Saturday, November 30, 2013

Appellants do not fare well in Ex parte Gontkosky

PTAB cites to KSR and Keller in Ex parte Gontkosky:

Appellants’ arguments are not persuasive. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.
Id. at 417. In determining whether obviousness is established by combining the teachings of the prior art, “the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).

Note also

Appellants have provided no evidence of such, and an attorney’s argument cannot take the place of evidence lacking in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). (...)
As such, we find that an ordinary skilled artisan would have had a reasonable expectation of success in modifying the press forming device of AAPA with that of Futamura. See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (noting that all that is required is a reasonable expectation of success, not absolute predictability of success).
(...) In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed).

PTAB reverses the examiner in Ex parte Lee

Oetiker is cited in Ex parte Lee

PTAB affirms in part in Kurzweil

There was mixed decision in Ex parte Kurzweil with appellant represented by Fish & Richardson.

Tuesday, November 26, 2013

CAFC analyzes claim limitation "essentially free of"; Board confuses milligrams and micrograms!

Within In re Eaton

In the present case, the Board’s affirmance—and the examiner’s rejections—turn on the meaning of the claim limitation “essentially free of antioxidants.” The parties dispute the construction of this phrase. However, both parties acknowledge that the specification defines “essen- tially free of antioxidants” functionally to mean that the claimed composition “should not contain an amount of antioxidants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supplement.” J.A. 286; Appellant’s Br. at 5; Appellee’s Br. at 14. The specification goes on to state that “lower amounts of antioxidants” may be present if they do not render the claimed composition “ineffective or [] reduce[] effectiveness.” J.A. 286. The parties’ disagreement stems from the fact that the specification does not, however, quantify what is a “lower amount[]” or what “amount of antioxidants [] would tend to damage or inactivate” the vitamin B12 or folic acid, but instead relies on functionali- ty.
Referring to the specification, the Board correctly determined that “essentially free” of antioxidants means a composition that “should not contain an amount of antiox- idants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supple- ment.” J.A. 3 (emphasis added).

As to factual errors in the Board's decision:

The Board’s decision is particularly problematic given a clear factual error appearing in both the examiner’s and the Board’s analysis of Jungkeit. Specifically, Jungkeit discloses 200 milligrams of vitamin C—not 200 mi- crograms, as stated by the examiner. J.A. 305. The Of- fice’s analyses repeatedly relied on the understanding that “Jungkeit’s composition contain[ed] 200 μg of vitamin C.” J.A. 4, 65 (emphasis added). In truth, Jungkeit discloses 1000 times that much vitamin C—200 mg. J.A. 305. This error is not harmless. Indeed, Jungkeit teaches the use of vitamin C in a significantly greater quantity than any of the other nine components in Jungkeit’s claimed composition. J.A. 304–05.

For example, the examiner’s rejection stated:
“It is not clear from [the definition in the specifi- cation] what amount [of antioxidant] would ‘dam- age or inactivate’ some of the vitamin B12 and/or folic acid. However, it is clear from Jungkeit that the amount of vitamin C present in the composi- tion (200μg) does not damage and inactivate the vitamin B12 and/or folic acid.”
J.A. 65 (emphasis added). The Board adopted the exam- iner’s explanation. J.A. 4. This error further undermines the Board’s conclusion that the prior art discloses compo- sitions that are “essentially free” of antioxidants.

Scientific content of an article versus publication metrics

from Opinion: Researching the Researchers

The NIH system for grant funding is a prime example of a process that has come in for strong criticism. Many argue that scientists tailor proposals to win grants rather than to describe the most innovative, boldest, or best approaches for solving society’s medical problems


Still, there are constructive ideas. The San Francisco Declaration on Research Assessment is an example of a well-publicized and thoughtful document, which has gathered widespread support. But how do we actually implement that document’s call to “encourage a shift toward assessment based on the scientific content of an article rather than publication metrics,” or to “consider the value and impact of all research outputs (including datasets and software) in addition to research publications?”

A claim element to "storing methanol"

In Ex parte Olah, the rejection of the following claim was reversed:

1. A method of providing a strategic U.S. fuel reserve comprising storing methanol or dimethyl ether in appropriate storage facilities in a strategic amount to serve as an alternative fuel to imported oil.

Rejections 1, 2, 6 and 13-15 are reversed. Rejections 3-5, 7-12 and 16
are affirmed.

PTAB addresses issue of amending to "consisting of" in written description context

The issue in Ex parte Cohn:

The issue raised by this appeal is whether amending the claims to recite that the claimed assessment method consists of, rather than comprises, a specific set of tests introduced new matter into the claims.

The Examiner's issue

According to the Examiner, “Applicant appears to disclose that some tests are optionally included or excluded” in assessing cardiovascular health (Ans. 7), and this “is in clear contradiction to the requirements of using ‘consisting of’ terminology within the claims” (id. at 8). Thus, the Examiner finds that the Specification does not provide support for “the newly added claim limitation that the early marker tests are a closed set consisting of measuring arterial elasticity, measuring blood pressure at rest and during exercise, imaging the optic fundus, analyzing urine samples for albumin, and determining wall thickness” (id. at 4-5), or for “the newly added claim limitation that the early cardiac disease tests are a closed set” (id. at 6). (...)

The Examiner “acknowledges there appears to be at least one
embodiment where ten tests are used; however the specification lacks evidence and support that only 10 tests are used and no other possible combination of tests are used” (Ans. 6).

This is a distinction without a difference. There is no dispute that the Specification explicitly discloses each of the ten tests listed in the claims,2 as well as a small number of additional tests, some of which, like the ankle-brachial index, are relevant when assessing high-risk patients (see, e.g., Spec. 4: 17-20, 24). It is well settled that alternative elements which are positively recited in the Specification may be explicitly excluded from the claims. See In re Johnson, 558 F.2d 1008, 1019 (CCPA 1977) (“[The] specification, having described the whole, necessarily described the part remaining.”).

Appellant wins in Ex parte Stout

The appellant prevailed at the Board in Ex parte Stout

At issue were method claims such as

A method for forming a sharpened cutting tool, the method comprising:

grinding a cutting tip to form an intermediate cutting tool, the cutting tip of the intermediate cutting tool comprising a planar face and a sharpened cutting edge at a distal end of the planar face, the cutting tip being relieved on a side and an end that cooperate with the planar face to define the sharpened cutting edge;

masking the intermediate cutting tool such that a first predetermined portion of the planar face is exposed and a second predetermined portion of the planar face is not exposed, the exposed portion of the planar face including the sharpened cutting edge and including at least portions of the end and the side that cooperate to define the cutting edge; and

depositing a wear-resistant material onto the exposed portion of the planar face of the intermediate cutting tool to form the sharpened tool.

The appellant overcame a written description rejection; Innova was cited by the PTAB panel, which included George Best:

However, “when an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004).

Monday, November 25, 2013

PTAB cites new ground of rejection under 35 USC 101

In Ex parte Janakiraman , a new ground of rejection under 35 USC 101 is stated and Ex parte Mewherter is cited.

Timorous statement in specification fails written description

Appellant lost in Ex parte Darcy with PTAB stating

Merely listing one way, or even many ways, to achieve a result does not always apprise one of ordinary skill in the art of all ways to achieve a result. Here, we merely have a timorous statement in Appellants’ disclosure that the claimed range “may cause breaking.” Spec., para. [0041]. This statement does not allow one of ordinary skill in the art to envision or derive the claimed solution. There is no discussion to expand on this; for example, a disclosure of what causes breaking but not melting, so that one of ordinary skill could envision what other claimed wavelengths would work.

Examiner affirmed in Ex parte VAN LIESHOUT

In Ex parte VAN LIESHOUT , the appellants won on written description but lost on obviousness.

As to non-functional descriptive material:

As a general proposition, merely reciting what data or information represents (e.g., “consistent service availability” information) constitutes non-functional descriptive material, because the information does not further limit the claimed invention either functionally or structurally. Here, the recitation “consistent service availability information” merely describes what the information elements represent. Such information does not limit the claimed steps either functionally or structurally. Rather, the information is merely being transmitted and provided. Thus, the recited information elements are properly considered to contain non-functional descriptive material that do not patentably distinguish over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) and Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir. No. 2006-1003, June 12, 2006).

As to the issue of waiver

Moreover, such an argument is untimely and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”).

Suppository goes no where

The appellant Anliker lost on obviousness on claims directed to "A suppository package."

PTAB noted

It is well established that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Here, because Voss discloses a package with an opening notch 22 (see Ans. 9) and Gordon’s pouch 17 is easily opened at 26 (see Ans. 6), we agree that the Examiner is on solid ground to conclude that the package of Voss as modified by Gordon is capable of being opened simultaneously, as called for by claim 20. See In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990).

Concerning Scripps work on lipids in algae

From Research Unlocks Algae Biofuel Potential

The research when patented and commercially available has the potential to move algae to the forefront of the most promising feedstocks for future biofuel production. Algae’s advantages include their widespread availability, higher oil yields and that they reduce the pressure on cultivated land for production of biodiesel. Thus, algae will be the future of fuel.

Of a change in world view:

When well-nourished, the algae do grow well, but produce carbohydrates instead of the desired lipids for conversion to fuel.


By metabolically engineering a lessening of the fat-reducing lipases enzymes, the researchers were able to increase lipids without compromising growth.


Hildebrand said that the accomplishment was significant, commenting, "Scientifically this is a huge achievement. Five years ago people said you would never be able to get more lipids without affecting growth negatively'. This paper shows that there isn't an intrinsic barrier and gives us hope of more new things that we can try - it opens the door to a lot more work to be done.' '

See also Scripps oceanography researchers engineer breakthrough for biofuel production including text

As reported in this week's online edition of the Proceedings of the National Academy of Sciences, Scripps graduate student Emily Trentacoste led the development of a method to genetically engineer a key growth component in biofuel production. (...)

By metabolically engineering a "knock-down" of fat-reducing enzymes called lipases, the researchers were able to increase lipids without compromising growth. The genetically altered strains they developed, the researchers say, could be produced broadly in other species.

"These results demonstrate that targeted metabolic manipulations can be used to increase accumulation of fuel-relevant molecules.… with no negative effects on growth," said Trentacoste. "We have shown that engineering this pathway is a unique and practical approach for increasing lipid yields."

Note however text from US Patent No 8,592,188 (Solazyme) :

The present invention also provides for the use of an inducible promoter to express a gene of interest. In particular, the use of an inducible promoter to express a lipase gene permits production of the lipase after growth of the microorganism when conditions have been adjusted, if necessary, to enhance transesterification, for example, after disruption of the cells, reduction of the water content of the reaction mixture, and/or addition sufficient alcohol to drive conversion of TAGs to fatty acid esters.

Inducible promoters useful in the invention include those that mediate transcription of an operably linked gene in response to a stimulus, such as an exogenously provided small molecule (e.g, glucose, as in SEQ ID NO:1), temperature (heat or cold), light, etc. Suitable promoters can activate transcription of an essentially silent gene or upregulate, preferably substantially, transcription of an operably linked gene that is transcribed at a low level. In the latter case, the level of transcription of the lipase preferably does not significantly interfere with the growth of the microorganism in which it is expressed.

Split decision at CAFC in Centillion v. Qwest

The outcome of Centillion v. Qwest:

Centillion Data Systems, LLC (Centillion) appeals from the district court’s grant of summary judgment to Qwest Communications International, Inc. (Qwest) that various claims of U.S. Patent No. 5,287,270 (’270 patent) are not infringed. Centillion also challenges the award of costs to Qwest. Because the district court erred in con- cluding that there is no genuine factual dispute regarding infringement by one of the two accused products, but did not err with respect to the other product, we affirm-in- part and reverse-in-part the judgment of noninfringement, vacate the award of costs, and remand for further proceedings.

Of Centillion's win:

We agree with Centillion that there is a genuine factual dispute whether .TXT files meet the limitation at issue. Evidence in the record suggests that .TXT files may be in a format that allows them to be displayed on a PC. See J.A. 3512.

Qwest’s assertion that the claims require creation of database tables is incorrect. There is no language in the claims that requires creation of database tables. The claims require only that the data processing means gen- erate the preprocessed summary reports and organize them into a format for storage, manipulation, and display. The district court’s construction, quite properly, does not require that database tables be generated.

As to judicial admission:

We agree that Centillion did not concede that customers who use third-party software do not infringe. A statement during an argument made to a court consti- tutes a conclusive “judicial admission” only if the conces- sion is “clear, deliberate, and unambiguous.” United States v. Cunningham, 405 F.3d 497, 504 (7th Cir. 2005); see also Keller v. United States, 58 F.3d 1194, 1199 n.8 (7th Cir. 1995). Centillion’s statements regarding third- party software in the previous appeal do not meet the Seventh Circuit’s standard for a judicial admission. Centillion made its statements in the context of its argu- ment that Qwest “uses” the accused systems. J.A. 4315. Because Centillion’s arguments were not directed to customer infringement, Centillion could not have deliber- ately conceded that the customers must use Qwest’s application software to infringe.

Sunday, November 24, 2013

CBS Sunday Morning on November 24, 2013

Charles Osgood introduced Eat, Drink, and Be Merry. First up, Lee Cowan on carrots and junk food. Second, Serene
Alschul on meatballs and foods that are the rage. Third, Rita Braver on the Gerber baby. Fourth, Tracy Smith on Kyle Maclachlan. Fifth, Mo Rocca on pancakes.

Headlines: Iran, US, and 5 world powers announce deal about Iran nuclear progam. Kharzai. Thanksgiving week storm

Lee Cowan on carrots: eat them like junkfood. Jeffry Dunn formerly of Coca Cola: moment of refreshment. Last year: 2 billion spent advertising junk food. Michael Moss on pink slime. Salt, sugar, and fat. Crave-ability. More-ishness. Cheeto: message to brain on vanishing caloric density. Keep eating. Process foods are tweaked and changed. Howard Moskowitz: PhD from Harvard. The bliss spot that creates likeability. Bold House Farms. The Original Orange Doodles.

Serena Alachul on kale. Drew Ramsey on chocolate chip kale cookies. Fifty shades of Kale.

Saturday, November 23, 2013

Apple survives on request for injunctive relief on utility patents

Apple v. Samsung

The Court of Appeals for the Federal Circuit gave an opinion in Apple v. Samsung on Nov. 18. From the text


Apple Inc. appeals from an order of the U.S. District
Court for the Northern District of California denying
Apple’s request for a permanent injunction against Samsung Electronics Company, Ltd., Samsung Electronics
America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”). See Apple Inc. v. Samsung Elecs. Co., 909 F. Supp. 2d 1147 (N.D. Cal. 2012)
(“Injunction Order”). Apple sought to enjoin Samsung’s
infringement of several of Apple’s design and utility
patents, as well as Samsung’s dilution of Apple’s iPhone
trade dress. We affirm the denial of injunctive relief with
respect to Apple’s design patents and trade dress. However, we vacate the denial of injunctive relief with respect
to Apple’s utility patents and remand for further proceedings.



Apple is seeking a permanent injunction against
Samsung’s infringement of six patents—three design
patents and three utility patents. (...)

The district court analyzed the four principles of equity enumerated in eBay and then, weighing the factors,
concluded that they did not support the issuance of an
injunction against Samsung’s infringement of Apple’s
patents. We find no reason to dislodge the district court’s
conclusion that Apple failed to demonstrate irreparable
harm from Samsung’s infringement of its design patents.
Accordingly, we affirm the denial of injunctive relief with
respect to those patents. However, with respect to Apple’s
utility patents, we conclude that the district court abused
its discretion in its analysis and consequently remand for
further proceedings.


As to the design patents

The district court found Apple’s evidence inadequate.
With respect to the evidence that design is important in
consumer choice, the court noted that “the design of the
phones includes elements of all three design patents, as
well as a whole host of unprotectable, unpatented features,” and that Apple had “ma[de] no attempt to prove
that any more specific element of the iPhone’s design, let
alone one covered by one of Apple’s design patents, actually drives consumer demand.” Id. The court concluded
that “even if design was clearly a driving factor,” and
“[e]ven if the Court accepted as true Apple’s contentions
that the patents cover the most central design features, it
would not establish that any specific patented design is
an important driver of consumer demand.” Id. In other
words, the court found this evidence too “general” to
establish a nexus. Id.

As to the utility patents of Apple:

The district court did err, however, in its treatment of
Dr. Hauser’s survey evidence. Dr. Hauser’s survey purports to show that consumers would be willing to pay
fairly significant price premiums for the features claimed
in Apple’s utility patents. In rejecting Dr. Hauser’s
survey evidence, the district court stated that “evidence of
the price premium over the base price Samsung consumers are willing to pay for the patented features is not the
same as evidence that consumers will buy a Samsung
phone instead of an Apple phone because it contains the
feature.” Id. (emphasis added) (internal quotation marks
omitted). As we have already discussed above, however, a
showing of causal nexus does not require this level of
proof. Rather, there may be a variety of ways to show
that a feature drives demand, including with evidence
that a feature significantly increases the desirability of a
product incorporating that feature. Moreover, we see no
reason why, as a general matter of economics, evidence
that a patented feature significantly increases the price of
a product cannot be used to show that the feature drives
demand for the product. This is not to suggest that
consumers’ willingness to pay a nominal amount for an
infringing feature will establish a causal nexus. For
example, consumers’ willingness to pay an additional $10
for an infringing cup holder in a $20,000 car does not
demonstrate that the cup holder drives demand for the
car. The question becomes one of degree, to be evaluated
by the district court. Here, the district court never
reached that inquiry because it viewed Dr. Hauser’s
survey evidence as irrelevant. That was an abuse of


Saturday, November 16, 2013

Biofuel from whisky production


SJ denying inequitable conduct reversed in OWW v. Alps

Ohio Willow Wood v. Alps involved an issue of inequitable conduct

This suit was filed by The Ohio Willow Wood Company (“OWW”) against Alps South, LLC (“Alps”) for infringement of United States Patent No. 5,830,237 (the “’237 patent”). The United States District Court for the Southern District of Ohio granted summary judgment that: (1) OWW was collaterally estopped from challenging the invalidity of claims 1, 2, 4, 15, 16, and 20 of the ’237 patent; (2) claims 18, 19, 21, 22, and 23 of the ’237 patent were invalid for obviousness; and (3) Alps failed to raise a genuine issue of material fact with respect to inequitable conduct. We affirm on the issues of collateral estoppel and obviousness, but reverse and remand on the issue of inequitable conduct.

Of inequitable conduct:

Inequitable conduct is an equitable defense to patent infringement. Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011). It is only applied where the patentee has unfairly obtained an unwarranted patent through misconduct. Id. at 1292. Thus, “[t]o prove inequitable conduct, the challenger must show by clear and convincing evidence that the patent applicant (1) misrepresented or omitted information material to patentability, and (2) did so with specific intent to mislead or deceive the PTO.” In re Rosuvastatin Calcium Patent Litig., 703 F.3d 511, 519 (Fed. Cir. 2012) (citing Therasense, 649 F.3d at 1287).


We agree with Alps. When viewing the evidence in a light most favorable to Alps, there are genuine issues of material fact regarding whether OWW committed inequi- table conduct during the reexamination proceedings that preclude summary judgment.


A party alleging inequitable conduct, however, need not strictly demonstrate but-for materiality in all cases. Rather, “[w]here the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit,” materiality is presumed. Id. at 1292 (citations omitted). See also Outside the Box Innovations, LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1294 (Fed. Cir. 2012) (“a false affidavit or declaration is per se material”). In this context, materiality is premised on the notion that “a patentee is unlikely to go to great lengths to deceive the PTO with a falsehood unless it believes that falsehood will affect issuance of the patent.” Id.

Juicy Whip v. Orange Bank is cited

Corroboration does not require that every detail of the testimony be independently and conclusively sup- ported by explicit disclosures in the pre-critical date documents or physical exhibits. See Lazare, 628 F.3d at 1374; Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 741 (Fed. Cir. 2002) (the standard of proof required to corroborate testimony related to prior public use is not “beyond a reasonable doubt”) (citing Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 60 (1923)).

Of inventorship

In patent law, the “inventor” is the person who conceived of the invention. C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352 (Fed. Cir. 1998); Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994) (“[d]etermining ‘inventorship’ is nothing more than de- termining who conceived the subject matter at issue”). Here, Mr. Comtesse never admitted he was an “inventor” or that he conceived of the idea for the SSGL. He only testified that he was involved in the development of Silipos’ products and had particular skills that were beneficial to developing and manufacturing the SSGL. Conversely, OWW was aware that Mr. Robert Gould (not Mr. Comtesse) was listed as the inventor on Silipos’ patent application that allegedly covered the SSGL de- vice. Thus, even if Mr. Comtesse had testified to inven- torship or conception, which he did not, applying the proper evidentiary standards to OWW’s assertions of Mr. Comtesse’s sole inventorship required clear and convinc- ing evidence not only that Mr. Comtesse conceived of the SSGL but also that Mr. Gould had not conceived of any aspect of the SSGL. OWW did not possess any such information, but nevertheless made the self-serving assertion to the BPAI that Mr. Comtesse was “the inven- tor” of the SSGL.

We have considered OWW’s remaining arguments and do not find them persuasive. We leave it to the district court to determine if the inference of deceptive intent that we hold could be drawn when viewing the evidence in a light most favorable to Alps remains after assessing the credibility of OWW’s witnesses. See, e.g., Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1334-1337 (Fed. Cir. 2012) (affirming on the issue of inequitable conduct because patentee’s asserted good faith belief for withholding material information from the PTO was contrary to record evidence and the district court concluded that the patentee’s witness lacked credibility).

Tuesday, November 12, 2013

Winner case cited in Ex parte Warnken

The appellants lost in Ex parte Warnken

Note the text

Our reviewing court has recognized that a given course
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate any or all reasons to combine teachings.
See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)
(“The fact that the motivating benefit comes at the expense of anothe
r benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference
with the teachings of another”). The Appellants’ asserted disadvantages for stamping the
sections of Behrens do not persuasive ly show error in the Examiner’s
proposed combination.

In biofuels business: "Enzymes are code for money"

Said quote is found within an article The Hunt for Biofuels Looks Beyond Ethanol

McDonald's: “an obsession with Starbucks’ business model.”

Within the post, one finds the text:

Of course, McDonald’s has undergone periods of strategic muddle in the past, namely when it belatedly recognized a decade ago that it was expanding too much in slow-growing markets and curtailed store growth. And with a sturdy balance sheet, ample cash flow, and a 3.3% dividend yield, conservative investors might see the coffee cup as half-full for the stock.
Penney is skeptical, though. “I wouldn’t own it,” he says. “I think it will underperform.” Until, perhaps, McDonald’s brass addresses its drinking issues.

In the patent business, it's wise to link patent strategy with the core business strategy, to avoid, for example, the Xerox failure.

IBM's US Patent 8,549,125 criticized

The Register rips IBM over US Patent 8,549,125, stating

We think that means IBM will route workloads to nodes that offer the most energy-efficient processing opportunity. That's an idea sometimes described as "follow-the-moon" computing because it would enable workloads to hop into data centres that, thanks to it being night-time wherever they happen to be, require less energy for cooling. If IBM can make a case for having invented that, the likes of Microsoft and VMWare won't be happy as both are keen on the idea as a way to make virtual machine "teleportation" more attractive.

Yes, The Register does mention IBM's 6,329,919, the airplane toilet queue patent.

And, during the PLI course on patent litigation on November 11, 2013, one instructor brought up the swing patent. But recall the swing patent was a gimmick done by a patent lawyer father and his young son. Recall also from IPBiz:

Forbes brings up the swing patent, but doesn't mention that this one is gone:

If you don't think you can secure rights to the laws of physics, look no further than patent No. 5,413,298, which outlines a new method of "swinging." To wit: A person, positioned on a standard swing suspended by two chains from a horizontal tree branch, swings from side to side by pulling on one string and then the other. Many, many children at playgrounds have likely infringed on this one.

See also

A PLI instructor on Nov. 11 attributed the Potter Stewart line on pornography in Jacobellis v. Ohio, 1964 to Byron White.
Of the quote, see The Origins of Justice Stewart’s “I Know It When I See It”

Also related to PLI, note that the CAFC has affirmed an inequitable conduct finding, post Therasense. See

Sunday, November 10, 2013

"60 Minutes" on November 10, 2013

The third story, on the photographer Alexander Grossman, was widely advertised as the Beatles and JFK.

Matthew Schrier talks about his 210 days of captivity in Syria. One of Mat's captors said: Torturing people gets me closer to God. After 21 days, Mat was moved to a different cell, with an American with a long beard. At 30 days, the captors stole his identity. They spent 17K on his credit cards. Mat was in six prisons in all. On July 29, escaped through a window.

Second story was on the GoPro camera. Nick Woodman. Woodman was 26 in 2002. Did first.
The original GoPro was wrist mounted. Kelly Slater, surfer. 350K in 2005. If it doesn't work in the real world, we won't make it.

Henry Grossman's camera captured the 1960s. Seize the day; seize the moment. JFK in Boston. His "eyes" portrait. Grossman was 22 or 23 then. JFK on Wall Street. JFK by Statue of Liberty. Windblown JFK. On Jacky: lovely but tough.
RFK catnapping on the road. Grossman photographing the Beatles. Gobsmacked. Henry Grossman was shooting for TIME Magazine. Grossman photographed wedding of Taylor/Burton. George Hamilton as Dracula. Duke of Windsor. Cassius Clay.
"Places I Remember". Grossman shot Beatles filming Help in the Bahamas. John's house look like a straight middle class house. Summer of Love, 1967. George Martin, the Beatle's producer. Sense of joy and of melancholy. Photographs don't distinguish between the living and the dead.

CBS Sunday Morning on November 10, 2013

Charles Osgood introduced the stories for November 10, 2013. The week Twitter went public. Tracy Smith reports the cover story on Twitter. Second, Angelic Huston is interviewed by Lee Cowan. Third, Bill Geist on videos of cats, including the Golden Kitty Award. Fourth, Rita Braver interviews Orlando Bloom. Fifth, David Martin on Veteran's Day.
Mo Rocca, Seth Doane, Paul Poundstone. Headlines: as many as 10,000 feared dead in the Phillipines. Talks between Iran and six world powers about nuclear program. Incident involving bikers in New York City in Sept. 2013. Aircraft carrier: Gerald R. Ford. 3 of 4 Doolittle raiders toasted. Weather: Cool air except in south.

Jack Dorsey cofounded Twitter in 2006. Too much credit for a group invention? "It's always been 'we'." The past is the past; stories will be written. In a poll, only 16% of respondents said they use Twitter. The blog "Mashable." Twitter is a powerful news delivery service. Twitter's stock price went up 73% on the first day. Twitter has 230 million users. Twitter's net profit so far is zero. Twitter is an open environment. Twitter has an all male board of directors. Facebook has 1 billion users.

Almanac. Nov. 10. Viet Nam Memorial. Vietnam Veterans Memorial was accepted by the President of the United States on November 10, 1984.

Pulse: apple pie 61% pumpkin pie 34%.

Seth Doane on a Sunday walk in the park in Beijing. A park that dates back to the Ming Dynasty. Walking birds.

Tesla re-visited: "A microwave metamaterial with integrated power harvesting functionality"

The Daily Mail Online has a post with the following headlines

New invention 'harvests' electricity from background radiation and could be used to beam power to remote locations or recharge phones wirelessly

Device captures microwaves and converts them into electricity

Future versions could harvest satellite, sound or Wi-Fi signals

Technology could be used to recharge phones without cables or beam electricity to mountaintop

The initial text

Engineers at Duke University have designed a breakthrough gadget that 'harvests' background microwave radiation and converts it into electricity, with the same efficiency as solar panels.
The development, unveiled on Thursday, raises exciting possibilities such as recharging a phone wirelessly and providing power to remote locations that can't access conventional electricity.

Relevant scientific publication: "A microwave metamaterial with integrated power harvesting functionality," Allen M. Hawkes, Alexander R. Katko, and Steven A. Cummer. Applied Physics Letters 103, 163901 (2013); doi: 10.1063/1.4824473

Earlier patent application by Cummer: 20100289715, titled Metamaterial particles having active electronic components and related methods, which includes the text:

[0004] Metamaterials are a new class of ordered composites that exhibit exceptional properties not readily observed in nature. These properties arise from qualitatively new response functions that are not observed in the constituent materials and result from the inclusion of artificially fabricated, extrinsic, low dimensional inhomogeneities, which may be referred to as "metamaterial particles". These artificial composites can achieve material performance beyond the limitations of conventional composites. To date, most of the scientific activity with regard to metamaterials has centered on their electromagnetic properties.

[0005] Metamaterials can be used to engineer electromagnetic properties of a material by embedding numerous small metamaterial particles in a host matrix. These particles can produce an electric or magnetic dipole moment in response to an applied field. Metamaterials have properties that could potentially be used to fabricate super lenses, miniaturized antennas, enhanced tunneling effect devices, and invisibility cloaks. Electric and magnetic metamaterials have been extensively analyzed theoretically, in simulations, and tested experimentally, and are currently built by putting together arrays of passive subwavelength resonant particles, such as split-ring-resonators (SRRs), omega particles, electric-field-coupled resonators (ELCs), and cut-wires.

[0006] The currents and charges in these passive, self-resonant circuits created in response to an applied electric or magnetic field near the resonant frequency are great enough to generate electric or magnetic dipole moments that are in turn great enough to substantially alter the effective permittivity or permeability of a medium composed of these particles. However, exploiting this strong response close to resonance usually means significant losses and strongly frequency dependent properties, two consequences undesirable in many potential metamaterial applications. For example, it has been shown both theoretically and experimentally that the smallest amount of loss could significantly influence the effectiveness of the evanescent wave enhancement property responsible for the super lens and enhanced tunneling effects. On the other hand, it has been shown that even modest loss tangents of 0.01 can rarely be achieved in these metamaterials. Also, due to their resonant nature, the inherent high dispersion of current metamaterials makes them useful only for narrow bandwidth applications.

Press Release of November 7, 2013

From wikipedia on wireless power:

1891: Tesla demonstrates wireless energy transmission by means of electrostatic induction using a high-tension induction coil before the American Institute of Electrical Engineers at Columbia College

1902: Nikola Tesla vs. Reginald Fessenden – U.S. Patent Interference No. 21,701, System of Signaling (wireless); wireless power transmission, time and frequency domain spread spectrum telecommunications, electronic logic gates in general

2000: Prof. Shu Yuen (Ron) Hui invent a planar wireless charging pad using the "vertical flux" approach and resonant power transfer for charging portable consumer electronic products. A patent [application] is filed on "Apparatus and method of an inductive battery charger,” PCT Patent PCT/AU03/00 721, 2000.

Saturday, November 09, 2013

Piggy Pushers case; does a gripper element transform a sock into a shoe?

Note the case Piggy Pushers v. Skidders

The outcome

Piggy Pushers, LLC, sued Skidders Footwear, Inc., in
the Western District of Michigan for patent infringement.
After construing the asserted claims and granting summary
judgment of noninfringement, the district court
entered final judgment in favor of Skidders. Piggy Pushers
appeals. For the reasons set forth below, we affirm.

Of shoes and socks:

Because some preambles are limiting and others not, we focus on the sole concrete issue at stake in deciding whether the particular preambles here are limiting— namely, whether, when the elements recited in the body of the claims are combined as claimed, the result must itself be a sock. We think the answer plain from the specification, which uniformly describes what results from combining the sock member with the gripper member as itself remaining a “sock.” ’779 patent, cols. 1 and 2 (back- ground of the invention; summary of the invention). In particular, the specification distinguishes a sock from a “shoe,” which can be undesirable or difficult to put on an infant; so the addition of the gripper cannot transform the sock into a shoe. ’779 patent, col. 1, lines 22-25. More generally, introducing the invention, the specification explains that “socks can be disadvantageous on smooth floor surfaces . . . because there is a very low coefficient of friction between fabric material of the socks and the floor surface,” id., col. 1, lines 17-20 (emphasis added), and that the inventors have conceived and described a particular kind of “sock” that overcomes that problem, without the use of a “shoe,” and does so for crawling infants, not just those who can walk,


The requirement that the combined elements form a “sock” is a “fundamental characteristic of the claimed invention.” Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir. 2004) (internal quotation marks omitted). We therefore affirm the construction of the preambles as limiting to the extent necessary to express the idea that the claims each cover a sock, not a shoe or another article that may be derivative or partly made up of a sock but is not itself a sock. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.”) (internal quotation marks omitted).

Tuesday, November 05, 2013

"The isolated protein of 6,268,480 "

Appellee Pfizer wins interference against appeal by Sanofi

In accordance with the applicable law,
3 the patent is awarded to the first party to conceive and reduce
to practice the invention represented by the interference count.
See Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed.
Cir. 1998)
(“priority of invention goes to the first party
to reduce an invention to practice unless the other party
can show that it was the first to conceive of the invention
and that it exercised reasonable diligence in later reduc-
ing that invention to practice.”).
This law is impl
emented in
accordance with
rules and precedent, administered by
the PTO Board
On appeal to the Federal
Circuit, we
w the Board’s rulings of
law for correc
ness, and factual findings for support by substantial
Dawson v. Dawson, 710 F.3d 1347, 1353
(Fed. Cir. 2013)

CBS Evening News covers Ranbaxy fraud

From CBS Evening News on Nov. 5, 2013:

In 2004, Ranbaxy executive Dinesh Thakur was asked by his boss to investigate allegations of fraud at the company. Thakur quickly uncovered disturbing problems with the data required by the FDA to prove the effectiveness of Ranbaxy drugs.

"The data's important because the FDA or other agencies globally look at that information to give you marketing authorization to sell the drug," Thakur says. "We started getting the files, and, lo and behold, we find that none of that exists in the first place. ... It means that we've gotten approvals from the FDA to sell drugs that were based on no data, or data that was fraudulent."


FDA officials declined to be interviewed on camera but told CBS News at the time that Ranbaxy was approved to make generic Lipitor, the company met FDA's standards.

The federal investigation based on Dinesh Thakur's allegations led Ranbaxy to plead guilty to seven felonies. Ranbaxy was bought by a new owner in 2008 -- the Japanese firm Daiichi Sankyo.

Monday, November 04, 2013

Did CBS Evening News "get it wrong" on Zephrex-D?

Last week, around November 1, CBS Evening News did a story titled New pill could solve Missouri's meth problem which included text:

Because of its pasty consistency, Zephrex-D can't be ground into powder, the first step in making meth. And the pseudoephedrine inside is so hard to extract, it would cost too much to illegally convert.

"Zephrex-D, no matter which way you try to convert it into methamphetamine, is not a viable solution for meth cooks," said Grellner.


Grellner said that tiny Highland Pharmaceuticals has succeeded at something the major drug manufacturers say can't be done: making a meth-proof drug that works. As of this month, Zephrex-D is available in 15,000 stores nationwide.

But CBS News didn't mention a story from Sept. 2013, which included text:

A cold and allergy decongestant made by a Missouri company and now being sold nationwide contains a new form of pseudoephedrine that's being billed as difficult to use to make methamphetamine. But the Drug Enforcement Administration is still refusing to allow it to be sold over the counter.

The DEA says government chemists were able to manufacture methamphetamine from the product. So like other products containing pseudoephedrine, Zephrex-D must be sold from behind the counter.

above text from DEA insists cold drug can be used in meth-making

The CBS Evening News story included the text

Into that epidemic stepped Linda Lewis, a lawyer representing Highland Pharmaceuticals, a 14-person operation just outside St. Louis.

"I looked at what I was seeing in my neighborhood and my community," said Lewis, "and I thought, ''Highland is a local business. Wouldn't it be great if a local business could help the community here?'"

Linda Lewis is believed to be a patent attorney with a degree from Western New England College School of Law .

Shasta wins exhaustion argument at CAFC; Quanta discussed

A patent exhaustion defense doe defendant-appellant succeeded in LifeScan v. Shasta: Because we agree that Shasta has established
that it has a patent exhaustion defense, we reverse.

The CAFC noted:

Before Quanta, the Supreme Court had repeatedly
held, in addressing device patents, that the sale of a
patented device exhausted the patent-
holder’s right to exclude, and that an infringement suit would not lie with
respect to the subsequent sale or use of the device. In Adams v. Burke, for example, the accused infringer argued that the sale of patented coffin lids exhausted the patentee’s rights in the lids throughout the United States
even though the assignee from whom the accused infring-
er purchased the lids was only authorized to sell the lids
in a limited geographical area. 84 U.S. (17 Wall.) 453 (1873).


Contrary to the dissent, a biosensor with multiple
electrodes was known in the prior art, as LifeScan’s
own expert admitted. JA 1459. (...)

There is also no dispute that in LifeScan’s blood glucose testing system, it is the meter, not the strips, which performs the “measuring,” “comparing,” and “giving an
indication of an error” steps.

Rudolph Technologies succeeds in appeal to CAFC

Rudolf Technologies did well in its appeal to the CAFC:

Rudolph Technologies, Inc. (Rudolph)
appeals from the district court’s
judgment that it infringes U.S. Patent
No. 6,118,894 (’894 patent )
. Rudolph challenges the
court’s denial of its motion for
judgment as a matter of law (JMOL )
that prosecution history estoppel
bars the application of the doctrine of
Rudolph also challenges the
award of damages, the court’s determina-
tion that this was an exceptional case
under 35 U.S.C. § 285 ,
and that Rudolph failed to prove laches.
We hold that prosecution history estoppel
precludes the application of the
doctrine of equivalents and therefore
reverse the judgment of infringement
under the doctrine of equivalents.
We also reverse the
willfulness finding predicated on
that judgment and vacate the corresponding
award of enhanced damages .
We affirm the award of damages for
literal infringement .
We vacate the award of attorneys’
fees and costs and remand
because we find that the
court’s exceptional case analysis relied in part on the
willfulness finding
we hold that the court did
not abuse its discretion in finding no laches.

Saturday, November 02, 2013

Appellant wins on written description but loses on obviousness; examiner affirmed under 41.50(a)(1)

Although the appellants won on written description, they lost on obviousness and the examiner was affirmed. 37 CFR 41.50(a)(1)

See Rx parte Cheng

BorgWarner loses appeal of re-exam decision

BorgWarner represented by Fish & Richardson lost an appeal at PTAB concerning the
re-examination of US Patent 6,663,347:

This is a decision on appeal by BorgWarner, Inc.2 (hereinafter “Patent
Owner”) from the Patent Examiner’s decision to reject pending claims 1-7 in
an inter partes reexamination of U.S. Patent 6,663,347 B2 (hereinafter “the
’347 Patent”).3 The Board’s jurisdiction for this appeal is under 35 U.S.C.
§§ 6(b), 134(b), and 315(a).

In this re-exam matter, there was separate district court litigation:

Moreover, we need not defer to the District Court’s interpretation, as
the District Court uses a different standard in interpreting claims. See In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1369 (“[I]t is error for the Board to
‘appl[y] the mode of claim interpretation that is used by courts in litigation,
when interpreting the claims of issued patents in connection with
determination of infringement and validity.”’). We do not consider the
District Court’s interpretation of “a curvature” as “not a series of curvatures”
to be the broadest reasonable interpretation read in light of the specification
as it would be interpreted by one of ordinary skill in the art. A general rule
of claim interpretation is that the term “a” means “one or more.” Baldwin
Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1341 (Fed. Cir. 2008)
(“That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather
than merely as a presumption or even a convention. The exceptions to this
rule are extremely limited: a patentee must ‘evince[ ] a clear intent’ to limit
‘a’ or ‘an’ to ‘one.’”) (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed.Cir.2000)). The ’347 Patent expresses no clear intent to
limit the curvature to a simple curve or a compound curve. Mere exemplary
embodiments of a straight curve or a compound curve cannot be reasonably
attributed to an intent to disclaim all other curved paths that provide for easy
removal of a die insert.

The meaning of "substantially" arose

The word “substantially” has been construed many times by our
reviewing court. It can be a term of approximation or a term of magnitude
with meaning varying from “significantly” or “considerably” to “largely” or
“essentially.” See Deering Precision Instruments L.L.C. v. Vector
Distribution Sys. Inc., 347 F.3d 1314, 1321 (Fed. Cir. 2003). While the
modifier “substantially” certainly does broaden the term “straight” to some
degree, it “cannot be allowed to negate the meaning of the word it modifies.”
See In re Hauserman, Inc., 892 F.2d 1049, 15 USPQ2d 1157, 1158 (Fed.
Cir. 1989) (unpublished)(quoting Arvin Industries, Inc. v. Berns Air King
Corp., 525 F.2d 182, 185 (7th Cir. 1975) and citing Borg-Warner Corp. v.
Paragon Gear Works, Inc., 355 F.2d 400, 404 (1st Cir. 1965)).

Appellant at PTAB wins reversal on obviousness

from Ex parte McGrady

As to obviousness

We agree with Appellants that the Examiner has not established that
Seith teaches insert strip 12 is directly attached to irrigation tube 16 along an
entire length of strip 12, and thus we find the Examiner has not established
that Seith teaches the above-discussed limitations of claim 1, or provided a
reason why this claim feature would be obvious over art showing an
interrupted connection. For these reasons, we are constrained to reverse the
rejection of independent claim 1.

KSR on steroids dooms appellant in Ex parte Dumond

KSR and common sense arise in Ex parte Dumond

It is well established that “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). The obviousness analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418. Furthermore, an improvement in
the art is obvious if “it is likely the product not of innovation but of ordinary
skill and common sense.” Id. at 421.

We have no doubt that the use of two different photoluminescent
materials in order to produce two different colors in a decorative laminate
would have been within the level of ordinary creativity in the art based on
the applied prior art of Nelson ʼ430, with or without Chien. See Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We
therefore hold that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.”).(5)

footnote 5: See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.”).


footnote 4: We also agree with the Examiner that the claimed design may be properly
characterized as nonfunctional descriptive material (e.g., Ans. 13). In the
context of prior art rejections, a distinction over the prior art based on
nonfunctional descriptive material is patentably inconsequential. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability).


George C. Best was on the PTAB panel.