Monday, November 30, 2015

Rand Paul "plagiarism" issue recycled in "The Wilderness"

Many "high profile" accusations of plagiarism are politically motivated, and a recent post on Buzzfeed falls in this category.
Rand Paul’s Chief Strategist Was Writer Behind Senator’s Plagiarism.

One piece of text caught the eye of IPBiz:

“He [Rand Paul] thought the evidence of his supposed lapse in ethics was outrageously thin and nitpicky. He’d been recapping movie plots in these speeches, not reciting Tolstoy and calling the words his own. He felt certain that if he could just explain this in a neutral setting, his attackers’ petty animus and partisanship would be laid bare.”

This brings up the difference between plagiarism and violations of federal laws in copyright and trademark.

IPBiz has written about the Dastar case on several occasions. From IPBiz on November 28, 2005 (nearly exactly 10 years ago; "Remembering Dastar"):

Dastar suggests that material in the public domain may be copied without proper attribution and possibly with misattribution.

For the right to copy, without attribution, a previously copyrighted work, the Supreme Court cited to patent law: The right to copy, and to copy without attribution, once a copyright has expired, like "the right to make [an article whose patent has expired]including the right to make it in precisely the shape it carried when patented-passes to the public." Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 121-122 (1938).

Of the plagiarism issue, the Supreme Court noted: Finally, reading § 43(a) of the Lanham Act as creating a cause of action for, in effect, plagiarism-the use of otherwise unprotected works and inventions without attribution-would be hard to reconcile with our previous decisions. For example, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U. S. 205 (2000), we considered whether product design trade dress can ever be inherently distinctive. WalMart produced "knockoffs" of children's clothes designed and manufactured by Samara Brothers, containing only "minor modifications" of the original designs. Id., at 208. We concluded that the designs could not be protected under § 43(a) without a showing that they had acquired "secondary meaning," id., at 214, so that they" 'identify the source of the product rather than the product itself,'" id., at 211 (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844, 851, n. 11 (1982)). This carefully considered limitation would be entirely pointless if the "original" producer could turn around and pursue a reverse-passing-off claim under exactly the same provision of the Lanham Act.


See also: Allison Routman, Frank Zappa, and plagiarism

**As a footnote, plagiarism in speeches, in a context in which footnoting is difficult and not expected, is a tough sell.
The Biden/Kinnock plagiarism business overshadowed the reality that the facts themselves were incorrect. And is Abraham Lincoln a plagiarist because of the "House Divided" speech; one thinks not.

The NFL and the USPTO: "there's so many frigging rules"

Within a post on Tom Brady discussing the Patriots losing to the Broncos Tom Brady is 'pretty pissed off' about loss to Broncos one finds the text:

"I don't think I still quite fully understand that. Because their guy went down, they had no timeouts. And I don't know what the rule is. ... I thought when he went down there was a penalty on that team for having a delay of game. But I'll have to look at that this week. I don't know, there's so many frigging rules. There's so many rules now. We'll try to clarify it this week. But you're right, I was not aware that the clock would be running."

Brady mentioned a non-call in overtime.

Another non-call of note, in the Steelers-Seahawks game, would relate to Sherman pushing receiver 84, prior to Sherman's interception.

On television, one was wondering "how" Sherman was all alone, until the replay was shown.

Look for yourself:

Recall: Illegal contact is a penalty that results from a defensive player interfering with an offensive receiving player more than 5 yards from the line of scrimmage.

At least at the USPTO, one has IPRs.

Supreme Court will not hear appeal in ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC.

The US Supreme Court has declined to hear the Covidien case.

From Reuters:

In refusing to hear the case, the high court left in place a December 2014 ruling by the U.S. Court of Appeals for the Federal Circuit that threw out a judge’s finding that Ethicon had infringed upon Covidien's patents for surgical cutting tools. Covidien is owned by Medtronic Plc.


See IPBiz post:


CRISPR-Cas9 facilitates a high-resolution view of the genetic vulnerabilities of a cell

Further to previous IPBiz posts on CRISPR (e.g., CRISPR is high profile in science, patents; competitor labeled a mere second comer), an article in GEN on work by Jason Moffat illustrates the value of CRISPR in cancer research, and in personalized medicine.

From GEN:

Because different cancers have different mutations, they tend to rely on different sets of genes to survive. By turning genes off in five different cancer cell lines, including brain, retinal, ovarian, and two kinds of colorectal cancer cells, Dr. Moffatt’s team learned that each tumor relies on a unique set of genes that can be targeted by specific drugs. Essentially, the team identified distinct sets of "smoking gun" genes for each of the tested cancers. Each set may prove to be susceptible to different drugs.


Thus, rigorous identification of human cell line fitness genes using a high-complexity CRISPR-Cas9 library affords a high-resolution view of the genetic vulnerabilities of a cell.”

The authors also demonstrated that distinct genetic signatures can be used to predict differential drug response. Specifically, they found that metformin, a widely prescribed diabetes drug, successfully killed brain cancer cells and those of one form of colorectal cancer. The same drug, however, was useless against the other cancers studied.

Similarly, the antibiotics chloramphenicol and linezolid were effective against one form of colorectal cancer, but not against brain or other cancers studied. These data illustrate the clinical potential of the data in pointing to more precise treatments for the different cancers—and suggest the value of personalized medicine.

link to GEN article:

Sunday, November 29, 2015

Coca Cola does "Secret Santa" and "Jolly Reindeer"

The World of Coca-Cola website notes

Throughout December, Coca‑Cola Freestyle in Taste It! will feature two new mixes: Secret Santa and Mistletoe Flow. Sprite Cranberry Zero is also back by popular demand for a third year, offering a refreshing blend of Sprite with its zero-calorie formula and a splash of sweet and tart cranberry notes. Both Sprite Cranberry and Sprite Cranberry Zero will be available in stores for a limited time this holiday season.


Here in Central New Jersey, the freestyle machines have THREE holiday flavors:

Secret Santa
Mistletow Flow


Jolly Reindeer

with the last tasting somewhat like a birch beer.

The display on the freestyle machine does not indicate any of the three names are trademarked.

New York Times discusses drug patent challenges by Kyle Bass

In a somewhat surprising post on 27 November 2015, the New York Times spoke favorably of the efforts by Kyle Bass challenging drug patents using inter partes review:

Still, shedding light on patent missteps, especially given the high drug costs they enable, is a good thing. The efforts by Mr. Bass and Mr. Spangenberg to highlight problematic patents, whatever role they play in promoting their own investments, may also encourage others to make their own challenges.


The NYT post did not mention the challenges by Bass to patents related to multiple sclerosis [MS] drugs, including related to Ampyra and Tecfidera.

For example:

CBS Sunday Morning on November 29, 2015

Charles Osgood on "the empty chair," introducing the Susan Spencer cover story on the 84,000 deemed "missing." Lee Cowan on striking a chord on Utah musicians. Ben Tracey does Sunday Morning Profile on Carey Mulligan. Luke Burbank on Bentonville, Arkansas and the squirrel cook-off. Erin Moriarty on David Remnick
Headlines. Robert Louis Deer in Colorado Springs. Pope Francis in Central African Republic. Deaths blamed on stormy weather. Egypt on King Tut's tomb. Weather: rain, ice, snow.

Fact: In store sales down 10%; online sales up 14.3%

Susan Spencer begins with Andrew Meacham of Tampa on Stuart Fletcher Currin. Fletcher srarted to think FBI after him. Then he fell off the eather, around August 1999. Last seen in Seminole, FL at age 44. Meachem tried to find Fletcher. How does someone fall through the cracks. At any given time, 84,000 people are deemed missing. B.J. Spalmer of NamUs, a database of missing persons. Laws are more geared to finding children. No missing person report ever filed for Fletcher. Nanmus case number 99-1145. Bill Pellan of Seminole County, FL. No family members of Fletcher to obtain DNA. Extract DNA from envelopes seal? Yes. The DNA was a match to a body found in Seminole County. Meachem: you don't just let friends disappear. This case is an example of DNA identification from the saliva used to seal an envelope. [See also June 20, 2015 story at Also:]

Almanac. Nov. 29 1890: first Army-Navy football game. Contest almost died in 1894. Teddy Roosevelt got game back in 1899. Harry Truman came to games. Kennedy in 1962. In 1963, score 21-15, Navy [The 1963 game was played on December 7. Remember Roger Staubach and Rollie Stichweh and the ending: Army’s Ken Waldrop falls 2 yards short of the goal line with 18 seconds left in 1963 Army-Navy game, and the Cadets can’t get off another play in 21-15 loss. ] First instant replay used in the 1963 game. Results to date: Navy 59 wins Army 49.

Fact: Day after Thanksgiving is the busiest day for plumbers.

Luke Burbank on "tale of the squirrel" on cooking squirrel in Bentonville, Arkansas. "It just is. Tree to table." Sustainable use of wild game as table fare. Note: buying or selling wild game meat is illegal. Squirrel sliders. Squirrel bisque. Eating what you hunt, even if it's a rodent. How does squirrel taste? Squirrel desserts, including ice cream. Winner: squirrel empanadas.

Erin Moriarty on David Remnick, 17 years at the New Yorker. He chooses the covers. Satire is about not going far enough. Good humored brainiac. Legendary cartoons. "The New Yorker Festival." Lenin's Tomb. Remnick started at the Washington Post. Married in October 1987; went to Moscow. Hired by Tina Brown. Brown left to form "Talk." Remnick brought stability to the New Yorker. Spirit of collaboration. Wife: the pragmatics of it is in my hands. Week after 9/11, all cartoons removed from the New Yorker.

Paula Pondstone on screen devices. Addiction hampers judgment. Brain retains information better when read from paper than from a screen. Our children will need fully functioning brains for the future.

Text: The tech industry has profited from the "Every child must have a laptop in the classroom" push, but education hasn't. Research shows that the brain retains information better read from paper than from a screen, and students who take notes by hand are more successful on tests than those who type their notes on a computer.


Ben Tracey on Carey Mulligan. Born in London. Saw Kevin Bacon doing a one man show in New York. Mulligan received widespread recognition for her performance in the 2009 film An Education. Far from the Madding Crowd.

Next week on Sunday Morning: Frank Sinatra at 100.

Moment of nature. Moose at Gros Ventre Wilderness in Wyoming. Note Gros Ventre is also known for a landslide: the Gros Ventre landslide occurred on June 23, 1925, following the melt from a heavy snowpack and several weeks of heavy rain. Approximately 50,000,000 cu yd (38,000,000 m3) of primarily sedimentary rock slid down the north face of Sheep Mountain, crossed over the Gros Ventre River and raced up the opposing mountainside a distance of 300 feet (91 m). [from Wikipedia]

***Patent connection for November 29:

With certain exceptions, nonprovisional utility and plant applications for patent filed on or after November 29, 2000 are published promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought under title 35, United States Code (eighteen-month publication or pre-grant publication (PGPub)). See 35 U.S.C. 122(b).

Saturday, November 28, 2015

Further on the Chien/Risch WSJ op-ed on small entities dealing with patent trolls

A comment to the PatentlyO post titled Follow-Up: Professor Chien’s More Nuanced Arguments on the Chien/Risch op-ed in the Wall Street Journal [WSJ] notes:

This group is close to saying, yes I trashed the patent system, but it was good for my career. Once I get the full-professorship and the millions in the stock fund, I’ll reevaluate everything.

Unbelievable that people like this are hired by universities.

In his post, Dennis Crouch had stated:

The Chien article particularly addresses the concerns that I had with WSJ essay, which is why I was surprised to see the completely different focus of that WSJ essay. I thought she had also changed course. According to Chien, the emphasis and framing in the WSJ essay were the result of heavy WSJ editing rather than any backtracking from her prior work.

In fact, the abstract of the Chien law review article, discussed in PatentlyO, is not about patent hold-out by small entities attacked by patent trolls, but rather about patent hold-out by large entities attacked by small entities. Whether these are "more nuanced" thoughts remains to be seen.

**Returning to the above-noted comment at PatentlyO (7.1.1), as to opportunistic professors, one notes recent developments
in South Korea:

South Korea is set to indict 200 professors from several of the country’s universities for alleged copyright violations after they republished books by other authors under their own names, the Korea Herald newspaper reported Wednesday.

Professors from 50 universities, as well as four employees of a publishing company, are implicated in the scandal, Korean prosecutors said, with most of them having already confessing their involvement.


The professors’ actions were reportedly done in a bid to boost their academic standing before rehiring-related assessments. The Herald also reported that many of the original authors were also complicit in the scheme for fear of invoking the publishers’ displeasure over future book deals.

link 200 South Korean Professors Charged in Massive Plagiarism Scam

***Separately, as to op-ed policy at the New York Times, from the IPBiz post

New York Times on self-plagiarism

The New York Times does not ordinarily reprint material that has been previously published; Op-Ed contributors are asked to affirm that their work is original, and exclusive to The Times. Had The Times known that portions of the essay were copied from an earlier work, it would not have accepted the essay for publication.

***As to the Chien/Risch matter:

***UPDATE on 30 Nov 2015. Comment 16.3 on the PatentlyO thread:

November 30, 2015 at 10:25 am

In those few cases where a paper sought an opinion piece from me on anything, I insisted on seeing all edits before it was published. If the edits rendered the article no longer my opinion, I told the paper to remove my name.

Chien’s behavior strikes me as bizarre to say the least and possibly even risky to her as well as to those she represents.

Wednesday, November 25, 2015

CAFC in Straight Path IP Group addresses the meaning of the word "is"

The CAFC wrote of the Straight Path PTAB decision:

Straight Path IP Group, Inc. owns U.S. Patent No.
6,108,704, entitled “Point-to-Point Internet Protocol,”
which describes certain protocols for establishing communication
links through a network. On a petition for inter
partes review filed by Sipnet EU S.R.O., the Patent Trial
and Appeal Board cancelled claims 1–7 and 32–42 of the
’704 patent based on determinations of anticipation and
obviousness. Sipnet EU S.R.O. v. Straight Path IP Group,
Inc., IPR 2013-246, 2014 WL 5144564 (PTAB Oct. 9,
2014). We now reject a claim construction on which the
Board relied for its decision. We reverse the Board decision,
and we remand for further proceedings under the
correct construction.


As to the meaning of the word "is" -->

The Board said nothing that either recognizes or disputes
the plain present-tense meaning of the claim language
on its face.
Indeed, the Board’s construction—
“active and on-line at registration,” Sipnet, 2014 WL
5144564, at *4 (emphasis added)—implicitly recognizes
that being online is a status that can change over time:
having the status “at registration” is having it at a particular
time. The query required by the claim language asks
if the callee “is” online, which is a question about the
status at the time of the query.
But the Board did not
address the facially clear meaning, instead turning immediately
to the specification.

Sipnet does much the same thing. Sipnet repeatedly
recognizes and stresses the difference between “past
online status” and “current online status,” the latter being
“opposed to the past status at registration.” Sipnet Br. at
21 (emphases in original); see id. at 8–9. Yet Sipnet offers
no argument that, as a matter of plain meaning, the claim
language “is” calls for anything but present-status information.
Nor does it point to anything in other claim
language that contradicts that plain meaning. Like the
Board, Sipnet relies entirely on the specification.
When claim language has as plain a meaning on an
issue as the language does here, leaving no genuine
uncertainties on interpretive questions relevant to the
case, it is particularly difficult to conclude that the specification
reasonably supports a different meaning. The
specification plays a more limited role than in the common
situation where claim terms are uncertain in meaning
in relevant respects. T

A claim:

Claim 1 of the ’704 patent is representative of the asserted
1. A computer program product for use with a
computer system, the computer system executing
a first process and operatively connectable to a
second process and a server over a computer network,
the computer program product comprising:
a computer usable medium having program
code embodied in the medium, the program
code comprising:
program code for transmitting to the server a
network protocol address received by the
first process following connection to the
computer network;
program code for transmitting, to the server,
a query as to whether the second process is
connected to computer network;
program code for receiving a network protocol
address of the second process from the server,
when the second process is connected to
the computer network; and
program code, responsive to the network protocol
address of the second process, for establishing
a point-to-point communication
link between the first process and the second
process over the computer network.

Not "computer implemented" but a computer program product!

link to case:

Note also:

One final point about this claim-construction issue:
Sipnet suggests in various ways that the specification
does not adequately describe or enable the systems or
processes involving a query about current connection
status under Straight Path’s claim construction. But
written-description and enablement challenges were not,
and could not have been, part of the inter partes review
that is now before us. See 35 U.S.C. § 311(b) (limiting
challenges to prior-art challenges). Such challenges
involve bottom-line or subsidiary factual issues that have
not been litigated or adjudicated.

Tuesday, November 24, 2015

101 issue for diagnostic method in Cleveland Clinic

From Holman's biotech blog:

Tuesday, November 24, 2015

The Cleveland Clinic Foundation v. True Health Diagnostics: Judge Denies Preliminary Injunction Based on Likelihood That Diagnostic Testing Method Is Patent Ineligible

On December 18, 2015, in The Cleveland Clinic Foundation v. True Health Diagnostics, LLC, a district court judge in Ohio issued an order denying the Cleveland Clinic Foundation’s (“CCF’s”) Motion for Temporary Restraining Order and Preliminary Injunction after concluding that CCF had failed to establish a likelihood of success on the merits. In particular, the court found that CCF had “fail[ed] to make a clear showing that the patents-in-suit” are directed towards patent eligible subject matter. This is yet another example of the challenges facing the developers of diagnostic tests in the wake of Mayo v. Prometheus.

The patents at issue in the case, U.S. Patent No. 7,223,552 (“the ’552 patent”); U.S. Patent No. 7,459,286 (“the ’286 patent”); and U.S. Patent No. 8,349,581 (“the ’581 patent”), relate to methods of analyzing Myeloperoxidase (“MPO”) biomarkers in a patient’s blood sample to predict a patient’s potential for heart disease, by comparing the level of MPO found in the patient’s blood sample with levels of MPO in control subjects to see if the patient has elevated levels of MPO. MPO is an enzyme released by white blood cells when an artery wall is damaged or becomes inflamed, and its presence is thus an early symptom of many types of cardiovascular disease (“CVD”).


Monday, November 23, 2015

Colleen Chien on "doing nothing"

Before IPBiz could write a response to Colleen Chien's post The Best Way to Fight a Patent Demand May Be to Do Nothing, PatentlyO had already criticized the Chien work.

The Chien post begins:

The best way to deal with a patent demand may be to take a deep breath—and then do nothing.

The prospect of a patent lawsuit can be terrifying for a startup. Entrepreneurs often imagine that legal action will empty company coffers, throw the business out of joint or scuttle a round of financing.


Out of that research, a surprising finding emerges: More than a fifth of survey responders resolved the threat by “doing nothing.” This means, for example, looking at the claim, determining a license isn’t needed—and then filing the letter away, rather than responding.

**As a first point, the "doing nothing" strategy has been suggested for some time, so that idea is not exactly new to people following the issue.

For example, Foley & Lardners 10th Annual IP Conference, held more than one year ago on Sept. 19, 2014, had a session

Emerging and evolving strategies to mitigate the impact of abusive tactics by NPEs, including:
 Implications of recent Supreme Court decisions
 Incorporating the potential impact of legislative proceedings
 Effective use of joint defense groups; addressing indemnification issues
 Advanced pre-litigation and litigation strategies
Kevin Cranman, General Counsel, Ericsson Television Inc.
Karen Kaiser, Chief Intellectual Property Counsel, Ingredion Inc.
Matthew Miller, Deputy General Counsel, Groupon, Inc.
Michael Shpizner, Vice President and General Counsel, Fujitsu America, Inc.

wherein, if LBE remembers correctly, Mr. Miller pointed to the benefits of ignoring
threatening letters from NPEs (aka PAEs).

**As a second point, the Chien piece did not point out that a strategy of a patentee might be to seek an injunction, which can be far more threatening than money damages. Chien wrote:

Other times, patent holders aren’t looking for a quick settlement but seek high damages from a jury. In those cases, they will be more willing to pursue a claim. One approach is to plead poverty. There is evidence that patent trolls, like other patent holders seeking settlements, target firms with cash on hand. A company might want to share financial information confidentially to convince a troll it isn’t worth its time.

The threat of an injunction can be used to dissuade smaller entities from "doing nothing."

**The PatentlyO piece begins:

Professor Colleen Chien has published an unfortunate new Wall Street Journal essay titled “The Best Way to Fight a Patent Demand May Be to Do Nothing.” Chien’s factual bases appears spot-on: a large and increasing percentage of companies are refusing to even respond to patentee correspondence. The unfortunate aspect of the Chien’s essay is her suggestion that this really may be “the best way to deal with a patent demand.”

PatentlyO continues

An unfortunate aspect of Chien’s suggested triage system is that it does not focus on merits – is the patent actually being infringed; is the patent valid? Rather, the focus is simply whether the patentee has the wherewithal and propensity to sue and whether the triaging-company can slide under the radar

BUT, recall Chien's text:

More than a fifth of survey responders resolved the threat by “doing nothing.” This means, for example, looking at the claim, determining a license isn’t needed—and then filing the letter away, rather than responding.

Of course, as to both PatentlyO and Chien, the determination of whether or not there is infringement (need for a license) is not easy to answer. Some NPR litigation turns on infringement, not on the underlying validity, of the claims of the NPE. Recall Selden's suit against Henry Ford. Selden's claims were NOT invalidated.

**Separately on Chien, see

Merck KGaA buys SigmaAldrich

IPBiz notes the completion of the purchase of SigmaAldrich by MerckKGaA, the German company, which company is distinct from the company known as Merck in the United States:

Sigma-Aldrich will be combined into Merck KGaA's EMD Millipore business unit, forming a new subsidiary that will be called MilliporeSigma.

The "Aldrich" name, so familiar to organic chemists, vanishes in the name of the new subsidiary.

One recalls some previous discussion of the difference between the US Merck and the German Merck, which separation arose as a result of World War I.

From an IPBiz post on April 21, 2005 [ O'Connor, Breyer back in Merck v. Integra ]:

O'Connor asked the first question, as is often the case, and she and Breyer were among the most active participants. Both, it appeared to many, seemed sympathetic to Merck, and their presence might, in fact, tip the decision toward Merck.

Were the justices cravenly trying to protect their financial interests by rejoining the case? No such scandal was brewing. It turns out that soon after the justices' recusal in January, Merck's lawyer in the case, E. Joshua Rosenkranz of New York City's Heller Ehrman White & McAuliffe, sent a letter to the clerk of the Supreme Court to "address a possible misunderstanding" about Merck's name and corporate structure.

Rosenkranz went on to say that while Merck & Co. -- the U.S. firm in which the justices owned stock -- and Merck KgaA -- the German firm that is the party in the case before the Court -- "share a common ancestry," they are now "entirely separate entities," and have been since 1917. The German company, he explained, owns worldwide rights to the Merck name except in North America. Both companies got their names from Heinrich Emanuel Merck, an early German industrialist, but the American subsidiary became separate after World War I.

A former clerk to the late Justice William Brennan Jr., Rosenkranz wrote delicately about the subject, noting that both justices owned stock in the American Merck and adding, "While the recusals may have been prompted by other circumstances, I wanted to be sure to alert the Court to this potential misunderstanding."

Sunday, November 22, 2015

Plagiarism continues unabated in -business school admissions essays

Sad but true. In spite of all the plagiarism detection software being used, applicants to business school are
still submitting admission essays which are copied.


which notes

the number of plagiarizing applicants hasn't budged.

CBS Sunday Morning on November 22, 2015

Charles Osgood, with a red handkerchief, introduces the food issue.
Mark Strassman does the cover story on homegrown food. A beautiful day in the agrahood.
Susan Spencer, then Jane Pauley. Story on the Red Rooster. (On the Menu). Seth Doane on Japan's fake food industry. Tracy Smith interviews Cloris Leachman, a vegetarian. Mo Rocca on going bananas, eaten as much as apples and oranges combined.
Headlines for Nov. 22. Up to 20 inches of snow in midwest. Jon Bel Edwards governor. Fire in Hancock Building. Weather: scattered showers in east.
Fact: nearly a quarter of Americans eat turkey only around Thanksgiving time.
The cover story by Mark Strassman begins with with Clay Johnson lives south of Atlanta. Serenbe development. A real working farm. Steve Nigren is the developer of Serende The agrahood. Ed McMahan studies the phenomenon. The Cannery; Prairie Crossing; Willisburg. Average home at Serenbe costs $700K. Ashley Rogers is farm manager at Serenbe.
Hanna Warner on "what's brewing". Gerard Tonti paints with coffee and tea. Green tea as a painting medium. Reds were difficult. Lives outside Pittsburgh.

Lee Cowan on LA cafeteria. Clifton's Cafeteria. Andrew Meyers. Brookdale Cafeteria. The cafeteria of the golden rule. A woodland escape. At the height, 15,000 served per day. Ray Bradbury was a regular. By 2010, considered closing. Andrew Myron. A 40 foot redwood tree in atrium. The Woodland Dining Room. Barbara Jacobs in charge of outreach.

Susan Spencer starts three part "on the menu" feature. Begins with "the peanut dude," Chris Bible of Charleston, SC. the cavier of the south. Works at 695 Coleman Blvd., Mt. Pleasant, SC
Jane Pauley on Red Rooster Harlem of Marcus Samuelsson, born in Ethiopia, and ended up in Sweden. Culinary school at age 16. Aquavit. Note that the Red Rooster is located at 310 Malcolm X Blvd.

Seth Doane on fake food in Japan. Justin Hanna in Osaka. Point to food that you want. fakefoodjapan. Before you eat something, observe it. Also, sells food souvenirs (key chains, etc.)

Tampa's Columbia Restaurant. Cuban sandwich. 9 inches long. Serve as many as 600 per day. Tampa uses salami.
Nancy Giles on juicing. Get your green on at Juice Generation in NYC. Kale is the new bacon. Roots Juices. Vitamix machine in 1949. Papa Barnard. Jody Berg is president of Vitamix of Cleveland. Clip of Ninja. Marjorie Knowland Cohn at Liquiteria.

Tracy Smith with Cloris Leachman. Nine Emmys. Raised five children. Cabbage salad with family secret dressing. Vegetarian. Horses in Young Frankenstein. Blucher means glue.

Mo Rocca on bananas. Unripe fruit shipped in boxes. Banana Distributors of New York. Big Banana. They arrive green and hard. Then a ripening room with ethylene gas added. Tony Commando is in charge of ripening. William Goldfield notes bananas introduced in 1876. Banana is cheapest fruit in store. The banana republics. Carmen Miranda. 99% of bananas are Cavendish bananas. Banana peel: Harpers in 1879. O. Henry used term banana republic in 1904.

Rita Braver. why do we like the foods we like? Interaction of genes and environment. About 75% find cruciferous bitter. Licorice and banana jellybean. Our favorite foods are determined by what we have been exposed to. Adventure eaters. Large intestines from Osaka, Japan. [Braver previously did a piece titled "Smell of Success," on Harvard professor David Edwards, who described himself: "I'm a professor of idea translation at Harvard." and who noted, related to innovation, "Well, you cannot do anything really that potentially changes the world and not have the potential that it will be used in a negative way. link: See also: and US Patent Application 20150048178.]

Dean Reynolds in Rossi's in State St. in Chicago. A tavern opens its doors at sunrise. Dennis McCarthy. 25 years of neglect. Shawn Parnell did book on Chicago bars. Simon's Tavern. Mahogony bar built in 1933.

Spencer at Omni Parker House. Boston cream pie. Called a pie because baked in pie shells. Official state dessert as of 1996. Invented at this hotel. Malcolm X and Ho Chi Minh worked there. Of relevance to Christmas: Dickens first recited and performed "A Christmas Carol" for the Saturday Club at the Parker House. Of relevance to the Civil War, John Wilkes Booth stayed at the hotel April 5–6, 1865, eight days before assassinating Abraham Lincoln. Of relevance to trademarks, Dunfey Hotels bought Parker House in 1968, but on later buying Omni, phased out the Dunfey name and used the Omni. Sort of like Continental Airlines and United Airlines.

Next week on Sunday Morning. Interview with Carrie Mulligan.

Moment of nature. Jardiance. Wild turkeys near Stonewall, Texas.

Saturday, November 21, 2015

Colleen Chien and ED Texas

An opinion piece in the Washington Post about venue titled A patent reform we can all agree on is authored by Colleen Chien and Michael Risch.

Note a previous IPBiz post about Chien (and ED Texas):

**Separately, from a recent comment at PatentlyO:

(this also reminds me, Ron Katznelson’s piece in front of the Executive – the one still waiting an answer – is tied to the misrepresentations of an academic….)


Of the work by Katznelson, see his guest post on PatentlyO:

White House “Patent Troll” Report Challenged under the Federal Information Quality Act. including the text

My Petition shows that the PAE Report contravenes the IQA because it expressly relies on third-party information that does not meet the IQA standards. The sources relied on by the PAE Report purport to document patent litigation rates, quantify the private and social costs of patent litigation, survey “victims” of PAE litigation, and show the purported adverse effects of PAE activities. This information includes studies that have undergone no peer review; that have relied on opaque or erroneous methods and surveys; that lack objectivity; and lack practical utility.

To achieve agency compliance with identifiable IQA standards, my Petition concludes with 21 specific requests for correction supported by evidence and arguments. My Petition provides a compendium of detailed analyses of fundamental flaws surrounding data and methods used in eight commonly cited studies purported to document PAE harms, upon which the PAE Report relies.

In comment 16, Katzelson wrote:

The effectiveness of those aiming to steer the conversation here away from the substance of my article is remarkable. Perhaps others should resist the deflection tactics and address the topic at hand. For example, should the 51 law professors adopt IQA-like standards before they publish or endorse substandard or erroneous empirical “studies”? Have these professors recently distanced themselves from their purported “increasing body of evidence” articles they cited in their letter to Congress? Why else would they remove the full letter (including the reference list) from SSRN and thereby frustrate one of their heavily-cited authors’ tweets at link to ?


Robert Gebelhoff followed up on the Chien/Risch post, evading the anti-ED Texas tone of the post:

Colleen Chien and Michael Risch then finished off the series, suggesting that courts could possibly solve many of the problems facing the patent system by changing were lawsuits can be filed.



Both Chien and Gebelhoff missed the irony that the Eolas patents were found invalid in ED Texas. Recall also:

"We are pleased that the court found the patents invalid, as it affirms our assertion that the claims are without merit," Google spokesperson said Thursday.

Apple pays no damages in Pendrell/ContentGuard Holdings case

A Reuters report begins

A U.S. jury on Friday found Apple Inc did not infringe five antipiracy patents owned by a Pendrell Corp subsidiary at trial in a Texas federal court.

The jury also found that Apple did not prove that the patents were invalid. No damages were awarded to Pendrell subsidiary ContentGuard Holdings.


Of interest to the "troll" discussion, one notes the claims were found NOT to be infringed, but were NOT found invalid.
This is the same outcome as that in the Selden / Ford automobile case.

Trolls can actually employ patents with valid claims, albeit not covering the products of the accused infringer.

Note where ContentGuard came from:

ContentGuard emerged from a partnership in 2000 between Xerox Corp and Microsoft Corp to form a digital rights management business, according to court papers. It is now owned by Kirkland, Washington-based Pendrell Corp, a publicly traded patent management company, and Time Warner.

See Reuters Apple wins patent trial against Pendrell subsidiary
Read more at Reuters

Friday, November 20, 2015

Oracle v. Google and the district court judge

Foss patents has an interesting post on Friday, November 20, 2015 about the Oracle America, Inc. v. Google Inc. case, which includes the text:

On Wednesday [18 Nov 2015], a motion hearing was held in the San Francisco courthouse of the United States District Court for the Northern District of California to discuss Oracle's motion to disqualify the court-appointed damages expert, Dr. James Kearl, who since his original appointment in this case has effectively defended Google's interests in connection with an Apple v. Samsung case.

It would only be human if Judge Alsup hated Oracle (I don't know if he does; just saying it would be understandable) for having defeated his non-copyrightability decision on appeal. He's been described as an ego-driven judge, and a journalist said in 2012 that he appeared to be the smartest person in the room (at the 2012 trial), which contrasts with the circuit judges' remarks at the December 2013 appellate hearing: they found him "confused" and incorrectly conflating copyrightability and "fair use" aspects. The written opinion was even tougher. It was totally damning for the district judge.


I'll try to find that story again but I remember once having read something about Judge Alsup having written a letter to an appeals court to disagree with an appellant (he felt he needed to correct some misrepresentations) and to defend his ruling. I'm not aware of any other district judge ever having done that anywhere in the world. Apparently he cares a great deal about what happens to his decisions on appeal, and the highest-profile decision he made, at least in an IT/IP context, was the non-copyrightability finding that turned out to have been wrong on each point. But that wasn't Oracle's fault. Oracle's counsel tried hard to educate Judge Alsup about the way U.S. software copyright law works. If he had agreed with Oracle, the Federal Circuit would have affirmed his decision.

Since the beginning of 2012, this judge has not been fair in my opinion. He's also been completely wrong on a key issue, which is not just my opinion but also that of the Federal Circuit judges, who wield a far bigger stick every day than he ever has. He called Oracle v. Google the World Series of IP cases. The Northern District of California is a major IP litigation venue, but the World Series of IP finals take place in Washington, DC. Unlike in baseball, however, the local venue can delay things a lot. I hope Oracle will not back down because that would be a bad precedent for everyone who believes courts should be fair, experts should be neutral, and judges should be fair in light of the fact that "justice delayed is justice denied" almost always affects only the plaintiff.


As to a confusion of copyrightability (whether an item is subject to copyright protection) with fair use (which is a defense to copyright infringement), from a discussion of the case from the Finnegan website:

The Court held that the merger doctrine was incorrectly applied by the district court, and that the district court did not focus on the options available to an original author. The Court explained that the merger doctrine is an exception to the “idea/expression dichotomy”—which does not extend copyright protection to any “idea, procedure, process, system, method of operation, concept, principle, or discovery.” Id. at 18 (quoting 17 U.S.C. § 102(b)). Instead, under the merger doctrine, if there are only a few ways to express an idea, the idea essentially “merges” with the expression and thus becomes unprotectable. In this case, the Court held that the merger doctrine was inapplicable because the Ninth Circuit had previously determined that the distinctive arrangement of a computer program does not merge with the process if alternate expressions are available. The Court recognized that the Android class names and methods could have been different from the names used by Java, and still could have worked. For example, “java.lang.Math.max” could have instead been named “Arith.larger.” If Java’s authors only had a limited number of ways to express the methods and classes, then the idea likely would have “merged” with the expression, making the packages unprotectable, but the Court held that they did not and, thus, the merger doctrine was inapplicable.

The Court also held that the district court erred in concluding that Oracle’s declaring codes were uncopyrightable because they were short phrases. Although, under 37 C.F.R. § 202.1(a), words and short phrases such as “names, titles and slogans” are unprotectable under copyright law, the relevant inquiry is whether the manner in which a short phrase is strung together and used is creative, the Court noted. The Court further noted that Oracle is not seeking protection for single phrases, but short phrases strung together. Because an original “combination” of words can be copyrightable, the Court held that the district court erred in finding that the programs were unprotectable short phrases.

As to Fair Use, the Finnegan people wrote:

In addressing additional points, the Federal Circuit acknowledged the four statutory factors to be considered when determining if a particular use is fair. At the lower court, the jury was hung on Google’s fair use defense and a new trial was denied. The Federal Circuit ultimately decided that the record contained insufficient facts on which it could base a de novo assessment of Google’s assertion of fair use; thus, the issue was remanded. The Court also affirmed the district court’s decision to grant Oracle’s motion for JMOL in regards to “eight decompiled Java files that Google copied into Android” and which contain security functions, and affirmed the district court’s decision to deny Google’s motion for JMOL in regards to nine lines of “rangeCheck” code because copying was “more than de minimis.” Id. at 62-66.

Link to Finnegan post

Thursday, November 19, 2015

BNA discusses PTAB

Note the text:

Understanding the relationship between patent cases in court and validity challenges at the Patent Trial and Appeal Board is essential for success in litigation today, according to a Nov. 12 Bloomberg BNA conference held at the offices of Wiley Rein LLP, Washington.

David E. Killough, assistant general counsel at Microsoft Corp., said PTAB issues are among the top issues in patent law today.

Panelists at the conference, co-chaired by James H. Wallace Jr. and Brian H. Pandya of Wiley Rein, zeroed in on the main take away for both challengers and patent owners: do everything you can upfront, because the PTAB's trial institution decision, which comes about six months after a petition is filed, is critical.


Monday, November 16, 2015

CAFC sends Akamai back again

The 16 Nov 2015 installment of Akamai v. Limelight is available:

Ned Heller commented at PatentlyO:

No doubt that BMC Resources and Muniauction would have been decided in favor of the patent owner had the present rules regarding method claims been in place then. Lemley’s effort the sabotage the law of direct infringement involving method claims has justifiably has been defeated.

CAFC tackles evidentiary issues in IPRs in Ariosa case

In ARIOSA DIAGNOSTICS v, VERINATA HEALTH, INC., the IPR petitioner-appellant ARIOSA DIAGNOSTICS convinced the CAFC to vacate a decision of PTAB, costing the patentee a finding of nonobviousness:

For the foregoing reasons, we vacate the Board’s find-
ing of nonobviousness and remand.

The issue is "how much" consideration PTAB placed on Exhibit 1010:

Here, we cannot confidently discern whether the
Board, in its consideration of Exhibit 1010,
was actually relying on a legally proper ground rather
than the errone-
ous ground just noted.
The Board might have been saying
only that the
development of the argument invoking
Exhibit 1010 in the Petitions was not adequate.


Yet the Board did not sufficiently articulate the fore-
going grounds for its rejection of Ariosa’s reliance on
Exhibit 1010 or other grounds independent of the incor-
rect ground suggested by the Board’s language.
Perhaps the Board could have done so. But it did not, and we
cannot do so for the Board
where, as here, the matter is
not purely legal.


The significance of Cubist Pharma v. Hospira (Fed. Cir. 2015)

Concerning the PatentlyO post on Cubist v. Hospira titled:
Correcting your Patent Based upon Later Advances in Science,

LBE has a quibble with the title of the PatentlyO post AND, more importantly, with the decision.

**As to the title of the post, the technology to identify optical isomers (enantiomers) was known BEFORE the filing of the Lilly patent applications. The issue in Cubist has nothing to do with a "later advances in science" but rather with
a later-obtained experimental result based upon earlier science.

**As to the decision, LBE has two comments on PatentlyO, which are reproduced below:


Interesting point about an inferred difference [referring to text: Dennis, compare a court’s equitable powers that will correct an error that is virtually self-evident. This shows that the PTO can go well beyond what a court can do using its equitable powers. ]. Here, there was no doubt that Lilly “possessed” the compound with the D-enantiomer. An issue in this case is the lack of focus on “what was claimed”, as distinct from what may have been disclosed. The problem was that Lilly claimed the compound with the L-enantiomer. In the past, one got what one claimed, whether intended or not:
Radio Steel v. MTD, 221 USPQ 657 (CAFC 1984) or the “baking
bread” case [ Chef America v. Lamb-Weston: “a nonsensical result does
not require the court to redraft the claims of the patent.”

In this case, Lilly intended to claim the L-enantiomer, even though that is not what Lilly possessed. If Lilly had claimed the fermentation product, rather than a chemical formula, there might not be a problem. The invention is defined by the claims, not by the disclosure.

A related issue arose “In re ‘639 patent” as to prior art, which recited a synthetic pathway to a claimed compound [nabumetone] but which pathway contained an error [ironically because of reliance on a Lilly publication that was in error]. As another twist, the prior art disclosure actually produced [some] nabumetone.




As to –later advances in science–, and the text — In this case, the original patent filing included a structural diagram of the claimed daptomycin compound that was inaccurate because it misidentified a stereoisomer of asparagine. It was only after the patent issued that researchers discovered that the compound contained the D-isomer rather than the L-isomer. To be clear, when the patent issued, scientists thought that the compound actually had the L-isomer but then later learned that it had the D-isomer. — it’s not clear “why” there was an inference that the L-enantiomer of asp was present in the daptomycin obtained from fermentation. Certainly, the identity of the enantiomer of asp could have been determined at the time of filing. If the Lilly scientists “guessed wrong” and intentionally selected what turned out to be wrong, is this the type of mistake that should be corrected by a certificate of correction? As a hypo, if the the daptomycin with L-enantiomer of asp (which exists) turned out to be more effective than that with the D-enantiomer, what would Cubist be arguing?

Lilly chose to claim the invention in terms of a formula. Even
though the specification may offer support for various claims, it is the issued claims that define the invention that may be enforced.
In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 . There is no doubt that Lilly possessed the compound with the D-enantiomer, but they didn’t claim it, and didn’t bother to check which enantiomer they had. Is that a mistake that should be corrected by a certificate of correction?


As to enantiomer, from wikipedia:

In chemistry, an enantiomer is one of two stereoisomers that are mirror images of each other that are non-superposable (not identical),

See also


The court affirmed a district court's judgment that invalidated four longest lasting patents related to the drug, the last of which would have given Cubist coverage until 2020. However, only the oldest patent, which expires in June, was left intact

What would Abraham Lincoln say about Goodlatte's "Innovation Act"?

Joseph Allen has a post titled Abraham Lincoln loved our patent system. Let’s not tear it down. which goes into some of the issues in patent reform.

Allen does mention "efficient infringement":

If a patent cannot be effectively enforced, it has little value. Courts have made it almost impossible for patent owners to obtain the injunctions that can stop the sale of products that infringe upon their inventions. Giant corporations employ “efficient infringement” strategies knowing they can make big money pirating patents, even if they get caught. Because it is so hard to recover damages, lawyers are often unwilling to defend inventors on a normal contingency fee system, and instead insist upon being paid up front for the considerable costs of an infringement trial.

Allen gets into "loser pays":

The patent reform bill that has made progress in the House, called the Innovation Act, would force patent owners to pay their opponents’ legal bills if their infringement suit proved unsuccessful. This gives big businesses a formidable tool with which to intimidate inventors from enforcing their patents, as there’s always a chance that any lawsuit will fail and the expense of paying the legal fees of a giant corporation would bankrupt most small companies.

Sunday, November 15, 2015

KSR foreseeability and football

Listening to Philly channel 3 on the morning of 15 Nov 2015, one was expecting a massacre of the Dolphins, with
the Eagles running offense predicted to go wild over the Dolphins porous running defense.

In fact, the Eagles lost the game and gained less than 100 yards running. Murray got 61 yards, with 2.8 yards per rush. Matthews got 18 yards, on 2.3 yards per carry.

Was this outcome foreseeable to the football practitioner of average skill?

More confusion from Mytheos Holt

House speaker Ryan is looking to get important things (like the budget) done without controversy.
Patent reform in November 2015 does not fit the bill. There has been increased opposition since the time the House last voted in favor of the Goodlatte bill.

But see

RedState noted:

Rep. Paul Ryan (R-WI) is on the mainstream conservative side, opposing the grab bag bill that died this Congress.


BUT the cited link in RedState is to a 2011 action related to HR 1249: Thankfully, Representatives Paul Ryan (R-WI), chair of the House Budget Committee, and Harold Rogers (R-KY), chair of the House Appropriations Committee, recently wrote a letter to Representative Lamar Smith (R-TX), chair of the Judiciary Committee responsible for the bill, expressing their dismay at this proposal

**Although Ryan does not seem to have spoken strongly on the Innovation Act, he has been interested in "patent box" concepts:

In recent weeks, a major concept has emerged in tax reform discussions: the establishment of a patent or innovation box.

The patent box is a mechanism that is used to encourage domestic innovation and the commercialization of innovative new products. Several major US trading partners already use patent or innovation boxes as part of their tax regimes.


Both Senator Hatch and House Ways and Means Committee Chairman Paul Ryan (R-WI) have indicated they are working closely with the Administration on tax reform and all share a deep concern that if they fail to act on business and especially international reform in this Congress, the US will see a vast number of American companies move their domiciles overseas to reduce their US tax burdens. In remarks at a private event, Chairman Hatch conceded that the patience of US multinationals has run its course; they will not wait beyond this year for Congress to act, and as a result, both he and Chairman Ryan need to find a way to “walk through the door” of business tax reform this year.


CBS Sunday Morning on 15 November 2015

Charles Osgood opened the November 15 show by stating that the Eiffel Tower had been darkened in memory of those lost in Paris and that Elizabeth Palmer would report details.

The cover story is by Martha Teichner on photographer Joel Sartori. Lee Cowan on Sylvester Stallone. Anthony Mason on Jennifer Hudson in The Color Purple. Rita Braver on comic drawer Mort Walker (Beetle Bailey) and King Features. Tracy Smith on Sarah Palin. Georgia O'Keefe.

News. 129 dead/352 injured in Paris attack. 3 groups/8 people. Osgood appears to be reading from a written script.

Elizabeth Palmer reported from Paris. She showed a video of the concert at Bataclan at the time of the attack. Palmer indicated that French officials stated they had identified ALL of the terrorists.

The cover story is entitled Vanishing, with pictures of animals by Joel Sartori. Building a photographic ark with pictures of 5002 species. Tuffy the tree frog. Northern White Rhino. Columbia Basin Pygmy Rabbit. Horned Guan. Kathryn Wertman. Sartori's wife Kathy diagnosed with breast cancer; needed to stay home in Omaha, Nebraska. Pictures at Lincoln Zoo. There are 12,000 species in captivity. His photos have been projected onto the Empire State Building.

Almanac. Nov. 15, 1887, birth of Georgia O'Keefe in Sun Prairie, WISC. 1981 interview on Sunday Morning. I painted it so often it became mine. Died in 1986,

Rita Braver on the funnies. Blondie and Dagwood. Popeye. Dennis the Menace. Betty Boop. The King Features Syndicate.
Brendan Burford. William Randolph Hearst stole the Yellow Kid from Pulitzer. By 1915, King Syndicate formed. Longest continuous run comic drawn by one artist: Beetle Bailey, 65 years. Mort Walker is now 92. Hi and Lois created in 1954. Comicon in Manhattan. Curtis. Things that make people think.ewer

Contessa Brewer on social media in the Paris shootings. Michael Morrell. Chaos caught on camera. Facebook Safety Check. WICKR. Encrypted messages. John Miller on messages designed to be unreadable by third parties.

Anthony Mason on Jennifer Hudson. Various clips from Chicago. Chi-raq.

Tracy Smith on Sarah Palin. Did you feel like a loser? It takes a team to win and a team to lose. We lost. The summer of 2008. Bristol was pregnant. Sept. 2008 with Katie Couric: what do you read for news? 2015: lost job as commentator for Fox. God of second chances. Book "Freedom". Too many people worry about being too divisive. Donald Trump has nothing to lose; he is his own man. You see a lot of silver linings.

Steve Hartman in Ft. Worth, Texas. Guy on mower pulling a train of dogs. Eugene and Walter Bostic.

Lee Cowan does Sunday Profile on Sylvester Stallone, now 69. The movie "Creed." Born in a clinic in Hell's Kitchen.
You weren't born with much of a brain. Saw movie Hercules with Steve Reeves. Had to sell dog. Prisoner of Second Avenue.
Turned to writing screen plays. After 29th birthday, Rocky. Would not sell script unless he played Rocky. Rambo: Rocky on caffeine. Stallone was 11th choice for Rambo. Keep punchin' Philly; I owe ya.

David Turracamo on Paris, a city of a thousand villages. Je suis Charlie. All of Paris is my village.

Pictures of world cities with landmarks illuminated in red, white, and blue.

Nov. 16 is the 100th anniversary of the patent for the design of the Coke bottle.
The design patent is US 48,160 to one A. [Alexander] Samuelsson [of the Root Glass Company; the patent application sketch was made without the signature embossed Coca-Cola script lettering. ].

The motivational issue was that competitor brands like Koka-Nola, Ma Coca-Co, Toka-Cola and even Koke copied or only slightly modified the spencerian script Coca Cola logo on generic bottles. The Trustees of the Coca-Cola Bottling Association sent a challenge to glass companies to create a “bottle so distinct that you would recognize if by feel in the dark or lying broken on the ground.” As inspiration for a distinctive bottle design, the container was said to have been modelled after a component of the Coca-Cola beverage: the Cocoa Bean Pod, which has a similar bulging middle.

The color of the bottle was to be German green, which later morphed to Georgia green.
Color trademarks were another 80 years away. But note on April 12th, 1961, the Coca-Cola bottle was recognized as a trademark, in part supported by the fact that a 1949 study showed that fewerthan 1% of Americans could not identify the bottle of Coke by shape alone.

Note also Kiss the Past Hello: 100 Years of the Coca-Cola Bottle

Returning to Sunday Morning, note Nov. 22, 2015 is the "food issue" of Sunday Morning.
Recall for example, from IPBiz of November 18, 2012:

Charles Osgood, in a red blazer and green pants, introduced the stories for November 18, 2012, the "food issue" of CBS Sunday Morning. Eat, drink and be merry. Lee Cowan did "feeding frenzy," the cover story, with Wolfgang Puck. Second, Barry Peterson, marijuana as a food ingredient. Third, Michelle Miller with John Goodman doing food in New Orleans (easy does it). Fourth, Martha Teichner, food matches. Fifth, Bill Geist on "The Big Texan Steak Ranch."

Moment of nature. Field of sunflowers in the village of Lempaut in the south of France. This "moment" is a recycle from June 28, 2015: We leave you this Sunday in a field of sunflowers in Lempaut, in the south of France.

Friday, November 13, 2015

Graphene in the news notes:

The US Patent Office has recently published the patent application (no. US 2015/0301039), which was filed by the MIPT in May this year and is titled "Biological Sensor and a Method of the Production of Biological Sensor." In Russia, this development is already protected by the patent No. 2527699 with a priority date of February 20, 2013. The key feature of the sensor is the use of a linking layer for biomolecule immobilization comprising a thin film of graphene or graphene oxide.


CAFC addresses negative claim limitations in Inphi v. Netlist

The CAFC noted

Substantial evidence supports a finding that the specification
satisfies the written description requirement
when “the essence of the original disclosure” conveys the
necessary information—“regardless of how it” conveys
such information, and regardless of whether the disclosure’s
“words [a]re open to different interpretation[s].” In
re Wright, 866 F.2d 422, 424–25 (Fed. Cir. 1989) (citation
and internal quotation marks omitted); see also Falko-
Gunter Falkner v. Inglis, 448 F.3d 1357, 1365–66 (Fed.
Cir. 2006) (finding substantial evidence supported written
description based on “several passages in the [patentee’s]
application” and the unrebutted “testimony of [the patentee’s]
expert,” which showed that skilled artisans
would understand the invention); Novozymes A/S v.
DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1346
(Fed. Cir. 2013) (discussing the metaphor from In re
Ruschig, 379 F.2d 990, 995 (1967) that a disclosure should
“provide sufficient ‘blaze marks’ to guide a reader through
the forest of disclosed possibilities toward the claimed
Whether a patent claim satisfies the written description
requirement of 35 U.S.C. § 112, paragraph 1 depends
on whether the description “clearly allow[s] persons of
ordinary skill in the art to recognize that [the inventor]
invented what is claimed.” Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (internal quotation
marks omitted) (quoting In re Gosteli, 872 F.2d 1008,
1012 (Fed. Cir. 1989)).
[W]hatever the specific articulation, the test requires
an objective inquiry into the four corners of
the specification from the perspective of a person
of ordinary skill in the art. Based on that inquiry,
the specification must describe an invention understandable
to that skilled artisan and show that
the inventor actually invented the invention
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).

As to negative limitations:

In particular, “[n]egative claim limitations are adequately
supported when the specification describes a
reason to exclude the relevant limitation.” Santarus, 694
F.3d at 1351.
When viewed in its proper context, Santarus simply
reflects the fact that the specification need only satisfy
the requirements of § 112, paragraph 1 as described in
this court’s existing jurisprudence, including through
compliance with MPEP § 2173.05(i) (“If alternative elements
are positively recited in the specification, they may
be explicitly excluded in the claims.”) and In re Johnson,
558 F.2d at 1018 (“It is for the inventor to decide what
bounds of protection he will seek.”).


Re-hearing en banc granted to The Medicines Company in Hospira case

As to The Medicines Company v. Hospira

Plaintiff-Appellant The Medicines Company filed a
combined petition for panel rehearing and rehearing en
banc. The petition was considered by the panel that
heard the appeal and thereafter referred to the circuit
judges who are in regular active service. A response was
invited by the court and filed by Defendant-CrossAppellant
Hospira, Inc. A poll was requested and taken,
and the court decided that the appeal warrants en banc
Upon consideration thereof,
(1) The petition for rehearing en banc of PlaintiffAppellant
The Medicines Company is granted.
(2) The court’s opinion of July 2, 2015, is vacated, and
the appeal is reinstated.
(3) The parties are requested to file new briefs. The
briefs should address the following issues:
(a) Do the circumstances presented here constitute
a commercial sale under the on-sale bar of 35
U.S.C. § 102(b)?
(i) Was there a sale for the purposes of § 102(b)
despite the absence of a transfer of title?
(ii) Was the sale commercial in nature for the
purposes of § 102(b) or an experimental use?
(b) Should this court overrule or revise the principle
in Special Devices, Inc. v. OEA, Inc., 270 F.3d
1353 (Fed. Cir. 2001), that there is no “supplier exception”
to the on-sale bar of 35 U.S.C. § 102(b)?
(4) The new en banc briefs shall be electronically filed
in the ECF system, and thirty paper copies of each brief
shall be filed with the court. Two paper copies of each en
banc brief shall be served on opposing counsel. Given
that Hospira, Inc. was the original cross-appellant on the
issues to be addressed, Hospira, Inc.’s en banc brief is due
45 days from the date of this order. The Medicines Company’s
en banc response brief is due within 30 days of
service of Hospira, Inc.’s en banc brief, and the reply brief
within 15 days of service of the response brief. Briefs
shall adhere to the type-volume limitations set forth in
Federal Rule of Appellate Procedure 32 and Federal
Circuit Rule 32.
(5) Briefing should be limited to the issues set forth
(6) The court invites the United States Department of
Justice to file a brief expressing the views of the United
States as amicus curiae. Other briefs of amici curiae will
be entertained, and any such amicus briefs may be filed
without consent and leave of court but otherwise must
comply with Federal Rule of Appellate Procedure 29 and
Federal Circuit Rule 29.
(7) The parties are directed to file with the court thirty
paper copies of their original briefs and joint appendix
within 17 days from the date of this order.
(8) Oral argument may be held at a time and date to
be announced later.


Thursday, November 12, 2015

CAFC affirms D. Del. in Cubist case

In Cubist v. Hospira, appeals were made from
the United States District Court for the
District of Delaware in No. 1:12-cv-00367-GMS, Judge
Gregory M. Sleet; the CAFC affirmed D. Del.

Some background on the Cubist case:

Daptomycin was developed by Eli Lilly & Co. (“Lilly”).
The original patent to daptomycin expired in 2002. The
five patents at issue in this case are all follow-on patents
owned by Cubist. The first is U.S. Patent No. RE39,071
(“the ’071 patent”), which is a reissue of U.S. Patent No.
5,912,226 (“the ’226 patent”) and is directed to antibiotic
compounds, compositions, formulations, and methods of
treating bacterial infections. The next two are U.S.
Patent Nos. 6,852,689 and 6,468,967 (“the ’689 and ’967
patents”), which are entitled “Methods for Administration
of Antibiotics” and are directed to dosage regimens for
administering daptomycin. The final two are U.S. Patent
Nos. 8,058,238 and 8,129,342 (“the ’238 and ’342 patents”),
which are entitled “High Purity Lipopeptides” and
are directed to the purification of daptomycin compositions.
Cubist sells its daptomycin formulation under the
trade name Cubicin. In 2011, Hospira filed an Abbreviated
New Drug Application with the Food and Drug Administration
seeking approval to manufacture and sell an
equivalent daptomycin product prior to the expiration of
Cubist’s patents. Pursuant to procedures set forth in the
Hatch-Waxman Act, Cubist then filed an action in the
United States District Court for the District of Delaware,
alleging that Hospira had infringed all five of Cubist’s
patents. Hospira responded by challenging the validity of
the asserted claims of each of those patents. Two other
related actions brought by Cubist were subsequently
consolidated with the initial lawsuit.
Following a bench trial, the district court held some of
the asserted claims of four of Cubist’s patents invalid for
anticipation and all the asserted claims of those patents
invalid for obviousness. As for the fifth patent, the court
held the two asserted claims not invalid and ruled that
Hospira’s proposed products infringed those claims. Both
parties appeal from the portions of the judgment adverse
to them.

Bottom line

We affirm the judgment of the district court,
relying heavily on the factual findings made by the court
following the trial.

Of the "certificate of correction" issue

It turns out that the structural diagram of the compound
identified as Formula 3 and depicting daptomycin
was inaccurate in one respect. The structure in the
diagram contained 13 amino acids, including asparagine
(abbreviated “Asn”). While the diagram accurately identified
the amino acids and their location in the daptomycin
molecule, it mistakenly identified the stereoisomer of the
asparagine amino acid as the “L” stereoisomer of asparagine,
rather than the “D” stereoisomer.

At the time the application for the ’226 patent was
filed, and until well after that patent was issued, it was
universally believed that the asparagine amino acid in
daptomycin was the L-isomer of asparagine, as set forth
in the structural diagram. Years after the issuance of the
’226 patent and after the reissue application for the ’071
patent was filed, Lilly researchers discovered that daptomycin
actually contains the D-isomer of asparagine, not
the L-isomer.

In 2007, Cubist sought to correct the error by requesting
a certificate of correction from the Patent and Trademark
Office (“PTO”) pursuant to 35 U.S.C. § 255. Cubist
explained that the mistake in the patent as to the identity
of the stereoisomer of asparagine was “the result of the
mischaracterization of one of the A-21978C factors described
by Formula 3.” Specifically, Cubist explained,
“the patentees erred in describing one amino acid’s stereochemistry
as ‘L-Asn’ in the tail of the compound illustrated
in Formula 3, when the correct stereochemistry of
the disclosed and claimed amino acid is ‘D-Asn.’” Cubist
further explained that the true nature of the stereochemistry
of daptomycin was disclosed in a 2005 journal article
by Vivian Miao et al. The Miao article, Cubist stated,
“demonstrates that the A-21978C factors of Formula 3
inherently contain the ‘D-Asn’ in the tail portion illustrated
in Formula 3 when isolated from their native source,
not an ‘L-Asn.’”

The examiner concluded that it was appropriate to
use a certificate of correction to correct the error identified
by Cubist. Accordingly, the examiner issued the certificate,
correcting the diagram of Formula 3 in the specification
and four of the claims of the ’071 patent by
substituting “D-Asn” for “L-Asn” in the diagram.

Of the relevant law

On appeal, Hospira argues that the change in the ’071
patent made by way of the certificate of correction was not
a change “of minor character,” as provided for in section
255, because the change broadened the scope of the asserted
claims. See Superior Fireplace Co. v. Majestic
Prods. Co., 270 F.3d 1358, 1375 (Fed. Cir. 2001) (“A
mistake that, if corrected, would broaden the scope of a
claim must thus be viewed as highly important and thus
cannot be a mistake of ‘minor character.’”). In Hospira’s
view, because the change from L-Asn to D-Asn in the
structural diagram broadened the scope of the claims to
read on daptomycin rather than the L-Asn variant of
daptomycin, the certificate of correction was invalid.
Once the PTO has issued a certificate of correction, a
court may invalidate the certificate only upon a showing
of clear and convincing evidence that it was improperly
issued. Superior Fireplace Co., 270 F.3d at 1367. In this
case, no such showing has been made.


As this court has noted, a chemical structure is
“simply a means of describing a compound; it is not the
invention itself.” Regents of Univ. of N.M. v. Knight, 321
F.3d 1111, 1122 (Fed. Cir. 2003).

One notes that claim 1 of US '226 incorporated the
formula as a claim element:

1. A compound of the formula ##STR12## in which R is C.sub.5 -C.sub.14 -alkanoyl;
R.sup.1, R.sup.2, R.sup.3, R.sup.4 and R.sup.5 are hydrogen; or
a pharmaceutically acceptable salt thereof.

The problem is that "what was claimed" was not "what was possessed."

Tuesday, November 10, 2015

Do universities face a reputational cost in enforcing patent claims?

A post from Brookings investigates the role of universities as plaintiffs in patent infringement suits: Patent infringement suits have a reputational cost for universities .

Yes, WARF did come up, although the long history of WARF and patents was omitted. Thus, the post noted:

This is not the first time this university has asserted its patents rights (UW sued Intel in 2008 for this exact same patent and reportedly settled for $110 million).

There was no mention of the stem cell cases, or the much earlier margarine business.

The post brings up a Bayh-Dole hypothetical:

What if the text of Bayh-Dole had been originally composed to grant a conditional right to patents for federal research grantees? The condition could be stated like this: “This policy seeks to promote the commercialization of federally funded research and to this end it will use the patent system. Grantees may take title to patents if and only if other mechanisms for disseminating and developing those inventions into useful applications prove unsuccessful.” Under this imagined text, the universities could still take title to patents on their inventions if they or the U.S. Patent and Trademark Office were not aware that the technologies were being used in manufactures.

The post continues:

The reality that Bayh-Dole did not mandate such a contingent assignation of rights creates a contradiction between its aims and the means chosen to advance those aims for the subset of patents that were already in use by industry.

I should clarify that the predictor circuit, the blue-light diode, and the Kavcic detectors are not in that subset of patents. But even in they were, there is no indication that the University of Wisconsin-Madison would have exercised its patent rights with any less vigor just because the original research was funded by public funds. Today, it is fully expected from universities to aggressively assert their patent rights regardless of the source of funding for the original research.

No, the Boyer-Cohen patent was not mentioned.

CAFC affirms DNJ in Prometheus v. Roxane, a case on a method for treating Irritable bowel syndrome (“IBS”)

The result of the case

Prometheus Laboratories, Inc. (“Prometheus”) appeals
a judgment of the U.S. District Court for the District of
New Jersey holding the amended claims of U.S. Patent
No. 6,284,770 (“the ’770 patent”) invalid. The district
court found the claims would have been obvious over the
prior art or, in the alternative, invalid on grounds of
obviousness-type double patenting over U.S. Patent No.
5,360,800 (“the ’800 patent”). We affirm the district
court’s decision because the claims of the ’770 patent are
invalid as obvious
over the ’800 patent and other prior
art, and do not reach the issue of double patenting.

Of the district court:

The district court held that the
limited evidence at trial did not establish that there is an
unexpected result of greater efficacy in women. The
district court concluded that, “[a]t best, the claims at issue
are a combination of known elements, combined in a
known way, to produce expected results.” J.A. 47. As
noted above, the district court found that the clinical
improvement of reintroduced Lotronex was due to factors
other than the ’770 patent. Moreover, the district court
found that any commercial success of reintroduced Lotronex
could not be attributed to the method claimed in
the ’770 patent, but rather was due to Prometheus’ marketing
and sales practices. Finally, the district court
found that the method claimed in the ’770 patent did not
satisfy a long-felt but unmet need.

The person of ordinary skill in the art:

The district court determined, and the parties agreed,
that the relevant person of ordinary skill in the art is a
gastroenterologist with three years of experience.

The CAFC briefly addressed species/genus:

To be sure, “[i]t is well-settled that a narrow species
can be non-obvious and patent eligible despite a patent on
its genus.” AbbVie, 764 F.3d at 1379. An “earlier disclosure
of a genus does not necessarily prevent patenting a
species member of the genus.” Eli Lilly & Co. v. Bd. of
Regents of Univ. of Wash., 334 F.3d 1264, 1270 (Fed. Cir.
The genus-species distinction may have particular
relevance in the field of personalized medicine, where, for
example, a particular treatment may be effective with
respect to one subset of patients and ineffective (and even
harmful) to another subset of patients. See, e.g., Margaret
A. Hamburg & Francis S. Collins, The Path to Personalized
Medicine, 363 New Eng. J. Med. 301, 301 (2010).

Of some relevance to the Kyle Bass petition on Tecfidera:

Prometheus’ basic objection is that the district court
simply relied on studies suggesting that the class of 5-HT3
antagonist drugs, of which alosetron is a part, should be
used to treat IBS-D and not IBS-C. While those studies
were not focused on alosetron, but the class of drugs,
there is ample testimony that a person of ordinary skill
would have understood the studies as equally applicable
to alosetron. See, e.g., J.A. 1747–51, 1760. We do not think
the district court clearly erred in concluding that the
lessons drawn with regard to a class of drugs (5-HT3
antagonists) are applicable to a species (alosetron) within
that class.

Also note:

Relevant here is our decision in AbbVie. There, a prior
art genus patent claimed a method of co-administering
two drugs to treat rheumatoid arthritis. AbbVie, 764 F.3d.
at 1378–79. The later patent contained a species claim
limiting the prior art genus to a more specific patient
group: individuals with “active disease.” AbbVie, 764 F.3d
at 1378–79. Borrowing from “the law of obviousness
generally,” we noted that “if the later expiring patent is
merely an obvious variation of an invention disclosed and
claimed in the reference patent, the later expiring patent
is invalid.” Id. at 1378–79 (quotation marks and citation
omitted). This case is analogous. Here, it would have been
obvious for a person having ordinary skill in the art
reading the ’800 patent to treat female patients with IBSD
who had symptoms for at least six months and who had
experienced at least moderate pain. As discussed above,
these limitations are directed to a known type of IBS, to
treating the gender that predominantly experiences IBS,
to treating patients with a characteristic that is always or
almost always evaluated in establishing IBS, and to
assessing symptoms for a duration of time that was
common in diagnosing patients with IBS.

Monday, November 09, 2015

Law360 reports on trade secrets issue in Koninklijke Philips NV et al. v. Elec-Tech International Co. Ltd

As to the outcome: A California federal judge refused Monday to sanction Philips and its counsel, Reed Smith LLP, for allegedly misusing confidential information obtained in its trade secret suit against Elec-Tech International Co. Ltd., saying there was no court order for Philips to violate.


Also of interest

But Philips argued that all of the information it used in its state court suit came from publicly available or permissible sources, calling the motion no more than an attempt to keep facts in the federal case from making it into the state case.

Bradley University now requires students to pass plagiarism quiz

Pantagraph talks about a "plagiarism quiz" now required of Bradley University students:
Plagiarism has consequences in higher education. This fall, failure to pass a quiz on plagiarism awareness has consequences at Bradley University.

The Peoria school is requiring this fall's incoming students — all 1,300 of them — to pass a plagiarism quiz before they can register for the spring semester.



Not mentioned in the pantagraph post:

Completion of the module and quiz are required for all incoming freshman, transfer, and graduate students:
Introduced during summer 2015 orientations
Two reminders to complete the module and quiz before classes begin
One more reminder will be sent in early October
Registration holds will be placed on all incoming students who have not passed the quiz by the first day of registration
The hold can be lifted by passing the quiz



Each quiz attempt will be recorded in a database and saved for the duration of a student’s time at Bradley.
The information can be accessed by the dean of each college and the VP for Student Affairs, as needed.


Sunday, November 08, 2015

CBS Sunday Morning on November 8, 2015

Charles Osgood mentioned the concept of "fighting chance," related
to the cover story. Lesley Stahl on
Parkinson's Disease. Second, Lee Cowan on photography.
Tracy Smith on Jennifer Connelly. Michelle Miller on
"carved in stone." Jim Axelrod on Bernie Sanders.
Seth Doane. Steve Hartman.

News. 90% sure explosion caused by bomb. Trump hosted SNL.
Police officers in LA facing murder charges. CA got sunset
surprise, missile from US Navy. Weather: 50s in NE.

Philadelphia designated as World Heritage City on Friday.

Cover story by L. Stahl on Aaron Latham, in boxing ring.
Parkinsons afflicts about one million Americans.
Rock Steady Boxing, from Indianapolis in 2006.
Gleason's in Brooklyn donates a ring three days a week.
"It gives you the creeps." Stephanie Miller did study
on boxing therapy. Neuroprotective. Growth of neurons.
Patient Tom Kimberly. Aaron: it's slowing the symptoms.

Nov. 8, 1884. Herman Rohrschach born. Died in 1922.

Michelle Miller on Nick Benson, stone carver. John Stevens
shop. In 2010, got MacArthur award. Misspelled the word

Seth Doane on the forgotten war in Korea.

Tuesday is World Science Day.
Friday is odd day, 11/13/15.

Jardiance sponsored "moment of nature". Rock formations of Bisti in northern
New Mexico. Near Huerfano, and about an hour south of
Farmington. From NM 371 to road 7297.

Thursday, November 05, 2015

Plagiarism issue at George Washington University?

There is an interesting story about plagiarism posted in the George Washington University Hatchet.

As to a patent connection

Jyothikumar copied materials for at least six of his own papers from sources like the United States Patent and Trademark Office and the National Institutes of Health, as well as research papers from peer-reviewed journals, without providing citations, according to documents reviewed by The Hatchet.

Also of interest

GW has an academic misconduct policy that requires anyone who finds research misconduct to report it to the research integrity office. According to the policy, all faculty, staff and students who are affiliated with GW are required to follow the policy preventing falsification and plagiarism in research.

CAFC applies collateral estoppel in Tse v. Apple

From the decision

“The doctrine of collateral estoppel applies if (1) the
issue sought to be precluded from relitigation is identical
to the issue decided in the earlier proceeding; (2) the issue
was actually litigated in the former proceeding; (3) the
issue was necessarily decided in the former proceeding;
and (4) the person against whom collateral estoppel is
asserted was a party, or in privity with a party, to the
earlier proceeding.” Enovsys LLC v. Nextel Commc’ns,
Inc., 614 F.3d 1333, 1342-43 (Fed. Cir. 2010) (applying
California law). However, “a judgment of invalidity will
have no collateral estoppel effect if the patentee can show
that it did not have a full and fair opportunity to litigate.”
Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d
1373, 1379 (Fed. Cir. 1999) (citing Blonder-Tongue Labs.,
Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329-334 (1971)).

The pro se appellant Tse lost.

CAFC reviews PTAB's Belden decision; CAFC finds claims 5,6 obvious, reversing PTAB

From Belden v. Berk-Tek -->

Belden Inc. owns U.S. Patent No. 6,074,503, which
discloses and claims a method for making a communications
cable. On a petition for inter partes review under 35
U.S.C. § 311 et seq. filed by the predecessor of Berk-Tek
LLC, the Patent and Trademark Office’s Patent Trial and
Appeal Board instituted a review and later reached a
mixed decision: it rejected claims 1–4 of the ’503 patent
for obviousness, while confirming claims 5 and 6. We now
affirm the rejection of claims 1–4 and reverse the upholding
of claims 5 and 6. We also reject Belden’s contention
that the Board denied it procedural rights in the review.

The issues:

We begin with a review of the substantive challenges
to the Board’s determinations on the evidence and arguments
presented to and considered by it. We then review
Belden’s procedural challenge to the Board’s decision to
allow Berk-Tek’s Reply evidence.


Mr. Baxter responded to Belden’s suggestion that a
skilled artisan would have had no reason to modify board
5 of JP ’910 to prevent twisting, as required by claim 1 of
Belden’s patent. He stated that JP ’910 and Belden’s
patent address the same problem of aligning conductors
with grooves in a cable’s core; that JP ’910’s touted elimination
of “back-stranding” of wires—imparting a preparatory
twist to the wires before cable manufacturing to
compensate for twisting during cabling, JP ’910 at ¶ 3—
made it evident that twisting should be prevented by
another means; and that a skilled artisan would have
seen that the die (board 5 in JP ’910) should be used to
control twisting. Mr. Baxter also plausibly explained why
the S-Z stranding in JP ’910 might increase the need to
prevent twisting at the die, contrary to Belden’s suggestions
that the alternating-direction stranding would by
itself so clearly prevent misalignment of the core with the
conducting wires that there was no reason to contemplate
using board 5 to prevent twisting.


Even giving the Board the deference it is due under the
substantial-evidence standard of review of factual findings,
we agree that the record requires the finding Berk-
Tek urges. The Board’s contrary finding rests on legal

There is no meaningful dispute here, and the Board
did not deny, that the two pieces of prior art in combination
teach or suggest the methods of claims 5 and 6. The
dispute concerns motivation to combine. The Petition and
the Institution Decision reveal the two related ways in
which that issue was presented and considered: whether a
skilled artisan would substitute the twisted pairs of CA
’046 into the method of JP ’910; alternatively, whether a
skilled artisan making the cable of CA ’046 would look to
the JP ’910 method to make it. The brief discussion in the
Petition suggests both views of the matter. J.A. 148–49
(“CA ’046 . . . in view of . . . JP ’910 . . . invalidates claims
3 through 5”); J.A. 155 (“JP ’910 uses single conductors
(4a-4d), but it is known to likewise use twisted pairs with
a cross shaped separator—see for example CA ’046”). The
Board’s Institution Decision does so as well: “[O]ne with
ordinary skill in the art would have understood that the
method of JP ’910 is applicable for use in manufacturing a
telecommunications cable.


None of the Board’s reasons for concluding otherwise
in its Final Written Decision withstands scrutiny through
the lens of governing law. The Board’s first reason was
that JP ’910 shows only conductors that are not individually
insulated, so that “one of ordinary skill, tasked to
produce the conventional twisted cable of CA ’046, would
not have been motivated by the teachings of JP ’910
simply to substitute twisted pairs of insulated conductors
for the bare metal conductors in the method of JP ’910.”
Berk-Tek, 2014 WL 1253012, at *23 (emphasis in original).
But JP ’910 plainly discloses the need to align the
conducting wires with the core and how to do so, as the
Board recognized in its analysis of claims 1 and 4, id. at
*13–14. The alignment problem and solution do not
depend on whether the wires are insulated. The Board’s
disregard of the insulation-independent alignment teaching
of JP ’910 violates the principle that “[a] reference
must be considered for everything it teaches by way of
technology and is not limited to the particular invention it
is describing and attempting to protect.” EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)
(emphases in original); see In re Applied Materials, Inc.,
692 F.3d 1289, 1298 (Fed. Cir. 2012).

There is discussion of the initial petition:

Our earlier discussion of the merits of the obviousness
issues shows how the prior art itself, together with the
Petition, sufficed to supply a prima facie case of obviousness—
as confirmed by the Institution Decision. For
example, as to claim 1, the Board found that JP ’910 itself
articulates a special need to have the wires aligned with
the grooves on the core after passing through board 5, and
that one with ordinary skill in the art would have known
that board 5 could and preferably should be made to
prevent twisting of the core that would cause misalignment.
Berk-Tek, 2014 WL 1253012, at *14–15; Nexans,
2013 WL 8595538, at *14. As to claim 2, the Board found
that both US ’582 and JP ’694 disclose the advantage of
using an additional die to center the core relative to the
transmission media, and that a person of skill in the art
would recognize that the same benefit predictably would
be achieved by using a third die in the method of JP ’910.
Berk-Tek, 2014 WL 1253012, at *18–19; Nexans, 2013 WL
8595538, at *15. Such findings are well supported in the
prior-art documents themselves, as are those which we
have concluded show obviousness of the methods of claims
5 and 6.
To be sure the Board cited Mr. Baxter’s declaration in
its Final Written Decision—mostly in explaining why it
was rejecting Belden’s arguments, but partly in stating
the affirmative reasons to find the motivation required for
a prima facie case. But such citations do not mean that
the Baxter declaration was “necessary” for the prima facie
case. Evidence admitted in rebuttal to respond to the
patent owner’s criticisms will commonly confirm the
prima facie case. That does not make it necessary to the
prima facie case. And nothing required the Board to write
its opinion to separate the material offered by Berk-Tek
at different stages of the proceeding.
No rule requires a Petition to be accompanied by any
declaration, let alone one from an expert guiding the
Board as to how it should read prior art. What the Board
can find without an expert depends on the prior art involved
in a particular case. Even in court, we have said,
“expert testimony is not required when the references and
the invention are easily understandable.” Wyers v. Master
Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010). And
Board members, because of expertise, may more often find
it easier to understand and soundly explain the teachings
and suggestions of prior art without expert assistance. In
the present case, which is all we address, we conclude
that the Baxter declaration was not necessary for the
prima facie case of obviousness.

As to due process

A patent owner in Belden’s position is undoubtedly
entitled to notice of and a fair opportunity to meet the
grounds of rejection. “The indispensable ingredients of
due process are notice and an opportunity to be heard by
a disinterested decision-maker.” Abbott Labs. v. Cordis
Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013). And for a
formal adjudication like the one at issue here, the Administrative
Procedure Act requires the PTO to “timely
inform[]” a patent owner of “the matters of fact and law
asserted” in an inter partes review of its patent, 5 U.S.C.
§ 554(b)(3), to give “all interested parties opportunity for
. . . the submission and consideration of facts [and] arguments
. . . [and] hearing and decision on notice,” § 554(c),
and to permit a party “to submit rebuttal evidence, and to
conduct such cross-examination as may be required for a
full and true disclosure of the facts,” § 556(d). See Bowman
Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419
U.S. 281, 288 n.4 (1974); Pension Benefit Guaranty Corp.
v. LTV Corp., 496 U.S. 633, 655 (1990). Section 554(b)(3)
has been applied to mean that “an agency may not change
theories in midstream without giving respondents reasonable
notice of the change” and “the opportunity to
present argument under the new theory.” Rodale Press,
Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968). In a
related PTO setting, this court has determined whether
the Board relied on a “new ground of rejection” by asking
“whether applicants have had fair opportunity to react to
the thrust of the rejection.” In re Biedermann, 733 F.3d
329, 337 (Fed. Cir. 2013) (internal quotation marks and
citation omitted).
But the rules and practices of the Board generally
protect against loss of patent rights without the required
notice and opportunity to respond. If there are deficiencies
in Board rules and practices, none has been established
as relevant to this case. Nor has Belden identified
a deficiency in the application of Board rules and practices
to this case.
The statute provides for inter partes review proceedings
to begin with a petition from the challenger. 35
U.S.C. §§ 311, 312(a). The patent owner has the right to
file a preliminary response to argue against the institution
of review. § 313. If a review is instituted, based on a
finding of a reasonable likelihood that the claims do not
meet statutory requirements, the patent owner has the
right to file a post-institution response to defend the
claims. § 316(a)(8). The petitioner also has a right to file
at least one set of written comments. § 316(a)(13). And
both parties have a right to an oral hearing. § 316(a)(10).


Here, the Board held Berk-Tek to the response-only
standard for evidence submitted with a Reply and even
held itself to ensuring that the prima facie case did not
depend on that evidence. It provided for Belden’s crossexamination
of Mr. Baxter and for submission of nonargumentative
observations on that cross-examination. It
accepted Belden’s detailed motion to exclude (and its
reply after Berk-Tek’s response). It provided Belden with
a meaningful opportunity to respond to the propriety of
Mr. Baxter’s evidence submitted with Berk-Tek’s Reply,
in that it granted every request Belden made for consideration
of the issue. Belden did not seek to file a surreply,
to file additional observations on its cross-examination, to
make arguments in those observations, or to have the
Board waive any other regulations that it believed prevented
it from adequately responding to Mr. Baxter’s
declaration. With no Board denial of concrete, focused
requests before us, we are not prepared to find that
Belden was denied a meaningful opportunity to respond
to the grounds of rejection, and we find no basis for disturbing
the Board’s denial of Belden’s motion to exclude.