Sunday, January 31, 2016

CBS Sunday Morning on January 31, 2016

Charles Osgood introduced the stories for 31 January 2016. The cover story, by Martha Teichner, is on the oil glut, including consequences in West Texas. Serena Alschul on Samantha Bee. Anthony Mason on ColdPlay, who will be at the SuperBowl. Lee Cowan on Bob Odenkirk. "Better Call Saul." Major Garrett on Iowa caucuses. Dean Reynolds on lobbyists. Headlines on 31 Jan 16: Iowa caucuses tomorrow. Orange County, CA escapees captured. David Petraeus not demoted. Weather: Storm in west.

The cover story on Slippery Slope. Midland County Line. Mike Rasco on parking lot for drilling rigs. 1000 people employed per drilling rig. A gallon of water is worth more than a gallon of oil. Loss of 275,000 jobs since mid-2014. Daniel Yergin. The US is exporting US oil production almost doubled. Every day, production of 1.5 million more barrels than needed. Wikipedia notes of Yergin: He wrote that Hubbert peak theory ignores the effects of economics and technological advances. Instead of a peak, Yergin predicts future oil production will be more of a plateau, as increasing prices moderate demand and stimulate production.

Almanac. January 31, 1961 Ham goes into outer space in a Mercury capsule. Died in 1983. Buried in Alamogordo, New Mexico. Of the name "Ham," wikipedia notes: Ham was known as No. 65 before his flight, and only renamed "Ham" upon his successful return to Earth. This was reportedly because officials did not want the bad press that would come from the death of a "named" chimpanzee if the mission were a failure.

Dean Reynolds on "Trust Me." Gil Fulbright. Shining a light on special interests. Josh Silver. Represent Us in florence, MASS. Dan Krassner. Jimmy Siegel comments on the "Fulbright" videos and is mentioned in the context of a 2007 video he did for Hillary's campaign; the Washington Post had noted: Hillary walks into the Mount Kisco diner in Westchester, N.Y., and takes a seat. Seconds later in comes Bill, dressed in a short-sleeved, untucked shirt. "No onion rings?" Bill asks when he sees that his wife has ordered a bowl of carrots. "I'm looking out for you," replies Hillary, who peruses the diner's jukebox selections,

Milepost: Makeover for Barbie. Three additional body types. Seven new skin colors. Sales were declining every year since 2012.

Serena Alschul on "Busy Bee." A woman" in the boy's club of late night tv. "Full frontal." Jason Jones.

Deaths. Buddy Cianci first elected in 1974. Abe Vigoda in The Godfather.

Lee Cowan on Bob Odenkirk.

Moment of nature by B-I: swimming with blue sharks off the coast of Rhode Island.
See also:

Saturday, January 30, 2016

New trial in Avid v. Harmonic

The CAFC noted:

The jury in this case found that Harmonic, Inc. did
not infringe two patents asserted by Avid Technology, Inc.
On one of two claim elements that were the focus of the
dispute at trial, the district court gave the jury a narrow
construction based on what the court determined to be a
prosecution disclaimer. We hold that construction to be
incorrect. We also hold that the error on this central trial
issue requires setting aside the non-infringement verdicts,
which were general verdicts as to each patent,
because Harmonic has not argued that the evidence
compels a finding of non-infringement independently of
the construction error. Avid therefore is entitled to a new
trial on infringement, though satisfaction of this particular
claim element is now settled because Harmonic has
not here disputed Avid’s contention that Harmonic’s
system satisfies this claim element when properly construed.
Avid has not, however, shown entitlement to
more than a new trial, i.e., to entry of a judgment of
infringement: the evidence does not compel a finding of
infringement of the other claim element in dispute—
which at present is without a claim construction. Accordingly,
we vacate the judgment and remand for a new trial.


Friday, January 29, 2016

Akzo v. Dow, appeals denied

In Akzo v. Dow, the final result was that the appeals were denied: For the reasons set forth above, we affirm the judgment of the district court.

Yes, Teva was cited:

Evaluation of summary judgment of noninfringement is a two-part inquiry: construing the claims and comparing the properly construed claims to the accused product. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009). We review de novo the ultimate interpretation of a claim term and the evidence intrinsic to the patent. Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. ___, 135 S. Ct. 831, 841 (2015). When a district court makes factual findings about extrinsic evidence, we review those subsidiary factual findings for clear error. Id. at 835, 841


Dow suggests that, in affirming the district court’s construction, we run afoul of the principle that courts may not redraft claims to sustain their validity. Appellee’s Br. 67–68 (discussing Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004)). Dow’s reliance on Chef America, however, is misplaced. In affirming the district court’s construction, we are not redrafting the claims, but rather construing the claims to require the heightened temperature range to apply to the elevated temperature phases in accordance with the specification. Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360, 1367–68 (Fed. Cir. 2015) (“Determining how a person of ordinary skill in the art would understand the limitation, however, is different from rewriting the limitation.”); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1366–67 (Fed. Cir. 2011).

Thursday, January 28, 2016

Ethical norms in "intellectual property" scholarship?

Note the publication of the paper Open Letter on Ethical Norms in Intellectual Property Scholarship by Feldman, Lemley, Masur and Rai with abstract

As scholars who write in intellectual property (“IP”), we write this letter with aspirations of reaching the highest ethical norms possible for our field. In particular, we have noted an influx of large contributions from corporate and private actors who have an economic stake in ongoing policy debates in the field. Some dollars come with strings attached, such as the ability to see or approve academic work prior to publication or limitations on the release of data. IP scholars who are also engaged in practice or advocacy must struggle to keep their academic and advocacy roles separate.

Our goal is to bring attention to the dramatic changes that are occurring in the field, highlight the potential pitfalls, and suggest a set of ethical norms to which we will strive to adhere. We conclude this letter with a set of ethical norms to which a large number of IP academics have already subscribed. We welcome additional signatories to the principles expressed in this letter.

Below footnote 5, one has the text:

We thank a large number of our colleagues for helpful comments that have shaped these norms, including both signatories and nonsignatories. Thanks to John Allison, Jim Bessen, Miriam Bitton, Colleen Chien, Ralph Clifford, Wes Cohen, Jorge Contreras, Dennis Crouch, Mark Davison, Rochelle Dreyfuss, James Grimmelman, Ariel Katz, Brian Love, David Opderbeck, Lisa Larrimore Ouellette, Michael Risch, Josh Sarnoff, Jason Schultz, Dave Schwartz, Ted Sichelman, Matt Spitzer, and Jennifer Urban, among many others, for helpful comments and suggestions.

And one has the text

Finally, we are mindful of the need to protect the role of the academic as a trusted source of reliable information for policymakers and society at large. The issues described above run the risk of creating the impression in the minds of the public that we are lobbyists rather than scholars — with the accompanying loss of trust.

**Of issues in medical science

Recently, medical science has faced significant challenges and has engaged in serious efforts to develop mechanisms to address them. Studies of research in the field of medicine have long identified concerns about the connection between sponsorship and results.8 For example, a 2010 study in the Journal of the American Medical Association (“JAMA”) concluded that industry sponsored medical research tends to yield pro-industry conclusions.9 In a meta-analysis10 of eight articles that covered more than eleven hundred medical research studies, Bekelman et al. found that industry-sponsored trials were 3.6 times more likely to reach conclusions favorable to industry than those without industry sponsorship.11 In addition to more positive outcomes, the articles also raised concerns about subtle judgment issues in the design of the sponsored medical trials that could influence results.12

Direct sponsorship of research is not the only cause of concern. Studies have concluded that other types of financial ties, outside of direct sponsorship, can have an effect on results. For example, a 1998 study published in the New England Journal of Medicine examined 86 studies related to a particular type of pharmaceutical. The study showed that authors whose research supported the use of the particular pharmaceutical were significantly more likely to have financial relationships with the manufacturers than those who were neutral or critical.13

**Of law review articles:

In contrast to medical research, legal research lags well behind, both in terms of the establishment of ethical codes and methods of enforcing those codes. The overwhelming majority of legal journals are not peer-reviewed. Rather, the articles are chosen and edited by law students whose knowledge of methodological flaws and potential biases may be limited. Law journals generally do not request information on conflicts of interest and do not require disclosure of such information. Similarly, the legal field lacks organizations, such as the NIH and NSF, that have either the purse strings or the bully pulpit to impose meaningful ethical rules. Legal authors may occasionally seek federal funds to support research, but that is far from the norm. As a result, it is unsurprising that behavioral norms similar to those in the scientific fields have yet to emerge.

As to inadequate review of law review articles, Mark Lemley, in the Stanford Law Review, proclaimed Gary Boone the inventor of the integrated circuit.
Did Mark Lemley name Gary Boone as the inventor of the integrated circuit?

Michael Martin states that Prof. Lemley never claimed that Gary Boone invented the integrated circuit. For reference:

Mark A. Lemley, Patenting Nanotechnology, 58 Stan. L. Rev. 601, 611-612 (2005):

The integrated circuit was itself an improvement in the field of computing, a way of building transistors (an invention discussed above) [p. 612] directly into a computer chip by using charged silicon, a semiconductor. The invention opened up not just computing but also calculators, cell phones, and a host of other portable electronic devices. But because two different inventors working independently developed the integrated circuit at about the same time (1971), the patents were put into interference. Gary Boone was ultimately declared the winner, but not until 1999, twenty-eight years after the first patent application was filed.

**Of articles in medical journals possibly pushing pro-industry positions, note the 1999 article by LBE: L.B. Ebert, Commercialization of Information: Science Journals as Infomercials, Intellectual Property Today, p. 5 (Dec. 1999), mentioning an article in the Wall Street Journal on Feb. 2, 1999. See also the article The Man with No Eye is King, posted without attribution on a law firm website. On the related issue of ghost writing in medical journals, see

Grassley continues inquiry into medical ghost-writing
Grassley tracking down physician/faculty who lend names to ghost-written articles

Sen Chuck Grassley (R, Iowa) is asking medical schools about their policies on ghostwriting, specifically, the practice in which faculty agree to be named as authors of articles written primarily by health care companies.

In letters sent to 10 prominent universities on November 18, Grassley, ranking member of the Senate Finance Committee, asked questions about their policies for faculty who lend their names as authors of review articles, editorials, and research articles prepared by marketing and/or medical education companies on behalf of drug and device manufacturers.

**As to some funding supporting Professor Lemley, recall the 2008 post on IPBiz,
Industry contracting with academics to advance their message?
, with text:

Mark Lemley and Carl Shapiro in 85 Tex. L. Rev. 1991 (2007) began: We are grateful to Apple Computer, Cisco Systems, Intel, Micron Technology, Microsoft, and SAP for funding the research reported in this Article. We emphasize that our conclusions are our own, not theirs. Lemley acknowleges Mallun Yen [chief patent counsel of Cisco].

Lemley's conclusions are favorable to IT companies such as Microsoft.

A comment on Techdirt observed:

Jaffe, Lemley and Lerner are shills for Microsoft, et al...

As below, Mr. Lemley is paid by those pushing patent "deform" and therefore biased ...

Separately, some commentary from Lisa Larrimore Ouellette related to Lemley's Myth of the Solo Inventor, and "review" of law review articles:

Lemley isn't making any claims about the scope of the patents these inventors received, so whether "bamboo" appears in Edison's patent is irrelevant. Rather, his claim is a historical one: that while society thinks of Edison as stepping into vacuum and independently creating this pioneering invention, he was really building on others' ideas much more than the canonical myth suggests. I don't think Lemley did original research on this - he relied on peer-reviewed articles like this one - and it is possible that the scholars he relies on got the history wrong. But I don't think your post on ezinearticles about whether Edison was a patent troll really addresses this historical claim.

Thanks for citing your article about Lemley's claim that "[t]he transistor was originally conceived primarily as useful in hearing aids" (to make it easier for others reading these comments, here is a link to your article on Hein, and the relevant page is 86). I haven't carefully checked your sources (just as I don't carefully check the sources of articles I blog about, since this is a blog, not a law review), but it looks like you are right that this is as much a myth as the other myths Lemley debunks!


As a comment on the 2011 post related to the ezine article, LBE did not think Edison was a troll as to the electric light bulb. The big picture was "the war of the currents" and Edison lost, and got booted by Morgan. The Columbian Exhibition on the Chicago Midway in 1893 used no Edison light bulbs. BUT, Edison and the MPPC is an entirely different story, and illustrates a case wherein (extended) patent rights got trumped by antitrust.


Self-regulation can only be the start in improving standards around IP research which included reference to publications relying on
"proprietary" databases:

Perhaps one of the biggest challenges in closely adhering to the paper’s recommendations is around data disclosure. A large amount of relevant data remains confidential, particularly that which relates to out-of-court settlements and licensing agreements. A lack of transparency around the numbers that they used is perhaps the strongest criticism of the paper written by Professors Bessen and Meurer on the cost of NPE disputes to the US economy.

Separately, from LAW LIBRARY JOURNAL Vol. 104:3 [2012-28]:

¶31 Journals’ interest in furthering scholarly research and education leads them
to require that all articles be original (i.e., created by the author and not previously
formally published) at the time of publication. Virtually all journal publication
agreements ask authors to warrant that the article is original and does not infringe
on anyone else’s copyright. The National Conference of Law Reviews’ Model Code
of Ethics notes that authors have a duty to “produce manuscripts through the use of
the law review author’s own talents, skills, knowledge, creativity, mental processes,
research, and time.”39 It appears no studies have been conducted to determine how
common plagiarism is in law journal articles. Whether it is common or rare,
though, any plagiarism is a serious matter.


Paragraph 38


Update on 5 Feb 2016:

From the New York Times on Hillary Clinton and the money from Goldman Sachs:

She has struggled to explain why she took that money, saying at a CNN forum on Wednesday night: “Well, I don’t know. That’s what they offered.”

She said she did not regret taking it, though, noting that other former secretaries of states had given paid speeches and adding that no one could influence her politically.


Wednesday, January 27, 2016

Northwestern/UChicago work on multiple sclerosis [MS]

Stephen Miller and Brian Popko have a new theory on the origins of multiple sclerosis:

The current prevailing theory [of multiple sclerosis [MS]] is that an event outside of the nervous system triggers MS in susceptible individuals who may have a genetic predisposition to the disease. In these individuals, the immune cells that normally fight infections confuse a component of the myelin sheath as foreign. These confused immune cells enter the brain and begin their mistaken attack on myelin, thus initiating MS.

New inside-out discovery

But the new study demonstrates the possibility that MS can begin from the inside out, in which damage to oligodendrocytes in the central nervous system can trigger an immune response directly. Oligodendrocytes are responsible for the maintenance of myelin. If they die, the myelin sheath falls apart. The inside-out hypothesis suggests that when myelin falls apart, the products of its degradation are presented to the immune system as foreign bodies or antigens. The immune system then erroneously views them as invaders and begins a full-scale attack on myelin, initiating MS.

An estimated 400,000 people in the U.S. and 2.5 million worldwide have MS. Of those with long-standing disease, 50 to 60 percent have progressive MS.


***As background:

T cells in multiple sclerosis and experimental autoimmune encephalomyelitis
Clin Exp Immunol. 2010 Oct; 162(1): 1–11.

MS is a chronic, progressive inflammatory disorder of the brain and spinal cord. The inflammatory plaque, whether determined histopathologically or using magnetic resonance imaging (MRI), is the pathological hallmark of MS [1]. Studies demonstrating the presence of inflammatory cells and their products in the brain lesions of MS patients, in addition to reports from animal models, has led to the generally accepted hypothesis that disease is mediated by pathogenic T cell responses against myelin antigens, followed by a broader neurodegenerative process [2]. The autoreactive T cells migrate across the blood–brain barrier (BBB) and mediate damage against the central neurones and their myelin sheaths, in particular, but also their axons. The key morphological feature of MS is primary demyelination of nerve axons leading to signal conduction block or conduction slowing at the site of demyelination.
The overwhelming evidence of a role for T cells in the pathogenesis of EAE and MS makes them an attractive target for therapeutic intervention. Indeed, the two most commonly used drugs used to treat MS, IFN-β and glatiramir acetate, can increase Treg cells and IL-10 and thereby suppress proinflammatory T cell cytokines, although they probably also act on other cell types. More deliberate strategies to manipulate T cells involve either targeting inflammatory T cells or their effector functions, or boosting the function of Treg cells. The anti-VLA-4 antibody natalizumab, which inhibits the entry of T cells into the CNS, is relatively effective compared to other licensed drugs.


***As to Alemtuzumab

epletion is followed by lymphocyte repopulation, which begins within weeks. B-lymphocyte counts typically return to baseline by 6 months post-treatment, whereas in clinical trials, mean T-cell counts approached normal (but not baseline) levels by 12 months post-treatment [Kovarova et al. 2012; Kasper et al. 2013]. CD4+ T-cell repopulation is particularly delayed. In a long-term follow-up of 37 patients who had received alemtuzumab treatment in the 1990s for MS, median recovery time to normal levels was 8.4 months for B cells, 20 months for CD8+ T cells and 12 years for CD4+ T cells [Hill-Cawthorne et al. 2012]. It should be noted that many of these patients received a single treatment course of 100 mg over 5 infusion days, which is higher than the approved dose (60 mg over 5 days for the initial course, and 36 mg over 3 days for subsequent courses). T-lymphocyte repopulation is accomplished through proliferation of mature lymphocytes that escaped depletion (i.e. ‘homeostatic’ proliferation) as well as new production from precursors in the thymus [Cox et al. 2005; Jones et al. 2013].

Despite profound depletion of circulating lymphocytes, animal studies have shown that lymphocyte numbers in primary and secondary lymphoid organs are maintained [Hu et al. 2009]. Other aspects of the immune system are also unaffected by alemtuzumab, including innate immune cells, some T-cell subsets (tissue-resident effector memory T cells), plasma cells and serum immunoglobulin levels [Coles et al. 1999b; Clark et al. 2012; Turner et al. 2013].


***For a review of monoclonal antibody treatements of MS, see

including as to rituximab:

Rituximab is a chimeric, IgG1, CD20-directed mAb approved for the treatment of patients with non-Hodgkin’s lymphoma, chronic lymphocytic leukemia, rheumatoid arthritis (in combination with methotrexate) and granulomatosis with polyangiitis and microscopic polyangiitis (in combination with glucocorticoids) [Genentech, 2013]. In a randomized, double-blind, placebo-controlled phase II trial of patients with RRMS [Hauser et al. 2008], rituximab significantly reduced total and new Gd-enhancing lesions and the proportion of patients with relapse compared with placebo after 24 and 48 weeks; however, rituximab is not approved for the treatment of MS and is no longer in clinical development for this indication. However, offlabel use of rituximab for MS occurs in clinical practice in several countries.

Rituximab targets CD20 expressed on pre-B and mature B cells, depleting these cells in the circulation and CNS [Naismith et al. 2010]. Although MS was traditionally considered a T-cell mediated disease, accumulating evidence suggests that B cells play a role. As addon therapy, rituximab decreased the number of Gd-enhancing lesions in a phase II trial of patients with an inadequate response to standard injectable DMTs [Naismith et al. 2010]. In study patients with primary progressive MS, rituximab slowed increases in T2 hyperintense lesion volume but did not prolong time to confirmed disease progression compared with placebo [Hawker et al. 2009]; however, a subgroup analysis found that disease progression was slowed in patients younger than 51 years of age with ⩾1 Gd-enhancing lesion [Hawker et al. 2009].

Mult Scler. 2007 Mar;13(2):149-55. Epub 2007 Jan 29.
Increased CD8+ central memory T cells in patients with multiple sclerosis.
Liu GZ1, Fang LB, Hjelmström P, Gao XG.

A T-cell-mediated autoimmune process against central nervous system myelin is believed to underlie the pathogenesis of multiple sclerosis (MS). Formation of immunological memory is based on the differentiation of naïve T cells to memory T cells after exposure to antigens and specific cytokines. The aim of this study was to analyse peripheral blood mononuclear cells in patients with MS for different T-cell subsets including naïve and memory T cells. Flow cytometry and enzyme-linked immunosorbent assay were used to analyse memory T-cell subsets and plasma concentration of interleukin-15 (IL-15) in peripheral blood of MS patients, patients with other neurological disorders and healthy controls. MS patients had a skewed distribution of T cells with an increased level of CD8+/CCR7+/CD45RA - central memory T cells (TCM) compared to healthy controls. In addition, MS patients showed significantly higher levels of plasma IL-15 than healthy controls did. Upregulated CD8+ TCM in MS patients may reflect a persistent chronic inflammatory response that may have been induced during early stages of the disease. This derangement may be important for maintaining chronic inflammation in MS.


Is it easier to get a patent in the US, or in Europe, or in China?

In a piece titled New patent subject-matter eligibility test hurts US competitiveness, Robert L. Stoll suggests that the US patent system may be more patent - grant unfriendly than the patent systems of Europe or even China.

But due to a series of poorly considered and frequently misapplied Supreme Court decisions, applicants in key technologies such as biotech and software are now facing more stringent criteria for obtaining and keeping patent protection in the U.S. than they are in China, the European Union and other jurisdictions, which reduces America's global competitiveness.


The Mayo test stands in contrast to the approach in Europe, where claims are analyzed to assure they have a technical character. If they do, they are evaluated as to novelty and inventive step. If the claim is a mixture of technical and nontechnical features and the inventive step is not in a technical field, the claim is not patentable subject matter.

Even in China, patents are granted as long as the claims contain a technical feature distinctive from the prior art. A patent claim in China will overcome the "technical solution" hurdle if it uses a "technical means." This leads to broader patent subject-matter eligibility in China when compared to the U.S.


From the perspective of those creating meaningful innovation like the examples outlined above, the European and the Chinese approaches to patentable subject matter are preferable to the current U.S. doctrine. Continued invalidation of large swaths of discovery and innovation domestically will result in a shift of jobs and economic growth to areas where innovators can take advantage of broader patent protection.

In the abstract for the paper Comment on "PATENT GRANT RATES AT THE UNITED STATES PATENT
AND TRADEMARK OFFICE" [ 4 CHI.-KENT J. INTELL. PROP. 186 ], LBE wrote in the year 2005:

In recent patent reform proposals made by the Federal Trade Commission [FTC] and the
National Academy of Sciences [NAS], there has been discussion that the United States
Patent and Trademark Office [USPTO] might have a high grant rate of patents compared
to rates of other industrialized countries, including Japan and European countries.
discussion began with papers of Quillen and Webster that suggested that the grant rate
might be as high as 97% and more reasonably is at least 85%. Clarke suggested that the
issue rate is closer to 75%. While Quillen and Webster based grant rate on applications "allowed,"
Clarke based his studies on applications "issued." In this paper, we use data
from the USPTO to show that the difference between "allowed" and "issued" applications
is not the reason for the divergence in grant rates. Instead, we suggest that Quillen and
Webster's elevated grant rates arise from a flawed numerical approach.

and from footnote 6 of the 2005 paper:

According to the FTC Report, one witness calculated the USPTO's grant rate
at 98% in 2000, compared with 67% in Europe and 64% in Japan.

**As to China, Lexology recently noted:

China handled more patent applications for inventions than any other country for the fifth year running in 2015. The country had over 1.1 million patent applications last year, up 18.7 percent year on year. About 359,000 invention patents were authorized, 263,000 of which were granted to domestic applicants, 100,000 more than in 2014.

Tuesday, January 26, 2016

Orville Wright documents to be auctioned

Fox News covered the coming auction of letters of relevance to the aviation invention of the Wright Brothers.

A 1916 patent transfer document for Wright’s invention of the airplane and one in which the inventor defends his reputation will be auctioned by Nate D. Sanders Auctions in Los Angeles. Bidding for the patent transfer document and letter will begin at $25,000 and $12,500 respectively.

The first document confirms Orville Wright mortgaged five patents to New York investors led by William Boyce Thompson and that he had been paid – thus ensuring any challenges to the patents were relayed to the new owners. The Wright Company had entered into a loan agreement with the Thompson investors in return for $1 million.


A letter Orville Wright sent in 1928 to Connecticut Senator Hiram Bingham will also go on the block. In that typewritten letter, Wright appeared angry with the Smithsonian Institute for discrediting the Wright Brothers as inventors of the first flying machine.

The Smithsonian recognized ex-Smithsonian Secretary Samuel P. Langley as the inventor of the airplane in their 1914 annual report.

''The important point at issue is as to who was the inventor of the first successful flying machine. The Smithsonian for the past seventeen years has kept up constant propaganda to take the credit for this away from my brother and myself,” Wright wrote in the letter. “Such practice as this is beneath the dignity of a scientific institution … I believe there was no one else in the world at that time beside Wilbur and myself that had the scientific data for building a machine that would fly.''


Recall that Wilbur Wright died in 1912. From an IPBiz post titled Patent thickets and the Wright Brothers :

The Wright-Martin Company that bought him [Orville Wright] out, however, was primarily interested in recovering the more than $1,000,000 it had paid for the rights to the patent. In December 1916, the company notified other aircraft manufacturers that they would have to pay a royalty of five percent on each aircraft sold, with a minimum annual royalty of $10,000 per manufacturer. Wright-Martin demanded this royalty on all aircraft, whether they achieved differential lifting by the wing-warping technique of the Wrights or the far more popular ailerons employed by Curtiss.

See also:

Acorda Therapeutics Inc. and Par Pharmaceutical Inc. settle over Ampyra drug dispute

BNA reported:

Under a consent judgment entered in the U.S. District Court for the District of Delaware Jan. 21, Par agreed that the four Acorda patents at issue were valid and enforceable and that its proposed generic would infringe those patents.

The patents at issue, U.S. Patent Nos. 8,007,826 (the '826 patent), 8,354,437 (the '437 patent), 8,440,703 (the '703 patent), and 8,663,685 (the '685 patent), have expiration dates from Jan. 18, 2025, to May 26, 2027, according to the Food and Drug Administration's Orange Book.

Kyle Bass had petitioned for IPR review of the ‘685 patent and the ‘437 patents.

See the IPBiz post The PTAB denial of the Bass IPR petitions on Acorda's Ampyra patents: not quite as being reported in the popular press

which included:

But, Acorda was saved only by a failure of evidence by Bass, not by a substantive ruling on validity. The pharma industry is right to worry about IPRs.

**As one small footnote, Ampyra is not a disease-modifying treatment for MS, in contrast to Copaxone or Tecfidera.

link to BNA report:

Edison as a patent troll, re-visited in 2016

In 2006, LBE published the article Edison as a Patent Troll, or Where is California Going in Stem Cell Research? . At the time, the Wall Street Journal had recently asserted:

[that U.S. patent law is] "deterring research and penalizing innovation," [and that the patent system is] "fast becoming a detriment to U.S. competitiveness, not to mention basic fairness."


Ten years have gone by, and the Wall Street journal is saying much the same thing. Separately, the California taxpayers spent a lot of money on CIRM, with no cure for anything produced.

One side argument that went on in the CIRM discussion concerned the patents of the University of Wisconsin/WARF related to embryonic stem cells. There was a call by some Californians for a patent pool, with reference to the aviation patent pool created in World War I. In 2009, LBE posted a comment on californiastemcellreport:

Making an innovation, which really changes the way we live, is harder than merely making an invention. Incentives must be offered. Simpson would be advised to note the words of Lincoln:

The patent system changed this; secured to the inventor, for a limited time, the exclusive use of his invention; and thereby added the fuel of interest to the fire of genius, in the discovery and production of new and useful things.

In the past, Simpson has been confused on the
"production" issue (eg, there were no US-built fighter planes in World War I). If California taxpayers really want tangible, functioning therapies PRODUCED, there must be incentives. Otherwise, the "product" will be academic papers.


The Simpson in question is John M. Simpson, then Director, Stem Cell Oversight and Accountability Project,
Consumer Watchdog

Consumer Watchdog brought us the interesting CAFC case on lack of standing of third party non-competitors to appeal the loss of a re-examination proceeding.

See also Patent thickets and the Wright Brothers

**As to the 2006 article, the economic significance of patents on embryonic stem cells has more or less passed by, with the current hot item in biotech the CRISPR patent wars. Some issues from the past re-exams (e.g., enablement of prior art) are likely to reappear in the Doudna fight.

**Returning to Simpson's idea that a "patent pool" is a good thing, one might contemplate Edison's activities in the motion picture arena, specifically related to the formation of The Motion Picture Patents Company [the MPPC].

As noted at

[I]n 1907 the courts upheld Biograph's camera patent. This allowed Biograph to operate without the threat of further Edison litigation. In this environment several industry leaders suggested that they form a trade association based upon an umbrella of Edison, Biograph, and Armat patents. The Edison and Biograph companies stood to benefit not only from the reduced competition but also from the substantial royalties that they would receive on their patents. Edison and Biograph executives could not, however, agree on the relative importance of their respective patents. Consequently, the industry split into two rival groups. (...)

In late December 1908, after months of negotiation, the Edison and Biograph groups formed the Motion Picture Patents Company. This corporation licensed nine producers and one importer: Edison, Biograph, Vitagraph, Lubin, Selig, Pathé, Essanay, Kalem, Méliès, and the Kleine Optical Company. For a few months a monopoly seemed possible, then new commercial opposition arose outside the "trust."

Motion pictures, unlike the aviation industry right after World War I, were booming, and in 1909, the Independent Motion Picture Company formed from those left outside of the MPPC patent pool, known by some as the "Edison Trust."
The demise of the MPPC happened in United States v. Motion Picture Patents Co. on October 1, 1915, with the MPPC found to violate the Sherman Antitrust Act. It is curious to note that the aviation patent pool was formed AFTER the bad experience with the MPPC. See also Motion Picture Patents Co. v. Universal Film Co., 243 U.S. 502 (1917). See also Antitrust in the Motion Picture Industry by Michael Conant

** Thomas Edison has been labelled a "patent troll" in some articles.

For example, in 2014, in Slate, Thomas Edison Was a “Patent Troll”, including the questionable text:

Even after he became widely successful and famous—known as the “Wizard of Menlo Park”—Edison still participated in the secondary market, such as selling his patented innovation in incandescent light bulbs to the General Electric Co. (as discussed in a recent biography).

IPBiz notes General Electric was formed through the 1892 merger of Edison General Electric Company of Schenectady, New York, and Thomson-Houston Electric Company of Lynn, Massachusetts, said merger done by J. P. Morgan. Unhappy with the result of the "war of the currents," J.P. Morgan forced Edison (not his patents) out of the company. The light bulbs used at the Columbian Exhibition at Chicago in 1893 were all Westinghouse bulbs and the electric power was the AC of Westinghouse and Tesla.
Adam Mossoff's statement in Slate is silly.

Friday, January 22, 2016

CAFC issues partial remand in Lumen View: the district court did not properly explain its determination of reasonable attorney fees

The CAFC affirmed the finding of exceptional case but remanded as to attorney fee calculation in Lumen View Technology.


Pfizer loses at CAFC on length of a patent term adjustment (“PTA”) for U.S. Patent No. 8,153,768

The CAFC affirmed ED Va and noted general issues with 35 U.S.C. § 154(b)(1).

Judge Newman dissented:

I respectfully dissent.
The panel majority’s ruling on patent term
adjustment is in conflict with the
Patent Act, for the PTO’s
admittedly incomplete restriction require-
ment during patent examination
contributed to the delay
in issuance of the patent.


Wednesday, January 20, 2016

Does the GM/Sidecar deal threaten Uber with patent infringement?

From WIRED on a story about the GM/Sidecar deal:

Maybe. Sidecar’s patent predates those filed by Uber and Lyft by several years, and it’s pretty specific. “It’s not just the general idea of sending a ride request and getting a pickup,” says Maulin Shah, managing attorney at Envision IP, a firm that focuses on patent research and litigation. Sidecar “tried to protect the infrastructure that allows that to happen.” It’s been referenced by 148 other patents, some filed by companies including Apple, Google, Microsoft, and yes, Uber. As with academic papers, having your work cited by others is an indication of validity, Shah says.

It’s far from clear that Sidecar’s patent could be used as enforcement against others, however. First off, GM could use the patent to sue a competitor only if it is the exclusive licensee of the patent—GM and Sidecar haven’t released details of their agreement. Secondly, you could argue the patent addresses a business method, not a technical solution. In May 2014, the Supreme Court unanimously ruled you can’t patent an idea. (The case, Alice Corporation vs. CLS Bank, was also a major blow to patent trolls.) “It’s a fine line between a software patent versus a true business methods patent,” Shah says, though he thinks the Sidecar patent falls more to the software side. Plus, Uber’s success is built on more than the basic ability to call a car with your phone. It has spent years working on its sophisticated algorithms to make the ride sharing experience as easy and convenient as possible.

The third potential hiccup, Shah says, is that because it’s never been challenged in court or at the US Patent Office, “we really don’t know how strong the patent is.” No one’s ever had to defend it, and no one’s tried to attack it by looking for evidence that it’s not as seminal as it may seem. Basically, it hasn’t been vetted.


The text -As with academic papers, having your work cited by others is an indication of validity, - is questionable.
As to academics, contemplate the highly cited work of Jan-Hendrik Schon. That lemmings follow does not prove validity.

The "exclusive license" business may not be relevant here, given that Sidecar is gone. Somebody controls the IP, likely GM.

CAFC: a § 101 analysis may sometimes be undertaken without resolving fact issues.

In this case, the appellant MORTGAGE GRADER, INC., lost at the CAFC
on summary judgment as to 35 USC 101. The issues:

Mortgage Grader appeals the district court’s denial of its
motion to strike Defendants-Appellees First Choice Loan
Services, Inc. and NYLX, Inc.’s (“Appellees”) patentineligibility
defense. Appellees raised patent ineligibility
as a defense in their answer, then dropped it in their
initial invalidity contentions, only to add it back in their
final invalidity contentions. See Mortgage Grader, Inc. v.
Costco Wholesale Corp., 2014 WL 10763261, at *6 (C.D.
Cal. Oct. 27, 2014) (“Mortgage Grader I”). Second, Mortgage
Grader appeals the district court’s grant of Appellees’
motion for summary judgment that the asserted
claims are patent-ineligible. See Mortgage Grader, Inc. v.
Costco Wholesale Corp., 89 F. Supp. 3d 1055, 1065 (C.D.
Cal. 2015) (“Mortgage Grader II”). Mortgage Grader
contends that the district court improperly resolved
factual disputes against it and erred in its application of
35 U.S.C. § 101 (“§ 101”).

One issue pertained to the use of "standing patent rules."

Standing Patent Rules (“S.P.R.s”) would
apply to this case. Judge Guilford developed his S.P.R.s
“based largely on information obtained from over 100
patent practitioners and professors, a review of all the
other local patent rules, and a review of related literature.”
J.A. 64. The S.P.R.s are intended “to reduce transaction
costs and increase procedural predictability,” while
also being as “outcome neutral and as concise as possible.”

The CAFC observed:

Judge Guilford’s Standing Patent Rules are similar to
the Patent Local Rules adopted by the Northern District
of California and many other districts. Like Patent Local
Rules, the S.P.R.s “are essentially a series of case management
orders that fall within a district court’s broad
power to control its docket and enforce its order.” Keranos,
LLC v. Silicon Storage Tech., Inc., 797 F.3d 1025,
1035 (Fed. Cir. 2015). District courts have inherent
power to manage their own docket, see, e.g., Ryan v.
Gonzales, 133 S. Ct. 696, 708 (2013); Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1426 (Fed. Cir. 1988), and are
authorized to “consider and take appropriate action” to
facilitate the “just, speedy, and inexpensive disposition” of
all matters before them. Fed. R. Civ. P. 16; see also Fed.
R. Civ. P. 1. Judge Guilford’s creation and adoption of his
S.P.R.s fall squarely within this broad authority.

Here, the issue was the intervening decision in Alice:

In applying S.P.R. 4.2.2, the district court found that
generally a party cannot claim diligence when it includes
a defense in its answer, fails to include the defense in
initial invalidity contentions, and many months later
adds the defense to its final contentions. See Mortgage
Grader I, 2014 WL 10763261, at *6. While the court
acknowledged that “an argument can be made that Alice
is only a modest advance,” it concluded that “Alice did
provide significant additional clarity on the effect, or lack
of effect, of requiring the use of a computer in the claims.”
Id. at *7. Ultimately, the court concluded that, “[i]n
short, Alice represents a big enough change to justify
including a new § 101 argument in Defendants’ Final
Invalidity Contentions.” Id.

Mortgage Grader argues that the district court abused
its discretion by failing to strike Appellees’ § 101 defense
from their final invalidity contentions. Mortgage Grader’s
primary basis for this argument is its claim that the
Supreme Court’s decision in Alice neither created a new
defense nor changed the law. On these grounds, Mortgage
Grader claims the decision in Alice cannot be a basis
for finding good cause to amend invalidity contentions.
We find no abuse of discretion in the court’s ruling.


Ultramercial III demonstrates that a § 101 defense
previously lacking in merit may be meritorious after
Alice. This scenario is most likely to occur with respect to
patent claims that involve implementations of economic
arrangements using generic computer technology, as the
claims do here.

Mortgage Grader loses:

Mortgage Grader’s arguments to the contrary are unpersuasive.
First, Mortgage Grader points to this Court’s
statement in a non-precedential opinion, Smartflash LLC
v. Apple Inc., 621 Fed. App’x 995, 1002 (Fed. Cir. 2015),
that “Alice did not create a new § 101 defense, but rather
clarified § 101 jurisprudence.” As we have just explained,
even an “old” § 101 defense may enjoy renewed vigor in
light of Alice. More importantly, our statement in Smartflash
was in an entirely different context: review of denial
of a motion to stay pending Covered Business Method
review, where the alleged infringer waited until four
months after Alice was decided (by which time a jury trial
had been completed) and argued that “the stage of litigation
facing the court is irrelevant to its right to a stay.”
Id. We found no abuse of discretion in the trial court’s
decision to deny a stay in such circumstances. Here, we
conclude similarly that the court did not abuse its discretion
in finding that Appellees acted diligently by adding
the § 101 defense just two months after Alice came down,
satisfying the “good cause” standard imposed by S.P.R.
4.2.2. The standard of review employed in both Smartflash
and here cannot be removed from the results
reached in each case—in neither instance did the district
court abuse the broad discretion afforded it.
Next, Mortgage Grader argues we should

As to the 101 issue:

The district court carefully and correctly applied this
two-step framework to the patents-in-suit.6 Regarding
step 1, we agree with the district court that the asserted
claims are directed to the abstract idea of “anonymous
loan shopping.” Mortgage Grader II, 89 F. Supp. 3d at
1063. The claim limitations, analyzed individually and
“as a whole,” Alice, 134 S. Ct. at 2359, recite nothing more
than the collection of information to generate a “credit
grading” and to facilitate anonymous loan shopping. As
the district court explained, the claims specify that “the
borrower is anonymous to the lender until the borrower
has been informed of the cost of the loan based on the
borrower’s credit grading, and the borrower then chooses
to expose its identity to a lender.” Mortgage Grader II, 89
F. Supp. 3d at 1063. The series of steps covered by the
asserted claims—borrower applies for a loan, a third
party calculates the borrower’s credit grading, lenders
provide loan pricing information to the third party based
on the borrower’s credit grading, and only thereafter (at
the election of the borrower) the borrower discloses its
identity to a lender—could all be performed by humans
without a computer. Cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
(“[C]omputational methods which can be performed
entirely in the human mind are the types of methods that
embody the ‘basic tools of scientific and technological
work’ that are free to all men and reserved exclusively to
none.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
Because the claims are directed to an abstract idea,
the claims must include an “inventive concept” in order to
be patent-eligible. No such inventive concept is present
here. Instead, the claims “add” only generic computer
components such as an “interface,” “network,” and “database.”
These generic computer components do not satisfy
the inventive concept requirement. See Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015) (“[T]he interactive interface
limitation is a generic computer element.”); buySAFE, 765
F.3d at 1355 (sending information over network is “not
even arguably inventive”); Accenture Global Servs. GmbH
v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed.
Cir. 2013)


Nothing in the asserted claims “purport[s] to improve
the functioning of the computer itself” or “effect an improvement
in any other technology or technical field.”
Alice, 134 S. Ct. at 2359. Nor do the claims solve a problem
unique to the Internet. See DDR Holdings, 773 F.3d
at 1257. In addition, the claims are not adequately tied to
“a particular machine or apparatus.” Bilski v. Kappos,
561 U.S. 593, 601 (2010).

A 101 issue may be resolved on summary judgment

The § 101 inquiry “may contain underlying factual issues.”
Accenture, 728 F.3d at 1341 (emphasis added); see
also Arrhythmia Research Tech., Inc. v. Corazonix Corp.,
958 F.2d 1053, 1055–56 (Fed. Cir. 1992) (“Whether a
claim is directed to statutory subject matter is a question
of law. Although determination of this question may
require findings of underlying facts specific to the particular
subject matter and its mode of claiming, in this case
there were no disputed facts material to the issue.”). But
it is also possible, as numerous cases have recognized,
that a § 101 analysis may sometimes be undertaken
without resolving fact issues. See, e.g., Accenture, 728
F.3d at 1346. In such circumstances, the § 101 inquiry
may appropriately be resolved on a motion for summary

Tuesday, January 19, 2016

Eric Lander piece in CELL on CRISPR draws flack

An article by Eric Lander in Cell about the identity of the heroes of CRISPR has drawn significant criticism.
One piece begins:

In a perspective piece published in Cell this week (January 14), Eric Lander, president and director of the Broad Institute of MIT and Harvard, outlined the history of achievements behind the precision gene-editing technique known as CRISPR. The problem is, the Broad is a copatentee embroiled in an intellectual property battle being investigated by the US Patent and Trademark Office (USPTO). And Lander’s Cell paper does not disclose the potential conflict of interest.


Sunday, January 17, 2016

Did Baum, the author of Ozma of Oz, think patents were humbug?

A post on patent reform by Kali Murray begins with the text:

In "Ozma of Oz," a sequel to the famed "Wizard of Oz," Dorothy comes across a remarkable copper clockwork man, a mechanical robot running on clockwork springs. Dismissing the invention, Dorothy's companion says that a clockwork man might be a "wonderful machine," but that "it is all humbug, like so many other patented articles."

Of the actual text, a card on the mechanical man stated:

| Patent Double-Action, Extra-Responsive, |
| Thought-Creating, Perfect-Talking |
| Fitted with our Special Clock-Work Attachment. |
| Thinks, Speaks, Acts, and Does Everything but Live. |
| Manufactured only at our Works at Evna, Land of Ev. |
| All infringements will be promptly Prosecuted according to Law.|

Then, we have the statement:

"Well, I declare!" gasped the [talking] yellow hen [Billina], in amazement; "if the copper man can do half of these things he is a very wonderful machine. But I suppose it is all humbug, like so many other patented articles."

Billina, the talking hen, is a cynical, but practical, character in the book. Her initial skepticism of the mechanical man is shown unwarranted.

Specifically, the mechanical man works as stated, and one has the later text:

"It's a very wonderful story," said Dorothy, "and proves that the Land of Ev is really a fairy land, as I thought it was."

"Of course it is," answered the copper man. "I do not sup-pose such a per-fect ma-chine as I am could be made in an-y place but a fair-y land."

"I've never seen one in Kansas," said Dorothy.

The book Ozma was published in 1907, one year after the Wright Brothers patent issued, which patent did describe a flight control system which worked and was not humbug.

Of the Murray post, there is no doubt that there are many people who are skeptics of the patent system, as Billina the talking chicken appeared to be. But in a perfect world (fairy land) things can work as advertised. It was not clear that Baum himself
was expressing criticism of the patent system.

Kali Murray is an associate professor of law at Marquette University Law School and a member of the school's Intellectual Property Program. The post is titled Let's stop treating patents as humbug


Carl Straumsheim of Inside Higher Ed discusses a patent application by Khan Academy.

Within is reference to an innovator's patent agreement:

In order to actively sue another company for patent infringement unprovoked, Khan Academy would have to violate what is known as an innovator’s patent agreement. Introduced by Twitter in 2012 in an effort to make patents more palatable to developers, the agreement is a contract that ensures a company that holds a patent is unable to use it for “offensive” purposes -- suing a company, for example -- unless it gets permission from the employee who came up with the idea or invention.

In this case, Khan Academy entered into an innovator's agreement with Matt Faus, a developer. Khan Academy did not respond to a request from comment.

The application is US 20150310753, and the application claims the benefit of U.S. Provisional Application No. 61/975,685, filed Apr. 4, 2014. WILSON, SONSINI, GOODRICH & ROSATI is prosecuting the case.


CBS Sunday Morning on January 17, 2016

Charles Osgood introduced the stories for January 17, 2016. Barry Petersen does the cover story on genetically modified food. Second, Lee Cowan on Stan Lee of Marvel Comics. Third, Martha Teichner on cake decoraters. Jane Pauley on Leslie Caron. Bill Geist on Jennifer Lawrence and miracle mop portrayed in movie Joy. Alan Pizzi in Italy. Steve Hartman.

Headlines. Five Americans released in Iran. Deaths in Burkina Fasso. Federal aid for water supply in Flint, Michigan. Weather: arctic air coming.
Prisoner swap covered by Charlie Daggeda and Elizabeth Palmer. Initially, clip from John Kerry. Iran can now sell oil on open market. A golden page in Iran's history. Snap back mechanism. Landstuhl Hospital in Germany.

Almanac. January 17, 1880, the birthday of Mack Sennett of silent films. Founder of Keystone Kops. Charlie Chaplin. Fatty Arbuckle. Broke by 1930s. In 1938, awarded a special Oscar. Died in 1960. The original main building of Keystone Studios, the first totally enclosed film stage and studio ever constructed, is still there and is now CBS Studio Center. Of IP interest, Sennett gave up the Keystone trademark in 1917, which was retained by his former bosses, who did not maintain the quality. Sennett's main competitor was Hal Roach. Arguably, his comedic depictions of the 1920s tall, British-style hats for policemen led to their demise, a change in the way we live, and thus an innovation.

Osgood. 80% of foods contain at least one GMO. Papaya farm in Hawaii. Most papayas on Big Island are GMOs. 60 million pounds of papaya. Then ring spot disease. Dennis Gonsalves. Virus resistant papaya. DNA "vaccine". Daylon Perry's farm. Today, 10 different GMO crops. Soda, cereal, chips, cheese, salmon. Future: peanuts, cassava, bananas. BUT, Pesticide Action Network. Opposition to Monsanto. Issue have to buy Monsanto herbicide. Agreement to use seeds only for one cycle. Seeds patented by Monsanto. Hugh Grant is CEO of Monsanto. Chipotle, Hersey, Whole Foods will require labeling of GMOs. Adverse health effects? 57% of Americans think GMOs are unsafe to eat. Science organizations say safe. Modern sweet corn is example of human intervention. Vitamin enriched golden rice (vitamin A).

Allan Pizzi. St. Benedict in Norcia. An American monk, Father Cassian Folsom, is featured in the story. Monks pray eight times a day. Basil Nixon. Chanting Monks album hits billboard chart. The monks’ CD, is called Benedicta. CBS quotes from The Monks of Norcia. We didn't come here to be successful; we came here to seek God. ReligionNews quoted Father Cassian: “We sing the praises of God nine times a day. So if you add all that up, it’s probably five hours every day, rain or shine, 365 days a year, CBS Sunday Morning did not mention other aspects of Norcia. From Wikipedia: The Monks of Norcia made headlines by supplying Birra Nursia to all the cardinals of the papal conclave that elected Pope Francis.

Fr. Benedict Nivakoff, O.S.B. explained:

"Birra Nursia even participated in the election of Pope Francis. Several cases of beer were given to the cardinals before the start of the conclave. The fact that the Pope chose “Francis” as a name, and our master brewer is our own Br. Francis Davoren (from Texas!) does not seem to us a coincidence! Perhaps those initial smiles from the Loggia of St. Peter’s were the fruit not just of the Holy Spirit, but of our very own motto, Ut Laetificet Cor!"

Stan Lee wanted to be Errol Flynn. Stan Lee is now 93 years. Spider Man, Iron Man. The god of the Marvel universe. Jack Kirby. Stanley Martin Lieber. Timely Comics. Destroyer, Jack Frost. After Pearl Harbor, joined Army. A poster: VD, not me. Timely Comics became Marvel Comics. Fantastic Four. Most famous character: Spider Man. Stan, that is the worst idea I have ever heard. Marvel owns the characters. Stan largely cut out of the profits. It was my job to create them. No point in saying I should have done that. Sued Marvel in 2002; he settled. Got title: chairman emeritus. POW Entertainment. I am doing what I want to do, so why would I want to retire. I was born to be Errol Flynn, but I never quite made it.

Martha Teichner on cake walk. Australian Cake Decorating Network on a cake crawl. Everybody wants bling on their cakes. Ron Ben-Israel of Food Network. My Cupcake Addiction.

Steve Hartman on Officer Ryan Davis. Fisher Foods in Canton, Ohio. Police dog Jethro. Unconditionally loyal, supporting.

Jane Pauley on Leslie Caron. Daddy Longlegs. Gigi. CBS Person to Person. Peter Hall, husband. British changed roles for older women: Maggie Smith, Judi Dench

Joy Mangano is the inventor of Miracle Mop. Another invention is Huggable Hangers .
The abstract for US patent 5,813,567:

A mop stabilizing structure for use in a mop bucket includes a notched shelf which is vertically positioned inside a mop bucket above the base and below the lip of the bucket. Preferably, the shelf is manufactured as an integral part of the mop bucket and has a tapered notch for accommodating a variety of mop types and sizes. In addition, according to the invention, the lower interior of the bucket is preferably provided with an anti-skidding surface which is also preferably integrally formed with the bucket. The invention may be applied in buckets having different sizes and shapes, is inexpensive to manufacture, and is simple to use.

with first claim:

1. A mop bucket, comprising:

a) an upper lip;

b) a lower base having an anti-skid structure on an inner surface of said base for engaging a mop head, said anti-skid structure comprising a plurality of raised protrusions;

c) at least one side wall between said upper lip and said lower base and defining a container; and

d) a mop handle support member extending inward from said at least one side wall and having a notched end for engaging a mop handle, said support member being located above said base and below said lip.

Death of David Bowie. Bill Flanagan. Bowie did not value authenticity. Changing. Jan. 8, 2013: where are we now? Lazarus.

Next week on Sunday Morning: Charlotte Rampling.

Moment of nature. macaws in rain forest in Peru. Blue and gold and scarlets. [Scarlet and Blue-and-Yellow Macaws Ara macao and A. ararauna ]
CBS did not identify the specific location, but it could have been the Tambopata Research Center in southern Peru at which point hundreds of macaws (and other parrots) congregate around a 50 meter high clay bank.

Saturday, January 16, 2016

KQED weighs in on CRISPR patent battle

In a post titled CRISPR Patent War: Billions at Stake for UC Berkeley, KQED had some interesting comments on the CRISPR patent interference.

On a possible (later) appeal to the US Supreme Court:

The victor won’t be announced in 2016. Sherkow says the trial will take years. It could go all the way to the Supreme Court, but he says that’s not likely.

“The chances of it going to the Supreme Court are only slightly better than the Powerball we had [this week],” he says.

IPBiz does not know how this probability was estimated, but suspects it is too low, likely lower than that of any appealed case getting cert.

If you were wondering about Powerball, consider text from Huffington Post:

What are your chances of winning? A quick look at the Powerball website tells you the probability of winning the jackpot is 1 in 175,223,510. To see where that number comes from, imagine purchasing every number combination. In Powerball, a player first picks five different whole numbers between 1 and 59. One could make a list of all the possibilities, starting with (1, 2, 3, 4, 5), (1, 2, 3, 4, 6), and so on all the way through (55, 56, 57, 58, 59). But it would take a long time to make that list, because it has more than five million entries! Indeed, mathematics tells us the number of ways to choose five distinct numbers from 1 to 59 is 5,006,386.

After choosing the five numbers between 1 and 59, the player then picks another number between 1 and 35 that is called the Powerball. So, we multiply the 5,006,386 by 35 and see that there are 175,223,510 possible Powerball combinations. For simplicity, let's be generous and round off to an even 175,000,000.


For comparison, the number of cert petitions per year between 1986 and 1990 was about 5000, and in 1992 cert was granted for 120 cases. Of more recent vintage, the Cockle Bur blog wrote:

In recent years, the Court has received between 7500 and 8000 cert. petitions per year: from July 2011 to July 2012, for example, 7712 new petitions were filed. There were 7857 in the same period from July 2010 to July 2011 and 8159 the year before that. One notes that 100/8000 is 1 in 80 (0.0125), a lot bigger than 1 in 175 million.

AND, also from KQED:

‘Whoever has a patent on this could charge as much in royalties as they want and can set their price because they now have a monopoly.’
— Mildred Cho, Stanford University

One notes that one could have a diode/triode situation, wherein neither party can control. Or, the integrated circuit outcome,
wherein the competitors cut a deal.

As another matter, note also

Interference Appeals Not Just For Fed. Circ., Justices Told

with the subject matter related to a drug for multiple sclerosis.

**As to some pertinent points in an interference, contemplate text from Stephen P. Troy, Jr. v. Samson Mfg. Corp. :

The '665 application and the '451 patent relate to a modular handguard rail for a firearm. During the interference, Troy was declared the "junior party." The Board also determined that Samson's earliest constructive-reduction-to-practice date was January 18, 2005 ("the Critical Date").


Troy bore the burden of establishing priority of invention in the District Court by showing an actual reduction to practice of the invention prior to Samson's Critical Date. In order to establish an actual reduction to practice, Troy needed to demonstrate that (1) he constructed an embodiment or performed a process to meet every element of the claim and (2) the embodiment or process operated for its intended purpose.


IPBiz has already written about Noyce v. Kilby, 416 F.2d 1391, 163 U.S.P.Q. 550 (CCPA 1969) concerning who would be granted priority for the discovery of the integrated circuit.

Consider also 146 F.3d 1348

The parties to Patent Interference No. 102,598 are Gilbert P. Hyatt, inventor of United States Patent No. 4,942,516 entitled "Single Chip Integrated Circuit Computer Architecture" (the '516 patent), and Gary W. Boone, inventor of patent application Serial No. 07/473,541 entitled "Variable Function Programmed Systems" (the '541 application).

Consider also Tummers v. Kleimack, 455 F.2d 566 (1972)

Also, from Behr v. Talbot:

On the other hand, application claims which correspond to a count or are subject to a 37 CFR 1.633(c)(3) motion to be designated as corresponding to a count are given the broadest reasonable interpretation consistent with the corresponding disclosure, as in ex parte proceedings. See In re Zletz, 893 F.2d 319, 13 USPQ2d 1320, 1322 (Fed.Cir.1989):

During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant's invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before the application is granted, there is no reason to read into the claim the limitations of the specification). The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583, 3 USPQ2d 1436, 1438 (Fed.Cir.1987); In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.Cir.1984). The issued claims are the measure of the protected right. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942) (citing General Electric Corp. v. Wabash Appliance Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-69 (1938)).

This rule of claim construction also applies to patent claims which correspond to a count or are subject to a 37 CFR 1.633(c)(3) motion to be designated as corresponding to a count. See Lamont v. Berguer, 7 USPQ2d at 1582 (the presumption of validity under 35 U.S.C. § 282 does not apply to patent claims involved in an interference). Moreover, giving involved patent claims the broadest reasonable construction is consistent with the fact that the patentee can move under 37 CFR 1.633(h) [FN4] to add a reissue application for the involved patent; reissue application claims are given the broadest reasonable interpretation consistent with the disclosure. In re Reuter, 651 F.2d 751, 756, 210 USPQ 249, 253-54 (CCPA 1981). Construing involved patent claims in this manner is also consistent with the fact that original claims of an unexpired patent under reexamination are given the broadest reasonable construction consistent with the disclosure on the ground that the patentee can amend the patent claims during reexamination. In re Yamamoto, 740 F.2d at 1571, 222 USPQ at 936; Ex parte Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986).

Some interferences in the biotech area:

Amgen v. Chugai - 1991 [ the Court found that conception of a new gene sequence does not occur until the after the gene has been isolated. ]

Fiers v. Revel - 1993 [[I]rrespective of the complexity or simplicity of the method of isolation employed, conception of a DNA, like conception of any chemical substance, requires a definition of that substance other than by its functional utility. ]

Chiron v. Abbott - 1995 [ The mere idea of a recombinant immunoassay based on env region polypeptides, without knowledge and analysis of the nucleotide sequence of specific env DNA fragments, is, as the court in Amgen put it, "simply a wish to know the identity of any material" that would be immunoreactive with HIV, not a "definite and permanent idea of the complete and operative invention."
(citing Amgen and Fiers) ]

Hitzeman v. Rutter - 2001 [issue of unpredictability making it impossible to have conception prior to reduction to practice ]

See 88 JPTOS 603.

Friday, January 15, 2016

US Supreme Court to hear Cuozzo

In taking the case, the U.S. Supreme Court will speak to whether or not the US Patent Office can
apply the BRI standard in assessing claim validity.

See Wall Street Journal link:

Judge Newman dissented in the Cuozzo panel decision, and went into a detailed history
of the AIA. An issue raised by Judge Newman was that the use of the BRI standard
was incommensurate with the unwillingness of PTAB to allow amendments.

Note comments by LBE at PatentlyO:

RE PM text — Thus claim amendments are usually NOT proposed in IPRs, as demonstrated by the paucity of prior Fed. Cir. appeals from IPRs on that issue before now among the numerous other IPR appeals.
Patent owners do not even usually have an incentive to propose amendments even to cure their claim ambiguities, since claim ambiguity can get the IPR proceeding terminated without any adverse 102 or 103 decision, to the advantage of the patent owner. —

Judge Newman in Cuozzo: There is no right of amendment in these new post-grant proceedings, and motions to amend are rarely granted.1
Note 1: See Andrew Williams, PTAB Update – The Board Grants Its Second Motion to Amend (At Least in Part), PATENT DOCS (Jan. 8, 2015), link to 2015/01/ptab-update-the-board-grants-its-second-motionto-amend-at-least-in-part.html; see also Jennifer E. Hoekel, PTAB Grants First Opposed Motion to Amend Claims-Patent Trial and Appeal Board, THE NATIONAL LAW REVIEW (January 14, 2015), link to

Is Judge Newman right, or wrong? Are patentees moving to amend? How frequently? What percentage of such motions are granted?


As a first point, it is not clear that an absence of appeals of denials of motions to amend proves that there were not many motions to amend. It could mean that the probability of winning such appeals was not high, which could be for a number of reasons.

As a second point, note text from a 16 June 2015 post at Global IP Matters:

The PTAB thus granted Neste’s motion to amend and allowed the substitute claims, finding that Neste’s new limitation of “a total feed comprising 5,000-8,000 w-ppm sulphur calculated as element sulphur” added to claim 25 (substitute for invalid original claim 1) increased the sulfur levels above those considered beneficial in the art: “The record before us does not establish persuasively that there was any art-recognized benefit to using a concentration of sulfur over 4431 w-ppm … [a]bsent any indication of a benefit to be obtained from adding even greater amounts of sulfur, the skilled artisan would have no reason to make the modifications … necessary to result in the [proposed] claimed invention.”

Prior to the decision in REG v. Neste, t he PTAB had only granted three motions to amend in IPR proceedings. This had caused much public debate and calls for reforms by both the PTAB and Congress. In response, the PTAB recently introduced a package of “quick fixes” that included expanding the page limit from 15 to 25 pages for motions to amend to ease the burden on patent holders. The PTAB is also considering several other changes in a forthcoming second rules package to further reduce the patent holder’s burden with respect to motions to amend. Congress has also introduced provisions in the proposed STRONG PATENTS Act that would make it easier to amend patents, among other patent reforms. Moreover, the seeming relaxed standard applied by the panel in REG v. Neste may also mark a turning point in motions to amend and signal the beginning of new opportunities for patent owners to survive an IPR proceeding by proposing new and patentable claims.


Lawrence Ebert

December 10, 2015 at 3:53 pm

And contemplate text from Law360:

Moreover, in Avaya Inc. v. Network-1 Security Solutions Inc., IPR2013-00071, Paper 38 (USPTO PTAB July 22, 2013), the PTAB stated that the patent owner must explain why each new claim is patentable over any other noncited art. The PTAB’s decision here clarifies that the patent owner must explain the significance of the proposed new features to be added, from the point of view of a person of ordinary skill in the art.

In another decision, the PTAB stressed that motions to amend must be limited to 15 pages, including the proposed claims. Innolux Corp. v. Semiconductor Energy Laboratory Co. Ltd., IPR2013-00066, Paper 23 (USPTO PTAB July 18, 2013). The PTAB did not deviate from the rule, even when the patent owner pleaded that the text of the new claims would take up most of the motion’s pages. The PTAB recommended that the patent owner submit fewer amended claims and pursue the rest by way of ex parte re-examination or reissue.

Thus, amendments in an IPR proceeding should be narrowly tailored to overcome the prior art. Patentees desiring additional claim amendment options should consider instead pursuing re-examination or reissue.

There were no comments on PatentlyO denying that there have been few amendments allowed in IPR proceedings.


En banc rehearing of Cuozzo was denied.

More Cuozzo at CAFC

A Supreme Court decision might impact other issues, such as whether rules can be implemented
allowing PTAB to decide petitions in IPRs AND rule on validity of claims in IPRs.
Recall Newman's dissent in Ethicon:

Wednesday, January 13, 2016

The number of issued US patents was down in 2015

In a post titled -- Patent Awards Down, IBM Still No. 1--, EE Times noted that issued US patents were down in 2015 relative to 2014 and also included:

Although several top 50 companies dropped considerably lower in the patent ranking, fewer patents isn't the only reason. Rather, companies such as Microsoft and Panasonic have spread their portfolios across multiple entities and assigned patents to newly formed holding companies.

While a company may put patents into a separate company and move that company offshore to avoid corporate taxes, Cady believes the reorganizations are to make licensing easier. Having patents in different divisions and negotiating with all those divisions separately is difficult, he noted, and working with one entity in charge of licensing would streamline the process.

Of business methods:

This year saw 2,862 fewer patents awarded for business methods, largely due to the 2014 Supreme Court decision that tightened the rules on patentable software. IBM received the most patents in this category with 549 awards.

Of IBM's lead, recall the IPBiz post:

Ethicon loses appeal at CAFC

As a first matter, J&J/Ethicon lost the appeal at the CAFC:

We first hold that 35 U.S.C. § 314(d) does not preclude
us from hearing Ethicon’s challenge to the authority of
the Board to render a final decision. On the merits we
hold that neither the statute nor the Constitution precludes
the same panel of the Board that made the decision
to institute inter partes review from making the final
determination. We also find no error in the Board’s
determination that the ’070 patent claims would have
been obvious over the prior art. Accordingly, we affirm.

link to decision:

The CAFC reviewed the AIA;

Ethicon challenges the final decision of the Board, arguing
that the final decision should be set aside because it
was made by the same panel that made the decision to
institute inter partes review.

The America Invents Act1 (“AIA”) gives the Director
the authority to determine whether an inter partes review
should be initiated, and the Director has delegated this
authority to the Board.2 The statute specifically gives the
Board the power to decide the ultimate question of patent
validity. See 35 U.S.C. § 318 (requiring that “the Patent
Trial and Appeal Board shall issue a final written decision
with respect to the patentability of any patent claim
challenged by the petitioner”). The PTO has determined
that, in the interest of efficiency, the decision to institute
and the final decision should be made by the same Board
panel, in line with the purposes of the AIA, which requires
the Director consider the “efficient administration
of the [PTO], and the ability of the [PTO] to timely complete
proceedings” in promulgating regulations. 35 U.S.C.
§ 316(b). Ethicon contends that this combination of
functions is improper because the statutory text and
structure, guided by constitutional principles, require that
the decision to institute not be made by the same panel of
the Board that makes the ultimate decision and, in fact,
that the statute does not authorize the Director to delegate
the institution decision to the Board at all.

The panel majority affirmed the obviousness conclusion of PTAB,
with the disputed point being "how" secondary considerations
were handled:

Ethicon does not challenge the Board’s finding that all
of the claim elements are found in the prior art, nor does
it challenge the Board’s determination that a person of
ordinary skill would have been motivated to combine
those prior art elements to come up with the invention in
the ’070 patent. Ethicon instead argues that the Board
did not properly take into account the secondary considerations
of non-obviousness.


Ethicon argues that the Board failed to afford Ethicon
a presumption of nexus between the commercial success
of an allegedly infringing product made by Covidien and
the patented features. It contends that because it showed
that the Covidien devices were infringing, the commercial
success of those devices is a strong secondary indication of
non-obviousness which the Board ignored. However,
regardless of any presumption of nexus, Ethicon’s own
evidence demonstrates that other non-patented features
and features known in the prior art underlay the commercial
success of Covidien’s allegedly infringing product.
“[I]f the commercial success is due to an unclaimed feature
of the device” or “if the feature that creates the
commercial success was known in the prior art, the success
is not pertinent.” Ormco Corp. v. Align Tech., Inc.,
463 F.3d 1299, 1312 (Fed. Cir. 2006).

The text from Ormco might seem to preclude the patentee
of a combination claim (with all elements known in the prior art)
from ever showing secondary considerations to overcome

The cited case Ormco in turn cites to other cases: See J.T. Eaton, 106 F.3d at 1571
("[T]he asserted commercial success of the product must be
due to the merits of the claimed invention beyond what was
readily available in the prior art."); Richdel, Inc. v. Sunspool Corp.,
714 F.2d 1573, 1580 (Fed.Cir.1983) (holding claims obvious despite
purported showing of commercial success when patentee failed to show that
"such commercial success as its marketed system enjoyed was due to anything
disclosed in the patent in suit which was not readily available in the prior art").

Neither of these cited cases establishes: “if the feature that creates the
commercial success was known in the prior art, the success
is not pertinent.”

Richdel does NOT speak of a feature (individual claim element) but rather
anything disclosed in the patent, which would include the entire claimed
combination (all elements taken as a whole).

This opinion of Judge Dyk could have significant implications
in obviousness cases.

The dissent of Judge Pauline Newman began:

I respectfully dissent, for the majority’s holdings are
contrary to the Leahy-Smith America Invents Act, Pub. L.
No. 112-29, 25 Stat. 284 (2011) (codified at Title 35 of the
United States Code). The post-grant proceedings established
by the Act were intended as “quick and cost effective
alternatives to litigation.” H.R. Rep. No. 112–98, pt.
1, at 48 (2011). That legislative plan has been repeatedly
thwarted by the implementing bodies, administrative and

As to bifurcation of responsibilities, Judge Newman agreed
with Ethicon:

The panel majority states that “there is nothing in the
Constitution or the statute that precludes the same Board
panel from making the decision to institute and then
rendering the final opinion.” Maj. Op. at 18. That is
. The statute requires that these proceedings be
separated, the first decision required to be made by the
Director, and the second decision made by the Board.
This court has now endorsed proceedings in which the
Board makes both decisions. This procedure cannot be
reconciled with the statute.


The threshold determination to institute post-grant
review requires the Director to find that there is morelikely-than-not
an error in the grant of at least one claim
of the patent. When such finding is made by the Director,
the newly created independent tribunal in the PTO conducts
a full trial, with discovery, testimony, experts, and
other trappings of district court litigation. This trial, and
the ensuing Board decision, are independent of and give
no deference to the Director’s decision “to institute” the
proceeding. In turn, the Board’s decision is not subject to
review by the Director or in the district courts, and can be
appealed only to this court. Our decision, in turn, cannot
be challenged in infringement litigation between these

The bifurcated design of post-grant review is clear not
only from the language of §§ 314(a) and 316(c), but pervades
the structure of these post-grant proceedings.
Congress unambiguously placed these separate determinations
in different decision-makers, applying different
criteria. The majority’s endorsement of the PTO’s statutory
violation departs not only from the statute, but also
from the due process guarantee of a “fair and impartial

Of numbers, Judge Newman's footnote 1 states

As of October 31, 2015, the PTO had received
more than 4000 petitions under this statute, see Patent
Trial and Appeal Board Statistics, at 2 (Oct. 31, 2015)
available at
documents/2015-10-31%20PTAB.pdf. Of the 2,450 completed
proceedings, the Office instituted more than 1200
trials. Id. at 9.

Of due process:

Due process guarantees “a fair trial in a fair tribunal.”
In re Murchison, 349 U.S. 133, 136 (1955). Permitting the
same decision-maker to review its own prior decision may
not always provide the constitutionally required impartial
decision maker. “The right to an impartial decision
marker is unquestionably an aspect of procedural due
process. . . . This applies to administrative proceedings as
well as judicial trials.” NEC Corp. v. United States, 151
F.3d 1361, 1371 (Fed. Cir. 1998) (internal citations omitted).
As stated in Matthews v. Eldridge, “identification of
the specific dictates of due process generally requires
consideration of three distinct factors,” 424 U.S. 319, 335
(1976). The three factors are “the private interest that
will be affected by the official action,” the “risk of an
erroneous deprivation,” and the “fiscal and administrative
burdens that the additional or substitute procedural
requirement would entail.” Id. Here, the first two factors
weigh heavily in favor of the divided decision-making of
the America Invents Act, with scant additional burden.

The Supreme Court case of Withrow is cited:

In Withrow v. Larkin, 421 U.S. 35, 58 n.25 (1975), the
Court expressly reserved the question of “[a]llowing a
decisionmaker to review and evaluate his own prior
decision.” We need not decide this question here, for the
possible potential conflict was foreseen by the legislators,
and by statute was forestalled. All that is needed is to
apply the statute as it was written. The statute divides
post-grant authority between the Director, who is responsible
for deciding whether to institute review, and the
Board of administrative patent judges, charged with
conducting the trial and rendering a decision on patent
validity. The statute bars the Board from rendering both
the institution and final decisions. As this court has
recognized, “institution and invalidation are two distinct
actions.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1319 (Fed. Cir. 2015) (“In addition to being
deeply embedded in federal administrative law, the
distinction is bui

Tuesday, January 12, 2016

Interference declared in CRISPR patent dispute

Among several news sources, the journal NATURE has noted that an interference has been declared in the CRISPR gene editing area.

See Bitter fight over CRISPR patent heats up. Unusual battle among academic institutions holds key to gene-editing tool’s future use.

The nature report contains a rather naive (and incorrect) statement:

Arti Rai, a legal scholar at Duke University in Durham, North Carolina, says that it is unusual for academic research institutions to battle so intensely over a patent. Instead, such institutions usually come to an agreement to share rights to the invention. “This seems more bitter than disputes I’ve heard of in the past,” she adds.

These folks must have been asleep during the WARF embryonic stem cell re-exams!

See also the IPBiz post:

See also:

**On 11 March 2015, IPBiz wrote:

US 8,945,839 issued on February 3, 2015. A "Track I" request had been made on 18 April 2014. A final rejection was issued on 18 Nov. 2014, with claims 1-28 rejected as anticipated over Jinek, WO'772 (later identified as Doudna). There was an issue of whether or not the priority documents to WO 2013/176772 supported the later disclosure. In this, there was an issue that the patent applicant had presented only arguments of counsel, with the examiner citing to In re Huang, 100 F.3d 136, 139 (CAFC 1996 ) and In re De Blauwe, 736 F.2d 699, 705 (CAFC 1984 ). Applicant brought up arguments made to the EPO about a Jinek journal publication, which were not of interest to the USPTO.
In a response filed 1 Dec. 2014, applicant was especially harsh to the Doudna application: "Doudna is nothing more than a mere 'second comer' and had no CRISPR-Cas invention prior to Feng Zhang."

The Dec. 1 response by Zhang showed that the examiner had considered Doudna's PCT '6772, so the examiner was not unaware of Doudna's work.

Monday, January 11, 2016

Patent Docs rates Ariosa number one patent story of 2015

Patent Docs named Ariosa the number one patent story of 2015:

1. Federal Circuit Decides Ariosa v. Sequenom and Denies Rehearing En Banc

In June, the Federal Circuit decided Ariosa Diagnostics, Inc. v. Sequenom, Inc., affirming the District Court's decision granting Ariosa's summary judgment motion for invalidity on the grounds that the claims of of U.S. Patent No. 6,258,540 were patent ineligible. Although the Federal Circuit appreciated that the inventors had found cell-free fetal DNA (cffDNA) in maternal plasma or serum "that other researchers had previously discarded as medical waste," the panel stated that "[a]pplying a combination of known laboratory techniques to their discovery," the inventors "implemented a method for detecting the small fraction of paternally inherited cffDNA in maternal plasma or serum to determine fetal characteristics, such as gender." In affirming the District Court decision, the opinion concluded that "[t]he method . . . begins and ends with a natural phenomenon," and "[t]hus, the claims are directed to matter that is naturally occurring."

The first claim of the patent in question is succinct:

A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises

amplifying a paternally inherited nucleic acid from the serum or plasma sample and

detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.


The paternal DNA is inherently in the serum. The inventors recognized that one could detect this paternal DNA, and recited known techniques to amplify the paternally-inherited nucleic acid. The important discovery was knowing that
"paternally inherited nucleic acid of fetal origin " was in the maternal [blood] serum or plasma.

See for example:

**For reference to the discussion below, the Supreme Court case of Diamond v. Diehr related to a patent method claim applying the [prior art] Arrhenius equation to operation of a rubber molding press.

The Supreme Court in Alice v. CLS Bank, a unanimous opinion, stated:

In Diehr, by contrast [with Flook], we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a "well-known" mathematical equation, but it used that equation in a process designed to solve a technological problem in "conventional industry practice." The invention in Diehr used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha[d] not been able to obtain." The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These additional steps, we recently explained, "transformed the process into an inventive application of the formula." Mayo, supra, at ___, 132 S.Ct., at 1299. In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.

One observes that the Alice interpretation of Diehr, emphasizing the use of a thermocouple in a previously undisclosed manner, is a bit different than what one has in Ariosa, wherein the method steps of detecting and amplifying are not new. The novelty is in determining that paternal DNA is in the serum or plasma. That recognized, one has a useful test employing standard methodology.

**There is no doubt that this case has attracted a lot of attention. Dennis Crouch at PatentlyO had written:

My former boss Kevin Noonan is counsel of record for a group of 23 law professors, including Adam Mossoff, Dan Burk, Tim Holbrook, and Richard Epstein. The brief makes two main arguments: (1) the genetic diagnostic tests developed and commercialized here are the type “historically unforeseen invention” that the patent system is designed to promote; and (2) the panel’s approach here of requiring novelty beyond straightforward application of excluded natural phenomenon “would call into question nineteenth century patented innovation the Supreme Court deemed valid.”Read Ariosa.lawprof. The sentiment of the Law Professor Brief is consistent with the brief filed by Matthew Dowd on behalf of JYANT Tech, explaining that “in Diamond v. Diehr … the [Supreme] Court explained that “a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” Read Ariosa.JYANT

As we will discuss in a parallel post, the brief of Professors Lefstin and Menell provide their reading of recent Supreme Court cases of Mayo and Alice — arguing that (1) a close reading shows that inventive application of a law of nature is not required but instead a non-preemptive or non-generic application; and (2) the Flook-type claim dissection is prohibited. Read Ariosa.Leftsin. This analyze-it-as-a-whole sentiment was repeated by the IPO Brief field by Tiege Sheehan as well as the brief from Amarantus filed by Gideon Schor. Read Ariosa.IPO and Ariosa.Amarantus.

My Fellow Missouri Professor Chris Holman filed a brief on behalf of the major industry organizations BIO and PhRMA making the credible argument that all this is a very big deal in the diagnostic space and that the resulting uncertainty is having a negative impact on research. Read Ariosa.BIO.


One brief mentioned in PatentlyO emphasized the claim element of serum or plasma (meaning cell free):

Myriad‘s counsel Benjamin Jackson filed a brief on behalf of the industry organization21st Century Medicine that challenges the “gist” method of determining whether a claim encompasses excluded subject matter and suggests that the claim here is simply a technological improvement over the prior art.

Sequenom’s patent teaches it was known in the art that fetal cells can pass into the mother’s blood. Diagnostic techniques had been devised to isolate these cells and analyze fetal DNA extracted from them, but these techniques were expensive and time consuming. The phrase “cell-free fetal DNA” was therefore not an attempt to claim a natural phenomenon but instead a key claim limitation to distinguish over the art. Fifteen years ago, back when patent claiming and examination focused on prior art rather than ill-defined “natural phenomena,” Sequenom appropriately emphasized that its methods used cell-free fetal DNA rather than the cell-derived fetal DNA known in the art.

Thus, the claimed invention is a significant technical improvement in the laboratory process for prenatal diagnosis, allowing laboratories to eliminate the costly and labor-intensive step of isolating fetal cells and then fetal DNA. Such an inventive improvement to the technical performance of an existing technological process is precisely what patents are for.

Wikipedia notes of blood plasma: Blood plasma is the pale yellow liquid component of blood that normally holds the blood cells in whole blood in suspension; this makes plasma the extracellular matrix of blood cells. It makes up about 55% of the body's total blood volume. (...) Blood serum is blood plasma without clotting factors

Wikipedia notes of blood serum: In blood, the serum is the component that is neither a blood cell (serum does not contain white or red blood cells) nor a clotting factor; it is the blood plasma not including the fibrinogens. Serum includes all proteins not used in blood clotting (coagulation) and all the electrolytes, antibodies, antigens, hormones, and any exogenous substances (e.g., drugs and microorganisms).