Sunday, March 31, 2013

CBS Sunday Morning for Easter, March 31, 2013

Charles Osgood introduced the stories for Sunday Morning on Easter, March 31, 2013. The cover story is by Martha Teichner on the story of Mary. Enigmatic Mary. Second, Anthony Mason interviews Barry Gordie. Motown on Broadway. Third, Mo Rocca on Debbie Reynolds. Tammy's in love. Fourth, Serena Alschul on maple syrup. Michelle Miller. Seth Doane. Steve Hartman. Headlines for March 31. Pope Francis celebrates his first Easter. North Korea says peninsula is in state of war. Mandela hospitalized. Eiffel Tower closed because of bomb threat. Coughlin County, Texas. McClellan. Wichita State moves on to final four. Syracuse beat Marquette. Weather: Rain in northeast.

"Portrait of Mary." Mary's role is humanizing. Father Neil Connelly in New York City. 20% (4000) places of worship in the US are named for Mary. Nazareth had a population of 400 in the first century. Professor Deirdre Good. Prof. Craig Evans of Acadia University in Nova Scotia. Gospel of Mark. John takes Mary to Ephesus. Prof. Robin Jensen at Vanderbilt University. Mary. Council of Ephesus in the year 431. Actress Fiona Shaw plays Mary. Colin Tobin. Mary appears in the Koran.

Almanac. March 31, 1791. Cape Henry (Virginia) Lighthouse contract signed by Alexander Hamilton, the first lighthouse of the federal government. $17,700. The Statue of Liberty was listed as a lighthouse from 1886 to 1902. Relocations of lighthouses. Block Island in 1993. Cape Hatteras in 1999. Charles Kuralt story in 1987 about lighthouse keepers. Fog detector. Every lighthouse is automated since 1998, except for Boston lighthouse.

"Something Sweet." Sap from sugar maples is beginning to flow. Months of Feb., March, April. Sucerie de Montagne. 40 gallons of sap to make one gallon of syrup. Sap runs only 25 days each year. Sap ten times more valuable than crude oil. OPEC of maple syrup.

Anthony Mason with Barry Gordie. Make the music; make the money; get some girls. In 1959, Barry borrowed $800. Signed the Miracles. "Shop Around" in 1960. Hitsville. Stevie Wonder was 11 when he signed in 1961. "Quality Control" on what records to release. Marvin Gaye butted heads with the chairman. "What's going on?" Michael Jackson and family signed in 1969. Old man in a kid's body. Madly in love with Diana Ross. Barry sold Motown in 1988. Music that changed America.

Richard Blanco by Seth Doane. Bethel, Maine. "One Today." Recited to a snowman. Kelly Clarkson sang before Blanco took the stage. Fifth poet ever to speak at an inauguration. Robert Frost in 1961. He had six weeks to come up with the poem. Mark Navoo is a molecular biologist and took a job in Bethel, Maine. Richard Blanco has Cuban roots. Blanco grew up in Miami. Sergio's Cuban Diner in Miami.

Edelstein on Olympus Has Fallen. DW Griffith "Birth of a Nation" in 1915. 1974: Death Wish. Loan Hunter. 1988: Die Hard. Gerard Butler. Win manhood back. 48% of gun owners own gun for protection, reverse of 1999. Edelstein: We are obsessed with being attacked.

Steve Hartman on Eli Nevant. George Sparks. Eli was called in for an interview. Passion for prehistoric life. Curator for a day. The past is your future.

Mo Rocca does Sunday Profile on Debbie Reynolds. The Catered Affair. The Unsinkable Molly Brown. At age 19, cast for Singin' in the Rain. Won Miss Burbank in 1948. Contract at $65/week. Liz Taylor called Debbie "a Girl Scout." Reynolds met Eddie Fisher. Married at Grossingers in 1955.

Michelle Miller on a church in northeast Washington, DC. Peter Chin, Pastor. Peace Fellowship. Chin is a Yale graduate. Chin is from Chicago. In 1992 LA riots, 2200 Korean stores were looted. Movie: "Menace to Society."

Phil Ramone died in New York on March 30, 2013.

week ahead. Monday: April Fools Tuesday: Mark Sanford faces primary. Wednesday: 40th anniversary of first call from cell phone. Thursday. Jose Padilla. Friday: Penn and Teller get star. Sat. Final Four in NCAA.

Today: opening day for Major League Baseball. Tom Oliphant, husband of Susan Spencer. City Field in New York. Passover, Easter, and Opening Day. John Sexton, president of NYU: baseball as a road to God. St. Louis Cardinals come back twice. Miles no. 12.

Next week on Sunday Morning: Carol Burnett.

Moment of Nature. Spiriva. Field of bluebonnets in Mason County, Texas.

Friday, March 29, 2013

Judge Newman strikes back in "In re Hubbell"

IPBiz earlier discussed the case In re Hubbell, concerning "double patenting" issues involving a former
Caltech professor.

There is an interesting "errata" that appeared:

Please insert the following in the dissenting opinion
footnote at page 4, line 18, after “(4th ed. 1979)”:
1 The panel majority’s footnote 4 criticizes
this citation to an earlier version of the
MPEP that defined “inventive entity”; however,
this has always been the definition of
“inventive entity,” extensively embodied in
judicial opinions, e.g., Leviton Mfg. Co., Inc.
v. Universal Sec. Instruments, Inc., 606 F.3d
1353, 1358 (Fed. Cir. 2010), and as used in
the current MPEP §804 (8th ed. 2012)
. I also
remark on the panel majority’s ruling that
“inventive entity” in double patenting law
depends on the relative contribution of the
joint inventors. Maj. Op. at 13. That theory
is devoid of foundation.

Please re-number footnote 1 on page 7, line 28, as footnote

Advisory opinion in In re Owens?

The case In re Owens concerns a continuation
application of a design patent application for a design for a bottle.

Of "written description,"

the written description question does not
turn upon what has been disclaimed, but instead upon
whether the original disclosure “clearly allow[s] persons of
ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Ariad, 598 F.3d at 1351
(second alternation in original) (emphasis added) (internal
quotation marks omitted); Daniels, 144 F.3d at 1456
(“The [written description] inquiry is simply to determine
whether the inventor had possession at the earlier date of
what was claimed at the later date.”). In this case, Owens’s
parent application discloses a design for a bottle
with an undivided pentagonal center-front panel, whereas
the continuation claims only the trapezoidal top portion of
that center-front panel. Therefore, the question for written
description purposes is whether a skilled artisan
would recognize upon reading the parent’s disclosure that
the trapezoidal top portion of the front panel might be
claimed separately from the remainder of that area.
Ariad, 598 F.3d at 1351.

The CAFC gets into a hypothetical, and potentially,
advisory, area:

Lastly, we turn to a question raised implicitly in Owens’s
appeal and explicitly in amicus briefing—whether,
and under what circumstances, Owens could introduce an
unclaimed boundary line on his center-front panel and
still receive the benefit of § 120.
The Manuel of Patent Examining Procedure (“MPEP”)
provides some direction in this regard, saying that unclaimed
boundary lines “may” be acceptable when “connecting
the ends of existing full lines.” MPEP § 1503.02.
Were this the rule, it might be acceptable for Owens to
bisect his front panel with a broken line along the pentagon’s
widest point. However, it seems that such a boundary
would simply outline a larger trapezoidal area, and so
the resulting claim would suffer from the same written
description problems as the ’172 application.
Prior PTO practice offers similarly ambiguous guidance.
For instance, the amicus brief noted certain past
allowances that seemingly contradict both the MPEP and
the PTO’s rejection of the Owens continuation. Compare
the ’702 application, and the ’172 application, with U.S.
Patent No. D545,954 (issued July 3, 2007) (parent design
patent claiming humidifier), and U.S. Patent No.
D569,958 (issued May 27, 2008) (continuation allowed
despite having areas of humidifier bisected with unclaimed
boundary lines).2
In our view, the best advice for future applicants was
presented in the PTO’s brief, which argued that unclaimed
boundary lines typically should satisfy the written
description requirement only if they make explicit a
boundary that already exists, but was unclaimed, in the
original disclosure. Although counsel for the PTO conceded
at oral argument that he could not reconcile all past
allowances under this standard, he maintained that all
future applications will be evaluated according to it.
This rule comports with our understanding of how unclaimed
boundary lines generally should affect entitlement
to an earlier filing date under § 112, ¶ 1, and § 120.
Its implications for Owens’s case should be obvious.

A journal editor acting badly, and the need to file patent applications before journal submissions

The basics of the dispute in
Rubin v. General Hospital Corporation :

The dispute arose from the
allegedly improper communication to the named MGH
inventors, Dr. James F. Gusella and Dr. Susan A.
Slaugenhaupt, of a manuscript or the abstract thereof of a
scientific article that Drs. Rubin and Anderson had submitted
to the American Journal of Human Genetics for
. The complaint states that the named inventors
used this still confidential scientific information to
complete the inventions described and claimed in the
MGH patents
. The district court granted summary
judgment that remedy under §256 is not available, reasoning
that these separate teams of scientists did not
have a collaborative relationship and therefore could not
be joint or substitute inventors of the MGH patents.1 The
district court previously dismissed the count under §102(f)
as “duplicative” of the §256 counts.

Of the subject matter:

Drs. Rubin and Anderson at the Department of Biological
Sciences of Fordham University, and Drs.
Slaugenhaupt and Gusella at the Massachusetts General
Hospital, had been conducting research to determine the
genetic mutations that cause the inherited disease Familial
Dysautonomia (FD), also known as Riley-Day Syndrome.
Drs. Rubin and Anderson identified the two genetic
mutations causative of FD, called the “major” and “minor”
mutations. The record states that on December 20, 2000
they submitted the manuscript of an article entitled
“Familial Dysautonomia Is Caused By Mutations of the
IKAP Gene” to the Editor of the American Journal of
Human Genetics. The article identified the operative
mutations and their location in the region of the IKAP
gene encoding a protein called IkB kinase complexassociated
protein. Dr. Rubin wrote to Dr. Stephen
Warren, the Editor of the Journal, and identified four
scientists whom the authors believed to be qualified to
peer-review the article; the scientists were at Cornell
University, the University of California, Baylor University,
and Sloan Kettering Institute. Dr. Rubin asked that
Dr. Gusella and his colleagues at MGH not receive the
article for peer-review because they were working competitively
on the same problem.

On January 6, 2001, Drs. Gusella and Slaugenhaupt
filed Provisional Patent Application No. 60/260,080 describing
these FD mutations and claiming their diagnostic
use. On January 17, 2001, Drs. Rubin and Anderson
(with a third inventor) filed Provisional Patent Application
No. 60/262,284 describing these FD mutations and
claiming their diagnostic use. The patents in suit issued
to Drs. Gusella and Slaugenhaupt, assigned to MGH: U.S.
Patent No. 7,388,093 entitled “Gene For Identifying
Individuals with Familial Dysautonomia” issued June 17,
2008; and divisional Patent No. 7,407,756 entitled “Methods
for Detecting Mutations Associated With Familial
Dysautonomia,” issued August 5, 2008. The record states
that Drs. Rubin and Anderson declined to take the steps
to initiate an interference in the Patent and Trademark
Office, although the patent examiner so suggested.

Rubin and Anderson, whose information was sent by the journal editor
to Gusella and Slaugenhaupt (who filed the first patent application),

We conclude that the district court correctly ruled
that the independent relationship between these teams of
scientists, and the nature of this communication of information,
do not support joint invention in accordance with
§116, or warrant change or substitution of inventorship
under §256. Although §256 is a general remedial statute,
the district court correctly held that the record does not
support “correcting” the named inventorship of the MGH

The case would have to be decided by an interference

Fostering a corporate culture of copying

From Power Integrations v. Fairchild

In claim construction, one starts with the intrinsic record:

We are not persuaded that the claims inform a plain
and ordinary meaning of the term “frequency variation
signal,” nor do we agree with Fairchild that we need only
a dictionary to discern the meaning of “frequency variation
signal.” Unless the inventor intended a term to cover
more than the ordinary and customary meaning revealed
by the context of the intrinsic record, it is improper to read
the term to encompass a broader definition simply because
it may be found in a dictionary, treatise, or other
extrinsic source. Nystrom v. TREX Co., Inc., 424 F.3d
1136, 1145 (Fed. Cir. 2005). In any event, our inquiry
here starts with the intrinsic record, including the specification,
and not with a dictionary definition of the disputed
term. Phillips, 415 F.3d at 1321 (“The problem is that if
the district court starts with the broad dictionary definition
in every case and fails to fully appreciate how the
specification implicitly limits that definition, the error
will systematically cause the construction of the claim to
be unduly expansive.”). (...)

The intrinsic record thus clearly indicates the
patentee’s precise conception and formulation, which here
must control our construction. See Renishaw, 158 F.3d at
1250 (“Ultimately, the interpretation to be given a term
can only be determined and confirmed with a full understanding
of what the inventors actually invented and
intended to envelop with the claim.”).

Of means plus function claiming:

If a claim term does not use the
word “means,” we presume that means-plus-function
claiming does not apply. See CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). If,
however, the claim term recites a function without reciting
sufficient structure for performing that function, the
presumption falls and means-plus-function claiming
applies. See, e.g., Watts v. XL Sys., Inc., 232 F.3d 877, 880
(Fed. Cir. 2000). We assess whether a claim limitation
recites sufficient structure to avoid means-plus-function
claiming from the vantage point of an ordinarily skilled
artisan. See Inventio, 649 F.3d at 1357; Apex Inc. v.
Raritan Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir.

As to nomenclature:

In 2011, Congress reformatted the paragraphs of §
112 as subsections. Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011). Section
112, ¶ 6, is now codified as § 112(f). To maintain consistency
with the district court’s opinion, we refer to §
112, ¶ 6.

Of secondary considerations:

Our inquiry does not end here, however, and we next
turn to objective considerations, which we sometimes
refer to as “secondary considerations,” as essential components
of our obviousness analysis. In re Cyclobenzaprine,
676 F.3d at 1076–79. Objective evidence of
nonobviousness can include copying, long felt but unsolved
need, failure of others, commercial success, unexpected
results created by the claimed invention,
unexpected properties of the claimed invention, licenses
showing industry respect for the invention, and skepticism
of skilled artisans before the invention. In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) (collecting
cases). These objective considerations can protect against
the prejudice of hindsight bias, which often overlooks that
“[t]he genius of invention is often a combination of known
elements which in hindsight seems preordained.” McGinley
v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir.

Of copying:

Significantly, Fairchild competed with Power Integrations
by reverse engineering and copying of Power Integrations’
products. One Fairchild engineer testified to
“looking at the circuit” of the ’876 Patent while developing
the accused products. He testified that Fairchild obtained
Power Integrations’ products and datasheets for “benchmarking,”
which he said is “the same” as reverse engineering.
Internal documents indicate that Fairchild kept
track of at least some of its efforts to reverse engineer
Power Integrations’ products. The record indicates that
Fairchild fostered a corporate culture of copying, which was not limited to the ’876 Patent.

Of scope of damage:

Power Integrations’ argument that the broad principles
of “full compensation,” extend to cover Fairchild’s
worldwide sales is not persuasive
. It is axiomatic that
U.S. patent law does not operate extraterritorially to
prohibit infringement abroad. Deepsouth Packing Co. v.
Laitram Corp., 406 U.S. 518, 531 (1972), superseded by
statute, Patent Law Amendments Acts of 1984, Pub. L.
No. 98-622, 98 Stat. 3383 (codified at 35 U.S.C. § 271(f)),
as recognized in Microsoft Corp. v. AT&T Corp., 550 U.S.
437 (2007); see also Brown v. Duchesne, 60 U.S. (19 How.)
183, 195 (1856) (“Our patent system makes no claim to
extraterritorial effect; these acts of Congress do not, and
were not intended to, operate beyond the limits of the
United States . . . .” (internal quotation marks omitted)).

Power Integrations’ “foreseeability” theory of worldwide
damages sets the presumption against extraterritoriality
in interesting juxtaposition with the principle of
full compensation. Nevertheless, Power Integrations’
argument is not novel, and in the end, it is not persuasive.
Regardless of how the argument is framed under the facts
of this case, the underlying question here remains whether
Power Integrations is entitled to compensatory damages
for injury caused by infringing activity that occurred
outside the territory of the United States. The answer is

Evidence from the internet:

Fairchild further argues that
the document on which Dr. Troxel relied for Samsung’s
sales data was an unauthenticated hearsay “press release”
retrieved from the Internet.

Daubert is cited:

In determining damages, a jury may rely on expert
testimony. 35 U.S.C. § 284. District courts, as gatekeepers,
must nevertheless ensure that all expert testimony is
rooted in firm scientific or technical ground. Daubert v.
Merrell Dow Pharm., Inc., 509 U.S. 579, 589–90 (1993);
Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 148
(1999). To that end, the Federal Rules of Evidence require
that an expert’s testimony be the product of reliable
principles and methods applied to sufficient facts or data.
Fed. R. Evid. 702(b),(c). The trial judge must ensure that
the expert has “reliably applied the principles and methods
to the facts of the case.” Id. at 702(d). Data relied on
by the expert “need not be admissible for the opinion to be
admitted” if experts in the field would reasonably rely on
such data. Fed. R. Evid. 703. The trial judge must have
considerable leeway in deciding how to determine whether
the expert’s testimony is sufficiently reliable. Kumho
Tire, 526 U.S. at 152.

Of documents from the internet:

disagree with Power Integrations that the source and
reliability of data relied upon by an expert is otherwise
immaterial. Our rules of evidence require that an expert’s
testimony be “the product of reliable principles and
methods” applied to “sufficient facts or data.” Fed. R.
Evid. 702(b),(c). Thus, while an expert’s data need not be
admissible, the data cannot be derived from a manifestly
unreliable source. See Montgomery County v. Microvote
Corp., 320 F.3d 440, 448 (3d Cir. 2003) (finding expert’s
data source unreliable where “some of the things that
were shown to [the expert] he didn't seem to know where
they were from or what the source of them were”); cf.
Emigh v. Consol. Rail Corp., 710 F. Supp. 608, 612 (W.D.
Pa. 1989) (“[W]hen the underlying source is so unreliable
as to render it more prejudicial than probative, . . . Rule
703 cannot be used as a backdoor to get the evidence
before the jury.”).
While Dr. Troxel’s data source was unreliable, so was
his methodology. Here, Dr. Troxel made two speculative
leaps. First, the document on which Dr. Troxel relied for
his worldwide damages estimate indicated worldwide
shipments of Samsung’s mobile phones. As Dr. Troxel
testified, however, the infringing power circuits were
found in mobile phone chargers, not in mobile phones.

In the end, we are left with an expert opinion derived
from unreliable data and built on speculation. Without
more, Dr. Troxel’s testimony and data regarding worldwide
shipments of Samsung’s mobile phones are too far
removed from the facts of this case, which involves
Fairchild’s infringing power circuits. Dr. Troxel’s layered
assumptions lack the hallmarks of genuinely useful
expert testimony. Kumho Tire, 526 U.S. at 156. Such
unreliable testimony frustrates a primary goal of expert
testimony in any case, which is meant to place experience
from professional specialization at the jury’s disposal, not
muddle the jury’s fact-finding with unreliability and

Chiuminatta is cited:

Thus, the
evidence demonstrates no direct connection between
Samsung’s worldwide sales of mobile phones and sales of
Fairchild’s infringing power circuits. See Chiuminatta
Concrete Concepts, Inc. v. Cardinal Indus., Inc., 1 F. App’x
879, 883–84 (Fed. Cir. 2001) (“[I]n cases in which there is
a question whether every sale leads to an instance of
direct infringement, a patentee must . . . establish the
connection between sales and direct infringement.”).

The 7th Amendment is cited:

Where, as here, the jury returns a general verdict, we
must “presume[] the existence of fact findings implied
from the jury's having reached that verdict.” Starceski v.
Westinghouse Elec. Corp., 54 F.3d 1089, 1100 (3d Cir.
1995) (quoting R.R. Dynamics, Inc. v. A. Stucki Co., 727
F.2d 1506, 1516 (Fed. Cir. 1984)). Infringement and
damages are findings of fact, and we review a jury’s
findings on both issues for substantial evidence. Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1309–10
(Fed. Cir. 2009). Here, we must presume that the jury’s
original $33 million award was based on a finding of
direct infringement, and we must honor’s the jury’s
determination of damages to the extent supported by
substantial evidence. See U.S. Const. amend. VII;
Starceski, 54 F.3d at 1100.

Monday, March 25, 2013

UCSF loses Dawson case at CAFC: the meaning of conception

As to the issue of conception,
the Board found that UCSF had failed to prove sole
conception by Dr. Dawson. The Board found that
Dr.Dawson “did not fully appreciate how [his] idea was to be implemented
in actual practice
”; rather, the Board held,“[w]hat emerges from the
facts of this case is that inventor Dawson had a general
idea for a future research plan to come up with a composition for
topical azithromycin to be applied to the eye to
treat infection.”

A “preliminary” statement about a “possibility”
or “potential use,”alongside a recommendation for continued work and a
“report back” in the future, falls short of a “‘definite and permanent idea of
the complete and operative invention, as it is
hereafter to be applied in practice.’”Hybritech, 802 F.2d at 1376.

UCSF objects that the Board erred in
considering statements from the specifications of the ’113 and
’443 patents on the ground that those statements were inadmissible hearsay.
As the Board explained, however,“[a]n admission should not be confused with hearsay,”

Quite apart from reduction to practice, conception requires
that the inventor know how his “‘definite and permanent idea of the
complete and operativ e invention ... is hereafter to beapplied in practice.’”
Hybritec, 802 F.2d at 1376. In other words, part of the conception inquiry asks
whether the inventor “possess[ed] an operative method of making[the invention].”
Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005).


Judge Reyna dissented.


Checkpoint wins on attorney fees at CAFC

The losing plaintiff-patentee appealed an award of attorney fees under 285, and secured a reversal of the award by ED PA.

All-Tag then moved for attorney fees pursuant
to 35 U.S.C. §285:
The court in exceptional cases may award
reasonable attorney fees to the prevailing party.
The district court granted the motion. The court
that the case was exceptional because Checkpoint
through its expert witness
did not inspect the tags it
accused of infringement, despite having ample opportunity to do so.



Tag’s admission that
its products are made
“generally in accordance” with
its patents could reasonably have been relied
on by Checkpoint and its expert Dr. Zahn. Such reliance was not
“objectively baseless.”

See Martek Biosciences Corp. v.
Nutrinova, Inc.
, 579 F.3d 1363, 1374 (Fed. Cir. 2009)
(rejecting “a general rule requiring one who alleges in-
fringement of a claim containing functional limitations
to perform actual tests or experiments on the accused product or method



Sunday, March 24, 2013

60 Minutes on March 24, 2013

The first story on the Russian band Pussy Riot was done by Lesley Stahl. What law did they break.
Hooliganism motivated by religious hate. Verdict: two years in prison. Gary Kasparov was arrested for protesting.
Nadia and Maria are in harsh conditions. The band still exists. Putin is back in power.

The second story was on Brian Banks accused by Juanita Gibson, who later changed her story. Daniel Ferrera explained the recantations of the witness. Two days after exoneration a phone call from Pete Carroll: I'm looking for a linebacker. Seattle was one of six NFL teams that gave Banks a tryout. The Las Vegas Locos gave Banks a job, but the league folded. The last line of the story was by Banks: I've already won.

The third story was on Africa's Nile crocodile. Now some video from Botswana, and the Okawana delta. A pair of photographers video'd the crocs under water. Brad and Andie. Hundreds of people are killed every year. Dr Neil Britain teamed with photogs. Also collecting DNA of the crocs. Britain actually takes DNA from tail samples. The diving takes place only in the winter. Brad's grandfather killed over 30,000 crocs.

CBS Sunday Morning on March 24, 2013: the money issue

Anthony Mason, not Charles Osgood, introduced the stories for March 24, 2013, "the money issue." John Blackstone does the cover story on "share and share alike." People rent out their homes, their cars, etc. in a sharing eoonomy. Martha Teichner on endorsements, Good Housekeeping. Ben Tracy on Jillian Michaels. Bill Geist on book publishers, "between the covers." Desiree Holt. Headlines on Palm Sunday. Pope Francis celebrated Palm Sunday Mass. Obama is back in Washington. Reconciliation between Israel and Turkey. Winner in PowerBall is from New Jersey. David Ranta had a heart attack. Wichita State won 76-70 to enter sweet sixteen. Early spring snowstorm in west. Cooler than normal.

How to do business with perfect strangers. A view of Mount Diablo in Bay Area begins the story. Doug Studebaker rents out tree house, with a view of Mount Diablo, by making it available on airbandb. $195 per night to stay in tree house. Studebaker is part of the sharing economy. GetAround and RelayRides. Ride a Tesla for $25 per hour. The Tie Society. AirBandB has 300,000 places available. Lawrence Summers booats the sharing economy. Empty apartments become a lower cost place to stay. Summers is on the Board of LendingClub. Renaud Leplanch is LendingClub's founder. They have loaned 1.5 billion so far. Shareable. by Gorinflow. Peg Powell rents out a couch. She lost her job in silicon valley. She rents her home on airbandb and her car on getaround. An old idea (eg boarding houses) brought up to date.

Seal of approval. Labwork behind the logo. Peter Thomas Roth sells skin care products. On Jan. 28, selling changed by virtue of having Good Housekeeping Seal. Rosemary Ellis is editor in chief. Seal started in 1909. Higher life of the household. Pure Food and Drug Act in 1905. Stopped taking cigarette ads in 1952. "Wall of shame." Products have to be tested to be advertised. Blenders to bathing suits. Slimming bathing suits. Durability and effectiveness is studied. Frozen waffles were tested by Teichner. 21 million people read each issue. In 2009, the seal turned 100. A new green seal was introduced and Benjamin Moore paint got one.

Displaying products at Wal-Mart via paintings by Brendan O'Connell. The world from a perspective of pushing a cart at 5 miles an hour. O'Connell trying to make contemporary art that is relevant to the American experience. Wal-mart put the boulevards of Paris under one roof. First time: O'Connell was invited to leave. Allan Draneau of Wal-Mart. Could paintings be viewed as American excess? Sweet and poisonous. Hats, hearts, and hoodies. This is the darkest painting; the world is coming to an end. Paintings sell for 1,000 to 40,000. A painting of a rack of Jif. Turn the chore of shopping into something of an art. Story done by Erin Moriarty.

Movie "Freelancers." Tracy Smith talks with Fifty Cent. On QVC: $50,000 worth of headphones in 20 minutes. Fifty cent started by selling water. Glaceau Vitamin Water. Fifty Cent born as Curtis Jackson. At age 8, moved in with his grandparents. By spring of 2000, he had a record deal. All things fall apart. He has signed five boxers. He is working on his first album in three years. Now, he is 37 years old. He now has a new energy drink. Clip of tv ad with Joan Rivers.

Susan Spencer on "In a pickle." Shamus Jones and Brooklyn Brine. 32 year old pickle pioneer. Going in and making a product. Whiskey Sour pickles. In 2010 a call from Williams Sonoma for 20,000 jars. Now Brooklyn Brine has topped a million bucks in gross sales. You need big barrels. Adam Steinburg, Panamint Museum. Pickle pushcarts. Numb your nose. H. J. Heinz. Started selling all across the country. 1 billion pounds of pickles per year. About 4 pounds per person per year. The Pickle Guys. Now pickled pineapple, pearl onions. Kauffman and Jones: big untapped market for pickles.

Polonius in Hamlet. Faith Salie talks about Omaha Warren Buffet and Sue Kane of Our Family's Social Credit Union. Manley and Lucy Williams started it Now 511 members and assets of about 1/2 million dollars. Credit unions are not for profit. Profits are returned to members. Peggy Powell of credit union museum. A group of people combining their resources to look out for one another. Newsletter: Relatively Speaking.

Lee Cowan on saving for golden years. How much is enough? Put away 15% of your annual salary. A family making 75K needs savings of 800K at retirement.

Serena Alschul of Uniclo, fashion retailer. Tokyo based company. Goal is to become number one fashion retailer. Feels more like an art gallery than clothing store. Simon Collins. They care about how the staff looks, about how the store looks. 75% of staff time is spent in folding. Fold 7 pairs of jeans in less than a minute. Micromanagement; attention to detail. Began in 1984. Unique clothing warehouse. Uni-clo. One store goes to 1200 stores. Aiming high.

Book publishers. Bill Geist. Desiree Holt is a 76 year old grandmother. Mommie Porn. Erotic Romance. The Porn Queen of the Texas Hill Country. Video of three dolls depicting sex acts. Patty Marx. Rodeo Heat. A cover shoot is shown.

Ben Tracy on Jillian Michaels. Unlimited. "The Biggest Loser." People call you a "brand." Tough Love that often seems to lack the love part. Incomplete representation of who I am. Yelling makes better tv. I've always wanted to shift into a daytime medium. Screams on tv --> unlikable. Written 6 diet and fitness books and aobut to launch a speaking tour. Now, too busy to go to the gym. Are you worried about diluting the brand. Jillian's tv show was cancelled. Suits about dangerous ingredients. Grew up in Santa Monica, CA. At the age of 28, a sports medicine clinic. Pertner is Heidi. In my professional life, I am never satisfied.

There are no second acts in American life. Rita Braver on Steve Case. "Case in Point." Revolution, a DC based venture firm.
Living Social and Hello Wallet. ZipCar. Unorthodox approach. You will only hit a home run if you are swinging for the fences. Potential for computers to be used in commerce. At the time, looked like niche hobbyist market. By 2000, AOL-TimeWarner. Thomas Edison: vision without execution is hallucination. Case left company in 2003. Net worth of 1.4 billion. Jean and Steve Case. Steve Case at Sweet Green started by Georgetown U. graduates. At 54, Case is an internet elder statesman. Frequent speaker. There will always be bumps on road. Need shared passion.

Where does US rank in taxes. Denmark, at 42%, is at top of "high taxes" list. The US is at 18.7%. Ranks only 61%.

How much money do you have? Poll. Enough or more than Enough 25%. Just enough: 47%

Suzie Orman. Three keys to financial happiness. Is it a need or is it a want? 2. Live within your needs. 3. Save or spend?

Moment of nature. HandiHaler. California's Central Valley where bees are pollinating blossoms of almond trees.

Friday, March 22, 2013

SDNY reversed by CAFC in best mode case

from within Anvik v. Nikon

While Dr. Jain did his cause no favors with his testimony,
we are persuaded based on no favors with his testimony, we are persuaded based on
the record as a whole that there remain disputed issues of
material fact bearing on the best mode question, and we
therefore reverse the grant of summary judgment and
remand the case for further proceedings.

Of best mode:

Whether the best mode requirement has been satisfied
is a question of fact. Bayer AG v. Schein Pharms.,
Inc., 301 F.3d 1306, 1312 (Fed. Cir. 2002). In order to
determine whether there has been a violation of the best
mode requirement, two factual questions must be answered.
The first is whether, at the time of filing the
patent application, the inventor had a best mode of practicing
the claimed invention—a subjective question. The
second is whether, assuming the inventor had a preference
for one mode over all others, the inventor objectively
concealed his preferred mode from the public. See Wellman,
Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1360
(Fed. Cir. 2011).

Patents are presumed valid, and the opposing party
must prove invalidity by clear and convincing evidence.
See High Concrete Structures, Inc. v. New Enter. Stone &
Lime Co., Inc., 377 F.3d 1379, 1382 (Fed. Cir. 2004). On
summary judgment in this case, the issue before the
district court was whether a reasonable finder of fact
could reach no conclusion other than that Dr. Jain considered
his patented illumination source system to be the
best mode for practicing the inventions and concealed it.

Of interest:

On the other hand, the Second Circuit has made clear
that this principle does not apply “if the deposition and
the later sworn statement are not actually contradictory.”
Palazzo ex rel. Delmage v. Corio, 232 F.3d 38, 43 (2d Cir.


The district court should also have considered Dr.
Smith’s expert declaration in connection with the summary
judgment motion. The fact that better alternatives
for practicing the invention may be found in the prior art
cannot establish that an inventor lacked a subjective best
mode. See Bayer, 301 F.3d at 1314. However, Dr. Smith’s
declaration at a minimum served to support Dr. Jain’s
assertion that other, equally effective illumination sources
were quite well known and therefore that he would have
had no reason to focus on a best mode of practicing the
illumination source limitations of the ’257 patent. Both
parties agree that Dr. Jain is more than qualified to be
considered a person of ordinary skill in the art. Thus,
accepting all reasonable inferences in Anvik’s favor, a
finder of fact could conclude that Dr. Jain testified truthfully
when he claimed that, at the time of the invention,
he was aware of other, equally useful modes of practicing
his invention, even though he was unable to recall them
during his deposition.

Jane Goodall accused of plagiarism

Thursday, March 21, 2013

Another round in Gevo/Butamax fight in D. Delaware

On March 19, 2013, Bloomberg reported:

U.S. District Judge Sue Robinson in Wilmington, Delaware, today ruled that “as a matter of law,” Gevo doesn’t infringe Butamax’s patent under the so-called doctrine of equivalents. The judge agreed with Gevo that the difference between its method and Butamax’s wasn’t insubstantial as Butamax argued. The judge declined to rule that there’s no infringement at all, rejecting requests from both companies to resolve the dispute without a trial.

“While Butamax’s evidence of infringement is less than compelling, nonetheless, the court finds it sufficient to withstand Gevo’s motion for summary judgment, as it raises genuine issues of material fact as to how a person of ordinary skill in the art at the time the invention was made would determine NADH-dependency,” the judge said, referring to the biochemistry of enzymes.

The case is scheduled to go to trial in August.

However, a press release on March 21, 2013 stated:

Gevo Inc. announced a significant win in Butamax Advanced Biofuels LLC litigation in Delaware court and a judgment of non-infringement will be entered in the favor of the Englewood, Colorado-based renewable chemicals and advanced biofuels company.

Butamax acknowledged that Gevo does not infringe Butamax`s asserted patents under the court's construction of a key claim term in Butamax`s Patent Nos. 7,851,188 and 7,993,889.

As a result of this victory, the trial scheduled for April 1 will no longer take place.

The judgment of non-infringement comes on the heels of the Court's important claim construction determination which held that Butamax's Patent Nos. 7,851,188 and 7,993,889 require the use of an "NADPH-dependent" (nicotinamide adenine dinucleotide phosphate-dependent) KARI.

Butamax conceded that it could not establish that Gevo's KARI is NADPH-dependent. In addition to granting a judgment of non-infringement, the court invalidated Butamax's patent claims for the deletion of PDC.

PDC is the enzyme responsible for making ethanol and its deletion is required for the commercially viable production of isobutanol. Gevo's patents covering the deletion of PDC and the use of AFT are set for trial in August of this year, where Gevo is suing Butamax for patent infringement.

"Gevo continues to demonstrate that it does not infringe Butamax's patents because Gevo created an NADH-dependent KARI enzyme that enables Gevo's yeast strains to produce isobutanol at much greater efficiencies than strains using the NADPH-dependent enzymes claimed by Butamax," said Brett Lund, EVP and General Counsel for Gevo.

IPBiz draws attention to an earlier IPBiz post wherein the Court of Appeals for the Federal Circuit [CAFC], which will review any appeal by Butamax, made the following comment in the context of a ruling on denial of an injunction:

However, this court’s affirmance should not be read to endorse the trial court’s very questionable construction of the claim term “acetohydroxy acid isomeroreductase” – that is “as an enzyme that is solely NADPH dependent.”

The trial court should reconsider its construction when it holds a Markman hearing.

Appellant loses in Ex parte ALARY. An unconvincing declaration.

from within Ex parte Alary.

A claim at issue is to a "proppant" -

A high strength sintered rod-shaped proppant for fracturing
subterranean formations comprising at least about 80% by weight
alumina and between about 0.2% by weight and about 4% by weight
aluminum titanate, wherein the proppant has a permeability of at least
300 Darcies after 50 hours at 250°F and 5,000 psi, wherein the
alumina is contributed by at least one of bauxitic and non-bauxitic
sources, and wherein the at least one of bauxitic and non-bauxitic
sources contains a TiO2 content of between about 0.15% and about
3.5% by weight.

Of claimed ranges overlapping ranges in the prior art:

When a range recited in a claim overlaps a range disclosed in the prior art, a prima facie case of obviousness
typically exists and the burden of proof is shifted to the applicant to show
that the invention would not have been obvious. In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003). “[W]hen, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap.” Id. at 1330.

The Board deflected one argument:

Appellants argue that Cooke “teaches away from rod-shaped
proppants” but, by way of support, rely on Cooke’s stated preference for
spheres over other shapes. App. Br. 29 (citing Cooke 3:36-41). Appellants
also argue that Cooke’s preference for spheres is “more credible” than
Graham’s teachings because Cooke is a more recent reference. Reply Br. 5;
see App. Br. 16. However, the rod shape patented by Graham does not
become patentable again by virtue of Cooke’s stated preference for spheres
over other shapes. See In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994).
Moreover, “[t]he mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).

Of shifting burdens:

As a practical matter, “the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith.” In re
Brown, 459 F.2d 531, 535 (CCPA 1972). Appellants challenge the burden
shift, but come forward with no persuasive argument or evidence sufficient
to rebut the factual basis for that finding. App. Br. 26-27.

Unexpected results don't always win:

Like the Examiner, we have thoroughly considered the evidence in the
Parias Declaration, but in view of significant shortcomings therein, which
we discuss below, that evidence is insufficient to overcome the strong prima
facie showing of obviousness made out by the Examiner in this case. See
Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir.
2009) (“evidence of unexpected results and other secondary considerations
will not necessarily overcome a strong prima facie showing of

For example, regarding the criticality of the range of TiO2 content
specified in claim 1, Appellants’ evidence is unconvincing because it
consists of the uncorroborated opinion of a named inventor. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (citations
omitted) (explaining that the Board is entitled to weigh the declarations and
conclude the lack of factual corroboration warrants discounting the opinions
expressed in the declarations). (...)

Appellants’ evidence is
unconvincing because it consists of hearsay statements and contains no
indication that those trying to solve the need were familiar with the relevant
prior art. See In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit
by an applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.”); In re Allen, 324 F.2d
993, 997 (CCPA 1963) (citing Toledo Pressed Steel Co. v. Standard Parts,
Inc., 307 U.S. 350, 356 (1939)) (an allegation that there was an unsolved
problem in the art is not evidence of unobviousness unless it is shown that
the widespread efforts of skilled workers having knowledge of the prior art
had failed to find a solution to the problem).

Appellant overcomes written description rejection

The appellant in Ex parte KRONENBERGER won on written description:

We agree with Appellant that the disclosure in the Specification of
exemplary objects which are made to perform at least one function that is
not related to the construction of the headwear piece is sufficient disclosure
to reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. In other words, one of ordinary skill reading
the examples provided in the original disclosure would understand that
Appellant was in possession of an invention in which the object is
specifically designed to perform a clearly identifiable function that is not
related to the construction of the headwear piece. Accordingly, we reverse
the rejection of claim 19 under 35 U.S.C. § 112, first paragraph, based on
lack of an adequate written description.

Appellant loses in Ex parte Barber

The bottom line in Ex parte Barber:

The Examiner did not err in rejecting claims 1, 3-7, 9-21, 23-41, 63-
68, 70, and 71 under 35 U.S.C. § 103(a).


For the above reasons, the Examiner’s rejection of claims 1, 3-7, 9-21,
23-41, 63-68, 70, and 71 is AFFIRMED.

From the decision:

We are not persuaded by Appellants' argument that “coupling kiosks
to the single central server via the Internet” constitutes a patentable
distinction. We broadly construe the undefined claim term “Internet” to be a
collection of networked computers and the wide-area-networks
interconnecting them1. We find Newell discloses an interconnected, widearea
network of kiosk computers communicating with a central server (FF 3,
4). Although Newell discloses a vendor-specific network implementation
using IBM SNA communications2, the ordinary artisan would recognize this
is but one implementation of a wide-area network, and that other wide-area
network suppliers are available. Broadly interpreted, the “Internet” is an
interconnection of many wide-area networks from many suppliers, both
public and private. One typically does not connect directly to “the Internet”,
but instead one connects to a private or public network operated by an
Internet Service Provider, which is part of “the Internet” by being connected
to other networks.

Of the TSM test:

To the extent Appellants seek an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
We find the Examiner cited reasonable motivations to combine (see, for
example, FF 1, 2), so we are not persuaded of error because the Examiner
has set forth reasonable rationales for combinations.

As to employing creative steps

We are not persuaded by Appellants' argument, because we find one
of ordinary skill in the art would recognize that emailing discount coupons
based on available inventory may help incent the purchase of items for
which there are inventory levels that are excessive or sufficient to support an
advertising campaign. Both kiosk inventory and partner inventory represent
inventory levels available to sell, so they are only slightly different. See
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In making the
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)

As to lack of patentable weight:

The term administering is not defined or described by the
Specification (FF 26), so we use the ordinary and customary definition of “to
manage or supervise the execution, use, or conduct of” (FF 27). The term
business data is not defined or described by the Specification (FF 28), so we
broadly construe it to mean data, because the specific content of the data
does not affect the function of the claim, which is to manage the data. The
content of the data does not receive patentable weight, similar to printed
matter. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Finally, a
remote web-interface is not defined by the Specification, but is described by
example as “allow[ing] an Internet browser to be a system interface ....” (FF
28). Although web browser software is an option for a remote webinterface,
it is not required. Therefore, we broadly interpret the term as
being a computer interface that permits management of a remote computer
over a network.

Of secondary considerations:

Next, evidence pertaining to secondary considerations must be taken
into account because it is present; however, it does not necessarily control
the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed. Cir. 2007) (“the record establish [ed] such a strong case of
obviousness” that allegedly unexpectedly superior results were ultimately
insufficient to overcome obviousness conclusion). Facts established by
rebuttal evidence must be evaluated along with the facts on which the
conclusion of a prima facie case was reached, not against the conclusion
itself. See In re Eli Lilly, 902 F.2d 943 (Fed. Cir. 1990). “[E]vidence that
has been presented in a timely manner should not be ignored, but rather
should be considered on the record. However, not all evidence need be
accorded the same weight.” Manual of Patent Examining Procedure § 2145
(8th Ed. Rev. 9, 2012).


In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),
aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992).

Of hearsay:

Hearsay evidence is entitled to little weight. In re Mageli, 470 F.2d 1380,
1384 (CCPA 1972).

Wednesday, March 20, 2013

Cordis loses subpoena case at CAFC

From the beginning of Abbott v. Cordis

Cordis Corporation appeals from the decision of the
United States District Court for the Eastern District of
Virginia granting Abbott Laboratories’ motion to quash
two subpoenas duces tecum issued pursuant to 35 U.S.C.
§ 24. We conclude that section 24 only empowers a district
court to issue a subpoena for use in a “contested case,”
and that contested cases are limited to those in which the
regulations of the United States Patent and Trademark
Office (“PTO”) authorize the parties to take depositions.
Since the PTO does not provide for depositions in inter
partes reexamination proceedings, such proceedings are
not “contested cases” within the meaning of section 24,
and subpoenas under section 24 are not available. We

Of history in this stent case:

In October 2011, Cordis sought subpoenas from the
district court in Virginia under section 24. The court,
pursuant to Cordis’s request, issued two subpoenas duces
tecum ordering Abbott to produce documents that Cordis
believed would help establish the existence of copying and
other secondary considerations with respect to the contested
claims of the ’844 and ’773 patents.3 The subpoenas
were issued specifically for use in the pending PTO reexaminations
of the two patents.

What is a "contested case":

The question of whether 35 U.S.C. § 24 empowers a
district court to issue a subpoena for use in an inter
partes reexamination turns on whether an inter partes
reexamination is a “contested case” within the meaning of
section 24. The proper interpretation of section 24 is a
question of first impression in this court. We construe the
term “contested case,” as used in section 24, as referring
to a proceeding in which the PTO has provided for the
taking of depositions for use in that proceeding.

Of statutory construction:

“A provision that may seem ambiguous in isolation
is often clarified by the remainder of the statutory
scheme.” United Sav. Ass’n of Tex. v. Timbers of Inwood
Forest Assocs., 484 U.S. 365, 371 (1988); see also Sale v.
Haitian Ctrs. Council, 509 U.S. 155, 171-74 (1993) (construing
a statutory provision in light of its relationship
with other parts of the same statute).

Of Civil War vintage:

The Patent Act of 1861 was enacted in the waning
days of the Thirty-Sixth Congress. The chair of the Senate
Committee on Patents assured his colleagues that the law
would save parties from the need “to virtually bribe
witnesses” in order to secure their attendance, preventing
witnesses from “embarrass[ing] the operations” of the
PTO and imposing “unnecessary expense” on parties.
Cong. Globe, 36th Cong., 1st Sess. 1731 (1860) (statement
of Sen. Bigler). The chair stated that the provision was
universally supported by “inventors,” their “agents,” and
the PTO, and that he had “never heard any diversity of
opinion” regarding its wisdom. Id. And indeed, through
ten months of subsequent debate over the bill as a whole,
section 1 of the bill never engendered any controversy or
amendments. This history demonstrates that section 24
was intended to help the PTO secure deposition testimony
it needed by compulsory process, and not to allow parties
to secure evidence that the PTO did not consider necessary.

As a reminder:

While patent law decisions of the regional
circuits do not bind us, see Superior Fireplace Co. v.
Majestic Prods. Co., 270 F.3d 1358, 1372 (Fed. Cir. 2001),
we may consider them as persuasive authority, see Cerveceria
Centroamericana, S.A. v. Cerveceria India, Inc.,
892 F.2d 1021, 1023 (Fed. Cir. 1989).

The AIA is mentioned:

In the course of implementing these mandates, the PTO
has recognized that the AIA authorizes parties to seek
section 24 subpoenas in the new proceedings. See 37
C.F.R. §§ 42.52-.53 (2013); see also Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14,
2012). Congress’s actions in creating these inter partes
review proceedings thus demonstrate that depositions and
section 24 subpoenas go hand in hand.

As to due process:

The indispensable ingredients of due process are notice
and an opportunity to be heard by a disinterested
decision-maker. See Caperton v. A.T. Massey Coal Co., 556 U.S. 868,
876-81 (2009); Lachance v. Erickson, 522 U.S.
262, 266 (1998); Memphis Light, Gas & Water Div. v.
Craft, 436 U.S. 1, 13 (1978); Mathews v. Eldridge, 424
U.S. 319, 333 (1976). There is no dispute that inter partes
reexamination provides the patent owner with notice and
an opportunity to be heard by a disinterested decisionmaker.
See 35 U.S.C. §§ 311(c), 312(b), 314(a),(b); see also
Patlex II, 771 F.2d at 485-86 (noting that ex parte reexaminations
are conducted by “disinterested experts,” and
concluding that “the patentee’s opportunity to participate
after the [decision to initiate a reexamination], and to
appeal . . . , affords the patentee due process”).

Bottom line

We hold that 35 U.S.C. § 24 only empowers a district
court to issue subpoenas for use in a proceeding before the
PTO if the PTO’s regulations authorize parties to take
depositions for use in that proceeding. We therefore hold
that section 24 subpoenas are not available in inter partes
reexamination proceedings.

Tuesday, March 19, 2013

Kirtsaeng beats Wiley: the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad

The Supreme Court decision begins:

Section 106 of the Copyright Act grants “the owner ofcopyright under this title” certain “exclusive rights,”including the right “to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership.” 17 U. S. C. §106(3). These rights are qualified, however, by the application of various limitations setforth in the next several sections of the Act, §§107 through
122. Those sections, typically entitled “Limitations onexclusive rights,” include, for example, the principle of “fair use” (§107), permission for limited library archivalreproduction, (§108), and the doctrine at issue here, the “first sale” doctrine (§109).

Section 109(a) sets forth the “first sale” doctrine asfollows:
“Notwithstanding the provisions of section 106(3) [the section that grants the owner exclusive distributionrights], the owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.”

Thus, even though §106(3) forbids distribution of a copy of, say, the copyrighted novel Herzog without the copyright owner’s permission, §109(a) adds that, once a copy of Herzog has been lawfully sold (or its ownership otherwise lawfully transferred), the buyer of that copy and subsequent owners are free to dispose of it as they wish. In copyright jargon, the “first sale” has “exhausted” the copyright owner’s §106(3) exclusive distribution right.

A key point in the case was that the copies at issue were legally made abroad:

The copies at issue here were manufactured abroad.That fact is important because §109(a) says that the “first sale” doctrine applies to “a particular copy or phonorecord lawfully made under this title.” And we must decide here whether the five words, “lawfully made under this title,”make a critical legal difference.

Also within the decision

Associations of libraries, used-book dealers, technology companies, consumer-goods retailers, and museums point to various ways in which a geographical interpretation would fail to further basic constitutional copyright objectives, in particular “promot[ing] the Progress of Science and useful Arts.” U. S. Const., Art. I, §8, cl. 8.The American Library Association tells us that library collections contain at least 200 million books published abroad (presumably, many were first published in one of the nearly 180 copyright-treaty nations and enjoy American copyright protection under 17 U. S. C. §104, see supra, at 10); that many others were first published in the UnitedStates but printed abroad because of lower costs; and that a geographical interpretation will likely require the li- braries to obtain permission (or at least create significantuncertainty) before circulating or otherwise distributingthese books. Brief for American Library Association et al. as Amici Curiae 4, 15–20. Cf. id., at 16–20, 28 (discussinglimitations of potential defenses, including the fair use and archival exceptions, §§107–108). See also Library andBook Trade Almanac 511 (D. Bogart ed., 55th ed. 2010) (during 2000–2009 “a significant amount of book printing moved to foreign nations”).

How, the American Library Association asks, are the libraries to obtain permission to distribute these millions of books? How can they find, say, the copyright owner of a foreign book, perhaps written decades ago?

The concept of "dictum" arises:

We cannot, however, give the Quality King statement the legal weight for which Wiley argues. The language“lawfully made under this title” was not at issue in Quality King; the point before us now was not then fully argued; we did not canvas the considerations we have here set forth; we there said nothing to suggest that the example assumes a “first sale”; and we there hedged our state- ment with the word “presumably.” Most importantly, the statement is pure dictum. It is dictum contained in a rebuttal to a counterargument. And it is unnecessary dictum even in that respect. Is the Court having once written dicta calling a tomato a vegetable bound to deny that it is a fruit forever after?

To the contrary, we have written that we are not necessarily bound by dicta should more complete argument demonstrate that the dicta is not correct. Central Va. Community College v. Katz, 546 U. S. 356, 363 (2006) (“[W]e are not bound to follow our dicta in a prior case in which the point now at issue was not fully debated”); Humphrey’s Executor v. United States, 295 U. S. 602, 627–628 (1935) (rejecting, under stare decisis, dicta, “which may be followed if sufficiently persuasive but which are not controlling”). And, given the bit part that our Quality King statement played in our Quality King decision, we believe the view of stare decisis set forth in these opinionsapplies to the matter now before us.

And the result

For these reasons we conclude that the considerations supporting Kirtsaeng’s nongeographical interpretation ofthe words “lawfully made under this title” are the morepersuasive. The judgment of the Court of Appeals isreversed, and the case is remanded for further proceedings consistent with this opinion.

Justice Thomas and Justice Scalia were on opposite sides of the vote.

"Not an inconsequential puff"

The decision in Frolow v. Wilson Sporting, concerning a tennis racket, is complex:

Opinion for the court filed by Circuit Judge MOORE, in which Circuit Judge CLEVENGER joins with additional views, further additional views filed by Circuit Judge MOORE, and concurring opinion filed by Circuit Judge NEWMAN.

From Judge Clevenger's "additional views":

Under the circumstances of this case, where it has been established that the 14 racket models do not satisfy the moment of inertia limitation, it may well be that the limited probative value of Frolow’s marking evidence is outweighed by the risk that Wilson would be unfairly prejudiced by its admission, or that the evidence would mislead or confuse the jury. Cf., e.g., LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 78 (Fed. Cir. 2012) (it was abuse of discretion under Rule 403 to admit a settlement agreement having proba- tive value that was “greatly outweighed by the risk of unfair prejudice, confusion of the issues, and misleading the jury.”)

From Judge Moore's "additional views" :

I write separately because I do not agree with Judge Clevenger’s claim that “Under the circumstances of this case, where it has been established that the 14 racket models do not satisfy the moment of inertia limitation, it may well be that the limited probative value of Frolow’s marking evidence is outweighed by the risk that Wilson would be unfairly prejudiced by its admission.” In this case, noninfringement was established in circumstances where the judge refused to consider some evidence of infringement—namely the marking. Mr. Frolow does not admit or concede that the accused devices do not meet the moment of inertia limitation. In fact, he introduced evidence to the contrary. There is no motion in limine in this case nor is it my job to prophesize on the outcome of a motion that has never been filed. This circuit has cautioned that “[e]vidence should be excluded until [IPBiz: sic] Rule 403 only sparingly” and that the balance under the rule “should be struck in favor of admissibility.” Blancha v. Raymark Indus., 972 F.2d 507, 516 (3d Cir. 1992). I leave the application of this law to the district court judge.

From Judge Newman's concurring opinion:

I agree that it is appropriate to remand to the district court to resolve this dispute. I write separately because the court appears to ignore, or trivialize, the power and significance of Wilson’s consistent marking of 14 racket models with Frolow’s patent number during the life of the Frolow-Wilson License Agreement. Throughout the term of the Agreement, Wilson’s position was that these marked racket models were Licensed Articles, and by so marking the rackets Wilson received the benefit of the patent. This was not an inconsequential puff—it was an announcement and admission that the rackets were Licensed Articles under the contract.


The majority opinion analogizes Wilson’s marking and payment activities to “a corporate officer admitting in a letter or at a deposition that the company’s product in- fringes a patent,” Op. at 9, yet curiously does not put these admissions in the contract context and holds that the admissions do not relieve Frolow of the obligation of proving infringement. The majority ignores that Wilson’s “admissions” were made repeatedly, over a long period of time, with commercial benefit to Wilson, and in a manner consistent with accruing royalty obligations. A trier of fact could certainly find that Wilson’s conduct was more than a trivial “extrajudicial admission,” but was direct evidence of obligations under the Agreement.

Finally, the majority’s reference to the recently amended false marking statute, 35 U.S.C. §292, is inapt. The false marking statute was a qui tam statute that provided a bounty for persons who spotted products marked with expired patents; it was amended to remedy litigation abuse. There is absolutely no relationship to the patent license and breach claims herein.


New Jersey statutes and precedent state the general rule that a party to a contract who establishes a course of performance of the contract, with no notice or objection, may be bound by that performance. Wilson’s “admissions” through marking and paying royalties on rackets are of great evidentiary weight in contract law, and place on Wilson the contract law burden of establishing that some different interpretation should now be placed on this expired contract. It is incorrect now to place on Frolow the patent-law burden of proving infringement as if there were no contract, no performance, no contrary interpretation and no reliance. Contract interpretation is a matter of contract law. Although I concur in remanding to the district court for further proceedings, I write separately to emphasize that these are proceedings under a contract that has been fully performed and whose term has fully run.

Taco shell case crunched by the Board

NATHAN P. MYHRVOLD wins at the Board

In the case

Ex parte BRAN FERREN, MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, NATHAN P. MYHRVOLD, and LOWELL L. WOOD JR., presumably related to Intellectual Ventures, the Board reversed the rejections of the examiner.

The application in question is 12/005,709 and a representative claim is

A method of producing a patterned distribution of a material within a skin region, comprising:
delivering a photoresponsive material to a skin region of a subject in a first pattern; and
delivering targeted light to the skin region in a second pattern, said second pattern overlapping partially with said first pattern, wherein photoresponsive material in the areas of overlap between said first pattern and said second pattern undergoes photomodification to form an overlap pattern of modified photoresponsive material within said skin region.

The paper communication of the action was directed to Clarence Tegreene of The Invention Science Fund.

See previous IPBiz post
CAFC smacks down application of Intellectual Ventures

Appellant prevails at Board in Ex parte Furst

Within Ex parte Furst, the appellant successfully argues "missing claim elements":

Appellant acknowledges that Hossainy “discloses a stent that could include two different biological agents.” (Reply Br. 2.) However, Appellant contends, among other things, that Hossainy does not teach or suggest (a) an intermediate compound at least partially securing the biological agent to the body member of the stent, or (b) an “intermediate compound at least partially encapsulating said biological agent in said intermediate compound,” as required by claim 89. (Id.) Appellant asserts that the recited “biological agent” includes two or more compounds. (Id.) Thus, according to Appellant, the Examiner’s finding that Hossainy taught, or alternatively, suggested at least partially encapsulating one compound, i.e., taxol or trapidil, does not satisfy the claim requirement of an intermediate compound securing and/or encapsulating said biological agent, i.e., two or more of the recited compounds, on the stent. (Id.)

We agree with Appellant. (...)

Consequently, the Examiner did not find that the prior art set forth each element in the claim. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Nor did the Examiner properly determine the differences between the claimed subject matter and the prior art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

Mixed result in Suzuki/Asahi Glass case

Ex parte Suzuki

Claims which read on patentable, as well as unpatentable, subject matter are unpatentable. In re Freeman, 474 F.2d 1318, 1323 (CCPA 1973 ); In re Landgraf, 436 F.2d 1046, 1049-1050 (CCPA 1971); In re Muchmore, 433 F.2d 824, 826 (CCPA 1970).

As to "unexpected results," the Board noted that the specification did not characterize the results at issue as "unexpected." As to scope, the Board cited Genetics Institute v. Novartis, 655 F.3d 1291, 1308-9 ( CAFC 2011).

Appellant loses on 103 in Ex parte Klotzer

From within Ex parte Klotzer

Construing a means-plus-function claim limitation is a two-step
process. First, the claim must be analyzed to determine whether the claim language actually invokes the provisions of 35 U.S.C. § 112, sixth paragraph. See Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (“If a claim element contains the word „means‟ and recites a function, th[e] court presumes that element is a means-plus-function element under § 112, ¶ 6. . . . That presumption falls, however, if the claim itself recites sufficient structure to perform the claimed function”). The second step is to “determine what structures have been disclosed in the specification that correspond to the means for performing that function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
“[T]he discovery of an optimum value of a variable in a known process is normally obvious.” Exceptions to this rule include (1) the results of optimizing a variable were unexpectedly good and (2) the parameter optimized was not recognized in the prior art as one which would affect the results. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).

Of optimizing:

With respect to claim 3, 11, 12, and 16 to 20, the Examiner relies on Nauman for the disclosure that it is well known to those of ordinary skill in the art to optimize “residence time [see pages 539, 540,576 and 577 in chapter 15] and mixing time [see pages 25-28, in section 1.5 in chapter 1] in chemical reactors designs, optimization and scale up.” (Ans. 5.) Appellants have failed to provide evidence that one of ordinary skill in the art would not have been led by Nauman to optimize the mixing and reaction times or that these parameters optimized were not recognized in the prior art as one which would affect the results.

The concept of Bodenstein number arises:

The Examiner finds that “Bodenstein number is related to physical property of the reactor and their conditions. The above cited references teach the conditions in the reactor are optimizable. Therefore, Bodenstein number is invariably part of the disclosed processes.” (Ans. 6.) Appellants have failed to provide evidence or supporting calculations of the Bodenstein number of Otterbach and have failed to establish with supporting evidence that one of ordinary skill in the art would not have recognized that the Bodenstein number of the tube reactor of Frosh is an optimizable variable known to those of ordinary skill in the art.

Appellant wins on 103 at Board in Ex parte Fukaya

From within Ex parte Fukaya

While the Examiner relies on case law for the proposition that combining known ingredients for known functions would have been obvious, the Examiner has not articulated any specific reasoning with some rational underpinning to support the legal conclusion of obviousness that addresses why one of ordinary skill in the art would have looked to JP ‘810, JP ‘729 or Lindén for metals for use in high temperature conditions to use as the metal substrate in JP ‘659’s sensor. In an attempt to provide some reason for looking to the aluminum-containing stainless steels of the prior art, the Examiner finds that Figure 2.4 of the STAINLESS STEEL HANDBOOK cited in the Evidence Appendix and of record shows that aluminum is one of the known metals affecting linear expansion (Ans. 8). However, as argued by Appellants Figure 2.4 shows the linear expansion of several pure metals as compared to to stainless steel SUS 304 (Reply Br. 6-7). The Examiner has not established that Figure 2.4 shows the effect of aluminum on linear expansion in a stainless steel composition.
Accordingly, we agree with Appellants that on this record there is no credible reason for substituting the aluminum-containing ferritic stainless steels of JP ‘810, JP ‘729 or Lindén for JP ‘659’s ferritic stainless steel absent impermissible hindsight. On this record, we reverse all of the Examiner’s § 103 rejections.

Kenyon & Kenyon handled the appeal.

Appellant wins in Ex parte Hartley on 102 and on 103

The appellant prevailed at the Board in Ex parte Hartley

Within the decision, Perricone is cited for the law on anticipation:

“A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).

Picking and choosing was an issue in Hartley:

As stated in Arkley, an anticipatory reference under 35 U.S.C. § 102

[M]ust clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art, but it has no place in the making of a 102, anticipation rejection.

In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972).

The instant situation is similar to Arkley, where affirmance of the
rejection would require picking and choosing from the reference in order to arrive at the claimed invention. That is, to satisfy claim 24, we would need to replace the self-expanding stent at the end of the tubular body taught by Greenberg with a balloon expandable stent, but retain the remaining self- expanding stents spaced apart on the tubular body.

As to obviousness, the examiner failed to mobilize facts:

The Examiner has failed in this burden in the instant case to provide any such evidence. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (“Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art and the appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference”). We do not specifically address whether stents made of shape memory materials such as nitinol are well known in the art, because the Examiner has failed to establish a prima facie case by failing to provide evidence supporting this fact. It is not the role of the Board to properly formulate a rejection which has been inadequately articulated.

From Clean Technica on biofuels

From within a post Another Day, Another Attack On Navy Biofuel
by Tina Casey on 19 March 2013:

Today’s biofuel vote won’t been the first time that certain members of Congress have attacked the Navy’s ambitious biofuel programs. The main line of attack is that biofuel is currently more expensive than petroleum, so it’s a waste of money.

The Obama Administration began addressing that issue systematically in 2011, launching a biofuel initiative that teamed the Departments of Energy, Agriculture and Navy to help jumpstart the advanced biofuel industry into commercial production.

Given new developments in biorefining technology and a greater scale of production, biofuels have a better shot to achieve price parity with conventional petroleum fuel. When that happens, it will demolish the case against the Navy’s biofuel program

An example given is Chemtex in North Carolina: The idea is to transition them over to biofuel grasses that have a higher energy content, like miscanthus.

Monday, March 18, 2013

Bad day for Adams at CAFC

From within Adams v. Dell

Four separate issues are appealed to this court.
ASUS appeals (1) the adverse inference sanction and (2)
the denial of its motion for JMOL. PMAA cross appeals
(1) the grant of summary judgment dismissing its trade
secrets claim and (2) the refusal to grant it attorney fees
under 35 U.S.C. § 285.

Of the first issue:

ASUS appeals from the district court’s imposition of an adverse inference sanction for spoliation of evidence. This court reviews such procedural matters not unique to patent law under the law of the regional circuit. Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1002 (Fed. Cir. 2008). The Tenth Circuit reviews a district court’s ruling on a motion for spoliation sanctions for abuse of discretion. Burlington N. and Santa Fe Ry. Co. v. Grant, 505 F.3d 1013, 1032 (10th Cir. 2007).


A spoliation sanction is proper under Tenth Circuit law when “(1) a party has a duty to preserve evidence because it knew, or should have known, that litigation was imminent, and (2) the adverse party was prejudiced by the destruction of the evidence.” Burlington N., 505 F.3d at 1032. An adverse inference sanction in particular “must be predicated on the bad faith of the party destroying the records.” Aramburu v. Boeing Co., 112 F.3d 1398, 1407 (10th Cir. 1997) (emphasis added). The district court committed legal error by imposing an adverse inference sanction absent a finding of bad faith. “A district court by definition abuses its discretion when it makes an error of law.” Koon v. United States, 518 U.S. 81, 100 (1996). Accordingly, we reverse the district court’s imposition of an adverse inference sanction, and consider whether there is adequate evidence to support the jury verdicts against ASUS absent such adverse inferences.

Of the second issue:

In sum, PMAA has failed to present substantial evidence of infringement within the United States after May 3, 2001. Accordingly, the district court erred in denying ASUS’s post-verdict motion for JMOL, and this court reverses that determination.

Of the trade secrets claim:

In sum, there is no genuine issue of material fact that PMAA had constructive knowledge of its trade secrets claim by March 4, 2004, more than three years before it brought its claim against ASUS on May 3, 2007. The district court’s grant of summary judgment is thus af- firmed.

Of the attorney fees matter:

“A district court abuses its discretion when ‘its deci- sion is based on clearly erroneous findings of fact, is based on erroneous interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.’” Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1328 (Fed. Cir. 2003) (quot- ing Cybor Corp. v. FAS Techs., 138 F.3d 1338, 1460 (Fed. Cir. 1998)). None of these situations is present here. To the contrary, it was reasonable for the district court to decide against imposing two different penalties for the same conduct. Furthermore, this court’s determination with respect to ASUS’s motion for JMOL of noninfringe- ment means that PMAA is no longer a “prevailing party” in the case, making attorney fees under § 285 inappropri- ate. 35 U.S.C. § 285 (“The court in exceptional cases may award reasonable attorney fees to the prevailing party.”) (emphasis added).

Sunday, March 17, 2013

"60 Minutes" on March 17, 2013

The first story related to American nuns and the new Pope.

Second, Jack Dorsey of Twitter. Now, the company Square.

Third, a Philadelphia hit man who took scouts camping.

The Leadership Conference on Women in Religion. Conservative social values? Undermining the church, and not promoting church values.
Sister Pat [Carroll] spent two decades in El Salvador. Sisters Academy in Baltimore. Radical feminist themes that are incompatible with the Catholic faith [?] "Our first obedience is to God." Archbishop of Seattle is interviewed by Bob Simon. Jennie Park does a soup kitchen in Brooklyn. My role is not to judge. "Nuns on the bus." Yvonne Campbell.

Lara Logan reports on Jack Dorsey, who created Twitter 7 years ago. Proud of how quickly people came to Twitter. Jim McKelvey. A way to accept credit cards on a phone. Dorsey was fascinated by trains and maps. Jack went to New York at age 19. Jack: you can focus on what's ahead of you and drive fast. Lands End and Golden Gate Bridge. It's so intuitive; it just works.

John Veasey, hit man, became a government witness. Worked for the Santos mob. Reporter George Anastasia of the Philly Inquirer.

from the interview:

In the early '90s, the Philadelphia mob was at war. Blood and body bags routine. On one side was a group of older, Sicilian-born wise guys led by John Stanfa. On the other: younger American mobsters headed by Joey Merlino. For 30 years, George Anastasia covered the mob for the Philadelphia Inquirer. He says a young, streetwise thug like Veasey was the kind of muscle John Stanfa needed.

CBS "Sunday Morning" for March 17, 2013

Lee Cowan, not Charles Osgood, introduced the stories for March 17, 2013. First story, "a friend indeed," the cover story by Rita Braver. Second, a piece on The Bible tv series. Third, Going in Style, with Seth Doane, on funeral celebrations. Fourth, the Pluck of Irish, on Glen Hansard of "Falling Slowly." Barry Peterson, Steve Hartman; butterflies. Headlines: first real chance to meet the new Pope, with Allan Pizzi. Nation's conservatives meeting in Maryland. Rape trial in Steubenville, Ohio. In India, news of rape of tourist. Marysville, CA. Bus crash off PA turnpike. Selection Sunday for college basketball. Weather. Cold. Expect lots of cool rain in the days ahead.

A friend indeed is something all of us need. Rita Braver introduces us to "The Girls" of Dale, Wisconsin. Dorrie Krieger is one of the girls. Dennis Proffit at the University of Virginia does experiments with a heavy backpack. The hill is reported to be steeper when the subject is alone, than with friends. James Cowano also of the University of Virginia gave Rita Braver an MRI. anticipatory anxiety. In one experiment, Braver held the hand of producer Kay Lin. Dealing with stresses alone vs. with friend. 90% of Americans say it is important to have close friends. 2004 film: Mean Girls. Irene Levene: Best Friends Forever. 84% of Americans say men and women can be friends without a sexual relationship. Scott Prentiss is one of a circle of friends in Dallas. Share deeply with each other. One quote: "without these guys, I wouldn't be married." The piece returned to "The Girls," two of whom developed cancer. Those who have friends they can count on, know how lucky they are. Index: 77% of Amerians keep in touch with childhood friends.

Almanac. March 17, 460. The death of St. Patrick. 1762: New York City first celebrated St. Patrick. Enterprise, Alabama: smallest St. Patrick's Day Parade. 34.5 million Americans trace ancestry to Ireland. Pulse: 50% of Americans will wear green on St. Patrick's Day.

"Leaving their Mark" on cattle branding, done by Barry Peterson. The four sixes; the running W of King Ranch. Lazy J; circle L.
The King Ranch established in 1840. John Wayne in Red River planned his brand before he had cattle. The flying S brand. Two seagulls flying. Now: ear tags. Store information on history and care. Quality control. Now push for ear tags would render branding irrelevant. Larry Gray. Texas Rangers recover rustled cattle using brands. Why the brand? So somebody will know we were here. The flying s brand will live on in perpetuity.

Anthony Mason interviews Glen Hansard, who started his career singing on Dublin street corners. Rebel Rebel. Low budget film "Once" in 2007. Falling Slowly won an Oscar. Last year, the musical won 8 Tony awards. Glen lives in a rented cottage outside of Dublin. Frankie Byrne, old high school principal, told Glen it was ok to quit school. Grafton Street. "Bird of Sorrow" was about Hansard's mother. You're never more than a step away [from singing on the street.] Busking.

Cedric Givens of Washington, DC interviewed by Steve Hartman. Recycled from CBS Evening News.

Seth Doane on funeral celebrations. Starts with one in a gymnasium in the Bronx. Frederick Addison on the style of Ghana. This funeral in the Bronx cost $25,000. Reflect on the good life of the deceased and celebrate. Biggest funeral party possible. A way of honoring the deceased. Call to glory. Kane Kwei. Casket makers. Caskets as a fish (tilapia) and coco pod. A crab. a chicken. It is the party of a lifetime.

Monarch butterfly numbers are down. 2.94 acres in 2013 down from 7.14 acres in 2012 down from 22 acres of the 1990s. Clip of Lincoln Broward interviewed by Seth Doane.

Roma Downey of Touched by an Angel is co-producer of History Channel series "The Bible." Decided over a cup of tea. Mark Burnett.
Bring the Bible to the small screen. History channel mini-series. An introduction to the Bible. Water cooler conversation. You should know these stories. Downey plays Mary in The Bible.

Milepost. Gideon v. Wainwright. Panama City, Fl. June 1961. Robert McCrary. Gideon requested a lawyer. Clarence Earl Gideon sent letter to Supreme Court in January 1962. Abe Fortas handled Gideon's appeal. Gideon was acquitted in a re-trial. Gideon died in 1972 at age of 61. The case: 372 U.S. 335 (1963). The final decision was announced on March 18, 1963; the opinion of the Court was delivered by Justice Hugo Black. The three concurring opinions were written by Justices Clark, Douglas and Harlan.

Week ahead. Monday: Sandy Hook advisory commission. Tuesday: Pope Francis. Wed.: Obama in Israel Thur. Amy Winehouse. Fri:
50th anniversary of Beatles first album.

Cowan announces that Steubenville guilty.

Timothy Noah: author of the Great Divergence. The rungs on the ladder of opportunity. Horatio Alger. James Trudlow Adams.
Today: less mobility than in 1970s. American men were more likely to inherit economic status than height, weight. Care about opportunity. See also Minding the Gap
‘The Great Divergence,’ by Timothy Noah

Next week: the money issue.

Moment of Nature sponsored by Volunteers of America . Antelope Island State Park in Great Salt Lake. Porcupines feasting on hawthorne berries. Some porcupines literally in the tree. Odd sounds.

Cowan: have a good rest of your weekend.

Wednesday, March 13, 2013

Secondary consideration evidence must be commensurate with claim scope

From Ex parte MOULSLEY

See In re Tiffin, 448 F.2d 291 (CCPA
1971) (per curiam) (Objective evidence of non-obviousness must be
commensurate with the scope of the claims.). Therefore, we are not
persuaded by these arguments that the Examiner’s reason to combine the
teachings of these references lacks some rational underpinning to justify the
obviousness conclusion.

On picking and choosing from a prior art disclosure

Frm Ex parte Brown

The preponderance of the evidence favors Appellants’ argument and
evidence of novelty. The Examiner’s rejection fails to direct us to a teaching
in Schlak where the claim elements, including the inherently disclosed rigid
feature, are arranged as in the claims. Therasense Inc. v. Becton, Dickinson
& Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Rather, the Examiner picks
and chooses various discrete and distinct teachings of the Schlak reference to
arrive at the claimed rigid, open cell polyurethane foam. Picking and
choosing various distinct disclosures may be entirely proper in formulating
an obviousness rejection, but is not appropriate for an anticipation rejection
which requires identical disclosure or description. In re Arkley, 455 F.2d
586, 587-88 (CCPA 1972).

On steam in a boiling water nuclear reactor

Ex parte Moen discusses rejections made against a claim directed to

A system for controlling the power level of a
natural circulation boiling water nuclear reactor (NCBWR),
said system comprising

The appellants did not do well:

Appellants have not persuaded us of error in the Examiner’s findings or
determination of obviousness or explained how the Examiner’s observations
about Collett’s pressure sensor undermines the Examiner’s findings and
determination of obviousness as set forth in the Answer. We sustain the
rejection of claims 1-4, 6, 8, and 23.

As to claims 18-22:

Regarding claim 18, the Examiner found that Chaki teaches a system
for controlling the power level of a BWR except for teaching that the flow of
steam into the feedwater heater has not passed through a turbine
. Ans. 8-9.
The Examiner found that Collett feeds steam into a feedwater heater 68 from
a steam heater without passing through a turbine 5, 6 and determined that it
would have been obvious to include such a bypass line in Chaki to facilitate
bypass of the turbine during failure. Ans. 9.

The appellants argued that Chaki and Collett were not combinable, BUT

These arguments do not apprise us of
error in the Examiner’s finding and determination of obviousness as set forth
in the Answer. It is not necessary that inventions of references be physically
combinable to render obvious the invention under review
. See In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted); see also Ans. 19
(citation omitted). The Examiner’s reason for including Collett’s bypass on
Chaki is supported by a rational underpinning of facilitating bypass of the
turbine during failure and Appellants have not persuaded us of error in that
determination or explained why the alleged different manner of operation of
Collett and Chaki undermines the Examiner’s findings or determination of
obviousness. We sustain the rejection of claims 18-22.