Sunday, September 29, 2013

CBS Sunday Morning 29 September 2013

Are there still golden times of television? Campaign season again, and NJ's Christie -- a bully? Metallica today, in "High Voltage." Ron Howard learns about his movies. George Washington library; twerking; stop-gap measure of health bill, until December 15; government shut-down; 15 deaths of Arizona firemen and blocked communications; Yankees won 2-1 last night.

Charles Osgood talked about the first golden age. Lee Cowan does the story, starting with a clip from Gilligan's Island, and a clip of Fantasy Island. An allusion to "vast wasteland." Clip from VEEP by HBO. Rob Reiner. Never before such a wealth of nutrints. Reiner alludes to the first golden age as in the 50s. Andy Greenwald of In order to get attention, they took risks. AMCs Breaking Bad. Walter White. Bryan Cranston: You can't put on Magnum PI and expect it to succeed in this day and age. "House of Cards" with Kevin Spacey. Promises immune to changing circumstances. Boardwalk Empire. More room for risk. Audiences want to be challenged: Terence Winter of Boardalk. Winter wrote for The Sopranos, which changed television forever. The Good Wife, Friday Night Lights. TV now looks like feature movie. Walking Dead. Top reated scripted show. Greg Nicaterro. 32 episodes: draw characters out. Kardshians and Honey Boo Boo.

Average American watches 4 hours 19 minutes of tv daily.

Almanac. Sept 29, 1992. Magic Johnson: I'm coming back to the Lakers. Fall of 1991: infected with HIV. First call Johnson got was from Larry Bird. Previous story by Jim Axelrod. Member of Dream Team in 1992. Coached Lakers in 1994.
Played ball in 1996. "Magic Theaters."

Presidential library of George Washington. Story by Chip Reid. Cost: 100 million dollars. Kurt Vegrands is president of Washington association. Heart of museum is vault. Washington's copy of Gibbon. Don Quijote. Washington's Acts of Congress. Martha Washington destroyed George's letters after he died. More than 5000 books have been written about Washington. Washington owned the largest distillery in America. "Fred W. Smith"

Tracy Smith does questions and answers with Chris Christie. Working the crowds at the Jersey shore. Nothing typical about him. Charlie Brown's teacher mentioned. I don't have time to sully myself with this garbage. Use of word "idiot." Christie: I'm a fighter. Defend his point of view. Super storm Sandy damaged Jersey shore. Railed against Congress about relief money. Sandy broadend Christie's image: compassion. Reception given to Obama. They were badgering me. Barbara Bono. Issue of same sex marriage. Put it on a ballot. City of Orange. Veto of minimum wage bill. Conflict is a comfort zone. Christie was born in Newark. Christie's dad was Irish and a Republican. Mother: most dominant force in my life, even today. Mary Pat Foster. Married in 1986. Entered politics in 1994. You only want to do things you are successful at. Won governorship in 2009. You've got to work it out. Rehabilitation instead of prison for drug offenders. Christie on Letterman. Look at my record. Judge me for who I am. The sun comes up.

Sunday Agenda. Meet the Greeds. AKC.

Faith Salie. Opinion on twerking. Suggestive dance move. "sexually provocative manner". Morgan Freeman gives definition on Dunday Morning. Miley Cyrus on MTV. 1914: Tango damaging to the soul. We can look the other way.

Ron Howard on race car driver Lauda. Howard as Opie. As Richie Cunningham. 1973's American Graffiti. Grand Theft Auto. Howard watched The Graduate over and over again. Both rebellious and hilarious. The music was great. There's really an audience for this. This would be great business. Sneaking his family into the movies. Rush is what Ron Howard does.

New place for Sunday Morning Sun. Lower and little bit more to the right. Shifting sun allows more room for picture on HD sets.

Pulse: 71% say autumn is about the right length.

Week ahead: retrial for Amanda Knox; Tuesday: open enrollment for health care. Wed. Detroit bankruptcy. Thurs. Alaskans get $900 Friday: Labor Sat. Humane Society.

Edelstein on movie Gravity. Spiritual odyssey. Be reborn. Gravity is cornball, but it's incredible. See Gravity in 3D. It's Bulloch's movie. Fusion of faith and math. The hire corn.

Next week on Sunday Morning. The real Captain Phillips. Janis Joplin.

Moment of nature. Glacier National Park in Northwest Montana.

Osgood with a red handkerchief and blue bow tie.

Friday, September 27, 2013

Rexam wins appeal as to nonobiousness

Meadwestvaco v. Rexam

We find that the district court erred in granting summary
judgment of nonobviousness in favor of plaintiffs
MeadWestVaco Corporation and MeadWestVaco Calmar,
Inc. (collectively “MWV”), the assignees of the ’132
and ’819 patents, and therefore vacate the summary
judgment of nonobviousness. However, we affirm the
district court’s claim constructions, denial of Rexam’s
motion to exclude, and findings of infringement. We also
find that Rexam and Valois waived their indefiniteness
arguments by failing to pursue them at trial. Accordingly,
we affirm-in-part, vacate-in-part, and remand for
further proceedings consistent with this opinion.

Of obviousness

Prior to trial, MWV moved for, and the district court
granted, summary judgment of nonobviousness of the
asserted claims of both patents. Summ. J. Op., 809 F.
Supp. 2d at 474. Valois and Rexam both opposed summary
judgment, arguing that material issues of fact
necessitated a trial.
A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter would have
been obvious at the time the invention was made to a
person having ordinary skill in the art to which said
subject matter pertains.” 35 U.S.C. § 103(a).

The central problem with the district court’s analysis
is that it fails to treat claims 15 and 19, which are not
limited to fragrance products, differently from the asserted
fragrance-specific claims.4 Obviousness, like other
grounds of invalidity, must be analyzed on a claim-byclaim
basis. Ortho Pharm. Corp. v. Smith, 959 F.2d 936,
942 (Fed. Cir. 1992) (concluding that all grounds of invalidity
must be evaluated against individual claims, as
required by the plain language of 35 U.S.C. § 282). The
district court’s analysis of the secondary considerations of
nonobviousness involved only fragrance-specific uses, but
the claims now at issue are not fragrance-specific, and
“‘objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is
offered to support.’” Asyst Techs., Inc. v. Emtrak, Inc., 544
F.3d 1310, 1316 (Fed. Cir. 2008) (quoting In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983)). (...)

In addition to not analyzing claims 15 and 19 separately
from the fragrance-specific claims, the district court
resolved material issues of fact in favor of MWV, which is
inappropriate at the summary judgment stage. See
Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1305 (Fed. Cir.
2010) (reversing grant of summary judgment of nonobviousness
for failure to view facts in the light most favorable
to the nonmoving party). For example, Valois
presented evidence contradicting MWV’s claims of commercial
success. Valois Br. 47 (explaining that at least
one large customer elected not to use the more expensive
invisible tube). Valois also cast doubt on MWV’s teaching
away evidence by presenting evidence that EFEP was
marketed for use in “water purification systems, biomedical
tubing, catheters, and food products.” Id. at 43-
44 (citing Daikin presentation materials). Finally, Valois
put forth evidence that one of ordinary skill in the art—a
polymer engineer—would not have believed EFEP was

Sunovion wins appeal from DNJ at CAFC in eszopiclone [Lunesta] case

Sunovion v. Teva and Dr. Reddy's

The CAFC reversed:

Sunovion Pharmaceuticals, Inc. (“Sunovion”) appeals
from the decision of the United States District Court for
the District of New Jersey granting summary judgment
that Dr. Reddy’s Laboratories, Ltd. and Dr. Reddy’s
Laboratories, Inc. (collectively “Reddy”) do not infringe
claims 1, 2, and 8 of Sunovion’s U.S. Patent 6,444,673 (the
“’673 patent”). Sunovion Pharm., Inc. v. Teva Pharm.
USA, Inc., No. 09-1302, 2013 WL 211289 (D.N.J. Jan. 17,
2013). Because we conclude that, although the district
court did not err in construing the asserted claims,
Sunovion was entitled to a judgment of infringement as a
matter of law under 35 U.S.C. § 271(e)(2)(A), we reverse.

This case involved enantiomers:

Stereoisomers are molecules that have the same
molecular formula or atomic composition, but which are
arranged differently in space. Enantiomers are a pair of
stereoisomers that are non-superimposable mirror images
of each other and often have distinct physical properties.
In organic chemistry, enantiomeric pairs include
compounds that have one or more stereogenic centers, i.e.,
carbon atoms with four different substituent atoms or
groups of atoms. Those compounds are thus said to be
To distinguish between different enantiomers of the
same compound, chemists use various naming conventions.
Enantiomers are sometimes called optical isomers
because a pure enantiomer rotates plane-polarized light
in a particular direction. If the light rotates clockwise,
then that enantiomer is labeled as dextrorotatory; its
counterpart will rotate the light counterclockwise and is
labeled levorotatory. A different nomenclature system
labels each stereogenic center “(R)” or “(S)” according to a
set of scientific rules. A racemate (or racemic mixture) is
an equal mixture of two enantiomers and therefore is not
optically active (i.e., will not rotate plane-polarized light
in either direction because its constituent enantiomers
cancel each other out).

A declaration was involved:

Following a Markman hearing, the district court
construed the claim term “essentially free” to mean “less
than 0.25% of [the] levorotatory isomer.” Sunovion
Pharm., Inc. v. Teva Pharm. USA, Inc., No. 09-1302
(D.N.J. Apr. 10, 2012), ECF No. 417 (“Markman Opinion”).
The court found that there was no plain meaning
for the disputed term and thus focused on intrinsic evidence,
including the prosecution history of the patent,
because it was undisputed that neither the claims nor the
written description defined what degree of enantiomeric
purity of the dextrorotatory isomer was “essentially free”
of the levorotatory isomer. Id. at 5–6. The court held that
Sunovion was bound by its own definition of the invention
as containing less than 0.25% of the levorotatory enantiomer
through a declaration submitted by named coinventor
and through amendments and arguments
made during prosecution.

The issue

The district court accordingly granted Reddy’s renewed
motion for summary judgment of noninfringement.
Sunovion, 2013 WL 211289, at *6. The court found that
the eszopiclone products that Reddy presumes to market
would likely be “outside the infringing range of less than
0.25% of levorotatory isomer” because of Reddy’s internal
manufacturing guidelines and the Cappuccino certification
in which it pledged to constrain the amount of levorotatory
isomer to not less than 0.3%, despite the contrary
representations made to the FDA in Reddy’s amended
ANDA specification

The CAFC affirmed the district court on claim construction:

The term “essentially free” appears only in the claims
of the ’673 patent and does not appear anywhere in the
written description
. Except for the claims, the specification
is devoid of any reference to the degree of enantiopurity
of the claimed dextrorotatory isomer of zopiclone.
The written description refers to the subject of the
claimed invention merely as the dextrorotatory isomer of
zopiclone, distinguished from the racemate, which is by
definition a 50/50 mixture of the two enantiomers. ’673
patent col. 1 ll. 24–35. However, the prosecution history
of the application that matured into the ’673 patent
demonstrates that the applicants repeatedly and consistently
defined their claimed invention to be as exhibited by
Example 1.
The only other example in the patent, Example
2, briefly describes a pharmaceutical formulation of
the active product, id. col. 4 ll. 5–15, not another example
of the dextrorotatory isomer. (...)

The applicants’ repeated and consistent attribution of
the purity level of less than 0.25% levorotatory isomer to
“the invention” and “the instant invention” thus gives
meaning to the term “essentially free.” Verizon Servs.
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308
(Fed. Cir. 2007) (“describ[ing] the features of the ‘present
invention’ as a whole . . . limits the scope of the
invention”); Microsoft Corp. v. Multi-Tech Sys., Inc., 357
F.3d 1340, 1348 (Fed. Cir. 2004) (limiting claim terms to
an embodiment that was “repeatedly and consistently

As to infringement

Sunovion argues that Reddy’s amended ANDA
specification itself controls the issue of infringement
because it expressly defines Reddy’s product in a way that
directly addresses the infringement question (i.e., eszopiclone
with 0.0–0.6% levorotatory isomer), which includes
the “less than 0.25%” purity range that would allow
Reddy to sell infringing products. Appellant Br. 53–54.
We agree with Sunovion. Although no traditional patent
infringement has occurred until a patented product is
made, used, or sold, under the Hatch-Waxman framework,
the filing of an ANDA itself constitutes a technical
infringement for jurisdictional purposes. 35 U.S.C.
§ 271(e)(2)(A); Eli Lilly & Co. v. Medtronic, Inc., 496 U.S.
661, 676 (1990). But the ultimate infringement question
is determined by traditional patent law principles and, if
a product that an ANDA applicant is asking the FDA to
approve for sale falls within the scope of an issued patent,
a judgment of infringement must necessarily ensue. See
Abbott Labs. v. TorPharm, Inc., 300 F.3d 1367, 1373 (Fed.
Cir. 2002).
What Reddy has asked the FDA to approve as a regulatory
matter is the subject matter that determines
whether infringement will occur, and the fact that Reddy
either tells the court that its manufacturing guidelines
will keep it outside the scope of the claims or has even
filed a declaration in the court stating that it will stay
outside the scope of the claims does not overcome the
basic fact that it has asked the FDA to approve, and hopes
to receive from the FDA, approval to market a product
within the scope of the issued claims.

Sunday, September 22, 2013

CBS Sunday Morning on September 22, 2013

Charles Osgood introduced the stories for "Sunday Morning" on September 22, 2013. Autumnal equinox. Lee Cowan on Reel Life. Second, Bill Whittaker on movies, The New Season. Third, Anthony Mason interviews Cher, now 67. Fourth, Bill Geist on Mark Twain. Fifth, Seth Doane on the ukulele. Serena Alschul; ice cream cone.

Headlines: Hostages still being held at the mall in Nairobi. Millionaires Casino. Islamic extremists in Peshawar, Pakistan. Attack in Afghanistan. Washington Navy Yard. Steve Jobs time capsule in Aspen, Colorado. Weather: rain in east.

Lee Cowan does "Seven Up". Started in 1964. Done by Michael Apton, who was then 22 years old. The latest installment is "56 Up." Apton directed "Coal Miner's Daughter." The story of Neil, who was homeless at age 28. But by age 56, a lay minister in his church. Story of Nick. Now a professor at the University of Wisconsin. Story of Tony Walker. Apton's goal to keep the film going until the kids are 84 and Apton is 99.

Almanac. Sept. 22, 1903. Patent application for a mold for ice cream cups by Italo Marchiony [US 746971 issued Dec. 15, 1903 ]. [Not mentioned in the story but relevant to patents: Marchioni's patent was not for a cone and he lost the lawsuits that he later filed against cone manufacturers for patent infringement.[wikipedia]
Later in time US US2035631 ]

Serena Alschul on croquet. Interview John Osborne in Central Park. 1967: New York Croquet Club. US Naval Academy vs. St. Johns in Annapolis.

Bill Whitaker on a film called "Gravity." Mandela: Long Walk to Freedom. Saving Mr. Banks. Tom Hanks as Disney in a movie about Mary Poppins. Ron Howard's Rush. "American Hustle" "The Wolf of Wall Street." "August Osage County" Robert Redford in "All is Lost."

Look at the Emmys by the numbers. Started out as IMMY. Record is 37 by Frazier. CBS won 44. Ed Asner won 3. 6 pounds 12.5 ounces.

Seth Doane with Jake Shimabukauro on ukulele. Initially called a machette. Brought to Hawaii by Portuguese immigrants in 1879. Uke and lala mean "flea jumping."

Sunday passage. NY premier of the monotone silence symphony. Eve Klein. 70 musicians. who take turns holding a single tone. Dominique Levie. Klein works in one color: blue.

Anthony Mason on Cher. Skit on retirement homes.

Bill Geist on Mark Twain. Hannibal, Missouri. Jim Rodell. Richard Gary. Are there any idiots in the room? Citizen Twain. Heretical Fictions. I was born modest but it wore off.

Pulse. season you enjoy most 34% fall; 31% spring.

Week ahead: 23 Sept: stamp for Ray Charles; Thursday: Christies in Chinga. Friday: George Washington presidential library.

Ben Stein opinion on budget crisis. Conference committees. Closing down government is wildly dangerous. We don't just pick up our toys. Don't let [our day] be doomsday.

Moment of nature. Florida's Preserve State Park along the shores of Tampa Bay. [ Caladesi Island State Park ? ]

Friday, September 20, 2013

CAFC reverses SD Fl on infringement issues in Bennett Marine v. Lenco

From within Bennett Marine v. Lenco an appeal to the CAFC from SD FL:

Defendants-Appellants Lenco Marine, Inc. and its president Richard DeVito, Jr. (collectively “Lenco”) appeal from a final judgment of the United States District Court for the Southern District of Florida holding (1) that vari- ous products sold by Lenco infringed a patent owned by Plaintiff-Cross Appellant Bennett Marine, Inc. (“Ben- nett”); (2) that Lenco induced infringement of, and willful- ly infringed, Bennett’s patent; (3) that the asserted claims are not invalid based on prior art; and (4) that Lenco breached a settlement agreement. See Bennett Marine, Inc. v. Lenco Marine, Inc., No. 04-CV-60326 (S.D. Fla. Sept. 29, 2011) (“Final Decision”). Based on its patent infringement ruling, the district court awarded damages. Bennett Marine, Inc. v. Lenco Marine, Inc., No. 04-CV- 60326 (S.D. Fla. Mar. 2, 2012) (“Final Judgment”).

For the reasons set forth below, we (1) reverse the judgments of infringement, induced infringement, and willful infringement; (2) affirm the judgment of no invalidity; (3) reverse the judgment of breach of contract; and (4) vacate the award of damages.

As to claim construction:

In construing such a limitation, a court must first identify the function recited and then identify the corresponding structure in the written description necessary to perform that func- tion. See Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1369–70 (Fed. Cir. 2001). Here, the district court identi- fied the function as “to provide a means to respond to the stimulus of electrical power being removed from the engine, thus resulting in the trim tabs being automatical- ly returned to the fully retracted position or other prede- termined position.” Final Decision at 28–29, ¶ 20. It identified the structure as “control circuit 42, fig. 1, and equivalents thereof.” Id. (...)

We agree with Lenco’s first two arguments regarding the fifth limitation. As essentially conceded by Bennett, the district court erred by failing to fully identify the function and corresponding structure required. As stated in the fifth limitation, the recited “means” must “automat- ically mov[e]” the trim tabs “upon removal of power at said engine.” We thus revise the required function as follows: “to respond to the stimulus of electrical power being removed from the engine by automatically return- ing the trim tabs to the fully retracted position or other predetermined position.” See Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) (“The function of a means-plus-function claim must be construed to include the limitations contained in the claim language.”). The corresponding structure is a control circuit (discussed in further detail below) as well as the actuators and related components necessary to automatically retract the trim tabs upon the removal of engine power. (...)
The ’780 patent discloses only one specific type of cir- cuit to perform part of the function required by the fifth limitation. In such a situation, the corresponding struc- ture should be limited to that specific structure and its equivalents, rather than any circuit capable of performing the required function. See Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1295–96 (Fed. Cir. 2012) (affirming a construction limiting a means-plus-function limitation to the specific disclosed analog-to-digital con- verter, despite the presence of a generic “analog-to-digital converter” in a patent figure, because “[i]f a patentee chooses to disclose a single embodiment, then any means- plus-function claim limitation will be limited to the single disclosed structure and equivalents thereof”); see also J&M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360, 1367 (Fed. Cir. 2001) (“The literal scope of a properly construed means-plus-function limitation does not extend to all means for performing a certain function. Rather, the scope of such claim language is sharply limited to the structure disclosed in the specification and its equiva- lents.”).

As to infringement of a means plus function claim element:

For there to be literal infringement of a claim reciting a means-plus-function limitation, the accused device must perform the identical function recited in the claim, and must use the same structure disclosed in the specification or equivalent structure. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1430 (Fed. Cir. 2000).
Structural equivalence under § 112, ¶ 6 is met only if the differences are insubstantial . . . that is, if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.” See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267 (Fed. Cir. 1999). To find infringe- ment of a claim reciting a means-plus-function limitation under the doctrine of equivalents using the traditional function-way-result test, “the accused structure must perform substantially the same function, in substantially the same way, to achieve substantially the same result, as the disclosed structure.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000).

Chiuminatta is cited:

This, however, is insufficient to demonstrate an accused structure is equivalent. See Chiuminatta Concrete Con- cepts v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998) (noting in a discussion of structural equivalents that “[t]he question of known interchangeability is not whether both structures serve the same function, but whether it was known that one structure was an equiva- lent of another”); see also id. at 1310 (“[A] finding of a lack of literal infringement for lack of equivalent structure under a means-plus-function limitation may preclude a finding of equivalence under the doctrine of equivalents.”). On appeal, Bennett has failed to demonstrate how the evidence supports a finding of infringement under the doctrine of equivalents when analyzed under the proper construction of the fifth limitation of claim 1 (or the sixth limitation of claim 9). For this reason, we reverse the finding of infringement under the doctrine of equivalents.

As to induced infringement

We turn briefly to the district court’s conclusions as to induced infringement and willful infringement. Because a judgment of induced infringement requires an act of direct infringement, see Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1277 (Fed. Cir. 2004), based on our reversal of the infringement judgment, we reverse as to induced infringement. Similarly, reversing the district court’s judgment of infringement requires us to reverse the judgment of willful infringement. See John- son & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1055 (Fed. Cir. 2002) (en banc). Based on our reversal as to infringement, we vacate the award of damages and thus need not address the aspects of Ben- nett’s cross-appeal relating to the proper royalty rate for patent infringement damages.

The CAFC points to a failure to cite case law:

We are not persuaded by Lenco’s estoppel argument, which lacks any citation to case law. We know of no decision supporting the proposition that the failure of an inventor to distinguish a certain prior art reference on a specific ground creates an estoppel with respect to an arguably similar aspect of a different reference. As ap- plied here, the fact that the inventors distinguished Takeuchi on alternative grounds (other than the potential argument that Takeuchi does not disclose trim tabs) does not mean that the inventors waived an argument distin- guishing Newman for a failure to disclose trim tabs.

SD Ohio reversed by CAFC in fee- shifting issue in Buckhorn v. Orbis

Buckhorn v. Orbis

Defendant ORBIS Corporation (“ORBIS”) appeals the decision of the United States District Court for the South- ern District of Ohio denying its motion for fees, costs, reasonable attorney fees, and expenses. In denying the motion, the district court found that a settlement and license agreement’s fee provision did not apply when Plaintiffs allegedly had “no knowledge of the [settlement and license agreement] at the time the litigation was initiated.” Further, the district court stated that it would be unconscionable to require Plaintiffs to pay fees and costs under that settlement and license agreement.
On appeal, ORBIS challenges the district court’s rul- ings regarding the applicability and unconscionability of the fee-shifting provision in the settlement and license agreement. For the reasons below, we reverse the district court’s denial, and remand for further proceedings.

Of California law:

“Except as attorney’s fees are specifically provided for by statute, the measure and mode of compensation of attorneys and counselors at law is left to the agreement, express or implied, of the parties.” CAL. CIV. PROC. CODE § 1021 (West 2013). Under California law, a contract may be the basis for an award of fees to a prevailing party for a tort related to a contract when the type of claim is within the scope of the provision. Gil v. Monsano, 121 Cal. App. 4th 739, 743 (Cal. Ct. App. 2004). Here, the fee provision entitled the prevailing party to an award of fees and costs “[i]n any litigation based on a controversy or dispute arising out of or in connection with this Agreement or its interpretation.” J.A. at A951.
To determine whether a contract permits the award of fees, we review its terms in view of California principles of contract interpretation. Under California statutory rules of contract interpretation, “[a] contract must be so inter- preted as to give effect to the mutual intention of the parties as it existed at the time of contracting.” CAL. CIV. CODE § 1636 (West 2013). For contracts reduced to writ- ing, “the intention of the parties is to be ascertained from the writing alone.” Id. § 1639. Further, “[t]he language of a contract is to govern its interpretation, if the language is clear and explicit, and does not involve an absurdity.” Id. § 1638. In addition, “[t]he words of a contract are to be understood in their ordinary and popular sense, rather than according to their strict legal meaning; unless used by the parties in a technical sense, or unless a special meaning is given to them by usage.” Id. § 1644.

Of the district court:

The district court erred by denying ORBIS’s motion for fees and costs based solely on the fact that the Buckhorn plaintiff was unaware of the Ropak-Xytec Agreement when it instituted the infringement action against ORBIS and OMH. (...)

The “clear and explicit” language of the fee provision does not require knowledge of either the Agreement or the scope of rights thereunder at the time the litigation was initiated. See CAL. CIV. CODE § 1638.

As to unconscionable :

Under California law, an unconscionable contract or- dinarily involves both a procedural and a substantive element: (1) oppression or surprise due to unequal bar- gaining power, and (2) overly harsh or one-sided results. Armendariz v. Found. Health Psychcare Servs., Inc., 6 P.3d 669, 689–90 (Cal. 2000). Determining unconsciona- bility requires the application of a “sliding scale” between procedural and substantive unconscionability. Id. at 690. Further, “[i]f the court as a matter of law finds the con- tract or any clause of the contract to have been uncon- scionable at the time it was made the court may refuse to enforce the contract.” CAL. CIV. CODE § 1670.5(a) (empha- sis added); see also Am. Software, 46 Cal. App. 4th at 1391 (“[t]he critical juncture for determining whether a con- tract is unconscionable is the moment when it is entered into by both parties-not whether it is unconscionable in light of subsequent events”). (...)

The district court erred by basing its finding of unconscionability on events taking place after Ropak and Xytec entered into their agreement rather than at the time they entered it. (...)
An analysis of events surrounding the time the par- ties entered into the contract shows that the fee provision was not unconscionable; indeed, Schoeller does not seri- ously contend that it was. In assessing the procedural element, we find no oppression or surprise due to unequal bargaining power. See Armendariz, 6 P.3d at 690. “‘Op- pression’ arises from an inequality of bargaining power which results in no real negotiation and ‘an absence of meaningful choice.’” A & M Produce Co. v. FMC Corp., 135 Cal. App. 3d 473, 486 (Ct. App. 1982) (citations omit- ted). “‘Surprise’ involves the extent to which the suppos- edly agreed-upon terms of the bargain are hidden in a prolix printed form drafted by the party seeking to enforce the disputed terms.” Id. The Ropak-Xytec Agreement involved negotiations between sophisticated business parties that worked out a six-page settlement and license agreement involving multiple patents, royalty payments over a million dollars to Schoeller’s predecessor-in- interest, and a reciprocal fee provision to resolve future disputes. As such, we determine that the procedural inquiry provides little support for a finding of unconscion- ability.

The bottom line

While dilatory conduct on the part of ORBIS during discovery may impact the reasonableness of the fee award, any discovery delays by ORBIS do not make its request to enforce its contractual right to fees “uncon- scionable.” On remand, the district court may factor the conduct of ORBIS and OMH into its analysis of the rea- sonableness of any fee award; it may not, however, refuse to make an award given the unambiguous terms of the contract.

Sunday, September 15, 2013

CBS Sunday Morning on September 15, 2013

Charles Osgood, in a red bow tie, introduced the stories for Sept. 15, 2013. He first noted that voters in Colorado removed two state senators who had advocated gun control. This was an introduction to the cover story, by Anthony Mason, on the Glock. Osgood noted that 2/3 of American police departments use Glocks, even though the company is based in Austria. Second, Ricky Gervais is introviewed by Mark Phillips. Third, Mo Rocca on the Rockefellers, centered on Eileen Rockefeller, daughter of David Rockefeller. Fourth, Tracy Smith on Earth, Wind, and Fire. Fifth, Nancy Giles on Bobbi Brown. Steve Hartman on the husband who found his wife a kidney. Then, a story on a replica flag to that which inspired the Star Spangled Banner.

The news started with Secretary Kerry speaking to the Israelis about the deal with Syria. Margaret Brennan gave a news report from Geneva on the agreement, which would have Syria's chemical weapons destroyed by mid-2014. Flooding in Colorado. Two storms in Mexico: Manuel and Ingrid. A statue to commerate the victims of the bombing at the 10th Street Baptist Church, 50 years ago.

Within the story by Mason on the Glock, there was a picture of US Patent No. 4,825,744. The inventor of the Glock had no prior experience in guns, and took a fresh look. The Glock has only 34 components.

The almanac was on the birth of Fay Wray, on Sept. 15, 1907.

Nancy Giles had talked with Bobbi Brown back in 1991, when Brown's business took off. Brown had a completely different view of lipstick than the then current providers. Leonard Lauder recognized the importance and baught her company.

Sunday Morning noted the death of Calvin Coolidge ("Cal") Worthington.

Bill Flanagan provided a repeat of his "no problem" editorial on the problem with "no problem." Of relevance to stories on Sept. 15, Flanagan mentioned "Thank you for giving me your kidney."

The moment of nature by Spiriva was on flamingos at Lake Bogoria in Kenya.

Friday, September 13, 2013

Teva wins

We accordingly reverse the district court judgment and
remand with orders to enter judgment in favor of Appellants.

The ’077 patent expired in March of this year, even
before the court held oral argument in the case. Since
Pronova brings this suit pursuant to the provisions of the
Drug Price Competition and Patent Term Restoration Act,
seeking only prospective relief, any issues regarding
the ’077 patent are now moot.
For the foregoing reasons, the judgment of the lower
court is reversed and the case is remanded with orders to
enter judgment in favor of appellants.

Link for Pronova v. Teva:

High Point Design: design patent case

As to the outcome:

Buyer’s Direct, Inc. (“BDI”) appeals from a final
judgment of the United States District Court for the
Southern District of New York holding BDI’s asserted
design patent invalid on summary judgment and also
dismissing BDI’s trade dress claims with prejudice. See
High Point Design LLC v. Buyer’s Direct, Inc., No. 11-CV-
4530, 2012 WL 1820565 (S.D.N.Y. May 15, 2012) (“Final
Decision”). For the reasons set forth below, we reverse the
grant of summary judgment of invalidity, vacate the
dismissal of BDI’s trade dress claims, and remand for
further proceedings consistent with this opinion.

As to obviousness:

When assessing the potential obviousness of a design
patent, a finder of fact employs two distinct steps: first,
“one must find a single reference, a something in existence,
the design characteristics of which are basically the
same as the claimed design”; second, “[o]nce this primary
reference is found, other references may be used to modify
it to create a design that has the same overall visual
appearance as the claimed design.” Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (internal
quotations omitted); see also Apple, Inc. v. Samsung Elecs.
Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012).

Under the first step, a court must both “(1) discern the
correct visual impression created by the patented design
as a whole; and (2) determine whether there is a single
reference that creates ‘basically the same’ visual impression.”
Durling, 101 F.3d at 103. The ultimate inquiry in
an obviousness analysis is “whether the claimed design
would have been obvious to a designer of ordinary skill
who designs articles of the type involved.” Id., quoted in
Apple, 678 F.3d at 1329.

Of experts:

Although obviousness is assessed from the vantage
point of an ordinary designer in the art, “an expert’s
opinion on the legal conclusion of obviousness is neither
necessary nor controlling.” Avia Grp., 853 F.2d at 1564.
That said, an expert’s opinion may be relevant to the
factual aspects of the analysis leading to that legal conclusion.
See Peterson Mfg. Co. v. Cent. Publ’g, Inc., 740
F.2d 1541, 1547 (Fed. Cir. 1984), abrogated on other
grounds by Beatrice Foods Co. v. New England Printing
and Lithographing Co., 899 F.2d 1171, 1177–78 (Fed. Cir.
1990) (“In civil litigation involving a design [patent], an
expert’s testimony is most helpful, as in the determination
of obviousness with respect to any other type of
invention, to explain the technology, the scope and content
of the prior art, the differences between the prior art
and the invention, and the level of skill in the art.”). For
that reason, the district court erred by categorically
disregarding the Rake Declaration. See Final Decision,
2012 WL 1820565, at *5.
We now turn to what we conclude were additional errors
in the district court’s application of the two-step
analysis set forth in Durling.

Of secondary considerations:

Finally, we turn to secondary considerations, which
the district court did not address in the Final Decision.
This court has held that “evidence rising out of the socalled
‘secondary considerations’ must always when
present be considered en route to a determination of
obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983); see also Hupp v. Siroflex of
Am., Inc., 122 F.3d 1456, 1462 (Fed. Cir. 1997) (“Invalidity
based on obviousness of a patented design is determined
on factual criteria similar to those that have been
developed as analytical tools for reviewing the validity of
a utility patent under § 103, that is, on application of the
Graham factors.”). Here, BDI alleged both commercial
success of the claimed design as well as copying. To the
extent that the obviousness of the ’183 patent remains at
issue on remand, the district court should address any
evidence of secondary considerations.
For the foregoing reasons, we reverse the grant of
summary judgment of obviousness and remand the case
to the district court.


Logical chasm defeats obviousness in St. Jude v. Access Closure

There was a mixed result in the St. Jude case:

ACI appeals three of the district court’s rulings: (1) that the safe-harbor provision of 35 U.S.C. § 121 protects the Janzen patent from invalidity due to double- patenting; (2) the construction of key terms in the Janzen patent; and (3) that ACI was not entitled to JMOL that the Fowler patents are invalid for obviousness. For the reasons that follow, we (1) reverse the district court’s safe harbor ruling regarding the Janzen patent; (2) in light of our safe harbor ruling, determine that the district court’s rulings regarding the claim constructions in the Janzen patent are moot; and (3) affirm the district court’s ruling that the Fowler patents are nonobvious and not shown to be invalid.

As to the safe harbor provision

We first address the district court’s application of the
safe harbor provision to the Janzen patent. The safe
harbor provision arose from difficulties created by restriction
requirements imposed by the U.S. Patent and
Trademark Office (PTO) during examination, followed by
double patenting challenges in the courts. A restriction
requirement arises during examination at the PTO when
an applicant pursues what are determined to be multiple
patentably distinct inventions in the same application (see
35 U.S.C. § 121). Subsequently, a double patenting
challenge may arise when, in an infringement suit, the
patentee is charged with having pursued the same or
obviously similar inventions in multiple applications, one
or more of which later issued as the patent in suit (see In
re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985)). A successful
double patenting defense invalidates the offending claims
in the patent. (...)

ACI contends that the Janzen patent violates consonance.
The judicially-created consonance concept derives
from the safe harbor’s “as a result of” requirement and
specifies that the “line of demarcation between the ‘independent
and distinct inventions’ that prompted the restriction
requirement be maintained.” Gerber Garment
Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688 (Fed. Cir.
1990). An applicant’s pursuit of two or more non-elected
inventions in the same subsequent application does not by
itself violate the line of demarcation. See Boehringer
Ingelheim Int’l GmbH v. Barr Labs, Inc., 592 F.3d 1340,
1350 (Fed. Cir. 2010) (“The safe harbor is provided to
protect an applicant from losing rights when an application
is divided. The safe harbor of § 121 is not lost if an
applicant does not file separate divisional applications for
every invention or when independent and distinct inventions
are prosecuted together.”). However, in Gerber, we
concluded that “[p]lain common sense dictates that a
divisional application filed as a result of a restriction
requirement may not contain claims drawn to the invention
set forth in the claims elected and prosecuted to
patent in the parent application.” Gerber, 916 F.2d
at 687.

The requirement for consonance applies to both the
patent challenged for double patenting (the challenged
patent) and the patent being used as a reference against
the challenged patent (the reference patent). Boehringer,
592 F.3d at 1352 (“We have repeatedly held that the ‘as a
result of’ requirement applies to the challenged patent as
well as the reference patent.”). Consonance in a case like
this requires that the challenged patent, the reference
patent, and the patent in which the restriction requirement
was imposed (the restricted patent) do not claim any
of the same inventions identified by the examiner. (...)

The parties’ dispute turns in large measure on the nature
and effect of the examiner-imposed election of species.
An election of species is similar to a restriction and
again is explained best by example. An applicant may file
an application containing claims to a generic invention,
such as a widget. The application may also include claims
to several patentably distinct species of the generic invention,
such as the widget + X, the widget + Y, and the
widget + Z.
After reviewing the application, the examiner may
impose an election of species that requires the applicant
to choose one of the species for examination. The election
of species, like a typical restriction, helps the examiner to
focus the examination process. The applicant typically
elects a species (e.g., widget + X), focuses on prosecuting
the generic claims to the widget and any claims to the
widget + X species, and withdraws the claims to the nonelected
species, widget + Y and widget + Z. If the generic
claim to the widget is allowed, the applicant may obtain
claim coverage on all of the species. If the generic claim is
not allowed, the application is restricted.
The PTO regulation that formally sets forth the
framework for an election of species is 37 C.F.R. § 1.146:
In the first action on an application containing a
generic claim to a generic invention (genus) and
claims to more than one patentably distinct species
embraced thereby, the examiner may require
the applicant in the reply to that action to elect a
species of his or her invention to which his or her
claim will be restricted if no claim to the genus is
found to be allowable.
Thus, § 1.146 states that if no generic claim is found
allowable, then the election of species will create a restriction
under 35 U.S.C. § 121. 37 C.F.R. § 1.146 (“his or
her claim will be restricted if no claim to the genus is
found to be allowable”) (emphasis added).5
Returning to the parties’ arguments, ACI agrees that
the method/device restriction in the grandparent application
affected the line of demarcation, but argues that the
election of species did not affect the line because an election
of species is inherently different from a restriction

St. Jude loses on consonance:

However, turning to the sibling patent, we conclude
that consonance was not maintained. The sibling patent’s
independent claim 1 is drawn to a method of sealing a
puncture in a wall of a blood vessel involving neither a
guidewire nor a dilator (i.e., a claim directed to Group II,
but not limited to any of Species A, B, or C). Thus the
sibling application was not filed “as a result” of the restriction
since it pursued a claim generic to all of the
Species in Group II, and therefore overlapped Group II,
Species C found in the Janzen patent.
The jury found that claims 7, 8, and 9 of the Janzen
patent are not patentably distinct from claims of the
sibling patent. The trial court saved invalidity under this
finding based on double patenting rules by applying the
safe harbor provision. Since we conclude that the Janzen
patent and the sibling patent did not maintain consonance,
and therefore the safe harbor provision cannot
apply, we hold that claims 7, 8, and 9 of the Janzen patent
are invalid. The trial court’s ruling to the contrary is

As to obviousness:

In response, St. Jude contends that both prior art references
fail to disclose the Fowler patent’s claimed feature
of a balloon configured to operate as a positioning device
to prevent a plug from entering a blood vessel. In particular,
St. Jude argues that the references lack “an elongate
positioning member . . . to position said vessel plug . . .
without extending into the blood vessel” from claim 21 of
the ’375 patent and “inflating a member on an insertion
member to identify the location of the blood vessel adjacent
to the incision” and “positioning the vessel plug in
the incision such that the distal end of the vessel plug is
located proximally of the blood vessel” from the combination
of independent claim 9 and its dependent claim 14 of
the ’616 patent.
We review the jury’s conclusions on obviousness without
deference and the underlying findings of fact for
substantial evidence. The Johns Hopkins Univ. v. Datascope
Corp., 543 F.3d 1342, 1345 (Fed. Cir. 2008).


One of ordinary skill in the art at the
time of the invention would have viewed the balloon and
the gelfoam stick as substitutes to achieve the same
hemostasis objective, not as complementary devices to
achieve the positioning benefit of St. Jude’s claimed
invention. (...)

Therefore, while Takayasu does disclose using x-ray
and ultrasound to help place a gelfoam stick, between this
disclosure and the claimed invention lies a logical
—a chasm not bridged by the prior art, common
sense, or ACI’s statements that the claimed invention was
obvious. Even under our “expansive and flexible” obviousness
analysis (see KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415, (2007)), we must guard against “hindsight
bias” and “ex post reasoning” (id. at 421). Doing so here
compels us to reject ACI’s argument. (...)
ACI further contends that, because St. Jude’s expert
Dr. Kovacs allegedly provided only conclusory testimony,
the district court erred by rejecting ACI’s proposed combination.
Dr. Kovacs testified that the proposed combination
of Takayasu and Smiley was “very, very far out and it
makes no sense to me whatsoever” and “[c]ombining two
references which are independently farfetched is
farfetched times farfetched, it’s farfetched squared.” J.A.
Even if Dr. Kovacs provided conclusory testimony,
ACI did not carry its burden of proving invalidity. We
have held that “[s]ince we must presume a patent valid,
the patent challenger bears the burden of proving the
factual elements of invalidity by clear and convincing
evidence.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359
(Fed. Cir. 2007). This burden of proof never shifts to the
patentee. Id. ACI failed to carry its burden of proof.
Therefore, ACI’s arguments about Dr. Kovacs are immaterial.
We find each of ACI’s obviousness arguments without
merit and affirm the district court’s refusal to grant ACI’s
renewed motion for JMOL.

Irell & Manella, LLP for St. Jude; Knobbe, Martens Olson & Bear, LLP for Access Closure.

Tuesday, September 10, 2013

The "big picture" scan dominates analysis of the facts?

See Holloway blog for further discussion of the buckyball story.

From within the text concerning Baum's 1990 article in C&E News:

The average reader of a newsmagazine is not a close reader. He or she scans, often passing through technical bits which are not immediately clear. If the overall scan makes sense, they accept the small bits. The overall impression of an article is often, as it is for any reader in any market, controlled by the framing of the presentation. In this case, the article is framed by the language and pronouncements of the boxes, and the introduction which asserts that two camps of scientists are in conflict.

At upper left on the page, the heading SCIENCE/TECHNOLOGY. The title, Ideas on Soot Formation Spark Controversy is printed in almost sensationally large type, large enough that the six words require two lines. The article is in three columns, and the center column text on the first page is broken about a third of the way down with the designation NEWS ANALYSIS between two horizontal set offs.

Sunday, September 08, 2013

"60 Minutes" on September 8, 2013

First, a story on robots by Steve Croft. Andrew MacAfee from MIT notes robots are responsible for the jobless recovery. Routine middle skilled jobs with structured tasks are being eliminated. Heavily automated warehouses. Devons, MASS: 100 people and 69 robots. Bruce Welpy of Quiet Logistics. El Camino Hospital with robots called tugs. da Vinci surgery systems. Mention of IBM's Watson. eDiscovery for law firms. Tesla factory in California. Rodney Brooks of iRobot. Baxter. Baxter costs $22,000. Rethink Robotics. Baxter lasts 3 years. $3.40 per hour. adept technology. Cobra Robot. Phillips Electric Shavers. What are the people going to do? And, computers are not likely to challenge our authority (contrast 2001).

Second, Lesley Stahl on 9/11 Memorial Museum. An in-depth story. This is an update of a story from April. 2983 names of victims of 9/11. The museum is under the memorial plaza. Foundation Hall. The belly of ground zero. A museum in an artifact. The final resting place of love ones. Greenwall: we are all survivors of 9/11. Survivors' staircase. 441 first responders lost lives. American Airlines Flight 11. American Airlines Flight 77. United Airlines Flight 93. Sound can be a more emotional form of communication. Sensitive question about people jumping. Bodies falling from the north tower. "You have to tell the story." Cantor Fitzgerald, 658 people lost.

Third, Lara Logan on Michael Jackson's legacy. The Michael Jackson brand is alive and well. Cirque de Soleil in Barcelona, Spain. John Branca, an architect of how to make money from legacy. Michael Jackson worldwide ticket sales $300 million. "The Michael that we knew." The Michael Jackson that John Branca knew. 20% of will went to charity. Branca and John McClain were executors of will. Zack O'Malley of Forbes: he never stopped spending like it was the 1980's.

CBS Sunday Morning on September 8 2013

Lee Cowan, not Charles Osgood, hosted the stories for September 8. The cover story, done by Cowan, was on the "art of the fake", featuring Ken Perenyi (author of Caveat Emptor). Honoring genuine talent is one thing, but how about the imitators? Copying Buttersworth. Second, Mark Strassman on Freda Kelly, secretary to the Beatles. Third, Mo Rocca on Woodrow Wilson. Tracy Smith on Billy Crystal. Jeff Glor, Dave Edelstein, and Steve Hartman on a weight lifter.

Headlines Obama will speak on Syria, Tokyo gets 2020 Olympic Games. Der Spiegel on NSA. Weather: mild in northeast.

Almanac. Minnesota Mining does Scotch tape on September 8, 1930. Richard Drew. See also:

Faith Salie does editorial on vocal fry / creaky voice.

Lava lamp 50th. Edward Craven-Walker of Britain invented the lava lamp in 1963.

Steve Hartman on Jonathan Stoklosa.

Jeff Glor on Urban Dove.

Edelstein on "Short Term 12."

Moment of nature. Great Falls, Virginia.

Wednesday, September 04, 2013

Waxman v. Reines in the Soverain v. Newegg case

From Soverain decided by the CAFC:

Of dependent claims at issue:

We cannot discern for ourselves any
independent basis for their validity. We therefore affirm
the holding of invalidity of these claims as well.”); see also
SIBIA Neurosciences, 225 F.3d at 1359 (“in this appeal,
SIBIA has failed to argue the validity of the dependent
claims separately
from the validity of claim 1. Thus,
these claims do not stand on their own, and given our
determination that claim 1 is invalid, the remaining
dependent claims must fall as well.”).

On this rehearing, Soverain has not provided any new
information concerning the specific limitation of claim 35.
The inclusion of an additional known element from a
similar system, as set forth in claim 35, is subject to
review on established principles, as summarized in KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(an unobvious combination must be “more than the predictable
use of prior art elements according to their established
functions”). The supplemental briefing reinforces
the absence of dispute that that the element in claim 35 is
in the CompuServe Mall prior art.

Trading Technologies wins on appeal to CAFC

The district court was reversed in Trading Technologies

In this patent infringement action, Plaintiff-Appellant Trading Technologies International, Inc. (“TT”) appeals from the district court’s entry of summary judgment that (i) the asserted claims of TT’s U.S. Patents 7,676,411 (the “’411 patent”), 7,693,768 (the “’768 patent”), 7,904,374 (the “’374 patent”), and 7,685,055 (the “’055 patent”) are invalid for failure to comply with the written description requirement of 35 U.S.C. § 112; and (ii) prosecution history estoppel bars TT from asserting the ’055 patent against software products that include certain display functions. The district court premised both holdings on deference to our prior decision in Trading Technologies International, Inc. v. eSpeed, Inc., 595 F.3d 1340 (Fed. Cir. 2010) (“eSpeed”), which considered two related pa- tents from TT’s portfolio.
We conclude that eSpeed does not control the issues presented in this appeal, and the district court’s rulings based on that case are therefore incorrect. Accordingly, and as described more fully below, we reverse and remand for further proceedings.


As described, the district court granted summary judgment in favor of the Defendants as to the invalidity of most claims of TT’s ’411, ’768, ’374, and ’055 patents, holding that our prior decision in eSpeed rendered those claims invalid as a matter of law for failing to satisfy the written description requirement of § 112.
TT argues that the district court relied on portions of eSpeed that dealt solely with interpreting the term “stat- ic” in the related ’132 and ’304 patents without determin- ing or addressing the scope of the patents’ shared disclosure. Noting that the sufficiency of a patent’s writ- ten description presents a question of fact, TT faults the district court for relying entirely on eSpeed rather than conducting its own analysis of whether any of the claims at issue find adequate written description support under § 112. TT contends that, on the merits and apart from any misapplication of eSpeed, the claims of the ’411, ’768, ’374, and ’055 patents satisfy the written description requirement.

Bayer loses case against Dow on U.S. Patent No. 6,153,401

Bayer loses in Bayer v. Dow:

When the inventors applied for the patent at issue, they had sequenced one gene coding for one enzyme, using a test purportedly capable of finding other, similar genes. In writing its claims, the owner—now Bayer CropScience AG—decided to claim a broad category based on the function of the particular enzyme, defining the category by using a term with an established scientific meaning. In doing so, Bayer got ahead of the science: experiments had not confirmed that the term even applied to the particular enzyme whose gene Bayer’s inventors had sequenced. Soon science showed that it did not, and Bayer knew as much years before its patent issued—but did not change its claim language. When it ultimately sued Dow AgroSciences for infringement, Bayer recog- nized that the term used, in its established scientific meaning, did not cover the accused product (itself differ- ent from the particular enzyme whose gene Bayer’s inven- tors had sequenced), so it argued for a broad functional claim construction.

Applying our decisions about the potentially unwel- come consequences of a patentee’s chosen claim language, the district court rejected Bayer’s argument, explaining particularly the great breadth of the asserted functional construction, and entered summary judgment of non- infringement. We too are unpersuaded by Bayer’s proposed claim construction. Because Bayer has presented no argument for reversing the non-infringement judgment independent of our adopting that construction, we affirm.

Reliance on unverified belief:

Bayer’s reliance on an unverified belief about its enzyme soon proved wrong. In 1993, when Bayer’s application was still pending, scientists determined that it was incorrect to refer to Bayer’s enzyme as a monooxygenase because the second oxygen atom does not actually end up in water. It was, instead, a dioxygenase, because both oxygen atoms are incorporated into products other than water. See Fumiyasu Fukumori & Robert P. Hausinger, Alcaligenes eutrophus JMP134 “2,4- Dichlorophenoxyacetate Monooxygenase” Is an α- Ketoglutarate-Dependent Dioxygenase, 175 J. Bacteriology 2083 (1993). Yet, despite the announcement of this discovery in the very title of the article, and Bayer’s knowledge of the article, Bayer did not alter the claims of its application—which did not mature into a patent until seven years after the 1993 discovery. Accordingly, the ’401 patent issued in 2000 with independent claim 1 reciting an artificially constructed gene as follows:
A recombinant gene, comprising
a DNA sequence encoding a polypeptide having the biological activity of 2,4-D monooxygenase which is capable of being expressed in a plant, operably linked to (...)

At district court:

Instead, the [district] court concluded that the “plain and ordinary meaning” requires that “2,4-D monooxygenase” be read to embody the established scien- tific meaning of “monooxygenase,” which involves one oxygen atom going to water, and that the whole phrase therefore means “the enzymatic activity of an enzyme, in a biological system, that causes a reaction with 2,4-D, and two molecules of oxygen, where one molecule of oxygen is added to 2,4-D and the other ultimately forms water.” Id. at *4; see id. at *3-8. Under that construction, there was no dispute that Dow’s products do not infringe because they are dioxygenases, even though they “create 2,4-D resistant plants” through an enzymatic activity that produces cleaving of the side chain of 2,4-D to yield 2,4- DCP. Id. at *2.

Having rejected Bayer’s “broad functional-based” con- struction, id. at *8, the court went on to explain that, if it had concluded otherwise, it still would have granted summary judgment for Dow, just for a different reason. Id. at *8-10. Specifically, the court ruled that the claim so construed would “fail[] to satisfy the written description requirement of 35 U.S.C. § 112” because disclosing one gene and the test used to find it was not enough to cap- ture the large genus that Bayer purported to have claimed. Id. Bayer appeals.

Interesting wording by the CAFC:

To begin with, these efforts fight a facially straight- forward textual analysis. As the district court recognized, all agree that the word “monooxygenase” has long had a clear meaning—i.e., an enzyme catalyzing a reaction in which one oxygen atom is incorporated into water and the second is incorporated into something other than water.

As to not using a term in its customary sense:

Arguing against this textual analysis, Bayer proposes a construction that first requires stripping the phrase “2,4-D monooxygenase” of the scientifically accepted descriptive content of the term “monooxygenase.” Adopting Bayer’s position, we think, would require that the ’401 patent, or its history, make reasonably clear that Bayer was not using the term in its established descriptive sense. See, e.g., Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1355 (Fed. Cir. 2003). Familiar claim- construction policies regarding public notice and patentee drafting duties make it appropriate to demand such clarity here: Bayer chose the language based on an unverified belief that it accurately described its enzyme, learned that the belief was false while its application was pending, had seven years before its patent issued to alter the language, but never did.

The patent and its history, however, do not clearly indicate that the patent uses the language at issue without its accepted scientific descriptive meaning. On the con- trary, Bayer’s usage in the intrinsic record is at the very best inconsistent. Much of it actually reinforces the straightforward descriptive meaning of the claim terms.
Nothing in the intrinsic record affirmatively indicates that, if the phrase “2,4-D monooxygenase” is descriptive, the “mono” part is to be ignored. Perhaps Bayer should have recognized that its background assumption that “mono” was accurate was unverified, and initially used a different phrase. But given its reliance on that assump- tion, one would hardly expect the 1989 written description to contain a redefinition to override the “mono” meaning.

Phillips is mentioned:

Bayer’s construction has not only textual problems. It goes far beyond the Figure 10 enzyme, beyond monooxy- genases, beyond enzymes produced by bacteria found mainly in soil, to capture the broad functionally defined genus of enzymes that cause cleaving of the 2,4-D side chain. This broad reading would call into serious doubt the claim’s validity under 35 U.S.C. § 112(a). See Bayer, 2012 WL 4498527, at *8-10.
In this case, which is not one in which a patentee in- vokes invalidity considerations to support a narrowing construction, Bayer seeks a broad construction of its own patent, and the alleged infringer Dow has raised invalidi- ty problems with that construction. A record regarding those problems was extensively developed at the same time as the record for claim construction. In these cir- cumstances, it is both possible and sensible to find that such grave doubts reinforce the textual objections to Bayer’s proposed construction. This court’s decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), while observing that “validity analysis is [not] a regular component of claim construction,” leaves room for reliance on this bolstering consideration where, as here, the record
on invalidity is sufficiently developed to establish grave validity doubts under the court’s standards. Id. at 1327- 28.3
Bayer’s proposed construction broadly covers a class of enzymes defined by their function of causing cleaving of the side chain of 2,4-D, while its written description structurally identifies just one gene sequence and the enzyme it encodes. We have not articulated a comprehen- sive and precise formulation for identifying when such a combination runs afoul of Section 112(a)’s written- description requirement; indeed, we have counseled against “bright-line rules” in this area. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). But we have indicated the primacy of structural identification for inventions in certain areas like the one at issue here, and when we have adverted to the possibil- ity of other means of identification, we have focused on whether such alternative means sufficiently correlate with structure. See, e.g., Novozymes A/S v. DuPont Nutrition Biosciences APS, No. 2012-1433, 2013 WL 3779376, at *14 (Fed. Cir. July 22, 2013); Ariad, 598 F.3d at 1350; Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115, 1121, 1124 (Fed. Cir. 2008); Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 925 (Fed. Cir. 2004) (“functional descriptions of genetic mate- rial can, in some cases, meet the written description requirement if those functional characteristics are ‘cou- pled with a known or disclosed correlation between func- tion and structure, or some combination of such characteristics’”) (quoting Enzo Biochem, Inc. v. Gen- Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002));


skilled artisans would readily understand the expla- nation here, namely, Bayer’s initial mistaken belief about its enzyme’s properties and then its insistence on retain- ing claim language reflecting that belief even after it was known to be false.

Lamb-Weston is cited (Ohio's wheelbarrow is not):

Moreover, it is hardly unknown for a patentee with an invention that could be protected to fail in securing such protection by bad choices in claim draft- ing. See, e.g., Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1308-09 (Fed. Cir. 2000).

Sunday, September 01, 2013

CBS Sunday Morning for September 1, 2013

Charles Osgood introduced the stories for summer's end, Labor Day. The cover story is by Martha Teichner on telecommuting. Booking a flight with JetBlue. Radiologist reading x-rays from his basement. To commute or not telecommute? Second, Serena Alschul on Tim Robbins. Shawshank Redemption. Now Tim is teaching inmates on acting. John Blackstone on Joe Blum who is photographing workers of the new Bay Bridge. Lee Cowan on Arsenio Hall, once the prince of late night. Anthony Mason on J.D. Salinger. David Edelstein. Mo Rocca on pencils.

Headlines. After events in Britain, President Obama now wants Congressional approval on actions in Syria. This is Plan B. Obama asks "what message will we send if dictator can gas civilians?" Comments on Obama from state run Syrian newspaper: American retreat. Nelson Mandela goes home. Deborah Potter in South African. Smoke conditions in Yosemite. Sir David Frost died on the Queen Elizabeth liner at age 74. Weather: scattered showers in NE. Rain for Labor Day.

Martha Teichner on telecommuting. Starting with Shamir Shah in Pittsburgh. Works for Virtual Radiologic, and reads x-rays, cat scans from his basement. Work heaven. Move: Office Space. To commute or telecommute. Sociologist Jennifer Glass at the University of Texas. CBS poll: 24% of Americans telecommute. Issue: available to work 24/7? Monday and Friday are biggest days. Poll: 40% say they work same hours. Michell Mueller for JetBlue. Does reservations 7-5. Salt Lake City. How does Jet Blue know Michelle is working? Monitoring. Rebecca Ludlow of Jet Blue. She critiques calls of Michelle., shoe retailer. Zappos discourages telecommuting. Tony Sheh is CEO of Zappos. Marissa Mayer of yahoo scaledback telecommuting. The idea wall at Zappos. Zack Ware of Los Vegas did building design of Zappos. Average office 100-150 sq. feet per person; Zappos has 90. Shah is 1 of 400 radiologists of VRad doing work for 2700 medical facilities.

Sept 1, 1752. Isaac Norris announced arrival of Liberty Bell. Weighed over a ton. It cost 100 pounds, now $20,000. In Oct. 1777, bell was removed from city. E flat. Last rung 1846 for George Washington's birthday. From 1885-1915, bell traveled around country. Silent symbol of promise of America.

John Blackstone on photographer Joe Blum, now 72 . Been photographing bridge for 15 years. Bridge is suspending from a single 500 foot tower. Blum worked as a boiler maker. Iron workers: Mental and emotional toughness. Joe was taking pictures of the ironworkers. Peter Stackpole photographed the old bridge. San Francisco Arts Commission opened exhibit of Blum's photographs at City Hall. Blum's only income was social security and pension from days as boiler maker.

1994 film Shawshank Redemption with Tim Robbins. Serena Alschul interviews Robbins giving an acting class to inmates in California. "state of happiness." Actors Gang, founded in 1981. Bull Durham. Life with Susan Sarandon for 23 years. Dead Man Walking. 1996. Now, a play. Gill Robbins with The Highwaymen. "Thanks for Sharing" opens this month.