Thursday, June 27, 2013

HP loses in Ex parte Chen

from within Ex parte Chen

A representative claim:

A method of forecasting a goal in a
principal-agent environment, comprising:

providing an agent with a menu of incentive
contracts each having a respective parameter
values comprising parameter values specifying a
fixed compensation portion of the respective
incentive contract that is earned regardless of the
agent meeting the goal and an at-risk
compensation portion of the respective incentive
contract that is earned on condition that the agent
meets the goal;

receiving from the agent a selection of one
of the incentive contracts; and

forecasting a likelihood of the goal
occurring from one or more of the respective
parameter values of the incentive contract selected
by the agent;

wherein the providing, the receiving, and the
forecasting are performed by a computing

Note the structure of the claim, with the preamble
reciting "a method of forecasting" and the last gerund
being "forecasting a likelihood of the goal occurring" and the
wherein clause refining the acts of the gerunds.

HP lost on obviousness. For example,

Although the Appellants argue that a “user's past performance and
goal achievement records" (as Merrill discloses) do not constitute "one or
more of the respective parameter values of the incentive contract selected by
the agent" (claim 1), Appellants do not explain why they do not.

Woods loses on obviousness in silver/wound dressing case

From Ex parte Woods

We agree with the Examiner (Ans. 10-11) that the references need not
recognize the problem solved by Appellant. In re Kemps, 97 F.3d 1427,
1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992);
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant
has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the differences would otherwise be obvious.”)


Moreover, all that is required is a reasonable expectation of success, not an
absolute predictability of success. In re O’Farrell, 853 F.2d 894, 903-904
(Fed. Cir. 1988).

Applicant wins reversal on obviousness in Hansted

Principles of law cited in Ex parte HANSTED :

“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
“During examination, the patent application claims may be given their
broadest interpretation consistent with the specification, in order to facilitate
sharpening and clarifying the claims at the application stage.” In re Buszard,
504 F.3d 1364, 1366 (Fed. Cir. 2007).

Applicant won:

Therefore, reading the claims using the broadest reasonable
interpretation of the term “transdermal patch” in light of the art and the
Specification, the Examiner provides no evidence to suggest that the
perfume, fragrance, or cosmetic sampler of Muchin functions to deliver
these components through the skin into the bloodstream as required by the
limitation to a transdermal patch.

HP loses in Ex parte Nguyen

Hewlett-Packard got a mixed decision on indefiniteness in Ex parte Nguyen. but lost overall because of a sustained obviousness rejection.

HP won on indefiniteness on claim 4. HP used the problematic word "substantially" in a claim, and survived an attack because the specification defined substantially as 90% or more of a referenced quantity. HP also cited Verve v. Crane, 311 F.3d 1116. [Indefiniteness was sustained as to claim 12.]

The victory on claim 4 was Pyrrhic, because claim 4 went down separately to an obviousness attack. Yes, KSR and predictable results were cited.

In re Huang on arguments of counsel also was cited.

Applicant loses at PTAB in Chavin case

In Ex parte CHAUVIN. PTAB affirmed rejections for indefiniteness and for obviousness.

As to indefiniteness:

The Examiner rejects claim 35 under 35 U.S.C. § 112, second
paragraph, as being indefinite, since “Claim 23 lacks proper antecedent basis
for ‘the relationship data’” (Ans. 4) and thus it is “not immediately clear that
‘relationship data’ is intended to refer to ‘relationship in a database’” (Ans.
12-13). Although Appellants contend that “a simple comparison of the
claim terms ‘relationships in a database’ and ‘relationship data in the
database’ makes it unambiguously clear that the second occurrence refers to
the first occurrence” (App. Br. 8), we find no error in the Examiner’s

As to obviousness:

That is, the combination
is no more than a simple arrangement of old elements, with each performing
the same function it had been known to perform, yielding no more than one
would expect from such an arrangement. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007).

As to unappealed claims

The Examiner has
the authority to cancel the non-appealed claims 34, 37-41, and 45. See Ex
parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential).

Wednesday, June 26, 2013

In re Vaeck is cited in Wyeth v. Abbott

Note that the Wyeth decision of the CAFC on June 26, 2013 cites to In re Vaeck, which deals with cyanobacteria:

Finally, in In re Vaeck, we
affirmed the PTO’s nonenablement rejection of claims
reciting heterologous gene expression in as many as 150
genera of cyanobacteria. 947 F.2d 488, 495–96 (Fed. Cir.
1991). The specification disclosed only nine genera,
despite cyanobacteria being a “diverse and relatively
poorly understood group of microorganisms,” with unpredictable
heterologous gene expression. Id. at 496.

Wyeth loses:

We have considered the remainder of Wyeth’s arguments
and do not find them to be persuasive. Because we
find no genuine dispute that the asserted claims are not
enabled, we affirm.

Tuesday, June 25, 2013

Corkill cited in Ex parte Reese

Ex parte Reese cites Merck v. Biocraft and In re Corkill for a disclosure of many combinations still rendering a claim to a few of the combinations obvious.

Agrizap v. Woodstream is cited on secondary considerations.

Papesch cited in Ex parte Stark

The PTAB in Ex parte Stark cites In re Papesch for "a compound and all of its properties are inseparable; they are one and the same thing." 315 F.2d 381, 391

Complicated outcome in Commil v. Cisco

From the case Commil v. Cisco

Of the issues on appeal:

Cisco appeals the district court decision on several
First, Cisco contends that an erroneous instruction
allowed the jury to find inducement based on mere
Second, Cisco argues that the district court
erroneously precluded Cisco from presenting evidence of
its good-faith belief of invalidity to show that it lacked the
requisite intent to induce infringement of the asserted
Third, Cisco argues that the district court abused
its discretion in granting a new trial and that the district
court violated the Seventh Amendment by granting a new
trial on certain issues, but not others.
Fourth, Cisco
claims the court erred in construing the term “short-range
communication protocol.”
Fifth, Cisco argues that there is
not substantial evidence to sustain the jury verdict on
Sixth, Cisco contends the claims are indefinite,
not enabled, and lacking adequate written description.

Finally, Cisco objects to the damages award on the
grounds that Commil’s royalty base violates the entire
market value rule.

Of the outcome: Because we remand for
a new trial, we do not reach the issues of infringement
and damages. Rather, we leave them to be decided by the
district court in first instance.

Of the law surrounding the first issue:

Whether a jury
instruction on an issue of patent law is erroneous is a
matter of Federal Circuit law that is reviewed de novo.
Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1363
(Fed. Cir. 2004) (citing Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)).
We will set aside the jury verdict, “if the movant can
establish that ‘those instructions were legally erroneous,’
and that ‘the errors had prejudicial effect.’” Id. (citations

The outcome on the first issue:

With respect to
whether the induced acts constitute patent infringement,
it is clear that the jury was permitted to find induced
infringement based on mere negligence where knowledge
is required. This erroneous instruction certainly could
have changed the result. Facts sufficient to support a
negligence finding are not necessarily sufficient to support
a finding of knowledge. Accordingly, we vacate the
jury’s verdict on induced infringement and remand for a
new trial. Because we vacate the induced infringement
verdict upon which the damages award is based, we also
vacate the damages award.

Of the second point:

It is true, as the district court noted,
that we appear to have not previously determined whether
a good-faith belief of invalidity may negate the requisite
intent for induced infringement. We now hold that it
We see no principled distinction
between a good-faith belief of invalidity and a goodfaith
belief of non-infringement for the purpose of whether
a defendant possessed the specific intent to induce infringement
of a patent.

It is axiomatic that one cannot infringe an invalid patent.
See, e.g., Prima Tek II, L.L.C. v. Polypap, S.A.R.L.,
412 F.3d 1284, 1291 (Fed. Cir. 2005) (“there can be no . . .
induced infringement of invalid patent claims”); Richdel,
Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir.
1983) (“The claim being invalid there is nothing to be
infringed.”). Accordingly, one could be aware of a patent
and induce another to perform the steps of the patent
claim, but have a good-faith belief that the patent is not
We now hold that evidence of an accused inducer’s
good-faith belief of invalidity may negate the requisite
intent for induced infringement.1 This is, of course, not to
say that such evidence precludes a finding of induced
infringement. Rather, it is evidence that should be considered
by the fact-finder in determining whether an
accused party knew “that the induced acts constitute
patent infringement.” Global-Tech, 131 S. Ct. at 2068.

Observe the imagery in footnote 1:

In dissent, Judge Newman does little more than
construct a straw man and set him ablaze. We certainly
do not hold “that if the inducer of infringement believes in
good faith that the patent is invalid, there can be no
liability for induced infringement.”

Also of imagery:

For instance, during the cross-examination of Jonathan
David, a co-owner of Commil who is Jewish, Cisco’s
counsel attempted to perpetuate the stereotype of Jewish
people as greedy opportunists by asking Mr. David if his
cousin was a “bottom-feeder who swim[s] around on the
bottom buying people’s houses that they got kicked out of
for next to nothing.” J.A. 5823 (139:19-140:1). Later,
when Mr. David mentioned dining at a local barbeque
restaurant, Cisco’s counsel quipped, “I bet not pork.” J.A.
5825 (146:4-24). Following the pork comment, the court
questioned counsel on the relevance of his statement and
issued a curative instruction stating:

Sometimes when a lawyer injects irrelevant information
into a case it’s because he perceives a
weakness in the merits of his case. I don’t know
whether that’s why it happened in this case, but
you can consider that as you’re evaluating the testimony
and the evidence in this case.
J.A. 5838 (2:25-3:9).

Despite the potent curative instruction and the court’s
clear displeasure, in his closing, counsel again made
several irrelevant and prejudicial remarks. (...)

In ruling on the motion, the court found that
when counsel’s comments regarding the trial of Jesus
were viewed in context with other comments regarding
Mr. David and the inventors Jewish heritage, it was clear
that counsel was attempting to align his “religious preference
with that of the jurors and employs an ‘us v. them’
mentality–i.e., ‘we are Christian and they are Jewish.’”
Commil USA, LLC v. Cisco Sys., Inc., No. 2:07-CV-341,
slip op. at 3 (E.D. Tex. Dec. 29, 2010). The court granted
the motion, finding that the comments prejudiced the jury
with respect to indirect infringement and damages.

From within Judge Newman's separate opinion:

The fact of infringement does not depend on whether
the inducer’s view of patent validity is held in good faith
or bad faith. Validity and infringement are distinct
issues, bearing different burdens, different presumptions,
and different evidence. Although the court now acknowledges
that “patent infringement and invalidity are separate
and distinct issues,” maj. op. at 16, the court holds
that on this third infringement trial the jury “may be
asked to consider evidence of invalidity.” Maj. op. at 17.
If the jury is required to consider evidence of invalidity, as
the court holds, it strains fairness to deny Cisco’s request
for redetermination of the issue of validity.

And Judge O'Malley wrote:

Having set out those places where I agree with the
majority’s resolution of this appeal, I turn to the two
decisions over which I must part company with my colleagues.
First, I cannot endorse the majority’s refusal to
address Cisco’s potentially dispositive arguments regarding
whether Commil did or ever could prove the thirdparty
direct infringement which is a necessary predicate
to Commil’s induced infringement claim. Next, I disagree
with the majority’s conclusion that the trial court’s decision
to order only a partial retrial of the issues presented
is defensible; I believe the partial retrial order deprived
Cisco of its right to a jury trial as guaranteed by the
Seventh Amendment to the United States Constitution
and must be reversed.

***Corrections to text:

The following changes have been made to the concurring-
in-part, dissenting-in-part opinion filed by Circuit
Judge O’MALLEY in the opinion released June 25, 2013:
Page 9, line 35, “We unanimously” is changed to
“Judge Prost and I”.
Page 10, line 5, “the majority concludes” is changed to
“Judges Prost and Newman conclude”.

Sunday, June 23, 2013

"60 Minutes" on June 23, 2013

The first story on "60 Minutes" on June 23, 2013 concerned Michael Morton. The report had originally been broadcast on March 25, 2012. See the story Evidence of Innocence: The case of Michael Morton

The second story was on the Russian band "Pussy Riot." This report was also a re-cycle.

The third story was on Ideo, originally broadcast in January 2013. David Kelley. How to design breakthrough inventions
and IDEO CEO Tim Brown on the future of "design thinking"
. Breakthrough ideas happen everyday. Having a diverse group of people and building on one another's ideas.
Empathy for the consumer. Try to understand people through observing them. In 1978, Kelley started what would become Ideo. Steve Jobs was an early client. Jobs was deep into every aspect. Apple III and Lisa. $17 mouse. Make it intuitive for the human. Rubber coat the ball. "I thought you were good." Tivo's thumbs up; thumbs down.
Steelcase turned to Ideo to re-invent the classroom chair. It's not rocket science; it's empathetic to people. North Face into China. Kelley was at Boeing. Kelley grew up in Ohio. Tinkering who put things back together.
Stanford University's Product Design program. "It was heaven." The synthesis of art and engineering. Biggest misconception: he was mean. he was just trying to get things done. Kelley got throat cancer. Go straight to Western medicine; don't try alternatives. Living with cancer. Focus on kids; fight more to survive. School centered on "human centered design." "The D School" Daughter Clare. Branscomb Farms.

Repeat of "The Money Issue" on Sunday Morning on June 23, 2013

Anthony Mason introduced "The Money Issue" on June 23, 2013, which was a recycle of a previous show on March 24, 2013:


The cover story was on "The Sharing Economy." As to sharing cars, GetAround. RelayRides. Rent a Tesla for $35 per hour.

TheTieSociety rents ties. Airbnb. Lawrence Summers is on the Board of Lending Club. Renaud Laplanche notes a return of 6% - 9%. Started in 2007. Worth of 3 billion. Neil Garenflo of Shareable. Peg Powell in Bay Area rents out rooms/her couch. Uses Airbnb. This trend is like a return to the days of boarding houses. Poll--willing to rent out clothers yes 48% no 49%.

Martha Teichner on Seal of Approval about Good Housekeeping Seal of Approval. Peter Thomas Roth. Rosemary Ellis, Editor in chief. The magazine was founded in 1885. Was instrumental in passage of Pure Food and Drugs Act in 1905. Stopped taking cigarette ads in 1952. Teichner does taste test on frozen waffles. 21 million people read each issue.

Erin Moriarity on art of Brendan O'Connell on Wal-Mart.

Pieces on rapper 50 Cent; pickles.

Faith Salie, Omaha Nebraska, family credit union, Sue's House. "Our Family Social Credit Union." Sue Kane. Started in 1950, Manley and Lucy Williams. Now 511 members. Peggy Powell on credit unions.

Saving for retirement. If you make $75K per year, need 800K saved.

Bill Geist on "between the covers." Desiree Holt, a 76 year old grandmother.

Rita Braver on Steve Case, of AOL. Now, Revolution, which has interest in LivingSocial and HelloWallet. ZipCar. You're only going to hit a homerun if you are swinging for the fences. The potential for computers to be used for commerce and personal communication. Niche hobbyist market? AOL/TimeWarner. Thomas Edison: vision without execution is hallucination. Case left company in 2003. Net worth of 1.4 billion. Steve Case at SweetGreen started by Georgetown University grads. Case is now 54. Bill to make it easier for fledgling companies to get funding. In it to win it over the long run.

Lee Cowan on US income tax rate. 100K income, Denmark taxes 42%. US is 18.7%. US has no VAT.

Suzie Orman.

Face the Nation on Snowden.

Next week on Sunday Morning: Stephen King.

Moment of Nature. Spiriva HandiHaler. Washington State's Olympic Peninsula. Treasures of the Sea. Anemones.
Mussels. Starfish.

Friday, June 21, 2013

CAFC discusses 101 post-Myriad

from Ultramercial v. Hulu and WildTangent

Ultramercial sued Hulu, LLC (“Hulu”), YouTube, LLC
(“YouTube”), and WildTangent, Inc. (“WildTangent”),
alleging infringement of the ’545 patent. Hulu and
YouTube have been dismissed from the case. WildTangent
moved to dismiss for failure to state a claim, arguing
that the ’545 patent did not claim patent-eligible subject
matter. The district court granted WildTangent’s preanswer
motion to dismiss under Rule 12(b)(6). Ultramercial
appeals. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(1).

The CAFC observed:

First, it will be rare that a patent infringement suit
can be dismissed at the pleading stage for lack of patentable
subject matter. This is so because every issued
patent is presumed to have been issued properly, absent
clear and convincing evidence to the contrary. See, e.g.,
CLS Bank Int’l v. Alice Corp., __ F.3d __, 2013 WL
1920941, *33 (Fed. Cir. May 10, 2013) (Chief Judge Rader,
and Judges Linn, Moore, and O’Malley, concluding
that “any attack on an issued patent based on a challenge
to the eligibility of the subject matter must be proven by
clear and convincing evidence,” and Judges Lourie, Dyk,
Prost, Reyna, and Wallach, concluding that a statutory
presumption of validity applies when § 101 is raised as a
basis for invalidity in district court proceedings.).


Thus, the only plausible reading of the patent must be
that there is clear and convincing evidence of ineligibility.
For those reasons, Rule 12(b)(6) dismissal for lack of
eligible subject matter will be the exception, not the rule.

Second, as is shown more fully below, the analysis
under § 101, while ultimately a legal determination, is
rife with underlying factual issues. For example, while
members of this court have used varying formulations for
the precise test, there is no doubt the § 101 inquiry requires
a search for limitations in the claims that narrow
or tie the claims to specific applications of an otherwise
abstract concept.


Third, and in part because of the factual issues involved,
claim construction normally will be required. This
court has never set forth a bright line rule requiring
district courts to construe claims before determining
subject matter eligibility. Indeed, because eligibility is a
“coarse” gauge of the suitability of broad subject matter
categories for patent protection, Research Corp. Techs.,
Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010),
claim construction may not always be necessary for a
§ 101 analysis. See, e.g., Bilski v. Kappos, 130 S. Ct. 3218,
3231 (2010) (finding subject matter ineligible for patent
protection without claim construction); CLS Bank, __ F.3d
__, 2013 WL 1920941 (court decided eligibility of subject
matter without formal claim construction).


Finally, fourth, the question of eligible subject matter
must be determined on a claim-by-claim basis. Construing
every asserted claim and then conducting a § 101
analysis may not be a wise use of judicial resources.
With these thoughts in mind, the court turns to the
question of whether the court correctly dismissed the suit
under § 101.

Note the warning:

The Supreme Court repeatedly has cautioned against
conflating the analysis of the conditions of patentability in
the Patent Act with inquiries into patent eligibility. See
Diehr, 450 U.S. at 190 (“The question therefore of whether
a particular invention is novel is wholly apart from
whether the invention falls into a category of statutory
subject matter.” (internal quotation marks omitted)); see
also Prometheus, 132 S. Ct. at 1304 (recognizing that “to
shift the patent-eligibility inquiry entirely to [§§ 102, 103,
and 112] risks creating significantly greater legal uncertainty,
while assuming that those sections can do work
that they are not equipped to do”).


The district court did not construe the claims in accordance
with this court’s precedent. Instead, it held that
there was no “reasonable construction” that would “bring
the patent within patentable subject matter.” A. 6. The
district court erred in requiring the patentee to come
forward with a construction that would show the claims
were eligible. That is presumed. In this procedural
posture, the district court should either have construed
the claims in accordance with Markman, required the
defendant to establish that the only plausible construction
was one that, by clear and convincing evidence rendered
the subject matter ineligible (with no factual inquiries), or
adopted a construction most favorable to the patentee.
For purposes of this appeal, this court adopts the latter
approach. It may be that formal claim construction will
still be required to determine the merits of eligibility.

Bottom line:

In sum, as a practical application of the general concept
of advertising as currency and an improvement to
prior art technology, the claimed invention is not “so
manifestly abstract as to override the statutory language
of section 101.” Research Corp., 627 F.3d at 869. Accordingly,
this court reverses the district court’s dismissal of
Ultramercial’s patent claims for lack of subject matter
eligibility and remands for further proceedings. This
decision does not opine at all on the patentability of the
claimed invention under the substantive criteria set forth
in §§ 102, 103, and 112.

But note the concurring opinion text:

It is our obligation to attempt to follow
the Supreme Court’s guidance in Mayo rather than to set
forth our own independent views, however valid we may
consider them to be.
Indeed, this appeal was specifically
vacated by the Supreme Court and remanded for further
consideration in light of Mayo. WildTangent, Inc. v.
Ultramercial, LLC, 132 S.Ct. 2431 (2012).

Thursday, June 20, 2013


from Ex parte YAMAZAKI

Of a rejection for lack of utility:

While the Examiner emphasizes that the Specification provides no
evidence of an operative embodiment therein “which can operate in the
entire claimed range of ‘0.3 microns or less’” (Ans. 16-17), that is not a
requirement for utility. There is no requirement that a full range recited in a
claim must be supported by working embodiments. As the predecessor of
our reviewing court stated:

[C]laims are not to be considered in a vacuum, “but always in
light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.”
When considered in the light of the prior art and the
specification, claims otherwise indefinite may be found
reasonably definite.

In re Kroekel, 504 F.2d 1143, 1146 (CCPA 1974)(citing In re Moore, 439
F.2d 1232 (CCPA 1971)).

A rejection based on indefiniteness, or utility, is not necessarily valid
simply because the “claims may be read in theory to include compositions
that are impossible in fact to formulate.” Id. The fact that claim 28 could be
made to read upon a device with a zero or close to zero channel length, i.e.,
an inoperative device, does not require that the claim be found to have no
utility. Read in the context of the Specification (FF 3), a practical range less
than 0.3 microns can be determined, such that one of ordinary skill in the art
would not have viewed the claim as reading upon non-working
embodiments. As such, we conclude that claim 28 is not inoperative and
thus does not lack utility under 35 U.S.C. § 101.

Mixed decision in Ex parte Fairbourn

from within Ex parte Fairbourne

The examiner cites In re Fout,675 F.2d 297, 301 (CCPA 1982 ) as to interchangeability. Siebentritt, 372 F.2d 566, 568 (CCPA 1967) is also cited.

**As to Fout on substitution:

Because both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have been prima facie obvious to substitute one method for the other. Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious. In re Siebentritt, 54 CCPA 1083, 372 F.2d 566, 152 USPQ 618 (1967). Nevertheless, a reason for making the substitution is provided by Waterman, who states: "[C]affeine may be recovered in pure form under the present invention, avoiding the usual more tedious physical and chemical processes." It is to be noted that, in the Pagliaro process, a caffeine/water solution is obtained that would require further processing to recover pure caffeine.

Thus, the Fout case provides a reason for the substitution.

**Within Fout, Nomiya is cited:

This court has recognized that section 102 is not the only source of section 103 prior art.[fn3] Valid prior art may be created by the admissions of the parties. See In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975); In re Hellsund, supra, 59 CCPA note 3 at 1387, 474 F.2d at 1311, 177 USPQ at 173; In re Bass, 59 CCPA 1342, 474 F.2d 1276, 177 USPQ 178 (1973); In re Garfinkel, 58 CCPA 883, 887, 437 F.2d 1000, 1004, 168 USPQ 659, 662 (1971); In re LoPresti, 52 CCPA 755, 333 F.2d 932, 142 USPQ 176 (1964); Turner, Admissions as Prior Art Under 35 U.S.C. § 103, 52 J.Pat.Off.Soc'y 249 (1970). Nor is it disputed that certain art may be prior art to one inventive entity, but not to the public in general. See In re Nomiya, supra, 509 F.2d at 571 n.5, 184 USPQ at 611 n.4 (both footnotes are the same, despite the different numbering).

We hold that appellants' admission that they had actual knowledge of the prior Pagliaro invention described in the preamble constitutes an admission that it is prior art to them. The Pagliaro process was appellants' acknowledged point of departure, and the implied admission that the Jepson format preamble of claim 1 describes prior art has not been overcome. It is not unfair or contrary to the policy of the patent system[fn4] that appellants' invention be judged on obviousness against their actual contribution to the art.

KSR and Rouffet are also cited in Ex parte Fairbourne.

PTAB reverses examiner in Ex parte SCHURG

from Ex parte Schurg

On inherency:

The express, implicit, and inherent disclosures of a prior art reference
may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103.
“The inherent teaching of a prior art reference, a question of fact, arises both
in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610,
613 (Fed. Cir. 1995). However, the fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993) (rejection reversed because alleged inherency was based on
what would result due to optimization of conditions, not what was
necessarily present in the prior art); see also, In re Oelrich, 666 F.2d 578,
581-82 (CCPA 1981). “To establish inherency, the extrinsic evidence must
make clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by
persons of ordinary skill. Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art
. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
& Inter. 1990).

Rejection affirmed in Ex parte MASLOWSKI

From Ex parte Maslowski

Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the Examiner’s
proposed combination, Weder satisfies the limitation directed to a preformed

Of substitution:

Substitution denotes replacing
one thing with another, not adding something in addition to what is already
present. In the instant case, the Examiner reasons that wrapping the
container after it is preformed amounts to a simple substitution that is
nothing more than a predictable variation of incorporating the shielding into
the container in a single process. Id. The Examiner’s proposed combination
of Van De Weijer and Weder is supported by articulated reasoning with
rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418

Of purpose:

It is not necessary for the prior art to serve the same purpose as
that disclosed in Appellants’ Specification in order to support the conclusion
that the claimed subject matter would have been obvious. See In re Linter,
458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it
teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, supra at 418-421.

Of the use of the term "comprising"

Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed.Cir.1997) (comprising transition means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim).

Fundamental chemistry about dicarboxylic acid at issue in Ex parte Smith

The PTAB reversed the examiner in Ex parte Smith with an observation about chemistry:

a dicarboxylic acid that has participated in an acylation reaction is no longer a dicarboxylic acid

Wednesday, June 19, 2013

Leapfrog cited in Ex parte Toulouse

from Ex parte TOULOUSE

The relevant claim involved an element directed to a thermistor:

a thermistor sensitive to temperature and
electrically connected to the electronic
management module for transmitting temperature
information to the electronic management module
which is arranged to manage the temperature
information supplied by the thermistor in order to
determine an operating period of the fan after
ignition according to the temperature information;

wherein the thermistor is positioned
rearward of said fan.

Of arguments:

Appellants argue that in all embodiments, [the prior art] Ohmori places the
thermistor forward of the fan 14 and that such placement is required “to
ensure overheating protection of critical components” all of which are
located forward of the fan.

PTAB noted:

Contrary to Appellants’ argument, the Examiner did articulate a
rational basis for locating the sensor rearward of the fan, namely, “to
monitor the cooling time of the combustion chamber.” Ans. 4. While
Appellants argue that placing the sensor rearward of the fan would render it
no longer able to accurately measure the combustion chamber temperature,
they have offered no evidence to support their argument. Likewise, while
Appellants argue against the Examiner’s finding that locating the sensor
rearward would not change the operating principle of Ohmori (i.e., to protect
against overheating), Appellants offer no evidence to the contrary.

Elsewhere, Leapfrog is cited:

Nevertheless, Ohmori discloses an electronic management module
which determines the operating period of the fan. Ans. 3-4. We conclude
that it would have been obvious to replace the electrical circuit of Ohmori
with a processor as it is obvious “to update [a known electro-mechanical
device] using modern electronic components in order to gain the commonly
understood benefits of such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost.” Leapfrog Enterprises
Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1161-62 (Fed. Cir. 2007).
Therefore, we sustain the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Ohmori and Walter. However, because our affirmance
relies on reasoning not specifically used by the Examiner, we denominate
our affirmance a new ground of rejection under 37 C.F.R. § 41.50(b).

In re Nuijten cited in Ex parte ZONDERVAN

from within Ex parte ZONDERVAN

Two separate tests developed by our reviewing court for determining
whether a prior art reference is analogous are: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed; and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(analogous art based on same field of endeavor test); In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (analogous art based
on similarities in problems addressed test).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007), explains:

When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 550 U.S. at 417.

If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that

“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).


Where, as here, the broadest reasonable interpretation of the
claims in light of the disclosure covers a signal per se, the claims must be
under 35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter).

Dangelmaier KSR'd


When assessing the obviousness of claims to a combination of prior
art elements, the question to be asked is "whether the improvement is more
than the predictable use of prior art elements according to their established
functions." KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

Aperio loses at PTAB in re-examination 95/000,518 related to US 7,457,446

The rejection of claims in US 7,457,446 in re-examination 95/000,518 [ HAMAMATSU PHOTONICS K.K. v Aperio ] is affirmed.

As to written description:

To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[I]t is the specification itself
that must demonstrate possession. And while the description requirement
does not demand any particular form of disclosure, or that the specification
recite the claimed invention in haec verba, a description that merely renders
the invention obvious does not satisfy the requirement
.” Id. at 1352,
citations omitted. Accordingly, even if it would have been obvious to apply
the Specification’s teaching of a single line scan camera to a plurality of line
scan cameras, the Specification fails to meet the written description
requirement under Ariad.

The need for evidence, rather than arguments, is mentioned:

Appellant has not provided sufficient evidence that one of ordinary skill
in the art, upon reading the ‘446 patent disclosure, would have recognized
description of the claimed subject matter. Arguments of counsel cannot take
the place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

Again, a description that merely renders the invention obvious does
not satisfy the written description requirement. Ariad.

Footnote 4 invokes Borden:

Appellant’s Rebuttal Brief argues for the first time that claim 1 requires
focus adjustments during image acquisition and that Douglass does not
disclose focus adjustments during image acquisition. Reb. Br. 6-7. “[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.” Ex parte Borden, 93 USPQ 2d, 1473, 1474 (BPAI 2010)

Keller is mentioned:

Requester correctly argues that the test is not whether the features of a
secondary reference can be bodily incorporated into the primary reference,
but what the combined teachings would have suggested to one of ordinary
skill in the art. Resp. Br. 7. See also In re Keller, 642 F.2d at 425 (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.”)

Of secondary considerations:

In particular, an applicant
asserting secondary considerations to support its contention of
nonobviousness bears the burden of proof of establishing a nexus between
the claimed invention and evidence of secondary considerations. In re
Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).

Unexpected Results

“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected. The basic principle behind this rule is straightforward – that
which would have been surprising to a person of ordinary skill in a particular
art would not have been obvious.” In re Soni, 54 F.3d 746, 750 (Fed. Cir.
1995). “Mere improvement in properties does not always suffice to show
unexpected results . . . [H]owever, when an applicant demonstrates
substantially improved results, . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” Id. at 751.


Accordingly, Appellant has failed to show a nexus between the purported
unexpected result (no two-dimensional optical distortions) and the claimed
invention. Appellant has, instead, asserted that the unexpected results are
due to an unclaimed feature. The assertion of this unexpected result is
therefore not persuasive to show nonobviousness. (...)
Citing Soni, Appellant contends that because Mr. Soenksen simply
states that the results were unexpected, it should suffice to establish
unexpected results in the absence of evidence to the contrary. App. Br. 29;
Reb. Br. 8. Producing a statement, however, is not the entire Soni test. The
test includes a determination of whether an applicant demonstrates
“substantially” improved results. Moreover, “it is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.” Soni, 54
F.3d at 750 (internal quotations omitted).

Accordingly, Appellant has the
burden of producing data in its Declaration such as evidence of unexpected
properties in the form of a direct or indirect comparison of the claimed
invention with the closest prior art
; for example, Pearson. (...)

Appellant does not provide data or other
evidence showing that its claimed product unexpectedly produces
substantially improved results as required by Soni, rather than a mere
improvement in properties.

Of commercial success:

Objective evidence of nonobviousness, including commercial success,
must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791,
792 (CCPA 1971). A nexus must be established between the merits of the
claimed invention and the evidence of secondary considerations in order for
the evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). The nexus requirement requires that the
Appellant establish a factually and legally sufficient connection between the
evidence of commercial success and the claimed invention so that the
evidence is of probative value in the determination of nonobviousness.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). The Appellant must demonstrate that the successful
product is the invention disclosed and claimed in the patent, and that the
success is due to the merits of the claimed invention. J.T. Eaton & Co. v.
Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997).


Even when a nexus has been
established between the merits of the claimed invention and the secondary
consideration, the secondary consideration may be insufficient when the
claimed feature which underlies it was possessed by the closest prior art.
Thus, in In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991),
the prior art possessed the function relied upon by the patent applicant to
establish unexpected results and therefore was not a basis for rebutting a
prima facie finding of obviousness.
As held in J.T. Eaton & Co., Inc. v.
Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997), “the
asserted commercial success of the product [a secondary consideration] must
be due to the merits of the claimed invention beyond what was readily
available in the prior art.”

As to copying:

“[C]opying by a competitor may be a relevant consideration in the
secondary factor analysis.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004). Copying as objective evidence of
nonobviousness requires evidence of effort to replicate a specific product.
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip,
392 F.3d at 1325. Furthermore, just as with commercial success, “a nexus
between the copying and the novel aspects of the claimed invention must
exist for evidence of copying to be given significant weight in an
obviousness analysis.” Wm. Wrigley Jr. co. v. Cadbury Adams USA LLC,
683 F.3d 1356, 1364 (Fed. Cir. 2012) (internal quotation omitted). (...)

Under Federal Circuit jurisprudence, not every competing product that
arguably falls within the scope of a patent is evidence of copying, because
otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Wyers; Iron Grip, 392 F.3d at 1325.
Assuming for the sake of argument that the Olympus product is a copy of
Appellant’s product, that fact could be insufficient to prove nonobviousness
because copying may be attributable to other factors such as a lack of
concern for patent property or contempt for the specific patent in question,
or the patentee’s ability or willingness financially or otherwise to enforce the
patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1028
(Fed. Cir. 1985) overruled on other grounds by Midwest Industries., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en banc). (...)
“[A] showing of copying is only equivocal evidence of nonobviousness
in the absence of more compelling objective indicia of other
secondary considerations.” Ecolochem, Inc. v. Southern California Edison
Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000). (...)
Even assuming for
the sake of argument that the foregoing evidence is sufficient to establish
copying, this evidence is too weak to rebut the strong evidence of
obviousness. Tokai Corp. v. Easton Enterprises, Inc., 632 F.3d 1358, 1371
(Fed. Cir. 2011).

CAFC reverses TTAB in Levi Strauss v. Abercrombie & Fitch. Claim preclusion. Issue preclusion.

The subject matter of the case Levi Strauss v. Abercrombie & Fitch relates to markings on jeans, and the legal issues relate to the impact of district court proceedings on board proceedings (issue preclusion; claim preclusion).

Since 1873, Levi Strauss has stitched the back pocket
of its jeans with two connecting arches that meet in the
center of the pocket. Levi Strauss holds multiple federally
registered trademarks on this “Arcuate” (bow-shaped)
design and has extensively advertised products displaying
the trademark for over a hundred years. Levi Strauss
actively monitors use of competing stitching designs and
enforces its trademark rights against perceived infringers.
In 2005, Abercrombie sought to register a “mirror image
stitching design” for use on “[c]lothing, namely, jeans,
skirts, pants and jackets.” U.S. Trademark Application
Serial No. 78766368 (filed Dec. 5, 2005). The registration
stated no other limitations on the goods’ nature, type,
channels of trade, or class of purchasers.

As to dilution:

Levi Strauss did not appeal the 2009 Judgment on Infringement,
which therefore became the final judgment on
infringement in the case. Levi Strauss did appeal the
2009 Judgment on Dilution. In 2011, the Ninth Circuit
“reversed” that judgment, and remanded the case. Levi
Strauss & Co. v. Abercrombie & Fitch Trading Co., 633
F.3d 1158, 1175 (9th Cir. 2011). The Ninth Circuit held
that dilution by blurring does not require identity or near
identity of the marks at issue (id. at 1162-73) and that the
district court’s reliance on that erroneous requirement
“affected its dilution determination” and so was not
harmless (id. at 1174).

Of issue preclusion:

Neither party identifies a disputed underlying issue of
fact that is material to the preclusion questions presented.
Whether preclusion applies to bar a particular action
is an issue of law, which this court decides de novo. See
Foster v. Hallco Mfg. Co., 947 F.2d 469, 475 (Fed. Cir.
1991). We hold that neither issue nor claim preclusion
bars Levi Strauss’s challenges to Abercrombie’s registrations
in the PTO.

Both doctrines preclude certain attempts at second litigation
chances, but only in defined circumstances, reflecting
the need to avoid depriving litigants of their first
chances. For purposes of this case, we recite only certain
necessary conditions for preclusion. Because we find
certain necessary conditions not to be satisfied, we have
no occasion to address any other matter regarding preclusion
law, including what conditions would suffice for

Issue preclusion serves, in certain circumstances, “to
bar the revisiting of ‘issues’ that have been already fully
litigated.” Jet, Inc. v. Sewage Aeration Sys., 223 F.3d
1360, 1366 (Fed. Cir. 2000). We have stated four preconditions
for a second suit to be barred by issue preclusion:

(1) identity of the issues in a prior proceeding;
(2) the issues were actually litigated;
(3) the determination of the issues was necessary to
the resulting judgment; and
(4) the party defending against preclusion had a full
and fair opportunity to litigate the issues.
Id. (citing numerous authorities).

What is key here is
that, in order for issue preclusion to bar litigation of an
issue raised in a second suit, there must be an earlier
determination of that issue in a first suit and the earlier
determination must have been necessary to the resulting
judgment in that suit.

Claim preclusion does not depend on an earlier court’s
resolution of a particular issue, but prevents a litigant, in
certain circumstances, from pressing issues in a second
suit that it could and should have raised in earlier litiga
tion even if it did not. Claim preclusion, where it applies,
prevents litigation of “all grounds for, or defenses to,
recovery that were previously available to the parties,
regardless of whether they were asserted or determined in
the prior proceeding.” Brown v. Felsen, 442 U.S. 127, 131
(1979). For that bar to apply, certain essential preconditions
must be met, as stated in this formulation: “a judgment
on the merits in a prior suit bars a second suit
involving the same parties or their privies based on the
same cause of action.” Parklane Hosiery Co. v. Shore, 439
U.S. 322, 326 n.5 (1979). Explaining that the crucial
“same cause of action” precondition requires the “same set
of transactional facts” in the two suits, we have summarized
the overall preconditions:

“(1) there is identity of
parties (or their privies); (2) there has been an earlier
final judgment on the merits of a claim; and (3) the second
claim is based on the same set of transactional facts as
the first.” Jet, 223 F.3d at 1362. We have added that “a
common set of transactional facts is to be identified
‘pragmatically.’” Id. at 1363 (quoting Restatement (Second)
of Judgments § 24(2)).

There is reference to "bedrock"--

Dating back at least to Butler v. Eaton, 141 U.S. 240, 242-
44 (1891), a bedrock principle of preclusion law has been
that a reversed judgment cannot support preclusion
indeed, “a second judgment based upon the preclusive
effects of the first judgment should not stand if the first
judgment is reversed.” 18A Charles A. Wright, et al.,
Federal Practice and Procedure § 4433 (2d ed. 2002)
(footnote omitted); see id. § 4427 at 5 (“Should the judgment
be . . . reversed on appeal, however, res judicata [in
the sense covering both preclusion doctrines] falls with
the judgment.”); United States Postal Serv. v. Gregory,
534 U.S. 1, 15-16 (2001) (Ginsburg, J., concurring in the
judgment); In re Hedged-Investments Assocs., 48 F.3d 470,
472-73 (10th Cir. 1995); South Carolina Nat. Bank v.
Atlantic States v. Atlantic States Bankcard Ass’n, 896
F.2d 1421, 1430-31 (4th Cir. 1990); Erebia v. Chrysler
Plastics Prods. Corp., 891 F.2d 1212, 1215 (6th Cir. 1989);
Ornellas v. Oakley, 618 F.2d 1351, 1356 (9th Cir. 1980);
DiGaetano v. Texas Co., 300 F.2d 895, 897 (3d Cir. 1962).

Of interest:

Rather, it is because the
PTO and district-court proceedings do not involve the
same transactional facts, pragmatically judged.

Tuesday, June 18, 2013

CAFC decision in Novo Nordisk v. Caraco

From Novo Nordisk v. Caraco

As to reasons for allowance:

The examiner withdrew her rejection, explaining that
her decision was “[b]ased solely upon the Declaration
submitted by Dr. Sturis and reconsideration of the synergistic
effects demonstrated in Example 3.” Id. at 1001.
After additional proceedings not relevant here, the ’358
patent issued on January 13, 2004. Id. Claim 4 of the
patent, which is the sole claim at issue here, was not
amended at any point during prosecution. Id.

Note footnote 4:

For more details about the pharmaceutical applications
that inspired this case, or about the history,
language, and scope of the Hatch-Waxman Act, see Caraco,
132 S. Ct. at 1675-80.

At issue here

Following a bench trial, the district court held that
claim 4 of the ’358 patent was invalid because of obviousness
and that the patent was not enforceable because of
inequitable conduct. Novo appeals these rulings, and we
have jurisdiction under 28 U.S.C. §§ 1292(c)(2) and

Novo attacks the district court’s obviousness ruling on
three grounds. First, it asserts that the district court
misallocated the burden of persuasion in this case by
forcing Novo to “overcome” Caraco’s “prima facie” case of
obviousness with evidence of unexpected results. Second,
Novo argues that even if the burdens were properly
allocated in this case, Caraco’s evidence insufficiently
supported the court’s ultimate obviousness findings.
Finally, Novo believes that the district court should have
deferred to the examiner’s original finding that the Sturis
and Moses studies demonstrated unexpected synergy.

The result

Novo attacks the district court’s obviousness ruling on
three grounds. First, it asserts that the district court
misallocated the burden of persuasion in this case by
forcing Novo to “overcome” Caraco’s “prima facie” case of
obviousness with evidence of unexpected results. Second,
Novo argues that even if the burdens were properly
allocated in this case, Caraco’s evidence insufficiently
supported the court’s ultimate obviousness findings.
Finally, Novo believes that the district court should have
deferred to the examiner’s original finding that the Sturis
and Moses studies demonstrated unexpected synergy.

Monday, June 17, 2013

Rose case discussed in Ex parte Shotwell

On design choice:

The Appellant’s contentions are not persuasive. The Examiner
articulates that the modification of size of Conaway’s bin is based on a design choice. “Design choice” is appropriate where the Appellant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995).

About the Rose case
Ex parte Shotwell

The Appellant also contends that the holding of Rose does not apply in this case. See App. Br. 9-10. The Appellant points out that Rose states, “[w]e do not feel that this limitation is patentably significant since it at most relates to the size of the article under consideration which is not ordinarily a matter of invention.” App. Br. 9 (citing Rose at 463 (citing In re Yount, 171 F.2d 317 (CCPA 1948)). The Appellant points out that Yount cites to In re Ayres, 83 F.2d 297 (CCPA 1936) and In re Withington, 104 F.2d 192 (CCPA 1939). The Appellant asserts that the specifications in each of Yount, Ayres, and Withington included a statement of equivalency with respect to a different sizes and that the specifications in both Yount and Withington included a statement that “a change in size is of no difference.” App. Br. 9-10. The Appellant asserts that the instant Specification does not include such statements. See App. Br. 9-10. The Appellant also points out that “the Background section [of the instant Specification] recites difficulties associated with smaller-sized baskets and containers for use in a dishwasher machine.” App. Br. 10. See Spec. paras [001]-[003].

Ex parte Shen on "intended use or purpose"

from Ex parte Shen

It is well established that “[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345, (Fed. Cir. 2003). Thus, an apparatus capable of performing an intended use will anticipate an apparatus claim, even if the prior art does not disclose that the apparatus was actually put to the intended use recited in the claim. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). Accordingly, we agree with the Examiner that the structure disclosed by Moore is capable of conforming with a frontal surface of a ball cap as claimed.

Sunday, June 16, 2013

CBS Sunday Morning on 16 June 2013 (Fathers Day)

Lee Cowan, not Charles Osgood, introduced the stories for Sunday Morning for June 16, 2013.

The Sunday Morning cover story was by Lee Cowan on the lives of the astronaut wives.

Second, story on comedian Jim Gaffigan. Fatherhood.

Third, Mo Rocca on Debbie Reynolds. The good girl you root for. Eddie Fisher and Elizabeth Taylor.

Fourth, "behind the music" on backup singers by Ben Tracy.

Serena Alschul. Bill Geist. Nancy Giles.

Headlines. North Korea has proposed high level talks with US. In Colorado, "black forest" fire. In Iran, Assan Rahani, moderate. Egypt's Islamic government cutting off relations with Syria. Kim Kardasian mother of baby girl. Phil Mikkelson holds one stroke lead. Game 2 of Stanley Cup. Forecast: warm weather across country. Last day of spring.

Story "Back on Earth…" Wife of Jim Lovell. April 1970. Apollo 13. Jim Lovell: This is the business I was in. author Lily Keppel. Sue Bean. Space suburbia. astro-wives. Jeannie Basset-Robinson. Also, wife of Gene Cernan, last man on the moon.
Never would argue. Charlie Basset died in a plane crash. In 1967, Apollo 1 tragedy. Most of the marriages fell apart. But Jim and Marilyn Lovell celebrated 61st anniversary. Wives of Apollo 12: being a part of the space race, proud, thrilled and happy.

Almanac. June 16, 1903. New Bern, North Carolina: Caleb Davis Bradham, got trademark on Pepsi. In 1959, Richard Nixon consumed Pepsi in Moscow. The Pepsi Generation. The Pepsi Challenge.
In 1985, New Coke. you've got the right one baby. Back to the Future-II.
Neither cola can afford complacency.

Close shave. Barber pole. Serena Alschul. Mike: Michael Dubin. For a dollar a month, high quality razors sent to your home. March 6, 2012: launched a video. From 7 to 7:15am, site crashed. In 48 hours, 12,000 orders. Now, 200,000 members. New York Shaving Company. John Scala. Badger hair brushes. A throwback to a by-gone era. Straight razor. Nick Burns, shaving expert. In grown hairs with cartridge razors. Mach 3 shaving system. Skit on Mad TV: 20 blades. Shaving in ancient Egypt. In 1904: the invention of the safety razor by King Gilette. Look sharp; be sharp. Michael Dubin: lotions and potions used by your dad. Celebration around the culture of shaving.

Debbie Reynolds story recycled. Miss Burbank contest in 1948. Married Fisher in 1955 at Grossinger's.

One week after. Edward Snowden. Seth Doane files Sunday Journal from Hong Kong. Snowden chose China to hide. David Zweig is political science prof at Hong Kong University. US had put Chinese cyber-spying on agenda. On day of China/US meeting, Guardian broke story . Glen Greenwald got the scoop. Snowden would hold Rubik's cube. Simon Young is Hong Kong lawyer. Independent judiciary. Asylum law.

Anthony Mason on "Stand Up Dad." Jim Gaffigan. No sleep; the pay is horrible, but people like it. "I'm the Dumbo." Observational humor about everyday of life. Home birth. Home for Jim and Jeannie is a two bedroom walkup on Manhattan's east side. Book "Dad is fat." Solitary, introspective pursuit. Wrangler in a herd of runaway scooters. Chesterton, Indiana. Youngest of six kids. "I was funny." Graduated from Georgetown University in 1988. Raised to seek security. Studied finance. Worked as litigation consultant. Did an improv class because afraid of public speaking. Now 46 years old. Jokes about food, hot pockets. "I'm going to die." Dominos pasta bread bowl diet. Gotham Comedy Club. A clean comedian. Family friendly, clean. Bob Newhart was clean. Gaffghanistan.

Compared to 20 years ago, fathers are
--more involved in raising kids, 40%
--less involved in raising kids, 35%

The Big Texan Steak Ranch in Amarillo, Texas. 72 ounce steak. Danny Lee. Steak stare. Big Victor. In 50 years, 55,000 have taken the challenge; 8500 have won. Siberian tiger took 90 seconds to eat 72 ounce.

Ben Tracy with Mary Clayton. [Merry Clayton]. Professional background singer. Sideground singer. My job is to make them look incredible. Clayton was a Ray-lette. Joe Cocker, Neil Diamond. Lou Reed: doo, doo.... Spiritual vibe. We are the choir. In 1969, the Rolling Stones. Gimme Shelter. Female voice. "It's just a shot away." New documentary film: Twenty feet from stardom. Morgan Neville. Judith Hill on "The Voice." "This is it" comeback tour. Merry Clayton: we are grateful for getting our due, and it's about time too.

[Aside: both Jif and Nutella advertised hazelnut spread on June 16 on Sunday morning.]

24.4 married fathers with kids.

1.7 billion on electronic gadgets for Dad.

93 million fathers day cards sent. Just half sent to fathers. 30% of these cards are humorous. 75% of fathers would like more time off from work to be with new-borns.

Nancy Giles on bras. 85% of American women are wearing the wrong size. Playtex living bra. Maidenform. Bra-burning. Good bras cost money. Joke: this shade isn't exactly "nude" for a whole lot of us.

Paris air show. Tues. Obama to Berlin. Wed. end of slavery Thurs. Jen. Lopez gets star. Friday: first day of summer. Sat. 75th anniversary of Joe Louis and Max.

Steve Hartman. Driven. Luke Balowsky, law student. 16,000 strokes into coast to coast. Tee to shining tee. Another 30,000 strokes to finish.

Next week: the money issue.

Moment of nature. Spiriva HandiHaler. Gannets on New Zealand's North Island. Getting ready for Fathers Day.

I'm Lee Cowan. Thanks for joining us. Have a good rest of your weekend.

Saturday, June 15, 2013

Mixed decision in Ex parte Liang

There is a mixed decision in Ex parte Liang.

The appellant wins on indefiniteness but loses on obviousness.

Of indefiniteness:

“The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).

Appellant contends “that a plain reading of the claims leaves no doubt that the claimed compositions as a whole comprise less than 10% triglycerides.” (App. Br. 5.)

We find that Appellant has the better position. Here, the claim begins with “a composition” and then continues with “wherein said composition comprises less than 10% of triglycerides.” We agree with Appellant that the claim makes it clear that “said composition . . .” is referring to a composition comprising a reverse micelle system. Here the reverse micelle system contains a hydrophilic phase and hydrophobic continuous phase, thus, the triglycerides of the system being hydrophobic molecules would partition into the hydrophobic phase.

We agree with the Appellant‟s position. In a reverse micelle the hydrophobic phase is found on the outside of the micelle, and the hydrophilic phase is on the interior. Just because in most reverse micelle systems the active ingredient is packaged into the interior of the micelle does not make it unclear that Appellant desires to do just the opposite.
We reverse the rejection of claims 1, 4-8, 15, 16, 19, 20, 23-25, and 27-33 under 35 U.S.C. § 112, second paragraph.

Of obviousness

“In United States v. Adams, . . . [t]he Court recognized that when a
patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). (...)

Applying the KSR standard of obviousness to the findings of fact, we agree with the Examiner that the ordinary artisan would have reasonably selected cyclosporin as a hydrophobic drug as taught by Carlsson (FF 4) with the reverse micelle composition as disclosed by Constantinides (FF 1). Carlsson disclosed the production of reverse micelles including cyclosporin, a known hydrophobic drug (FF 4). Constantinides disclosed the production of reverse micelles including therapeutic compounds such as acyclovir, azithromycin, clarithromycin, and dirithromycin (FF 2), compounds that are known to be hydrophobic.

The chemical principle of "like dissolves like" arises:

Appellant fails to identify any evidentiary basis on this record that rebuts the Examiner‟s reasoning that like dissolves like. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (Argument of counsel cannot take the place of evidence).

Kimberly-Clark loses diaper case at PTAB

Kimberly-Clark loses in Ex parte Elsberg

As to BRI:

During examination, the PTO gives claims “their broadest reasonable construction consistent with the specification.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)).

Of analogous art

See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (determination of analogous art based on same field of endeavor test).

Kenyon & Kenyon wins reversal in Ex parte Kuttenberger

In Ex parte Kuttenberger, Kenyon & Kenyon obtained reversal on rejection of claims directed to
-- A device for being situated in a vehicle and for determining a relative speed between the vehicle and a crash object, comprising (...) --

The Examiner asserts that Eisele’s disclosure in paragraph [0029] that the impact velocity may be measured by the precrash sensor and that features that change with impact velocity are based on the first integral of the acceleration signal, which is the velocity signal, “implies that the velocity is updated or corrected by the impact sensor after contact.” Ans. 9- 10. However, it is not apparent, and the Examiner does not adequately, explain, why this is the case.

For the above reasons, the Examiner fails to establish by a preponderance of the evidence that Eisele discloses a relative speed determining device comprising an arrangement for ascertaining the relative speed between the vehicle and a crash object based on a first signal of a pre- crash surround field sensor system and based on a second signal from a contact sensor system, “wherein the signal of the contact sensor system is used to correct the relative speed of the pre-crash surround field sensor system,” as called for in independent claim 15.

Friday, June 14, 2013

Re-hearing in Bonadio

Ex parte Bonadio

As to attorney argument:

Appellants‟ attorney argument does not persuade us otherwise. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (stating that “arguments of counsel cannot take the place of evidence lacking in the record”) (quoting Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA 1982).

Best is cited in a concurring opinion:

“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). For the foregoing reasons, I am not persuaded by Appellants‟ contention that the evidentiary burden was improperly shifted to Appellants on this record.

Affirmation-in-part in Ex parte Fung

Ex parte Fung

There is a citation to MEMS Tech. v. ITC, declining to LIMIT the term "electrically coupled" to direct coupling.

Query: is PTAB permitted to cite an unpublished decision of the CAFC to establish law in a PTAB case?

Elsewhere, the PTAB cites Chore-time, 713 F.2d 774, 779 (CAFC 1983).

Bosch case: CAFC may entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred.

Bosch v. Pylon

Given the nature of the arguments made by the parties and the amici, we take a moment to explain what this case is not about. This case does not involve the question of whether the district court has the authority to bifurcate the willfulness and infringement issues. As a general matter, it does. See Fed. R. Civ. P. 42(b). Likewise, we did not take this case en banc to determine whether the issues of infringement and willfulness are so interwoven that trying them separately violates the Seventh Amendment. Precedent of this court, nonetheless, indicates that it does not. See Voda v. Cordis Corp., 536 F.3d 1311, 1329 (Fed. Cir. 2008). Rather, we took this case en banc to determine whether we have jurisdiction when willfulness issues are outstanding and remain undecided. Bifurcation and Seventh Amendment issues are immaterial to this inquiry. Our jurisdiction is set by Congress and Congress has given us jurisdiction over patent cases that are final except for an accounting. Accordingly, the disposition of this issue turns on whether an “accounting” as described in § 1292(c)(2) includes the determination of willfulness.

As always, we begin with the statute. “[W]here words are employed in a statute which had at the time a well- known meaning at common law or in the law of this country, they are presumed to have been used in that sense.” Standard Oil Co. of N.J., 221 U.S. at 59. Our inquiry begins and ends with a determination of the historical meaning of an “accounting.” Specifically, we must determine whether at the time the statute was passed, an accounting included the determination of willfulness. (...)

Bosch is unable to point to anything in the text of the statute or in the legislative history that would indicate that when Congress first gave the courts of appeals inter- locutory jurisdiction over cases that are final except for an accounting, it intended to disturb the practice of deter- mining willfulness as part of an accounting. Indeed, after the enactment of §1292(c)(2)’s predecessor statute in 1927, courts continued to determine willfulness as part of an accounting, which occurred after the finding of liabil- ity. For example, in Pyle National Co. v. Lewin, the district court held the patents valid and infringed, and awarded treble damages prior to conducting an account- ing. 92 F.2d 628, 629, 631 (7th Cir. 1937). An appeal was then taken to the Seventh Circuit prior to the accounting.

The conclusion

For the reasons outlined above, this court answers each en banc question in the affirmative. We find that 28 U.S.C. § 1292(c)(2) does confer jurisdiction on this court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred. We also find that 28 U.S.C. § 1292(c)(2) confers
jurisdiction on this court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided. Accordingly, we return this case to the panel for disposition on the merits.

Tuesday, June 11, 2013

Mouttet cited in Ex parte Albert

Ex parte Albert

“If a person of ordinary skill, before the time of invention and without
knowledge of that invention, would have found the invention merely an easily
predictable and achievable variation or combination of the prior art, then the
invention likely would have been obvious.” Rolls-Royce, PLC v. United Techs.
Corp., 603 F.3d 1325, 1338 (Fed. Cir. 2010). Cf. In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness
based on teachings from multiple references does not require an actual, physical
substitution of elements.”) (citations omitted) .

Common sense is mentioned

See Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness always
depends on evidence that supports the required Graham factual findings, it also
may include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any reference
or expert opinion.”)

Mouttet cited in Ex parte Hosoi

Ex parte Hosoi

Like our appellate reviewing court, “[w]e will not read into a
reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, “just because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334
(Fed. Cir. 2012).


In the request for an expanded panel, Appellants recognize that the
decision was not designated as “Informative” or “Precedential” (Req. Reh’g
19). Appellants assert, however, that an expanded panel is warranted, as the
decision is now “citable authority and will likely have a significant impact
upon the examiners in the Patent Corps that examine patent applications that
involve this issue” (id.). We do not agree. If we were to accept Appellants’
reasoning, every request for rehearing would be entitled to an expanded

KSR dooms appellant in Ex parte Weiner

The appellant lost in Ex parte Weiner

KSR is mentioned:

“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). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.


Novak teaches that zalpha11 Ligand, now known as interleukin 21
(FF 1), “could be therapeutically used in B-cell leukemias and lymphomas”
(Novak, col. 115, ll. 31-35; FF 4; see FF 7). (...)

Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the person of ordinary skill would have
reasonably combined Novak‟s B-cell lymphoma treating interleukin-21 with
other known chemotherapeutic agents for B-cell lymphoma such as Brown‟s
anti-idiotype antibodies (FF 1-10) since both Novak and Brown teach
administering chemotherapeutic agents in combination (FF 6, 8; see Ans. 5-
6). Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.

The appellants lost on a "why not" argument:

Appellants contend that “if it was indeed obvious to combine 1L,-21
with anti-idiotype antibodies for the treatment of a B cell malignancy, why
would the „024 patent, which was initially filed 10 years after the
publication of Brown et al., fail to mention this possibility?” (App. Br. 4-5).

We are not persuaded. “The 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). Appellants have provided no evidence addressing this point.


While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that “if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we conclude
that the person of ordinary skill would have recognized that Novak‟s
teaching to treat B-cell lymphoma with IL-21 (FF 1-5) in combination
therapy with antibodies (FF 6-7) along with Brown‟s teaching to treat B-cell
lymphoma with anti-idiotype antibodies, alone or in combination (FF 8-10)
provides specific reasons to combine these two components for the treatment
of B-cell lymphoma.
Appellants contend that “surprisingly, the treatment of B cells with
IL-21 results in the production of Granzyme B, and further, that this
treatment can effect tumor cell killing” (App. Br. 5). Appellants contend
that “Inherency is a very limited doctrine almost exclusively applied to the
realm of anticipation” (id.). Appellants contend that “if it was permissible to
view the inherent outcome of any prima facie combination of references as
„spoiling‟ an unexpected result, then under no circumstance would an
unexpected result ever be sufficient” (id. at 6).

Of unexpected results:

In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements…
[do] not suffice.”) Also see In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney‟s argument in a brief cannot take the place of evidence.”).


Second, inherency may be relied upon in obviousness determinations.
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Whether the rejection is
based on „inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness'
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO‟s inability to manufacture
products or to obtain and compare prior art products.”)
In Wiseman, the CCPA rejected the argument of Appellants
that a structure suggested by the prior art, and, hence,
potentially in the possession of the public, is
patentable to them because it also possesses an
Inherent, but hitherto unknown, function which they
claim to have discovered. This is not the law. A patent
on such a structure would remove from the public that
which is in the public domain by virtue of its
inclusion in, or obviousness from, the prior art.
In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).

Product tolerant organisms

Note US 8,460,906 to Cobalt Technologies.

First claim

A system for making a solvent or organic acid, comprising a bioreactor that comprises: a) growth medium in contact with a solid or semi-solid support; and b) product tolerant microorganisms of the Clostridium genus on the solid or semi-solid support, wherein said microorganisms produce the solvent or organic acid and have previously been mutagenized and selected for tolerance to the solvent or organic acid on a solid or semi-solid support in the presence of the solvent or organic acid, wherein the tolerance of the selected microorganisms to the solvent or organic acid is greater on a solid or semi-solid support than the tolerance to the solvent or organic acid exhibited when the selected microorganisms are cultured in a liquid media, and wherein the microorganisms have been selected to exhibit at least 125% tolerance to the solvent or organic acid in comparison to the tolerance of corresponding non-mutagenized microorganisms.

Monday, June 10, 2013

Organic Seed Growers et al. v. Monsanto, 2012-1298

The outcome of the Monsanto case of 10 June 2013 was no justiciable controversy.

Monsanto has made binding assurances that it will
not “take legal action against growers whose crops might
inadvertently contain traces of Monsanto biotech genes
(because, for example, some transgenic seed or pollen
blew onto the grower’s land),” Defs.’ Mem. of Law in Supp.
of Mot. to Dismiss at 5, Organic Seed Growers & Trade
Ass’n v. Monsanto Co., 851 F. Supp. 2d 544 (S.D.N.Y.
2012) (No. 11-CV-2163), ECF No. 20, and appellants have
not alleged any circumstances placing them beyond the
scope of those assurances, we agree that there is no
justiciable case or controversy
. We affirm.


Sunday, June 09, 2013

"60 Minutes" on June 9, 2013

The three stories: doctors being forced to accept patients, Justice Sotomayor, and basilica in Italy.

First, "The Cost of Admission," by Steve Kroft. There was an allusion to a story on HMA i[Health Management Associates] in December 2012. Nancy Alpert was at HMA in Mesquite, Texas. Cliff Cloonan and Scott Rankin were doctors at HMA Hospitals. Cliff Cloonan was at HMA in Carlisle, PA.; MCair. We will admit 20% of patients. Typical for this type of hospital is 10%. Jeff Hamby at Summit Medical Center in northwest Arkansas. Coercion to commit fraud. Arbitrary benchmark. For patients 65 and over, the benchmark was 50%. "Medical misadventures."
Durant, OK. Commercially driven to admit a specific percentage. Money was the chief motivator. Well thought out plan. Pro-MED computer software installed in every emergency room. System ordered a battery of tests that was pre-determined. Scorecard for revenue generation. The minute doctor hit "home" the computer returned with "qualcheck."
John Vollmer: admission policies came from HMA CEO Gary Newsome. HMA Exec VP: Adam Levene. complaints come from ddisgruntled ex-employees. Allegations are exactly wrong. Documents from Durant, OK: shows admission goal of 20%. Paul Meyer, director of compliance with HMA. Former employee of FBI. Meyer says policies based on profit. Dallas Region. Medical Center of Southeastern Oklahoma. Issue of Medicare fraud. Meyer talked with CEO face-to-face. HMA Corporate attorneys edited Meyer's reports. Changed Meyer's write up; labelled as attorney-client-privilege. Levene: we investigate everything that is reported. HMA hired outside law firm to analyze Meyer's reports. Since the Dec. 2012 story by "60 Minutes": Newsome has announced he is leaving HMA. Admissions and profits are down.

HMA is based in Naples, Florida and launched a pre-emptive defense:

\Health Management Associates Inc. organized a last-minute conference call from New York for investors and analysts heading into the weekend, after getting confirmation late Thursday that the segment will air Sunday.

The segment will examine the public company’s admission practices. It will focus on statements by doctors that the hospital chain pressured them into admitting patients “regardless of their medical needs,” according to a tease on the “60 Minutes” website.


Alan Levine, an HMA senior vice president and Florida Group president, said during the conference call Friday that he did an interview with the CBS show in October. He stressed that it’s the patients’ doctors, not hospital executives nor administrators, who make decisions about whether admissions are needed.

“Simply put, administrators cannot and do not admit patients,” said Levine, a former secretary of the Florida Agency for Health Care Administration.


“The headline Sunday is probably going to be worse than the situation actually is,” he said. “You can imagine ‘60 Minutes’ will make it more sensationalized than it needs to be. They are going to be interviewing people who are going to say things that may or may not be true, but if it’s on TV people will think that, ‘hey it’s the truth.’”

HMA managers did a good job during the conference call of sharing data that supports their arguments that they’re above board and not doing anything wrong, he said.

See Naples-based HMA runs defense ahead of '60 Minutes' segment

See also
SEC launches probe into Naples-based HMA

Scott Pelley on Sonia Sotomayor. First airing of story in January 2013. Allusion to Sotomayor beating up enemies of her brother. "Most obstinate person you will ever meet." Some personal need to persevere; to fight the fight.
Appointed to district court by first George Bush. Sotomayor watched Perry Mason on tv. She had type I diabetes. Pack in as much as she could. Scholarship at Princeton; then to law school at Yale. Sotomayor believes there are people who are evil. She married her high school sweetheart. "Sonia from the Bronx." A vibrant, loving, giving community. "My Beloved World." Annual "Dream Big" celebration. There is courage in trying. I gave something to kids. Selena Sotomayor was her mother. In 1972, top of high school class. Got offer from Princeton. Affirmative action. The school nurse questioned "why" Sonia Sotomayor got a possible at Princeton, when the number one and number two students did not. Now, a case from a student at the University of Texas. If you talk about personal experience, some people may think you have made up your mind. "For me, [affirmative action] was a door opener." Selena Sotomayor held Bible at Sonia's swearing in as justice. "Was I capable enough?" "The stubborness to say I'm going to do it, and I'm going to do it well."

Lara Logan on the Sagrada Familia in Barcelona, Spain. Anthony Gaudi. The church has been under construction for over 130 years. This is a recycle of a 60 Minutes story in March 2013.

CBS Sunday Morning on June 9, 2013

Charles Osgood introduced the stories for June 9, 2013.

First, Susan Spencer on use of smartphones,
Second, Richard Schlesinger on Harvey Fierstein and Tony Awards (tonight, on CBS).
Third, Lee Cowan on Kareen abduljabbar
Fourth, John Blacksone on Huey Lewis.
Faith Salie, Seth Doane, Steve Hartman

News. South Africa's Nelson Mandela in hospital. serious but stable. debra potter. obama and chinese. santa monica. john sowarie. jaclyn seabrook. cater evens.
corey booker. belmont. serena williams.
clear in ne.

Some technology experiments are saying we are more disconnected than ever. 91% of American adults own cellphones. MIT technologist Sherry Turkle. Book "Alone Together." Video clip of man on cell phone walking off train platform. Researchers at the University of Maryland. Sergei Golaninsky. Clip from "What's My Line." UCLA's Gary Small. "Your brain on Google." Significant increases in brain activity, especially in frontal lobe. Writer Nick Carr. It's about how to reclaim conversation. Half respondents say they use mobile devices while watching television.

Almanac. June 9, 1934. Donald Duck. The Wise Little Hen released by Walt Disney. Explosive tirades became his trademark. Clarence Nash supplied the voice. Devotion to Daisy. Attentiveness to his three nephews. Elton John in 1980 concert in Central Park. In 1984, 50th birthday. Clarence Nash honored for volunteer work by Ronald Reagen in 1984, but died the next year in 1985.

Faith Salie on refrigerator magnets. Louise Greenfarb. Owning the most magnets. 45,000 in her Nevada home. Photo album. Anthony Gretch analyzes. "Life at home in the twenty-first century." Facebook and Google calendar. "Here is our life on the refrigerator."
Dave Kapell. Magnetic poetry. David Bowie. One day Kapell sneezed. In Notting Hill. Simpsons. Creative clutter of refrigerator door. More than 30% of refrigerators now made of stainless steel, which are not magnetic. Now, you text your note. "the naked shine of steel seduces us.

87% of survey respondents have magnets on refrigerator.

John Blackstone interviews Huey in Bitterroot Valley in Montana. In 1983, "Heart of Rock and Roll." Album Sports.
If this is it. Now, 30th anniversary of Sports. Do you believe in love in 1982. Golf and fly fishing. Now 62, Huey spends time on his ranch in Montana. 500 acres. A chance to de-compress. Band: Clover. 30 years old is old in this business. We were about to make it. Huey Lewis and the American Express. Afraid that American Express would sue over name. Thus "the News." The thrill is being able to play music and have people show up. "We are the world." Met Bob Dylan. Bob Dylan gave him song, which he did not record. The best songs are gifts. The Power of Love written for Back to the Future. Cameo in movie. We pay well. We create a nice atmosphere. We are very lucky and we try to remember that.

Esther Williams died on Thursday in Beverly Hills at age 91. The Unguarded Woman. Clip from "Person to Person," with Edward R. Murrow.

Seth Doane on Sesame Street. Focuses on family of Jackie Puckwa. Mother, from Ghana, placed in jail. Ajay the oldest son took over. Melissa Deano on Sesame Street discussing incarcerated parents. 30 minute documentary. Will be distributed to therapists offices, schools and prisons. 2.3 million Americans are currently behind bars. 1 in every 28 kids have a parent in prison. Alex the muppet is colorful, but color-blind. Sesame Workshop. More than 50% of people behind bars have a child under the age of 18. The use of invisible ink. [if you don't glow (when time to leave), you don't go]

Harvey Fierstein in Mrs. Doubtfire. Now up for 5th Tony Award. Two shows now on Broadway: Newsies and Kinky Boots. Voice like a deep-throated jazz diva. Harvey on Cheers. In Independence Day. "baby sit a cactus." Cyndi Lauper did music for Kinky Boots. First Tonys in 1983: Torch Song Trilogy. Le Cage aux Folles. In 2003, Hairspray. Role in Mrs. Doubtfire. AIDS activist. "tough time getting around Broadway."

Steve Hartman on Martha's Vineyard, Cynthia Riggs. Got a strange envelope in the mail. A coded message. Marine biology lab in San Diego, Howard Adderbury. Substitution code. Age of 90. I've never stopped loving you. They got married last month. A 60 year dream come true.

Lee Cowan does Sunday Profile on Kareem Abdul Jabbar. Statue outside of Staples Center in LA. Worrying about stats is petty. Boycotted 1968 Olympics. Reputation as being aloof. ABC reality show Splash. Rare form of leukemia. Now travels the country. Retired 23 years ago. Majored in English and history. Written a half-dozen books (one related to invention of light bulb). Potato chip invented by George Crumb. On shoulders of giants. 138th Street in Harlem. Noble powerful servant. Carmansville Playground. Blood game. Roger Murdoch in Airplane. Trophy for playing little league baseball. Threw ball 95 miles per hour.

Week ahead. Mon.: George Zimmerman Tues.: auction of first edition of Great Gatsby. Wed. Whitey Bolger. Thurs. World Horror convention Fri. IRS shuts down for day Sat. Queen Elizabeth's official birthday.

Thomas Wells Corper born.

Next week: backup singers.

Moment of nature. Spiriva HandiHaler. Pinenut Mountains of western Nevada, where wild horses roam