Thursday, August 29, 2013

CAFC discusses clarification of an injunction order

from within Aevoe v. AE Tech :

AE Tech Co., Ltd. (“AE Tech”), S&F Corporation, and
GreatShield, Inc.1 appeal the district court’s preliminary
injunction granted in favor of Aevoe Corporation (“Aevoe”)
barring particular products from the market. The district
court originally granted the injunction in January 2012.
AE Tech did not appeal from that order. In May 2012, the
district court concluded that the Appellants had violated
the injunction with an alleged redesign. At that time, the
court altered certain language in the injunction. Appellants
now argue that the court modified the injunction in
May 2012 and that their appeal from that modification is
timely. Because the district court merely clarified the
scope of the original injunction in its May 2012 order, we
find there was no modification that substantially changed
the legal relationship between the parties. Based on this
finding, we dismiss this appeal for lack of jurisdiction.


As such, the court analyzed whether it had committed
clear error in its application of the criteria for determining
whether to grant a preliminary injunction, i.e., likelihood
of success on the merits, irreparable injury, balance
of hardships, and the public interest.
See Aevoe Corp.,
ECF No. 43 (D. Nev. March 7, 2012). The district court
noted that AE Tech had waived the right to assert invalidity
defenses to Aevoe’s request for a preliminary injunction
by not asserting them when given a full and fair
opportunity to do so, and that there was no intervening
change in controlling law. The court then concluded that
it had not committed clear error, denied AE Tech’s motion
to reconsider, and refused to vacate the injunction. Id.
The court, however, noted that Aevoe did not oppose AE
Tech’s request to remove the “counterfeit” and “colorable
imitation” language from the injunction to clarify that the
injunction is no broader than permitted under 35 U.S.C.
§ 271. Id.


After examining the redesigned AE Tech product, the
district court found that the added channels were a nonfunctional
and trivial attempt
to design around the ’942
patent. See Aevoe Corp., ECF No. 65 (D. Nev. May 2,
2012). The court found that the redesigned AE Tech
screen protector was not more than colorably different
than the enjoined products. Id. Accordingly, the court
held all defendants in contempt and concluded that
sanctions against AE Tech were appropriate.3 Id. The
court also changed the language of the preliminary injunction
by adding back the “colorable imitation” phrase.
See Aevoe Corp., ECF No. 66 (D. Nev. May 2, 2012). The
court also explicitly named the S&F Defendants as enjoined
parties. Id. The injunction was altered as follows
(words in brackets were added by the district court):


This court applies its “own law and not the law of the
regional circuit to issues concerning our jurisdiction.”
Ultra-Precision Mfg. Ltd. v. Ford Motor Co., 338
F.3d 1353, 1356 (Fed. Cir. 2003); see also Int’l Elec. Tech.
Corp. v. Hughes Aircraft Co., 476 F.3d 1329, 1330 (Fed.
Cir. 2007) (“We apply our own law, rather than regional
circuit law, to questions relating to our own appellate
jurisdiction.”). The grant, denial, or modification of a
preliminary injunction, however, is not unique to patent
law, so this court applies the law of the regional circuit
when reviewing and interpreting such a decision. See
Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1367 (Fed.
Cir. 2008) (citing Mikohn Gaming Corp. v. Acres Gaming,
Inc., 164 F.3d 891, 894 (Fed. Cir. 1998)). Accordingly, we
apply the law of the regional circuit to determine whether
an injunction has been modified. If the injunction has
been modified under regional circuit law, we may then
exercise appellate jurisdiction under 28 U.S.C. §§ 1292(c)
and (a). See Entegris Inc., 490 F.3d at 1344–45.


As this court held in TiVo Inc. v. Echostar Corp., 646
F.3d 869 (Fed. Cir. 2011) (en banc), when determining
whether a redesigned product falls under the strictures of
an existing injunction, the primary question is whether
the “new” product is “colorably different” from the old
product. 646 F.3d at 882. In other words, whether a
redesigned product is “colorably different” from, or a
“colorable imitation” of, the previously enjoined products
is directly relevant to the contempt standard in patent
law. While AE Tech convinced the district court to excise
that language, along with the “counterfeit” language, the
legal relationship between the parties did not change.
Put simply, whether “colorable imitations” were explicitly
mentioned in the injunction language or not, such imitations
fell within its scope; the district court was obligated
to apply the colorable differences test in the contempt
proceeding. See id. at 882–83. Thus, the legal relationship
between the parties was in no way altered by the
court’s changes to the injunction language. Neither the
excision and addition of the “colorable imitation” language
nor the explicit description of the actual redesign amount
to a modification of the preliminary injunction upon which
this court could predicate jurisdiction.

Wednesday, August 28, 2013

Ethanol as automobile fuel: the new is actually old

A post titled Biofuel Industry Responds To Attack Ad includes the text:

[ POET CEO Jeff ] Lautt says that the biofuels industry now has ten percent of the market and that number could reach as high as 20. That's why, he says, the oil industry launched the first ad.

“It's a bit of a David/Goliath. We are the first alternative to their product in really the history of this country, so we're going to defend that," Lautt said.

Wikipedia notes of Ford's Model T:

The engine was capable of running on gasoline, kerosene, or ethanol,[14][15] although the decreasing cost of gasoline and the later introduction of Prohibition made ethanol an impractical fuel for most users.

Separately, National Geographic noted:

From the original design, the Model T ran on ethanol as well as petroleum. Ford believed ethanol would become the most commonly used fuel source, and as early as 1925 envisioned an America that would grow its own fuel, making it out of everything from potatoes to sawdust. With more people willing to consume agricultural goods, he believed, farmers' produce would have more market value. Forces were beyond his control, however, and the economic crisis affecting farming only increased with the onset of the Great Depression.

In 1927, in order to compete with General Motors, a new up-and-coming car company, Ford issued his first new car model since the Model T: the Model A. After that new cars rolled out of Ford Motor Company's doors on a more regular basis, and with them came the phasing out of the classic Model T–and Ford's vision for ethanol use in the near future.

Thus, Lautt's statement is not entirely accurate.

Separately, recall an earlier post on IPBiz, Henry Ford and ethanol including the text

Within US Patent 8,487,149 [Gevo], one finds the text:

Biofuels are renewable transportation fuels which have a long history ranging back to the beginning on the 20th century. As early as 1900, Rudolf Diesel demonstrated an engine running on peanut oil. Soon thereafter, Henry Ford demonstrated his Model T running on ethanol derived from corn. However, petroleum-derived fuels displaced biofuels in the 1930s and 1940s due to increased supply and efficiency at a lower cost.

Fuels from petroleum had displaced biofuels long before the 1930s and 1940s.

Sunday, August 25, 2013

CBS Sunday Morning on August 25, 2013

Charles Osgood, with no bow tie and a red shirt, introduced the stories for August 25, 2013. The design show starts in Miami Beach on "the new world center." What's new is old and what's old is new, in the cover story by Tracy Smith. Second, Susan Spencer on the psychology of design (color). Third, Lee Cowan interviews Jennifer Lopez. Fourth, design of golf courses, by Bill Geist. Barnacle Bill's miniature golf course. Martha Teichner, Seth Doane, Erin Moriarty, Richard Schlesinger. [The entire show seems to be recycled.]

Don Daylor in the news room. Massive wildfire in Yosemite. In DC, Obama on Syria. 50th anniverssry of "I have a dream" speech. Julie Harris died. Forecast: heavy rains in west. Hot in midwest.

Susan Spencer on the importance of color in design. Toby Israel. Tree in kitchen. Mark Jerrold, psychoanalyst. Finding things that we there all along, but you didn't notice them. Benjamin Moore: sweet innocence. Drunk tank pink.
Painting prisons with drunk tank pink. University of Iowa, painted visitor's area pink.

The moment of nature was Corkscrew Swamp Sanctuary, near Bonita Springs, FL, with owls and alligators. Note that the earlier "By Design" episode on May 19 had a different Moment of Nature.

Saturday, August 24, 2013

The meaning of "i.e." discussed by CAFC in SkinMedica

SkinMedica v Histogen

SkinMedica, Inc. (“SkinMedica”) appeals from the decision of the United States District Court for the Southern District of California granting Histogen, Inc., Histogen Aesthetics, and Gail Naughton (collectively “Histogen”) summary judgment of noninfringement of the asserted claims of U.S. Patent Nos. 6,372,494 (’494 patent) and 7,118,746 (’746 patent) after construing a phrase common to both patents. Because we find no legal error in the district court’s construction, we affirm the grant of summary judgment.

Of background

In May 2011, the United States District Court for the Southern District of California construed the phrase “culturing . . . cells in three-dimensions” as “growing . . . cells in three dimensions (excluding growing in monolay- ers or on microcarrier beads).”5 J.A. 49. The court reasoned that “the inventors acted as their own lexicographers, defining ‘culturing . . . cells in three- dimensions’ away from its ordinary meaning,” by consist- ently distinguishing beads from three-dimensional cultures in the specification. J.A. 21. That conclusion was evident from the written description, according to the court, because the inventors used the disjunctive “or” and the disjunctive phrase “as opposed to” as coordinating conjunctions when they listed monolayer, beads, and three-dimensions as the methods used in the invention to culture cells. Id. The court noted that there was only one other reference to culturing with beads in the specifica- tion: a statement by the inventors that the conditioned medium created from bead cultures was “conventional” and “usually discarded.” Id. The court also concluded that the patentees “explicitly defined beads as a two- dimensional culture method” by using the phrase “beads (i.e. two-dimensions).” J.A. 22.

At district court:

Following claim construction, Histogen moved for summary judgment on the infringement claims. Based on its construction of the phrase “culturing . . . cells in three- dimensions,” the district court granted Histogen’s motion in November 2011. In its summary judgment opinion, the court first dismissed an argument by SkinMedica in opposition to the summary judgment motion that the phrase “excluding grown . . . on microcarrier beads” only excluded “two-dimensional growth on beads,” not three- dimensional growth “using” beads. J.A. 53 (emphases added). The court clarified that its “use of the preposition ‘on’ as opposed to the preposition ‘between’ or the gerund ‘using’” was “nothing more than the Court’s dictional preference” and that its definition of “culturing cells in three-dimensions” would also exclude three-dimensional growth using beads. J.A. 52. After that explanation, the court determined there was no genuine dispute that Histogen’s culturing method begins as “one- or two- dimensional growth” on beads that then “evolves into a three-dimensional growth phase in which the cells crawl off the beads.” J.A. 54. The court held that summary judgment of noninfringement was appropriate because “Histogen’s cell growth process, which uses beads, cannot infringe the disputed claim element as construed.” J.A. 56.

The issue before the CAFC was simple:

SkinMedica raises a single point of error on appeal. It argues that the district court erroneously excluded beads from the definition of “culturing . . . cells in three- dimensions.”


We find no basis to disturb the district court’s construction of the phrase “culturing . . . cells in three- dimensions.” The specification clearly proves that the patentees defined the three-dimensional culturing re- quired by the claims to exclude culturing with beads, because the patent expressly confines culturing with beads to two-dimensional culturing. Whether viewed as a matter of disclaimer or of lexicography, the result is the same: the kind of three-dimensional culturing protected by the patent excludes use of beads. Because the accused method employs beads, it cannot infringe the patents in suit. We therefore affirm the district court’s grant of summary judgment of noninfringement to Histogen.
During claim construction, terms are not always af- forded their ordinary meaning. In this case, the ordinary meaning of “culturing . . . cells in three-dimensions” would reach the use of beads. The question is whether the patentees here instead defined “culturing . . . cells in three-dimensions” to exclude the use of beads. If the specification reveals “a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Id. at 1316; see Helmsderfer v. Bobrick Wash- room Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (explaining that inventors’ definition of a claim term controls when they “clearly express an intent” to redefine a term used in the claims). And if the specification re- veals “an intentional disclaimer, or disavowal, of claim scope by the inventor,” the scope of the claim, “as ex- pressed in the specification, is regarded as dispositive.” Phillips, 415 F.3d at 1316 (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343– 44 (Fed. Cir. 2001)).
Disclaiming the ordinary meaning of a claim term— and thus, in effect, redefining it—can be affected through “repeated and definitive remarks in the written descrip- tion.” Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (citing Watts v. XL Sys., 232 F.3d 877, 882 (Fed. Cir. 2000)); see SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1270 (Fed. Cir. 2007) (finding disclaimer of “pulling force” where “the written description repeatedly emphasized that the motor of the patented invention applied a pushing force”); SciMed, 242 F.3d at 1344 (“[T]he written description can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be con- strued, even if the guidance is not provided in explicit definitional format.”);
In a specification, a patentee’s “use of ‘i.e.’ signals an intent to define the word to which it refers.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009); see also Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1330 (Fed. Cir. 2003) (holding that a patentee “explicitly de- fined” a term by using “i.e.” followed by an explanatory phrase). The inventors also used the phrase “i.e.” else- where in the specification (twelve other times in total) to introduce an explanation or definition of a word or phrase. See ’494 patent col. 1 l. 7; col. 7 l. 44; col. 8 l. 65; col. 10 l. 1;col.15l.16;col.18l.52;col.19l.20;col.20l.16; col. 22l.40;col.26l.15;col.27l.36;col.30l.58. Basedon the plain meaning of the term “i.e.” and the patentees’ consistent use of it throughout the specification, there is no reason to believe that the inventors did not intend for the abbreviation to signal an intent to define the word it followed when they stated “[t]he cells are cultured in . . .beads (i.e., two-dimensions) or, preferably, in three- dimensions.”
SkinMedica, however, argues that the inventors did not explicitly define beads as a two-dimensional culture method. It asserts that our cases indicate that the “mere use of ‘i.e.’ does not act as an express definition or limita- tion” and “must be read in the context of the patent as a whole.” Appellant’s Br. 41. Read in context, SkinMedica believes that the phrase “beads (i.e., two-dimensions)” merely represents the inventors’ recognition of the ability to use beads in both two- and three-dimensional cultures.(...)
In addition, the import we assign to the term “i.e.” here aligns with our case law. We have held—as dis- cussed above—that a “specification’s use of ‘i.e.’ signals an intent to define the word to which it refers.” Edwards Lifesciences, 582 F.3d at 1334. As SkinMedica correctly points out, such use of “i.e.” is not absolute. It identifies several cases in which we did not give “i.e.” its plain meaning and import. But the reasoning of those cases does not apply here. (...)
Thus, we give the term “i.e.” here its plain meaning— that it “signals an intent to define the word to which it refers.” Edwards Lifesciences, 582 F.3d at 1334. That reading comports with the inventors’ other uses of the abbreviation in the specification and with each and every other reference to culturing with beads. We therefore conclude that the patentees expressly defined culturing in beads as a two-dimensional culturing method. Because it is defined as two-dimensional, culturing in beads cannot be the three-dimensional culturing required by the claims.

Chief Judge Rader dissented:

There is a “heavy presumption” in favor of the ordinary meaning of claim language. Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). In my judgment, the patentees did not disavow the ordinary meaning of “culturing...cells in three-dimensions” to exclude the use of beads. Therefore, I respectfully dissent.

Of conclusory affirmations:

The court recognizes this, but refuses to give Dr. Salomon’s testimony any weight because it “consists exclu- sively of three conclusory affirmations elicited by leading questions posed by SkinMedica’s counsel. His testimony lacks any convincing detail explaining why or how cells in bead cultures exhibit the characteristics of whole tissue in vivo he claims they possess.” Majority Op. at 39–40. To my eyes, Dr. Salomon’s testimony, when viewed as a whole, deserves great weight and respect.(....)

As to the leading nature of the questions posed by SkinMedica’s counsel, Histogen did not object. Any defect as to the form of those questions has been waived. Fed. R. Civ. P. 32(d)(3)(B).

Of the use of i.e.,

The abbreviation “i.e.” is commonly used as a qualifi- er, meaning “that is to say” or “in other words.” That is consistent with how the patentees used “i.e.” in other parts of the specification. Contra Majority Op. at 22; see, e.g., ’494 patent col. 15 ll. 15–19. It is reasonable to view the “i.e.” in this case as merely clarifying that the refer- ence to beads is in the context of two-dimensions. The ambiguity is readily apparent.


In sum, to my eyes, the four references to beads relied on by this court are ambiguous. They do not meet the exacting standard imposed by this court’s precedent. Because I would find that the patentees did not unmis- takably and unambiguously disavow the ordinary mean- ing of “culturing . . . cells in three-dimensions” to exclude the use of beads, I would reverse the district court’s grant of summary judgment.

CAFC reverses Judge Koh on sealing issue in Apple v. Samsung

from Apple v. Samsung

In these consolidated appeals, Apple Inc. and Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications Ameri- ca, LLC (collectively “Samsung”) challenge orders of the U.S. District Court for the Northern District of California denying requests to seal various confidential exhibits attached to pre-trial and post-trial motions. See Apple, Inc. v. Samsung Electronics Co., No. 11-CV-01846, 2012 WL 3283478 (N.D. Cal. Aug. 9, 2012) (“August Order”); Apple, Inc. v. Samsung Electronics Co., No. 11-CV-01846, 2012 WL 5988570 (N.D. Cal. Nov. 29, 2012) (“November Order”) (collectively “Unsealing Orders”). Because the district court abused its discretion in refusing to seal the confidential information at issue in the appeals, we reverse and remand.

Background of the problem

The trial drew an extraordinary amount of attention from the public and the media, leading some to dub it “The Patent Trial of the Century.”1 Consistent with the extraordinary level of interest in the case, the press was given extraordinary access to the judicial proceedings. Unlike many patent trials, which often contain mountains of sealed exhibits and occasionally have closed courtroom proceedings, the district court explained to the parties before the trial that “the whole trial is going to be open.” J.A. 3. Consequently, the district court agreed to seal only a small number of trial exhibits. And shortly after the close of business each day, the parties, by order of the court, provided the press with electronic copies of every exhibit used at trial that day. Similarly, most exhibits attached to pre-trial and post-trial motions were ordered unsealed.

The unusual posture:

These appeals are unique in that neither the appellant, Apple, nor the cross-appellant, Samsung, opposes the other party’s requested relief. In addition, Reuters, which intervened in the proceedings below, chose not to participate in the appeals.

The First Amendment Coalition (“Coalition”), whose members include print and broadcast media organizations such as the Los Angeles Times, Associated Press, and, moved to intervene in the appeals so that it could represent its members’ interests and provide view- points in favor of the Unsealing Orders. This court denied the Coalition’s motion to intervene but granted leave to file a brief amicus curiae.

The collateral order doctrine:

Here, the Unsealing Orders are interlocutory orders, which ordinarily would not be immediately appealable. Apple and Samsung assert, however, that we have jurisdiction under the collateral order doctrine. See Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541 (1949).

The collateral order doctrine is a “narrow exception” to the final judgment rule that permits the appeal of “trial court orders affecting rights that will be irretrievably lost in the absence of an immediate appeal.” Richardson- Merrell, Inc. v. Koller, 472 U.S. 424, 430-31 (1985). “To fall within the exception, an order must at a minimum satisfy three conditions: It must [1] ‘conclusively deter- mine the disputed question,’ [2] ‘resolve an important issue completely separate from the merits of the action,’ and [3] ‘be effectively unreviewable on appeal from a final judgment.’” Id. at 431 (quoting Coopers & Lybrand v. Livesay, 437 U.S. 463, 468 (1978)).
We agree with Apple and Samsung that these three conditions are satisfied.

Access to judicial records:

The broad issue before us is whether the district court abused its discretion in ordering the unsealing of the documents Apple and Samsung seek to seal. We begin by reviewing “the common law right of access to judicial records.” Kamakana v. City & Cnty. of Honolulu, 447 F.3d 1172, 1178 (9th Cir. 2006). (...)

“Historically, courts have recognized a ‘general right to inspect and copy public records and documents, includ- ing judicial records and documents.’” Id. (quoting Nixon v. Warner Commc’ns, Inc., 435 U.S. 589, 597 (1978)). “This right extends to pretrial documents filed in civil cases.” Id.
Although the common law right of access is not abso- lute, the Ninth Circuit “start[s] with a strong presump- tion in favor of access to court records.” Foltz v. State Farm Mut. Auto. Ins. Co., 331 F.3d 1122, 1135 (9th Cir. 2003). “A party seeking to seal judicial records can over- come the strong presumption of access by providing ‘sufficiently compelling reasons’ that override the public policies favoring disclosure.” In re Midland, 686 F.3d at 1119 (quoting Foltz, 331 F.3d at 1135). “That is, the party must articulate compelling reasons supported by specific factual findings that outweigh the general history of access and the public policies favoring disclosure, such as the public interest in understanding the judicial process.” Kamakana, 447 F.3d at 1178-79 (alterations omitted) (internal quotation marks omitted). (...)

One factor that weighs in favor of sealing documents is when the release of the documents will cause competi- tive harm to a business. For example, the Supreme Court explained in Nixon that “the common-law right of inspec- tion has bowed before the power of a court to insure that its records” do not “serve as . . . sources of business infor- mation that might harm a litigant’s competitive stand- ing.” Nixon, 435 U.S. at 598. (...)

see also Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1162 (9th Cir. 2011) (“The publica- tion of materials that could result in infringement upon trade secrets has long been considered a factor that would overcome this strong presumption.”). The Ninth Circuit has adopted the Restatement’s definition of “trade secret.” Clark v. Bunker, 453 F.2d 1006, 1009 (9th Cir. 1972); see also In re Elec. Arts, Inc., 298 F. App’x 568, 569-70 (9th Cir. 2008) (nonprecedential). According to the Restate- ment, “[a] trade secret may consist of any formula, pat- tern, device or compilation of information which is used in one’s business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it.” Restatement (First) of Torts § 757, cmt. b. Con- sequently, in In re Electronic Arts, for example, the Ninth Circuit held that a district court had abused its discretion in refusing to seal “pricing terms, royalty rates, and guaranteed minimum payment terms” found in a license agreement because such information “plainly falls within the definition of ‘trade secrets.’” 298 F. App’x at 569

Why to disclose the information?

The First Amendment Coalition responds that Apple and Samsung have failed to establish that these docu- ments contain trade secrets because, for the reasons stated by the district court, the parties have not shown that they will suffer competitive harm from public disclo- sure. On the other side of the scale, the Coalition asserts that the public has a strong interest in the financial information in question. In addition to the reasons relied on by the district court, the Coalition cites declarations submitted to the district court by Reuters and the Elec- tronic Frontier Foundation (“EFF”). For example, a Reuters representative explained that major media out- lets were closely following “the case’s strategic impact on the companies, including financial risks for shareholders.” Coalition Br. 22. And an EFF representative explained that the financial data surrounding the “development, sale, and production” of smartphones and tablets “provide powerful tools to many groups, including EFF, who work diligently to ensure those consumer’s interests are taken into account in manufacturing and pricing decisions.” Id.

As to the district court

In particular, it seems clear that if Apple’s and Samsung’s suppliers have access to their profit, cost, and margin data, it could give the suppliers an advantage in contract negotiations, which they could use to extract price increases for components. See J.A. 3630 ¶ 8. This would put Apple and Samsung at a com- petitive disadvantage compared to their current position. Significantly, although the district court recognized this part of the parties’ argument, it failed to discuss the argument in its analysis.

Note footnote 4

Even if we were to conclude definitively that Ap- ple’s and Samsung’s confidential financial information qualified as trade secrets, it would not necessarily end the analysis. We do not read Ninth Circuit precedent as creating a blanket rule that the “compelling reasons” standard is necessarily met whenever a document con- tains a trade secret. Rather, the court still must weigh the interests of the party who wishes to seal the trade secret against the interests of the public. See Kamakana, 447 F.3d at 1179 (explaining that “[i]n general,” the release of trade secrets provides “‘compelling reasons’ sufficient to outweigh the public interest in disclosure and justify sealing court records” (emphases added)).


We recognize the importance of protecting the public’s interest in judicial proceedings and of facilitating its understanding of those proceedings. That interest, how- ever, does not extend to mere curiosity about the parties’ confidential information where that information is not central to a decision on the merits. While protecting the public’s interest in access to the courts, we must remain mindful of the parties’ right to access those same courts upon terms which will not unduly harm their competitive interest. For the reasons set forth above, we hold that the district court abused its discretion in refusing to seal the particular documents that Apple and Samsung challenge in these appeals.

Thursday, August 22, 2013

Forbes on Samsung and design patents

Wednesday, August 21, 2013

Micron loses issue in re-exam 95/001,026 & 95/001,128

from within Micron v. Rambus

See In re Lister, 583 F.3d
1307, 1316-1317 (Fed. Cir. 2009) (copyright registration date insufficient
evidence of public accessibility. “[I]n this case the government has not
identified any evidence of the general practice of the Copyright Office,
Westlaw, or Dialog with regard to database updates.”)

Added element in prior art --> no anticipation

from within Ex parte Trosser

However, as Appellants have asserted, Wu also required the inclusion
of a first fluidizer of aluminum hydroxide gel, which the Examiner has not
established was within the bounds of the claim limitations. Therefore, we
agree with Appellants that the Examiner has not established that Wu
disclosed the claimed invention. See Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987).

Appellant wins on enablement in Ex parte Adams

from within Ex parte Adams

Reddy2 which describes “the cloning of a delta 6-desaturase from the cyanobacteria Synechocystis that is responsible for the conversion of linoleic acid (18:2) to gamma-linolenic acid (18:3 gamma) (id.). In addition, Appellants explain that “[a] delta 12-desaturase gene linked to the delta 6-desaturase gene was also identified [in Reddy] and expression of the delta 6- and delta 12-desaturases in Synechococcus deficient in both desaturases carried out to result in the production of linoleic acid and gamma-linolenic acid” (id.).

The footnote 2

AS Reddy et al. (Reddy), Isolation of a delta 6-desaturase gene from the cyanobacterium Synechocystis sp. Strain PCC 6803 by gain-of-function expression in anabaena sp. Strain PCC7120, 22(2) Plant Mol. Biol. 293-300 (May 1993) (PubMed Abstract). Attached to Appellants’ App. Br. as Exhibit C.

As to enablement

To satisfy the enablement requirement of 35 U.S.C. § 112, first paragraph, a patent application must adequately disclose the claimed invention so as to enable a person skilled in the art to practice the invention at the time the application was filed without undue experimentation. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371-72 (Fed. Cir. 1999). We note, however, that “nothing more than objective enablement” is required, and therefore it is irrelevant whether this teaching is provided through broad terminology or “illustrative examples.” In re Marzocchi, 439 F.2d 220, 223, (CCPA 1971). As set forth in In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993):

Appellants win in Ex parte SPORMANN


A claim at issue

13. A method of expressing a functional oxygen-sensitive protein
under ambient oxic conditions, the method comprising:

introducing into a diazotrophic filamentous cyanobacteria, of the
genus Nostoc or Anabaena, polynucleotide sequences encoding a
heterologous oxygen-sensitive protein operably linked to a promoter
selectively active in microoxic cells;
culturing said diazotrophic cyanobacteria under conditions that induce
microoxic cell formation;
selectively expressing said oxygen-sensitive protein in said microoxic
wherein said oxygen-sensitive protein is expressed as a functional
protein in said microoxic cells.

A relevant reference: James W. Golden and Ho-Sung Yoon, Heterocyst development in
Anabaena, 6 CURRENT OPINION IN MICROBIOLOGY 557-563 (2003):

Golden discloses that “[m]any filamentous nitrogen-fixing
cyanobacteria protect nitrogenase from oxygen in differentiated cells called
heterocysts,” which are “specialized cells that create a microoxic
environment for nitrogen fixation” (FF 7). However, Golden does not
disclose using this microoxic environment to express a heterologous oxygensensitive
protein. Thus, we agree with Appellants that Golden does not
overcome the deficiencies of Szalay.

CHALMER overcomes rejection over Bayless reference

from Ex parte Chalmer

We agree with the Appellants that the Examiner’s rejections are not
well founded.

Bayless describes biologically-based gas cleaning systems for
reducing emissions from fossil burning units (i.e., removing carbon containing
compounds from a flowing gas stream). Col. 1, ll. 26-29; col. 2,
ll. 39-41. In particular, Bayless teaches the use of a membrane having
photosynthetic microbes, such as algae and cyanobacteria, deposited thereon
as the filtration media.
Col. 2, ll. 41-43. Bayless states that the membrane
should be an inorganic material, such as plastic, to avoid problems with
fungi growth. Furthermore, Bayless teaches that the membrane “must be
composed of a material that suits the specific microbe used, being non-toxic
to the microbe and supporting adhesion,” that “[i]t is essential that microbes
supplied to the growth surface . . . be able to grow in the attached state,” and
“[t]he growth surface . . . needs to provide reliable structural integrity when
exposed to the flue gas environment.” Col. 4, ll. 12-22.

KSR is cited, in favor of the appellant,

Thus, while Budahazi does disclose woven fabrics as a filter, it is in
the context of a filter suitable for purifying plasmid DNA. The Examiner,
however, has not directed us to sufficient evidence
that Budahazi’s woven
fabric filter would be suitable in a flue gas environment and possess the
characteristics explicitly required by Bayless. Absent additional evidence,
the Examiner’s analysis fails. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (“a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.”).


The Examiner’s argument based on an “obvious to try” rationale, page
4 of the Answer, is misplaced because Bayless merely provides general
guidance as to the selection criteria for the filter media, rather than a finite
number of identified, predictable solutions. KSR, 550 U.S. at 421. “[W]here
the prior art, at best, ‘[gives] only general guidance as to the particular form
of the claimed invention or how to achieve it,’ relying on an ‘obvious-to-try’
theory to support an obviousness finding is ‘impermissible.’” In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1073 (Fed. Cir. 2012) (internal citations omitted).

Appellant loses on obviousness in Ex parte Abraham

Ex parte Abraham

Keller is cited

Also, we find Appellant presents arguments with respect to the
individual references (Br. 5-7) and fails to appreciate the collective teachings
of the cited combination of references (Aggarwal ’819 and Krajec) as a
whole. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Merck & Co., 800 F.2d 1091, 1097(Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)).

Ex parte Nehls is cited

informational content of the data thus represents non-functional descriptive
material, which “does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003),
aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887-90 (discussing non-functional descriptive material).

Appellant wins reversal in Ex parte ZURMUEHL

In Ex parte ZURMUEHL, appellant won on 112 P 1, 102, and 103.

Of 112, as to an issue of support for the text "current date,"

Thus, without discounting
the Examiner’s inference that advanced updates are also possible (i.e., based
on a future date), we find the Specification “convey[s] with reasonable
clarity to those skilled in the art that . . . [Appellant] was in possession” of
the claimed updating based on the current date. Hyatt v. Dudas, 492 F.3d
1365, 1370 (Fed. Cir. 2007) (explaining the written description requirement)
(quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64(Fed. Cir.

For the foregoing reasons, the § 112 rejection of claims 1, 5, 11, 15,
and 21-24 is not sustained.

As to 102

Appellant responds that “the cited addition or removal
of a stock value results in a change in the content of a web part in which
values of the selected stocks are displayed, and not to addition or deletion of
an element, i.e., a web part[.]” Reply Br., pp. 4 and 5.
Appellant’s argument is persuasive. The Examiner has established, at
best, a contemporaneous inclusion (user selection) and date-sensitive
updating (when selected) of Croney’s stock quotes. The at-issue subject
matter of claims 1, 11, and 21 requires, on the other hand, a date-sensitive
inclusion (“to include”) of elements/components. Thus, with particular
respect to Croney’s cited teachings, the issue is whether the addition or
removal (i.e., inclusion) of stock quotes is based on the current date. For
example, removal of the “msft” stock quote (i.e., “msft” symbol) from
Croney’s stock tracker would, if removed in response to a date change, teach
the at-issue subject matter. No such teaching has been presented.
For the foregoing reasons, the § 102 rejection of claims 1-21 over
Croney is not sustained.

As to 103

Claims 22-24 respectively depend from claims 1, 11, and 21,
addressed above. In rejecting claims 22-24 as obvious over Croney and
Vasic, the Examiner relies on Croney as teaching the base claims’ datesensitive
“updating [of] the selected elements to include in the interface.”
As explained supra, this reliance on Croney not well founded.
Accordingly, the § 103 rejection of claims 22-24 over Croney and
Vasic is not sustained

Tuesday, August 20, 2013

University of Utah prevails at CAFC in a case of opposing state universities


Of background, the initial action involved an attempt by the
University of Utah to correct inventorship on the “Tuschl Patents”.
Because the action was against the University of Massachusetts,
a legal question involved jurisdiction in an action between two state entities. The CAFC sided with the University of Utah:

UMass argued that, because the dispute was between
two States, the Supreme Court had exclusive original
jurisdiction. In response, UUtah amended its complaint,
substituting four UMass officials (the “Named Officials”)
in place of UMass. The Named Officials then moved to
dismiss the case, arguing that UUtah’s claims were
barred by sovereign immunity and that UUtah had failed
to join UMass
, which they claimed was an indispensable
party. The district court denied the motion, and the
defendants appealed.

This case requires us to examine the issues of sovereign
immunity and federal jurisdiction that arise when
state universities are involved on both sides of an inventorship
dispute. For the reasons that follow, we affirm.

Of the people involved:

Dr. Brenda Bass is a professor of biochemistry at
UUtah. Her research is focused on RNA biochemistry. In
particular, Dr. Bass studies RNA interference (“RNAi”), a
phenomenon in which RNA plays a role in silencing the
expression of individual genes. Her employment agreement
assigns to UUtah the rights to all inventions and
discoveries she makes as a result of her employment or
research, including the rights to any patents arising from
her work.

Dr. Thomas Tuschl, a researcher employed by UMass,
is also active in RNAi research. In the course of their
work, Drs. Tuschl and Bass attended professional conferences
at which they both presented papers on RNA and
RNAi issues. Both researchers were familiar with each
other’s work.
Dr. Tuschl eventually applied for and was
granted the Tuschl Patents, which Dr. Bass claims “disclosed
and claimed [her] conception.” Dr. Bass is not a
named inventor on either of the Tuschl Patents.

The underlying dispute is about inventorship:

UUtah, as assignee of Dr. Bass’s rights, believes that
Dr. Bass is the sole or a joint inventor of the Tuschl
Patents. UUtah asked Assignees to cooperate in petitioning
the United States Patent and Trademark Office
(“USPTO”) to correct the inventorship of the Tuschl
Patents by adding Dr. Bass as an inventor. Defendants,
who do not believe that Dr. Bass is an inventor of the
Tuschl patents, declined that request. As a result, UUtah
initiated this suit in district court, requesting the correction
of the inventorship of the Tuschl Patents under 35
U.S.C. § 256 and asserting various state law claims
against the non-State defendants.

Of the sovereign immunity issue

State universities frequently obtain assignments on
patents invented by their faculties and staff, just as
private corporations often obtain assignments on patents
invented by their employees. Unlike a private corporate
assignee or an individual inventor, a state university
typically enjoys sovereign immunity. As a result, a state
university generally may not be sued for infringement,
nor may it be forced to defend against an action for declaratory
judgment of invalidity or non-infringement. See
A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213, 1220
(Fed. Cir. 2010). But States do not enjoy sovereign immunity
from suits brought by other States. Texas v. New
Mexico, 482 U.S. 124, 130 (1984). Similarly, States are
free to sue citizens of other States without raising sovereign
immunity issues.

One issue in the case:

The district court, relying on Cahill, concluded that a
State is generally free to “choose between naming a State
as the defendant and suing in the Supreme Court or
naming another proper defendant and suing in a district
court.” Cahill, 217 F.3d at 98. Defendants nevertheless
contend that this case falls within the exclusive original
jurisdiction of the Supreme Court. Defendants assert that
because UUtah seeks the property of UMass, UMass is
the real party in interest, and that UUtah may not “plead
around” the Supreme Court’s exclusive original jurisdiction
over disputes between States.
Thus, we must determine if UMass is a real party in
interest for purposes of the Supreme Court’s exclusive
jurisdiction under § 1251(a). The First Circuit has not yet
addressed this issue. As noted, the district court based its
decision on Cahill, a Second Circuit case that squarely
addressed whether § 1251(a) deprives the district courts
of jurisdiction over actions brought by one State against
officials of another.

The CAFC noted:

We hold that a State has no core sovereign interest in
The inventors of a patent are “the individual
or, if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention.”
35 U.S.C. § 100(f). It is axiomatic that inventors
are the individuals that conceive of the invention:
Conception is the touchstone of inventorship,
the completion of the mental part of invention. It
is the formation in the mind of the inventor, of a
definite and permanent idea of the complete and
operative invention, as it is hereafter to be applied
in practice. Conception is complete only when the
idea is so clearly defined in the inventor’s mind
that only ordinary skill would be necessary to reduce
the invention to practice, without extensive
research or experimentation. [Conception] is a
mental act . . . .
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223,
1227-28 (Fed. Cir. 1994)

To perform this mental act, inventors
must be natural persons and cannot be corporations or
sovereigns. And because States cannot be inventors, it
follows that inventorship is not a core sovereign interest
of the States.

Of the dissent

UMass and the dissent confuse the issue by repeatedly
framing the dispute as one of ownership, not inventorship.
Although “[q]uestions of patent ownership are
distinct from questions of inventorship,” they are closely
related: “[E]ach co-inventor presumptively owns a pro
rata undivided interest in the entire patent, no matter
what their respective contributions.” Ethicon, Inc. v. U.S.
Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998)
(footnote omitted). But State ownership of patent rights
is not akin to State ownership of water rights, natural
and important concerns of federalism” and rise to the
level of core sovereign interests. Cahill, 217 F.3d at 99.
Accordingly, even if UMass and the dissent were correct
that ownership was at issue in this case, that fact alone
would not require us to consider UMass a real party in
interest under the Cahill majority approach.

Of sovereign immunity:

While the Supreme Court has interpreted
this amendment as encompassing a broad principle of
sovereign immunity Edelman v. Jordan, 415 U.S. 651,
662-63 (1974), sovereign immunity “applies only to suits
by citizens against a State.” Texas, 482 U.S. at 130;
Cahill, 217 F.3d at 101; but see Virginia Office for Prot. &
Advocacy v. Stewart, 131 S. Ct. 1632, 1638 (2011). Because
this case does not involve a suit by citizens against
a State, there is no sovereign immunity issue here.

Chou v. U Chicago appears in footnote 5:

The dissent notes that parties with an “economic
stake” in a patent’s validity are proper defendants in a §
256 suit. Dissent at 3, 7; citing Chou v. University of
Chicago, 254 F.3d 1347, 1359-60 (Fed. Cir. 2001).

Of the need to join UMass:

But they do not create a per se
rule that patent owners are automatically indispensable
parties—there is no patent-specific exception to Rule
19(b). As this court recognized in Alfred E. Mann, when a
necessary patent owner is not joined, even when Rule
19(a) is satisfied, the court must still perform the inquiry
under Rule 19(b) to determine whether that owner is
indispensable. 604 F.3d at 1363; see also Dainippon, 142
F.3d at 1272 (“[E]ven if [a patentee] is a necessary party
under Rule 19(a) because it would be prejudiced by a
holding of invalidity of its patent, this prejudice does not
automatically make CFMT indispensable.” (footnote


The facts of the instant case support a conclusion of
no indispensability even more strongly than in Dainippon.
On the first factor, the district court concluded
that UMass’s interests were adequately represented by
Defendants—including all of the Tuschl Patent owners
except UMass—each of whom stands to lose if inventorship
changes. In contrast, no owners were joined in
Dainippon. Also as in Dainippon, Defendants are jointly
represented by legal counsel in protecting the Tuschl
Patents. In light of these facts, the district court saw no
prejudice, and therefore concluded that the second factor
had little weight. Additionally, the district court’s finding
on this prong is strongly supported by the settlement
agreement which UMass entered into and handed sole
and exclusive control of this suit over to Alnylam, which is
a party to this suit.

Saturday, August 17, 2013

CAFC finds no adequate notice or opportunity to oppose summary judgment in MIKKELSEN GRAPHIC


As Supreme Court precedent and our own cases establish,
“patent infringement and patent validity are treated
as separate issues.” Pandrol, USA v. Airboss Ry Prods.,
Inc., 320 F.3d 1354, 1364 (Fed. Cir. 2003). A patentee’s
motion for summary judgment of infringement does not
implicitly include a motion on the issue of invalidity, and
“an alleged infringer’s failure to raise [an invalidity
defense] in opposition to a motion for summary judgment
of infringement is not a waiver [of that defense].” Id. at

Nor can the district court’s motion be sustained as a
sua sponte grant of summary judgment of no invalidity.
It is well established that a district court has “the power
to enter summary judgment sua sponte, so long as the
losing party was on notice that she had to come forward
with all of her evidence.” Int’l Vis. Corp. v. Crown Metal
Mfg. Co., 991 F.2d 768, 770 (Fed Cir. 1993) (per curiam)
(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 326
(1986)); see also Fed. R. Civ. P. 56(f) (“After giving notice
and a reasonable time to respond, the court may: (1) grant
summary judgment for a nonmovant; (2) grant the motion
on grounds not raised by a party . . . ”). Thus, “if the case
is one appropriate for the entry of summary judgment, the
fact that it may be granted on a ground different from
that specified in the motion therefor does not warrant the
disturbing of the judgment on appeal.” Broderick Wood
Prods. Co. v. United States, 195 F.2d 433, 436 (10th Cir.
1952); see also, e.g., Ware v. Trailer Mart, Inc., 623 F.2d
1150, 1154 (6th Cir. 1980).
However, grants of summary judgment to a nonmoving
party are generally disfavored, because they risk
depriving a losing party of adequate notice and opportunity
to oppose summary judgment. That is why Federal
Rule 56(f) provides that district courts may enter judgment
only “[a]fter giving notice and a reasonable time to
respond.” Fed. R. Civ. P. 56(f). If the court believes a
non-moving party that has not filed a cross-motion for
summary judgment on a particular issue is nonetheless
entitled to judgment on that issue, “great care must be
exercised to assure that the original movant has had an
adequate opportunity to show that there is a genuine
issue and that the opponent is not entitled to judgment as
a matter of law.” 10A Wright & Miller, Fed. Prac. & Proc.
§ 2720, at 353–54 (1998).

If the court has “not provide[d]
the parties with adequate notice or an opportunity for
[the losing party] to present evidence and argument in
opposition to the motion,” granting summary judgment
sua sponte is inappropriate. Fin Control Sys. Pty v. Oam,
265 F.3d 1311, 1321 (Fed. Cir. 2001); see also Celotex, 477
U.S. at 326. Applying this principle, we have vacated a
grant of summary judgment of invalidity to an alleged
infringer, who had not moved for summary judgment on
that basis, because the infringer’s invalidity defenses (...)

It is also black letter law that the denial of a party’s
motion for summary judgment of invalidity is not sufficient
to justify a reciprocal grant of summary judgment of
no invalidity to the other party
. “The fact that one party
fails to satisfy [its] burden on his own Rule 56 motion
does not automatically indicate that the opposing party
has satisfied his burden and should be granted summary
judgment on the other motion.” 10A Wright & Miller,
Fed. Prac. & Proc. § 2720, at 335 (1998). Our holding in
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
1331–32 (Fed. Cir. 2009) is on point. In that case, patentee
Vita-Mix and alleged infringer Basic filed crossmotions
on validity. The district court denied Basic’s
motion because Basic provided “no evidence of invalidity.
For this reason the [district] court [also] granted summary
judgment of no invalidity [to Vita-Mix].” Id. at
1331. We reversed and remanded, explaining that the
district court’s assessment of the merits of Basic’s failed
motion: (...)

The outcome

Because Zund did not have adequate notice or opportunity
to oppose the district court’s grant of summary
judgment of no invalidity to MGE, we hold that summary
judgment on this issue was procedurally improper. Fed.
R. Civ. P. 56; see also Fin. Control Sys., 265 F.3d at 1321.
We therefore vacate the district court's entry of judgment
on Zund’s invalidity defenses, and remand for further
proceedings with respect to the issue of invalidity (i.e., onsale
bar, anticipation, obviousness, and indefiniteness).
See Vita-Mix, 581 F.3d at 1331–32.
In summary, we affirm the district court’s claim construction
and grant of summary judgment of infringement
to MGE. We vacate the district court’s grant of summary
judgment of no invalidity and the grant of injunctive
relief, and remand for further proceedings consistent with
this opinion.

Thursday, August 15, 2013

On-sale bar discussed in Hamilton Beach v. Sunbeam

On the law of the on-sale bar, from the CAFC decision in Hamilton Beach v. Sunbeam:

The on-sale bar applies when two conditions are satisfied
before the critical date: (1) the claimed invention
must be the subject of a commercial offer for sale; and (2)
the invention must be ready for patenting. Pfaff v. Wells
Elecs., Inc., 525 U.S. 55, 67 (1998). An actual sale is not
required for the activity to be an invalidating commercial
offer for sale. Atlanta Attachment Co. v. Leggett & Platt,
Inc., 516 F.3d 1361, 1365 (Fed. Cir. 2008). An attempt to
sell is sufficient so long as it is “sufficiently definite that
another party could make a binding contract by simple
acceptance.” Id. (citing Netscape Commc’ns Corp. v.
Konrad, 295 F.3d 1315, 1323 (Fed. Cir. 2002)). “In determining
such definiteness, we review the language of the
proposal in accordance with the principles of general
contract law.” Id.

An invention is “ready for patenting” when prior to
the critical date: (1) the invention is reduced to practice;
or (2) the invention is depicted in drawings or described in
writings of sufficient nature to enable a person of ordinary
skill in the art to practice the invention. Id. The on-sale
bar is a question of law based on underlying factual
findings. See Grp. One, Ltd. v. Hallmark Cards, Inc., 254
F.3d 1041, 1045–46 (Fed. Cir. 2001); see also Leader
Technologies, Inc. v. Facebook, Inc., 678 F.3d 1300, 1305
(Fed. Cir. 2012) (“Whether a patent is invalid for a public
use or sale is a question of law, reviewed de novo, based
on underlying facts, reviewed for substantial evidence
following a jury verdict.”); Electromotive Division of
General Motors Corp. v. Transportation Systems Division
of General Electric Co., 417 F.3d 1203, 1209-10 (Fed. Cir.
2005) (“Whether an invention was on sale within the
meaning of § 102(b) is a question of law that we review de
novo based upon underlying facts, which we review for
clear error.”).

Of relevance to this case:

At the outset, there are three important points to
note. First, while the trial court found that the relevant
critical date for the ’928 patent was June 4, 2009, because
the patent included new matter—a finding which would
clearly invalidate that patent under § 102(b)—it alternatively
found that the on-sale bar applied even if the ’928
patent was entitled to the ’831 patent’s critical date, i.e.,
March 1, 2005. Because we do not address the trial
court’s new matter finding, we employ the earlier critical
date in our § 102(b) analysis, a date more favorable to
Hamilton Beach. Second, there is no “supplier exception”
to the on-sale bar. See Special Devices, Inc. v. OEA, Inc.,
270 F.3d 1353, 1355 (Fed. Cir. 2001). Thus, it is of no
consequence that the “commercial offer for sale” at issue
in this case was made by Hamilton Beach’s own supplier
and was made to Hamilton Beach itself. Finally, a commercial
offer for sale made by a foreign entity that is
directed to a United States customer at its place of business
in the United States may serve as an invaliding
activity. In re Caveney, 761 F.2d 671, 676–77 (Fed. Cir.
1985). It is undisputed that Hamilton’s Beach’s foreign
supplier directed its activity to Hamilton Beach within
the United States.


As such, even if the parties
had not entered into a binding contract when the supplier
responded to the purchase order, the response, nevertheless,
was a commercial offer for sale that Hamilton Beach
could have made into a binding contract by simple acceptance.
This was enough to satisfy Pfaff’s first prong
without the need for a binding contract. Grp. One Ltd.,
254 F.3d at 1046; see also Lacks Industries, Inc., 322 F.3d
at 1348; Dana Corp., 279 F.3d at 1377. To the extent the
parties and the district court read Linear Tech to require
more, they were wrong.


A product is “ready for patenting” for purposes of the
on-sale bar under § 102(b) if the claimed invention is: (1)
reduced to practice; or (2) depicted in drawings or other
descriptions “that were sufficiently specific to enable a
person skilled in the art to practice the invention.” Pfaff,
525 U.S. at 67–68; see also Weatherchem Corp. v. J.L.
Clark, Inc., 163 F.3d 1326, 1332–34 (Fed. Cir. 1998)
(holding that drawings depicting and samples of the
claimed invention were sufficiently definite to enable a
person of skill in the art to practice the invention). The
district court explained that Hamilton Beach held precritical
date meetings with many of its retail customers’
buying agents and presented detailed descriptions and
depictions of the Stay or Go® slow cooker. At these
meetings and presentations, Hamilton Beach showed and
distributed Computer Aided Design (“CAD”) drawings
depicting the Stay or Go® slow cooker. The district court
found that these detailed drawings and descriptions from
Hamilton Beach’s meetings, coupled with the communications
with its supplier, demonstrated that the invention
was ready for patenting.


Based on the foregoing, we affirm the district court’s
finding that claims 1 and 3–7 of the ’928 patent are invalid
under 35 U.S.C. § 102(b) because the claimed invention
was the subject of a commercial offer for sale prior to
the critical date. Accordingly, we need not reach the other
issues addressed by the district court and addressed by
the parties in the briefing before this court.

Judge Reyna dissented:

My greatest concerns involve the implications this
case will have for future innovators, most notably small
enterprises and individual inventors who lack in-house
prototyping and fabricating capabilities. Cf. Monon Corp.
v. Stoughton Trailers, Inc., 239 F.3d 1253, 1258–61 (Fed.
Cir. 2001) (reversing summary judgment of invalidity and
concluding that the sale was non-commercial where the
patentee had a third-party test its patented trailer because
it lacked in-house testing capabilities). Whenever
the development process requires those entities to manufacture
working prototypes or pre-mass-production samples,
they often have no choice but to reach out to thirdparty
suppliers. Under the majority’s holding in this case,
a single offer to buy for purely experimental purposes may
trigger the on-sale bar, and the experimental-use exception
will offer them no salvation. It is from this evisceration
of the experimental-use exception that I respectfully

Monday, August 12, 2013

--teachings of a reference may be taken in combination with knowledge of the skilled artisan to put the artisan in possession of the claimed invention within 35 U.S.C. § 102 even though the patent does not specifically disclose certain features. --

from Ex parte BESTGEN

It has been held that the anticipation requirement that every element of a claim appears in a single reference accommodates situations where the common knowledge of “technologists” is not recorded in a reference, i.e., where technical facts are known to those in the field of the invention. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Also, it has been held that the teachings of a reference may be taken in combination with knowledge of the skilled artisan to put the artisan in possession of the claimed invention within 35 U.S.C. § 102 even though the patent does not specifically disclose certain features. In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995). Additionally, because Appellants have failed to rebut the cited specific findings made by the Examiner in the Answer, Appellants have not shown error in the Examiner’s rejection of claim 9.

Like pieces of a puzzle

The skilled artisan, being “a person of ordinary creativity, not an automaton,” would be able to fit the teachings of Basu and Luo together like pieces of a puzzle. Id. at 420- 21. Nor have Appellants demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).

Bad law from PTAB?

from Ex parte DUPHORNE

Claims 1 and 19 are obvious. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of obviousness).


-- Use of a known element for its intended purpose is evidence of obviousness. --

From within Ex parte Garland Industries / Strand

Use of a known element for its intended purpose is evidence of obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007); Anderson’s-Black Rock Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 59 (1969).

Likewise generally prima facie obvious is the use of a combination of two materials each of which is taught by the prior art to be useful for the same purpose in order to form a third composition which is also used for that purpose. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); In re Crockett, 279 F.2d 274, 276 (CCPA 1960). Use of a combination of catalysts is explicitly suggested by Osae. ¶ 0067. Cf. Richardson-Vicks Inc. v. The Upjohn Co., 122 F.3d 1476 (Fed. Cir. 1997), where a mixture of two known individual elements for their known purpose was suggested by the prior art.


We have considered applicant’s remaining arguments and find none that warrant reversal of the Examiner’s rejections. Cf. In re Antor Media Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012).

Sunday, August 11, 2013

Sunday Morning on August 11, 2013

Charles Osgood introduced the stories for August 11, 2013. Science fiction. Mark Strassman reports on damaging foreign species. Lee Cowan on Bryan Cranston. Breaking Bad. Matthew Teichner on Michael Bolten. Bill Geist on meltdown, grilled cheese. Mo Rocca.
Headlines. Police in Idaho. James DiMaggio. Mudslide in Manitou Springs, Colorado. Explosions in Iraq. US consulates open. Edie Gorme died. Weather: storms in south.

First up, Asian silver carp. Explosive population in Illinois River. Nutria in Louisiana. David Lodge of Notre Dame. Invasive species. Starlings. Kudzu. Japanese vine. Unintended consequences. Emerald ash borer. Adam Putnam of Florida. Giant African land snail. Citrus canker. This is a story with legs.

Almanac does shopping, going back to August 11, 1992. Mall of America opened. 40 million guests each year. Jingle all the way. 1996 youthful crime spree.

Art fair with Mo Rocca in Omaha and Nagoya. Artist Jun Koneko. Ceramic heads. Dongos. Dumplings.
Garrett Reineck. Raccoon dogs. Kanukis. Chicago's Millennium Park. Hawaiian shirts.
Costumes for the Magic Flute.

Lee Cowan on Bryan Cranston. AMCs Breaking Bad. Robin Deardon. Walter White high school chemistry teacher. Ego driven maniacal. Filmed in Albuquerque NM. Police Explorer program in LA. Hal in Malcolm in the Middle. Argo. All the Way as LBJ.

Steve Hartman on Richard Rinaldi. NY photographer who poses strangers. Touching Strangers. Broke down barriers. Humanity as it could be.

Bill Geist on grilled cheese mania. Grilled Cheese Invitational in Los Angeles. Tim Walker. Four categories. Missionary category. Kama sutra category. Honey pot category for dessert. Eric Greenspan of the Foundry. The economy goes bad, people go to comfort foods.

Faith Salie on money matters. Jane Austen on 10 pound bank note. In us, Martha Washington on one dollar bill in 1886. Harriet Beecher Stowe? Harriet Tubman. Dolly Parton. Gypsy Rose Lee.

Michael Bolten recycle.

Anthony Mason. Marisha Pessl. Night Film. Gowanus drain tunnel in Red Hook. Stanislaw Cordova. Asheville, NC. The Hungarian Pastry Shop. price Waterhouse coopers. Special Topics In Calamity Physics.

Remembering Eydie Gorme.

Ibma in Asheville. PO flags stamps on Friday.

Moment of nature. Sponsored by Spiriva. Sea lions in La Jolla.

Friday, August 09, 2013

Appellant loses in Ex parte Chaudry

The PTAB cites In re Klosak 455 F2d 1077 on unexpected results against the appellant in Ex parte Chaudry.

Within Ex parte Cho the PTAB decides the issues before it, but makes suggestions in footnote 2

Footnote 2 of Ex parte Cho is of interest.

Examiner reversed in Ex parte FILLATTI

The examiner was reversed in Ex parte FILLATTI. Of interest was a rejection under 35 USC 112 P 4.

From within the decision

While the analysis under 35 U.S.C. § 103 allows flexibility in determining whether a claimed invention would have been obvious, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. “We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).

Appellant loses in Talanis case; US v. Adams cited.

Both KSR and Adams are cited in Ex parte Talanis :

The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be supported by a showing that the claims are directed to a process, machine, manufacture, or composition of matter already known in the prior art that is altered by the mere substitution of one element for another known in the field, and such modification yields a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40 (1966)). When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.

Note also

Appellants also argue that “[i]t is only with use of appellant’s teachings as hindsight knowledge that one can reconstruct the invention.” Req. Reh’g 8 (emphasis added). Appellants’ argument does not persuade us, however, that “only” Appellants’ teachings could have led from Callaghan to the claimed invention or that any hindsight that might have been used in the rejection was improper. See, e.g., In re McLaughlin, 443 F.2d 1392 1313-1314 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”)
Appellants also argue that a specific analytical approach – a genus/species analysis as discussed at MPEP 2144.08 – is necessary to support the obviousness conclusion. Req. Reh’g 8-10, also citing In re Brouwer, 77 F.3d 422, 425 (Fed. Cir. 1996) for the position that “even though a claimed species is encompassed by a prior art genus, this is not sufficient, by itself, to establish a prima facie case of obviousness.” Req. Reh’g 10 (emphasis added). We are unpersuaded that such an analysis is required to support our conclusion of obviousness as discussed infra.

Appellant wins reversal in Ex parte Harris but faces new rejections

In re Jung is cited against the examiner in Ex parte Harris:

The Examiner rejected claim 23 under 35 U.S.C. § 112, 1st paragraph,
stating that the inserted limitation “said total value represented by a predetermined number of primary credits” “lacks antecedent basis in the original specification.” Ans. 4. This is all we know of the Examiner’s position. The reasons for the Examiner’s rejection are not clear. As Appellants point out, compliance with the written description requirement is not merely a matter of using the same language in the claims as that used the remainder of the Specification. Reply Br. 2. As we are unable to ascertain the thrust of the Examiner’s rejection, we are constrained to reverse it. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (citations omitted).


However, the ambiguity renders the metes and bounds of the claim unclear and therefore must be resolved. As such, we are “justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).

PTAB did reverse the examiner on the rejections under 102(b) and 103.

But, even though the examiner was completely reversed, the new rejections were present:

We enter new grounds of rejection for claim 23 under 35 U.S.C. §
112, second paragraph, as being indefinite. The Examiner’s rejections are reversed.

Katie Fehrenbacher on KiOR

CAFC discusses criteria for preliminary injunction [PI] in Aria case

The CAFC decision in Aria Diagnostics.

Aria Diagnostics, Inc., now known as Ariosa Diagnostics, Inc. (Ariosa) sought a declaration that its Harmony test did not infringe any claim of U.S. Patent No. 6,258,540 (the ’540 patent), owned by defendant Isis Innovation Limited (Isis) and licensed by Isis exclusively to Sequenom, Inc. (Sequenom). Sequenom counter- claimed, alleging that Ariosa’s Harmony test infringes the ’540 patent. The United States District Court for the Northern District of California denied Sequenom’s motion for a preliminary injunction to prevent Ariosa from making, using, or selling that test. Aria Diagnostics, Inc. v. Sequenom, Inc., 2012 WL 2599340 (N.D. Cal. July 5, 2012). Because the district court incorrectly interpreted the asserted claims and improperly balanced factors regarding issuance of a preliminary injunction, this court vacates and remands.


The parties dispute the proper standard of review for claim construction in the context of a preliminary injunction. This court recognizes some flexibility on this point. Compare Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331, 1340 (Fed. Cir. 2008) (“a correct claim construction is almost always a prerequisite for imposition of a prelim- inary injunction), with Int’l Cmty. Materials v. Ricoh Co., 108 F.3d 316, 318-19 (Fed. Cir. 1997) (“We do not regard it as our function [in preliminary injunction appeals] to definitively construe” claims or to review claim construc- tion “as if from final judgment”).
In this case, the court need not reach out to comment on those alternative approaches to the question. Even under the ostensibly more relaxed standard, the district court erred in its claim construction. As a consequence, the district court erred in finding a substantial question of noninfringement.

Of Myriad:

The district court also found there was a substantial question over whether the subject matter of the asserted claims was to eligible subject matter. J.A. 16-19. Since the district court’s decision, the Supreme Court decided Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013) (Myriad), which held that product claims directed to isolated DNA segments were not eligible subject matter, but that product claims di- rected to synthetic cDNA were patent eligible. See id. at 2119-20. Because the district court did not have the benefit of Myriad and also in light of this court’s disa- greement with the district court’s claim construction, this court remands for the district court to examine subject matter eligibility in the first instance.
To be clear, this court offers no opinion as to whether there is or is not a substantial question regarding the subject matter eligibility of the asserted claims.

Of going out of business:

Third, the district court found that a preliminary in- junction would put Ariosa out of business. J.A. 20. A record showing that the infringer will be put out of busi- ness is a factor, Intel Corp. v. ULSI Sys. Tech., Inc., 995 F.2d 1566, 1568, 1570 (Fed. Cir. 1993) (finding no error in district court’s determination that balance of hardships favored accused infringer where it “would in all likelihood be forced out of business” if enjoined), but does not control the balance of hardships factor. Id. at 1570 (“none of the factors is dispositive”); Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys., 132 F.3d 701, 708 (Fed. Cir. 1997) (the fact that an accused infringer would be put out of business “does not insulate it from the issuance of a preliminary injunction” if other factors weigh in favor of the relief). This court can easily imagine a situation where the loser on either side may have to close its doors. At this point, however, this court has seen no comparison of difficulties or losses Ariosa might experience weighed against the harms Sequenom might suffer without protec- tion of its legal exclusive rights.

CAFC outcome in Taurus/Orion/Spangenberg v. DaimlerChrysler

The outcome in Taurus/Orion/Spangenberg v. DaimlerChrysler

For the reasons set forth below, we rule as follows on the issues presented: In the appeals from the DaimlerChrysler Patent Suit, (1) we affirm the district court’s constructions of all the disputed claim terms; (2) we affirm the judgment of invalidity of claims 16 and 27 of the ’658 patent; (3) we affirm the judgment of nonin- fringement; and (4) we affirm the finding of an exceptional case under 35 U.S.C. § 285 and the resulting award of damages. In the appeals from the Breach of Warran- ty Suit, (1) we affirm the denial of the motion to dismiss for lack of personal jurisdiction over Orion and Spangen- berg; (2) we affirm liability for breach of the Warranty Provision; (3) we affirm the award of damages consisting of attorney fees incurred by Chrysler and Mercedes in prosecuting the Breach of Warranty Suit, but reverse the award of damages consisting of attorney fees incurred by Chrysler and Mercedes in defending against the Daim- lerChrysler Patent Suit; and (4) we affirm the imposition of evidentiary sanctions based on witness tampering. Based on these rulings, we do not reach the conditional cross-appeal.

Of conception and reduction to practice:

In its analysis, the district court first rejected Taurus’s argument that the subject matter of the ’658 pa- tent—filed on September 10, 1997—was invented prior to September 3, 1996, the filing date of the Trilogy patent. See Summary Judgment Decision, 534 F. Supp. 2d at 877–78. In so doing, the district court found that a lengthy document filed with the ’658 patent and referred to as “Appendix A” therein, see ’658 patent col. 13 ll. 50– 52, did not provide evidence of conception and reduction to practice sufficient to predate the Trilogy patent. See Summary Judgment Decision, 534 F. Supp. 2d at 877–78. The district court relied on the fact that, although Appendix A has a date stamp showing it was created on June 10, 1996, almost every page has a stamp showing it was modified on December 11, 1996, more than three months after the filing date of the Trilogy patent, September 3, 1996. (...)

The issue of the conception date of an invention is a legal conclusion based on underlying factu- al findings. See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005). (...)

“[P]riority of invention ‘goes to the first party to re- duce an invention to practice unless the other party can show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice.’” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (quoting Price, 988 F.2d at 1190). Thus, to remove the Trilogy patent as a prior art reference, Taurus needed to either prove (1) a conception and reduction to practice before the filing date of the Trilogy patent or (2) a conception before the filing date of the Trilogy patent combined with diligence and reduction to practice after that date. See Singh v. Brake, 317 F.3d 1334, 1340 (Fed. Cir. 2003); see also 37 C.F.R. § 1.131(b).9 In either scenario, Taurus had to prove a conception date earlier than September 3, 1996—the filing date of the Trilogy patent. The only such evidence presented by Taurus, however, was (1) the creation date of June 10, 1996, printed on Appendix A, and (2) Mr. Johnson’s testimony. Based on this evidence, a reasona- ble juror could not find that the ’658 patent predated the Trilogy patent. (...)

Further, even assuming Appendix A was in its pre- sent form prior to September 3, 1996, Taurus failed to demonstrate how Appendix A satisfies all the limitations recited in claims 16 and 27, as necessary to demonstrate conception. See Singh, 317 F.3d at 1340 (“A conception must encompass all limitations of the claimed invention . . . .”). Similarly, Taurus has not proven that Appendix A represents an actual reduction to practice of the entire process recited in claims 16 and 27. See Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2002) (“‘A process is re- duced to practice when it is successfully performed.’”) (quoting Corona Cord Tire Co. v. Dovan Chem. Corp., 276 U.S. 358, 383 (1928)). Instead, Taurus merely states that a reasonable juror could find that Appendix A was either created using the invention or represents conception before a later reduction to practice. Taurus fails, howev- er, to set forth an evidentiary basis for that finding. (...)

Even if this testimony were sufficient to support an earlier invention date, it lacks corroboration, which is required by this court’s case law. See Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000) (“It is well-established that when a party seeks to prove conception via the oral testimony of a putative inventor, that party must proffer evidence corroborating that testimony. This rule address- es the concern that a party claiming inventorship might be tempted to describe his actions in an unjustifiably self- serving manner in order to obtain a patent or to maintain an existing patent.”). Instead of corroborating Mr. John- son’s testimony, Appendix A serves as the sole basis for it. Indeed, independent of that document, neither inventor had any recollection of the date of invention. For the reasons set forth above, however, Appendix A does not independently support an earlier invention date; it there- fore cannot corroborate Mr. Johnson’s testimony.

Of "written description,"

The term “user” cannot be construed in a vacuum, as required by Taurus’s proposed construction. Instead, it must be construed in light of the written description in which it resides. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“‘We cannot look at the ordinary meaning of the term . . . in a vacuum. Ra- ther, we must look at the ordinary meaning in the context of the written description and the prosecution history.’”) (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)). As admitted by Taurus, the invention is described from the viewpoint of the database manager, not from the viewpoint of a web surfer. Because Taurus’s proposed construction of “user” is improperly broad, we affirm the construction of the district court.

As to "exceptional case,"

We now turn to the last issue on appeal from the DaimlerChrysler Patent Suit, the finding of an exception- al case under 35 U.S.C. § 285 and the award of attorney fees to Chrysler and Mercedes for defending against the allegations of infringement in that suit. Taurus asserts that the district court erred in finding an exceptional case because Taurus argued infringement both in good faith and as supported by expert testimony, and because its counsel had a duty to represent it “zealously.” (...)

When assessing whether to award attorney fees under 35 U.S.C. § 285, a district court engages in a two-step inquiry. The court must first determine whether the prevailing party has proved, by clear and convincing evidence, that the case is exceptional. MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 915 (Fed. Cir. 2012), reh’g and reh’g en banc denied (2012). If the court finds the case exceptional, it must determine whether an award of attorney fees is appropriate, (...)

Having carefully considered the record before us, we conclude that the district court properly found the Daim- lerChrysler Patent Suit to be exceptional. In reaching this conclusion, we find sufficient basis in the district court’s findings that Taurus improperly asserted and maintained its positions in the litigation. See Post-Trial Decision, 559 F. Supp. 2d at 967–68. We need not rely on the findings related to vexatious litigation or witness tampering. See id. at 968. Rather, no reasonable litigant in Taurus’s position could have expected a finding that a web surfer accessing the accused external websites satis- fied the requirement for a “user,” as recited in claim 16. Although reasonable minds can differ on claim construc- tion positions, Taurus’s proposed constructions of “user,” and the related terms discussed above, fall below the threshold required to avoid a finding of objective base- lessness. See Raylon, LLC v. Complus Data Innovations, Inc., 700 F.3d 1361, 1368 (Fed. Cir. 2012) (citing iLOR, 631 F.3d at 1378). (...)

While an adverse claim construction generally cannot, alone, form the basis for an exceptional case finding, this court’s decisions in DePuy Spine and Medtronic Navigation do not undermine the rule that a party cannot assert baseless infringement claims and must continually assess the soundness of pending infringement claims, especially after an adverse claim construction. See Medtronic Navigation, 603 F.3d at 954 (“The salient inquiry is whether Medtronic’s claims were so lacking in merit that [the plaintiff] was legally obligated either to abandon its case altogether or to limit itself to challenging the district court’s claim construction order on appeal.”). In both cases, this court reversed because it determined that the arguments posited were not, in fact, baseless. See id. at 959; see also DePuy Spine, 567 F.3d at 1339 (reversing an exceptional case finding because “there is no indication, much less a finding, that [the sanctioned party’s] arguments were baseless, frivo- lous, or intended primarily to mislead the jury”). For the reasons set forth above, such is not the case here. Thus, the reversals in DePuy Spine and Medtronic Navigation do not carry the day for Taurus.

Of relevance to patent lawyers:

On March 11, 2008, three days before trial, the court held a hearing and determined that Spangenberg and an attorney named Patrick Anderson, who was working for one of Spangenberg’s companies, had recently engaged in witness tampering. Post-Trial Decision, 559 F. Supp. 2d at 957. At the March 11 hearing, the district court made various factual findings, which are set forth in the Post- Trial Decision, 559 F. Supp. 2d at 971–73, and, for suffi- cient background, are summarized here.
Before graduating from law school in 2005, Patrick Anderson was employed by a law firm in Detroit, which placed him in a temporary position with Chrysler as a patent agent working on patent prosecution. Id. at 971. Anderson left his contract position at Chrysler and re- turned to his firm in May of 2006, with the understanding that everything he learned during his time at Chrysler was confidential. Id. In the fall of 2006, Anderson sent his resume, which included his experience with Chrysler, to an attorney working at Intellectual Property Naviga- tion, another of Spangenberg’s business entities. Id. Anderson interviewed for an attorney position but did not receive a job offer at that time. Id. In the fall of 2007, after the district court denied the motion to dismiss for lack of personal jurisdiction filed by Orion and Spangen- berg, Anderson received a call from Spangenberg with a job offer. Id. (...)

By the following day, to familiarize himself with the relevant facts, Anderson had read the 73-page Summary Judgment Decision, researched the local ethics rules, contacted a state bar hotline and an ethics attorney, and drafted a letter to Butler. Id. Then, Anderson called Butler and asked whether he would be testifying for Chrysler. Id. Butler told Anderson that decision was not his to make. Id. Anderson then sent Butler the previous- ly drafted letter, in which Anderson stated that, based on his review of the Summary Judgment Decision, it ap- peared that Chrysler is representing “that it was not aware that the ’658 patent was transferred away from Orion IP prior to the settlement.” Id. In the letter, An- derson “reminded” Butler of “certain facts,” including Anderson’s obligation under the Michigan ethics rules to persuade a former client to testify truthfully, to take remedial measures if the client refuses, and to report conduct that “raises a substantial question to a lawyer’s fitness to practice law.” Id. Anderson continued: “Please contact me and assure me that you will testify truthfully on all matters asked during your testimony, no later than 9AM, Monday March 10, 2008.” Id. Anderson did not reveal his employer to Butler. Id. at 972–73. (...)

The district court found that, while Anderson was working at Chrysler, he “was asked to run a search for a particular outcome, and for a particular reason.” Id.16 The district court found that Anderson did not document that search, and that his work computer did not contain evidence of such a search. Id. With these findings, the district court seemed to draw into question the sufficiency of Anderson’s basis for con- tacting Butler.

Based on these factual findings, the district court found clear and convincing evidence of sanctionable behavior for two reasons See id. at 974. First, the district court concluded that “Anderson’s communication with Butler was designed to intimidate Butler and influence his testimony.” Id. Second, the court found that “Span- genberg’s relationship with Anderson and his involvement in Anderson’s witness tampering show that Spangenberg intended Anderson to improperly influence Butler’s testimony and that he put Anderson up to unethical behavior for Spangenberg’s (and Orion’s) benefit.” Id. The district court found two “problems” with Spangen- berg’s call to Anderson: (1) Anderson should have been behind a “Chinese Wall,” based on his prior employment with Chrysler, and (2) Spangenberg’s suggestion that Anderson call Butler was “manipulative and improper” because of Anderson’s employment with Spangenberg. Id. (...)

As to the merits, we conclude that the district court did not abuse its discretion, but, instead, imposed appro- priate and proportional evidentiary sanctions on Orion and Spangenberg. We agree with the reasoning of the district court, see Post-Trial Decision, 559 F. Supp. 2d at 974–75, that Spangenberg engaged in sanctionable con- duct. In particular, we are persuaded by the failure of Spangenberg, an experienced attorney, to erect the ap- propriate “Chinese wall” to preclude access to confidential information, known by Anderson only based on his time spent as an attorney with Chrysler.

Disciplinary rule 3.3 arises:

Contrary to the argument by Orion and Spangenberg, rule 3.3(b) of the Michigan Rules of Professional Conduct did not require Anderson to “dissuade Butler from what [Anderson] perceived could be perjury.” See Orion Opening Br. 57. As set forth in the first sentence of the cited comment, and inferable from the text of rule 3.3(b) itself, that rule only “governs the conduct of a lawyer who is representing a client in a tribunal.” Anderson was not, however, representing Orion or Spangenberg in the Breach of Warranty Suit, and thus, had no obligation under the cited rule.

Mixed result on obviousness in Ex parte Hantler

The outcome of the obviousness rejections in Ex parte Hantler:

We affirm the obviousness rejections of claims 1, 2, 5-7, and 10-24.
However, we reverse the obviousness rejections of claims 3, 4, 8, and 9.

Appellants in Oehlerking win on 101, but lose on 103

In a business method case, appellants prevailed on a 101 rejection, but all claims were deemed obvious under 103.

PTAB discusses Bilski, 35 USC 101 in Ex parte Macauley; examiner affirmed

Both the Examiner, and PTAB, concluded that the claims of the application did not satisfy "the machine prong" of the machine-or-transformation test for patent eligibility under 35 USC 101.

The interesting part of the decision was that "absent other factors" the failure of the machine or transformation test disposed of the 101 inquiry:

The Supreme Court has made clear that a patent claim’s failure to satisfy the machine-or-transformation test is not dispositive of the § 101 inquiry. See Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). However we conclude that, absent other factors weighing either toward or against patent eligibility, the two machine-or-transformation factors both weighing against patent eligibility are alone sufficient to establish a prima facie case of patent- ineligibility. See id. (the machine-or-transformation test is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.”)
We conclude that the Examiner correctly determined that claim 1 fails to recite patent-eligible subject matter.

In sustaining the obviousness rejection, PTAB cited In re Geisler, 116 F.3d 1465, for the proposition that attorney argument cannot take the place of evidence.

In re Lovin, 652 F.3d 1349 , was cited as to "more substantive arguments." Merely saying an element of a claim is missing in the prior art, without more detail, is insufficient to negate a rejection.

application 11/997,187.

Arguably, claim 1 is a "business method" claim, directed to a method of controlling repair and maintenance:

A method of controlling a repair and maintenance process for equipment comprising:

maintaining a database of source data based on original equipment manufacturer information;
generating a maintenance plan based at least in part on the source data, the maintenance plan designating a workscope;
generating a maintenance instruction based at least in part on the workscope;
communicating a logical order with a maintenance center for inspection of the equipment, the logical order being based at least in part on the maintenance instruction;
communicating a repair instruction to a repair unit, the repair instruction being based at least in part on the inspection; and
performing a repair task based at least in part on the repair instruction.

link for case