facts?

[Recovered from blogspot on May 18.]

Tuesday, May 17, 2011

Sen. Blumenthal invokes patent application against Google

Proving that some senators (or their staff) reads patent applications, Senator Blumenthal (D-CT) invoked a patent application against Google. From Grant Gross:

Senator Richard Blumenthal, a Connecticut Democrat, pointed to a November 2008 patent application by Google for wireless network-based location approximation in questioning whether Google meant to snoop on Wi-Fi network signals during its Street View sweeps.

Google's collection of personal data on Wi-Fi networks, include e-mail messages, passwords and browsing history, is "contemplated" in the patent application, Blumenthal said during a hearing on smartphone privacy before the Senate Judiciary Committee's privacy subcommittee.


Blather in the San Jose Mercury News

Two commentators to the San Jose Mercury News took an odd approach in pushing patent reform:

Unfortunately, the act fails to address the crux of the problem, particularly for pharmaceuticals: raising the bar on patent quality, so true inventions, not pseudo inventions, are awarded the privileges of patent protection.

To do this, Congress must harness the power of "citizen review," which is employed effectively in many parts of the world. Citizen review permits knowledgeable experts across all technical fields to weigh in on the merits of a new application and submit pertinent information while it is still under review and also after a patent has been issued. This helps patent examiners to more effectively sort worthy inventions from unworthy ones.

Rule 99 is apparently unknown to them:

Although AIA permits citizens, for the first time, to provide feedback before a patent is granted, these rights provide unfair advantage to large corporations.

Peer review is pushed:

Congress should embrace citizen review. Sadly, current reforms fail to do this.

CAFC delivers more messages on obviousness

Because of problems at blogger/blogspot, there were no posts on May 13, 2011. In the meantime, the CAFC decided IN RE HUAI-HUNG KAO, ANAND R. BAICHWAL, TROY MCCALL, AND DAVID LEE, with the result:

Because the Board based its conclusion of obviousness
regarding the ’432 Application on factual findings lacking
in substantial evidence, this court vacates and remands.
Because the Board’s conclusions regarding the obvious-
ness of the ’859 and ’740 Applications were supported by
substantial evidence, this court affirms the Board’s deci-
sions regarding those two applications.

Of the '432 application:

On the merits, this court agrees with Endo that the
Board relied on erroneous reasoning in making the fac-
tual determinations that underlie its conclusion that
claim 1 is obvious, and that its factual findings are there-
fore unsupported by substantial evidence. However,
because the evidence of record may yet satisfy the re-
quired substantial evidence standard, the Board’s deter-
mination will be vacated and remanded.

Once the examiner estab-
lishes a prima facie case of obviousness, the burden shifts
to the applicant to rebut that case. “The prima facie case
is a procedural tool, and requires that the examiner
initially produce evidence sufficient to support a ruling of
obviousness; thereafter the burden shifts to the applicant
to come forward with evidence or argument in rebuttal.”
In re Kumar, 418 F.3d at 1366. However, once the appli-
cant has come forward with rebuttal evidence, the exam-
iner must consider the totality of the evidence to
determine whether the obviousness rejection should
stand. “When rebuttal evidence is provided, the prima
facie case dissolves, and the decision is made on the
entirety of the evidence.” Id.


The Board’s own
conjecture does not supply the requisite substantial
evidence to support the rejections, i.e., “such evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. Nat’l Labor Relations
Bd., 305 U.S. 197, 229 (1938). For these reasons, the
Board’s reliance on its own conjecture regarding whether
a direct substitution of oxymorphone in Formula 6 would
satisfy the claimed range of dissolution rates is improper.

KSR did come up:

The Board’s decision is vacated and remanded so that
the Board can consider whether, under the proper analy-
sis, the evidence of record is sufficient to maintain an
obviousness rejection. As the Supreme Court has ex-

When there is. . . market pressure to solve a prob-
lem and there are a finite number of identified,
predictable solutions, a person of ordinary skill in
the art has good reason to pursue the known op-
tions within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense.

KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 402-403
(2007). Thus, while the Board should neither rely upon
conclusory reasoning nor its own conjecture in assessing
the weight of evidence, the Board may, or may not, still find
that the evidence supports the examiner’s rejection.

Of secondary considerations:

To start, when secondary considerations are present,
though they are not always dispositive, it is error not to
consider them. See Stratoflex v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983) (“[E]vidence rising out of the
so-called ‘secondary considerations’ must always when
present be considered en route to a determination of
obviousness.”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) (“Although secondary considerations
must be taken into account, they do not necessarily con-
trol the obviousness conclusion.”).


Evidence of secondary considerations must be rea-
sonably commensurate with the scope of the claims. See
n re Tiffin, 448 F.2d 791, 792 (CCPA 1971); In re Hiniker,
150 F.3d 1362, 1369 (Fed. Cir. 1998). This does not mean
that an applicant is required to test every embodiment
within the scope of his or her claims. If an applicant
demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the
conclusion that other embodiments falling within the
claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of
the claims. See In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (concluding that evidence of secondary
considerations was not commensurate with the scope of
the claims where that evidence related to a single com-
pound and there was no adequate basis to conclude that
other compounds included within the scope of the claims
would exhibit the same behavior); In re Cescon, 474 F.2d
1331, 1334 (CCPA 1973) (concluding that, although not
every compound within the scope of the claims was tested,
the evidence of secondary considerations was sufficient
where evidence showed a correlation and there was no
factual basis to expect the compounds to behave differ-
ently in different environments).


But there is a more fundamental requirement that
must be met before secondary considerations can carry
the day. “For objective evidence of secondary considera-
tions to be accorded substantial weight, its proponent
must establish a nexus between the evidence and the
merits of the claimed invention.” Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quotation
omitted). Where the offered secondary consideration
actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the
merits of the claimed invention. Tokai Corp. v. Easton
Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art,
no nexus exists.”);

[From post "blogspot": Posts for May 12, 2011 are missing. Difficulty posting on May 13, 2011.]