Tuesday, November 29, 2016

Patent citation analysis upheld for calculating damages in Comcast v. Sprint, 2016 U.S. Dist. LEXIS 161623 (!?!)

From Comcast v. Sprint, 2016 U.S. Dist. LEXIS 161623 (opinion by Hon. Jan E. DuBois, ED Pa) on the validity of "forward patent citation analyis" (using later citations to an earlier patent to establish value):

Forward citation analysis is a method of estimating the value of a particular patent based on the number of times the patent is cited by later patents. Comcast Mot. to Exclude, Ex. 19, Expert Report (Corrected) of Alan J. Cox in Connection With Comcast Cable Communication et al. v. Sprint Communications Company L.P. et al. (hereinafter "Cox Report") ¶ 103. Dr. Cox uses forward citation analysis to corroborate his conclusion regarding the reasonable royalty for the '870 patent. Cox Report ¶ 102. Citations are only a comparative indicator of value—"[p]atents in different technologies tend to be cited at different rates, and patents that are older tend to have more citations than patents that were issued more recently." Cox Report ¶ 105. Thus, to ascertain the relative value of the '870 patent, Dr. Cox compiled a pool of patents that are technologically similar to the '870 patent, based on International Patent Classification system labels, and published within six months before and after publication of the '870 patent. Cox Report ¶ 106. Dr. Cox next determined how many times each patent in the resultant pool was cited by later patents. [*18] Cox Report ¶ 107. Using this data, Dr. Cox determined the "percentile ranking" of the '870 patent—that is, "the percentage of categorically similar patents that had less forward citations" than the patent in question. Cox Report ¶ 107.


Comcast first argues that the Court should exclude Dr. Cox's reliance upon forward citation analysis altogether because that method has been "discredited" and therefore fails Daubert's reliability requirement. Comcast Mot. to Exclude at 13-14. In advancing this argument, Comcast relies on a recent trial court decision which it claims rejected the forward citation method as unreliable under Daubert. Comcast Mot. to Exclude at 14; Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 U.S. Dist. LEXIS 91528, 2015 WL 4272870 (N.D. Cal. July 14, 2015). But Finjan does not reject forward citation analysis outright—rather, that case recognizes that "a qualitative analysis of asserted patents based upon forward citations may be probative of a reasonable royalty in some instances." Finjan, 2015 U.S. Dist. LEXIS 91528, 2015 WL 4272870 at *8. Comcast also points to a recent paper published by researchers at the University of Pennsylvania in support of its argument. Comcast Mot. to Exclude at 14, Ex. 21 ("Penn Paper").7

[footnote 7: David S. Abrams, Ufuk Akeigit, and Jillian Popadak, Patent Value and Citations: Creative Destruction or Strategic Disruption?, U. Penn. (2013), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2351809. ]

Things get interesting when the court writes:

The authors of the Penn Paper conclude some of the patents with the highest lifetime revenues have fewer citations than patents with median revenues. Penn Paper at 1. However, the forward citation method of analysis has been recognized in the academic literature as reliable since the 1990s.8 Indeed, one meta-analysis of published research on forward citation analysis, which included the Penn Paper, found "forward citation intensity is, in fact, correlated with economic value."9 In short, courts have not rejected forward citation analysis outright. This Court determines that a single academic paper—the Penn Paper—is not sufficient to rebut decades of literature supporting forward citation analysis.

[footnotes 8 and 9: 8 See, e.g., Dietmar Harhoff, Frederic Scherer, and Katrin Vopel, Citation, family size, opposition and the value of patent rights, Research Policy, 1596 (2002); Bronwyn H. Hall, Adam Jaffe, and Manuel Trajtenberg, Market Value and Patent Citations, RAND Journal of Economics 36 (1) (Spring 2005); Manuel Trajtenberg, A Penny for Your Quotes: Patent Citations and the Value of Innovations, RAND Journal of Economics 21 (1) (Spring 1990).9 Adam B. Jaffe and Gaétan de Rassenfosse, Patent Citation Data in Social Science Research: Overview and Best Practices, Nat'l Bureau of Econ. Research Working Paper Series (2016), available at http://www.nber.org/papers/w21868 .]

** On 2 June 2005, there was a post on IPBiz entitled Patent citations, again? , noting, among other things, a 2003 paper criticizing patent citation:

Of one of CHI's studies, from Lawrence B. Ebert, Say Good-Night, Gracie, Intellectual Property Today (June 2003):

** See also the 2009 IPBiz post
"Trolls on top?" or how not to cite relevant work?

** See also the 2010 IPBiz post
The citations found in patents: do references cited by the applicant matter?
, which contains a reference to a 1990s paper severely criticizing the use of patent citation analysis:

Simmons, Edlyn S.; Lambert, Nancy. "Comparing grapes and watermelons." ChemTech 23 (6), 1993, p. 51-59.

**Note separately the paper titled -- The Doctrine of Equivalents: Hilton Davis and Pioneering Patents -- [Intellectual Property Today, p. 10 (December 1996), available on LEXIS, which includes the text criticizing the patent citation work of Breitzman and Narin ("BN"):

In the March, 1996 issue of The Law Works, Breitzman and Narin ("BN") presented the argument "that very highly cited patents, patents of 'Pioneering Class' citation frequency, may be entitled to a broad interpretation of their claims, as are Pioneer patents." BN cited various studies that "support the notion of the technological importance of the inventions represented by highly cited patents." They noted that "there is a strong statistical association between pioneering patents and high citation frequency, just as there is a strong statistical association between high citation in patents and their technological importance."

In a letter in the November, 1996 issue of The Law Works, BN acknowledged that there were worthless patents that have received a lot of citations, just as there are important patents that have received few citations. Thus, the presence of many citations, by itself, does not prove value, and the absence of citations does not prove lack of value.

Nevertheless, BN find it inexplicable that 64 non-self-citations (out of 165 total cites) for US 4,105,776 don't strike me as extraordinary. My answer is that the number of citations for any patent, in the absence of an analysis of the citations, is insufficient to prove value. A few examples are in order.

In the November, 1996 letter, BN point to an article by Narin and Frame that was featured in the August 11, 1989 issue Science (which they consider "possibly the most prestigious of the thousands of U.S. research journals") n7. According to the ISI database (Dialog 434), this article has been cited 6 times. An article by Ebert in a 1990 issue of Science n8 has been cited 23 times. I would submit that the value of neither article is given by the number of citations.

n7 The Science article pertained to the growth of Japanese science. Narin's work on high citations of Japanese patents was discussed in Business Week (p. 57 of Aug. 9, 1993 issue), in the Jiji Press Ticker (May 28, 1991), Business America (Vol. 110, p. 13, Sept. 25, 1989 issue) and the New York Times (p. A1 of March 7, 1988 issue). He discussed the poor citation of Soviet work in Science, p. 629 (Feb. 8, 1985). Narin recently published an article "Biblometric Performance Measures" in Scientometrics, 1996, 36, 293-310; the abstract notes "The key measure is whether an agency is producing or supporting highly cited papers and patents."

n8 Science, 247, 1469 (1990).

BN referred to a 1986 article by Eugene Garfield, "Do Nobel Prize Winners Write Citation Classics?" For reference, I include herewith the total (first author) citation count for the three Nobel Prize winners in Chemistry in 1996, who won for their work on buckminsterfullerene (C60; "buckyball"): R.E. Smalley (1715), H. W. Kroto (3754), and R. F. Curl (1464). For comparison, I give numbers for past chemistry laureates: L. Pauling (23,187), P. J. Flory (19,173), G. A. Olah (11,795) and H. Taube (1785) and other chemistry professors J. P. Collman (9376), J. I. Brauman (1009), and N. H. Nachtrieb (351) n9.

n9 These prestigious authors presumably publish in primarily prestigious journals. Garfield has noted that only 100 journals (out of 3,400 indexed journals in SCI) account for 44% of cited articles.

In the November, 1996 letter, BN refer to the case I discussed (Gordon and Breach v. AIP) as "one rather old law suit", even though the case is still pending n10. This case was one example of many which illustrated potential issues with citation analysis n11.

n10 Summary judgment matters were disposed of in 859 F. Supp. 1521 (SD NY 1994) and in 905 F. Supp. 169 (SDNY 1995).

n11 We noted the issue of channeling in individual cites (the quote of Maddox and of Daubert) and in journal cites (Energy & Fuels). There are issues of improper cites and nonexistent cites, detailed in L. B. Ebert, FSTI, 15(3), in press, 1997. One can have cites to papers which are scientifically wrong, and perhaps even fraudulent (see C & E News, p. 7 (Nov. 4, 1996)). One notes that in the episode of the television show Law & Order which we cited in the July 1996 issue of The Law Works (p.6), as well as in the episode which aired Nov. 6, 1996, scientists who had all the superficial indicia of success, presumably including many citations, were, after detailed analysis, demonstrated to be villains. A moral of these episodes, which we adopt here, is that one has to look beyond the superficial before drawing conclusions. "Nose counts" of citations alone are just not enough to prove value.

BN made no comment about my discussion of the citation background for U.S. 3,900,554, issued on Aug. 19, 1975, "Method for the reduction of the concentration of NO in combustion effluents using ammonia" by Richard K. Lyon. In July, 1996, we noted that the patent had been cited in the "references cited" field of 92 patents, and in 133 patents overall. By October, 1996, the numbers had grown respectively to 98 and 141, with none of the recent patents by the assignee company. Although BN noted "a company that does not build on the prior art and technology that it has already patented would be one with a totally disorganized R&D effort", such arguably is the case with the '554 patent [see also Physics Today, pp. 59-60 (July 1987); Business Week, pp. 72-75 (April 2, 1990); Carbon 1995, 33, 1007-1010; Nature, 382, 17-18 (July 4, 1996)].

BN made no comments on the letters by Louis Robertson and Steve Mendelsohn in the July, 1996 issue of The Law Works. Furthermore, they have not fully responded to Paul Wille's argument in the April, 1996 issue. The patents that are listed in the "references cited" field of the first page of a patent originate from two sources: the examiner (PTO-892 form) and the applicant (PTO-1449) form. Of the first source, the examiner may cite a patent for what it teaches. There can be many uses made by the examiner of a patent reference. For example, I recently had an examiner cite a patent for its discussion of the prior art, not for the invention of the patent. Of the second source, the applicant is free to list patents for consideration by the patent office; as long as they comply with the rules, they will appear in the "references cited" field of the patent. There is no barrier to self-citation by the applicant. It is not clear that the method of BN distinguishes between references cited on a PTO-892 form and on a PTO-1449 form.

BN promise to review all the studies which have shown the importance of highly cited patents. There are many papers that have questioned the value of patent citation. n12

n12 Edlyn S. Simmons and Nancy Lambert, "Patent Statistics: Comparing Grapes and Watermelons", Proc. Montreux 1991 Int. Chemical Information Conference published in "Recent Advances in Chemical Information", Royal Society of Chemistry, Spec. Publ. 100, 1992.; see also Stuart M. Kaback, Nancy Lambert, and Edlyn S. Simmons, "Patent Citations: Source of Insight or Nothing to Get Excited About?", August 1994 meeting of American Chemical Society [this reference notes: "Patent citations turn out to be quite different in character from the citations we may be familiar with in the citation literature."]; E. Simmons, "Patent family databases 10 years later", Database, Vol. 18(3), Pg. 28, (June, 1995).

**One can find more than one paper criticizing patent citation analysis if one seriously looks.

101 invalidity found in Apple v. Ameranth case involving review PTAB decision on "covered business methods"

In this case, the CAFC was reviewing a PTAB decision on
covered business methods:

In this appeal, we review Patent Trial and Appeal
Board decisions in three Covered Business Method
(“CBM”) reviews. The decisions addressed the subject
matter eligibility of certain claims of U.S. Patent No.
6,384,850 (“’850 patent”), U.S. Patent No. 6,871,325 (“’325
patent”), and U.S. Patent No. 6,982,733 (“’733 patent”).
For the reasons explained below, we affirm-in-part and

From the conclusion:

For the reasons explained above, we affirm the
Board’s decisions finding certain claims unpatentable
under § 101, and we reverse the Board’s decisions confirming
the patentability of certain claims under § 101.
Claims 1–11 of the ’850 patent, claims 1–10 of the ’325
patent, and claims 1–16 of the ’733 patent are all unpatentable
under § 101.

The CAFC accepted Apple's " insignificant post-solution activity "

The Board found that the Apple petitioners had
“fail[ed] to provide sufficient evidence that menus having
handwriting capture or voice capture functionality were
well-known or conventional at the time of the ’733 patent
or require merely a general purpose computer.” Id.
On appeal, the Apple petitioners argue that these limitations
recite insignificant post-solution activity. We
agree that these limitations do not serve to provide an
inventive concept.

The ’733 patent refers to the use of handwriting and
voice capture technologies without providing how these
elements were to be technologically implemented. Col. 3
l. 48–col. 4. l. 9; col. 4 ll. 18–22; id. at ll. 27–37. At oral
argument, Ameranth conceded that it had not invented
voice or handwriting capture technology, and that it was
known at the time it filed its applications to use those
technologies as ways of entering data into computer
systems. Oral Arg. at 16:26–52.

In any event, in Content Extraction, we found that a
recitation of the use of “existing scanning and processing
technology to recognize and store data from specific data
fields such as amounts, addresses, and dates” did not
amount to significantly more than the “abstract idea of
recognizing and storing information from hard copy
documents using a scanner and a computer.” Content
Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014), cert.
denied, 136 S. Ct. 119 (2015). Here, Ameranth claims no
more than the use of existing handwriting and voice
capture technologies using a computer system.
These claims depend from independent claims found
to be directed to unpatentable subject matter, as is discussed
above. Appending these preexisting technologies
onto those independent claims does not make them patentable.
We reverse the Board’s finding confirming the
patentability of these claims.

Wednesday, November 23, 2016

Unwired Planet prevails over Google, with CAFC invoking image of a novel lighbulb

Unwired Planet, represented by Goodwin Procter LLP, won its appeal at the CAFC:

Unwired Planet, LLC (“Unwired”) appeals from the
final written decision of the Patent Trial and Appeal
Board (“Board”) in Covered Business Method Patent
Review No. 2014 -00006.
Google Inc. v. Unwired Planet, LLC, CBM2014-00006,
2015 WL 1570274 (P.T.A.B. Apr. 6, 2015) (“
CBM Final Decision ”). Because the Board
relied on an incorrect definition of covered business
method (“CBM”) patent in evaluating the
challenged patent, U.S. Patent No. 7,203,752 (the “’752 patent”), we
vacate and remand.

Some text:

The Board's application of the "incidental to" and "complementary to" language
from the PTO policy statement instead of the statutory definition renders
superfluous the limits Congress placed on the definition of a CBM patent.
CBM patents are limited to those with claims that are directed to methods
and apparatuses of particular types and with particular uses "in the practice,
administration, or management of a financial product or service." AIA § 18(d).
The patent for a novel lightbulb that is found to work particularly well in
bank vaults does not become a CBM patent because of its incidental or complementary use in banks.

Bottom line: We hold that the Board's reliance on whether the patent claims
activities "incidental to" or "complementary to" a financial activity as the
legal standard to determine whether a patent is a CBM patent was not in accordance with law.
We do not reach the patentability of the challenged claims under section 101.

We vacate the Board's final written decision and remand the case
for a decision in the first instance, [*15] and in accordance with this opinion,
whether the '752 patent is a CBM patent.

See: 2016 U.S. App. LEXIS 20764

Friday, November 18, 2016

Post at The Scientist related to Sarkar matter in Michigan

On 17 November 2016, Bob Grant at The Scientist posted an article PubPeer Lawyers Ask to Enter Misconduct Report into the Court Record . The newsworthy event in November 2016 was American Civil Liberties Union (ACLU) lawyers representing PubPeer filed a motion with the Michigan Court of Appeals on November 16 to enter an internal Wayne State University investigation of pathologist Fazlul Sarkar into the legal record .

This post related to a case, now at the Michigan Court of Appeals, involving Dr. Fazlul Sarkar, once of Wayne State University, a case which IPBiz has not been covering. Some of the interest of The Scientist in this case may be found in the sentence:

Previously, the ACLU legal team successfully lobbied the court to amend the record with a story that ran on The Scientist quoting summary statements from the report, obtained independently through the Freedom of Information Act, indicating that the university found Sarkar guilty of scientific misconduct. Strictly as to legal issues, we have the matter of hearsay evidence and of confidentiality.

[Update on 5 Dec. 2016: the motion to enter the misconduct report into the appellate record was denied.]

Some of the history of the case may be found in the post The Case Against PubPeer . This 2015 post separately notes

The commenters of PubPeer have been at the forefront of exposing scientific fraud, with their biggest coup being their rapid exhaustive coverage of all the flaws within Haruko Obokata's Stem Cell paper. Their criticisms triggered retractions from Nature, one of the most prestigious scientific journals out there. That such a highly regarded journal could fumble its peer review so disastrously provided more evidence that post publication peer review is crucial to science.

with the Obokata case one that IPBiz has covered. From the 2014 post by IPBiz --RIKEN investigation confirms Obokata paper on stem cells in Nature used doctored figures -- :

Normile pointed to the role of bloggers in uncovering the problems

Almost immediately after publication, bloggers in Japan and contributors to PubPeer, a website where scientists discuss published papers, started pointing out possibly manipulated images and apparently plagiarized text.

LBE separately pointed out the role bloggers played in the Hwang Woo Suk matter in the publication ``Lessons to be Learned from the Hwang Matter: Analyzing Innovation the Right Way,'' 88 JPTOS 239 (March 2006).

** The 2015 post in sciencemadeeasy also notes

Does this mean Dr Sarkar is guilty of misconduct ?

I don't think so. If you read all of the papers, you'll find one repeated sentence. "All authors contributed to this article equally". There is no way for anybody outside of his laboratory or institution to know that, and here in my country at least, we have the presumption of innocence.

The truth is that we don't know, and we may never know for sure.

If he is innocent, it won't mean he'll get off unscathed. As Ushma S. Neill points out-

When questioned about data in a paper, many senior authors feign ignorance and blame the first author or data generator, but I find that disingenuous. If you are the senior author, it is incumbent on you to verify all of the raw data yourself. There is intense pressure to produce, and to produce high-impact results. Sometimes this can lead to a student doing anything to please. If the paper goes out with your name on it, you should be able to verify every single piece of data in it and take responsibility for it.

As to how misconduct allegations, related to federally funded projects, are handled, some text from F. Lisa Murtha, HCCA 2015 Compliance Institute, which relates to inquiries related to Scientific Misconduct: (PHS) 42 CFR 93, (NSF) 45 CFR 689:

Protecting Evidence • You must take possession of all the evidence immediately • Evidence includes study records, computer hard drives, lab books, working papers, correspondence, rough drafts • The respondent is innocent until proven guilty. You must make it possible for him/her to continue working while your review is underway
The Inquiry Report • The Inquiry is analogous to a grand jury. The purpose is not determine guilt or innocence, but to determine whether there is sufficient credible evidence to warrant a full investigation • A recommendation against proceeding to an investigation is not necessarily the same as a finding of “innocence” • Must state what evidence was reviewed • Summarizes relevant interviews • Includes the conclusions of the Inquiry • The individuals against whom the allegation was made shall be given a copy of the report inquiry—their comments may be part of the record • The individuals may be given longer than 60 days to complete their response • The Inquiry is NOT intended to reach a final conclusion • Legal standard: Preponderance of the evidence to go forward

link: http://www.slideshare.net/theHCCA/research-misconduct-proceedings-lessons-learned-and-tips-from-the-trenches-2015-hcca-compliance-institute

See also: https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4278464/

**Keep in mind, that universities may have their own policies on things related to ethics, plagiarism, etc. that can be apart from ORI mandated investigations of misconduct on projects involving federal funding.

Recall the recent IPBiz post -- Appellant Walker loses appeal against Harvard University in case involving copying of dissent in Bilski -- related to the case

Walker v. Harvard, Cosgrove, Weinreb, 2016 U.S. App. LEXIS 19164 (CA1 Oct. 24, 2016 ) which was an appeal by former law student Walker of an unfavorable summary judgment decision, which concerned a violation of the Harvard Law School Handbook of Academic Policies

Thursday, November 17, 2016

Outcome in Mann v. Cochlear: we affirm-in-part, reverse-in-part, and vacate-in-part

There was a mixed outcome in the CAFC case of

After conducting a jury trial and a bench trial on separate issues,
the district court entered judgment finding claim 10 of the ’616 patent
infringed and claim 1 of the ’616 patent and claims 6–7 of
the ’691 patent invalid for indefiniteness.
The court also granted Cochlear’s JMOL of no willful infringement and
its motion for a new trial on damages. Both parties

Because we find that the district court did not err
in its infringement determination or in finding claims 6–7
indefinite, but did err in finding claim 1 indefinite, we
affirm-in-part and reverse-in-part. We vacate and remand
the district court’s determination regarding willfulness
in light of the Supreme Court’s decision in Halo
Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. __, 136
S. Ct. 1923 (2016). We also conclude that we do not have
jurisdiction over the damages issue

Of the matter with claim 1 of US '616:

Claim 1 of the ’616 patent reads, in relevant part:

A physician’s testing system for testing a multichannel
cochlear stimulating system, comprising
a physician's tester, an external headpiece/transmitter,
and an implanted cochlear
stimulator (ICS), . . .
[c] the physician’s tester comprising:
[1] external processor means coupled to the
transmitting means of the external headpiece/transmitter
for receiving and processing
the status-indicating signals to
derive information therefrom regarding the
operation of the implanted stimulator and
its plurality of tissue stimulating electrodes;
. . . .

The CAFC noted:

Both parties’ experts testified that a person of ordinary skill
would know to apply Ohm’s law to voltage and current to
yield impedance values. See J.A. 33662 (“[Impedance] is
always calculated based on the ratio of voltage to current.
One of ordinary skill in the art would readily understand
from the disclosure in the ’616 patent that this [sic] the
algorithm is implemented. The algorithm for calculating
impedance is Ohm’s law, which is famous and well known
to a person of ordinary skill in the art.”); id. at 2586 at
(“Q: If you know what the current is that’s being
applied and you know what the voltage is being measured,
then you could use that information to put it into
the Ohm’s law equation and calculate impedance; right?
A: In this application where you want to do something
like this, you could do that. There are other things you
could do.”). The specification also discloses that impedance
is calculated based on voltage and current. ’616
patent, col. 31 ll. 55–58 (“[B]oth the stimulus voltage and
current can be measured and, thereby, the impedance of
the electrode and the tissue-electrode interface can be
measured and transmitted back to the WP.”). Because
there is “adequate defining structure to render the bounds
of the claim understandable to one of ordinary skill in the
art,” AllVoice, 504 F.3d at 1245, we reverse the district
court’s indefiniteness finding as to claim 1 of the ’616

Of the Halo issue:

Cross-Appellants argue that, at a minimum, we
should vacate and remand the court’s grant of JMOL on
willfulness in light of Halo. We agree. On remand,
mindful of Halo’s “preponderance of the evidence standard,”
136 S. Ct. at 1934, the court must consider whether
Cochlear’s infringement “constituted an ‘egregious case[]
of misconduct beyond typical infringement’ meriting
enhanced damages under § 284 and, if so, the appropriate
extent of the enhancement.” WesternGeco L.L.C. v. ION
Geophysical Corp., --- F.3d ---, 2016 WL 5112047, at *5
(Fed. Cir. Sept. 21, 2016) (quoting Halo, 136 S. Ct. at

Accordingly, we vacate the district court’s determination
that Cochlear’s infringement of the Foundation’s
patents was not willful and remand for further proceedings.

Of the damages matter:

There has not been a final decision on the damages issue.
We are not persuaded by Cross-Appellants’ argument
that the § 1292(c)(2) exception to the rule of finality
applies here. Under Bosch, the exception allows us to
consider the liability issues in this case, but does not go so
far as to permit us to consider the non-final order itself.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759
F.3d 1333, 1339 (Fed. Cir. 2014) (“As an exception to the
final judgment rule, § 1292(c)(2) is to be interpreted
narrowly.”). Clearly, if the parties were only appealing
the damages issue, we would not have jurisdiction under
§ 1295(a)(1). The addition of the liability issues in this
case does not change our jurisdictional reach. Orenshteyn,
691 F.3d at 1363–64 (dismissing as premature portion
of invalidity and sanctions appeal relating to
sanctions because the district court had not yet made a
final determination regarding the amount of the sanctions).

Footnote 3 observed:

Since the question of what is “final” is sometimes
a difficult question, the Supreme Court has cautioned
that the requirement of “finality is to be given a ‘practical
rather than a technical construction.’” Gillespie v. United
States Steel Corp., 379 U.S. 148, 152 (1964) (quoting
Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546
(1949)). But the Supreme Court has noted that “[i]f
Gillespie were extended beyond the unique facts of that
case, § 1291 would be stripped of all significance.” Coopers
& Lybrand v. Livesay, 437 U.S. 463, 477 n.30 (1978).
We have similarly held that the “‘exception to finality
created by Gillespie is to be very rarely used beyond the
unique facts of that case.’” Spread Spectrum Screening
LLC v. Eastman Kodak Co., 657 F.3d 1349, 1356–57 (Fed.
Cir. 2011) (quoting Fairchild Republic Co. v. United
States, 810 F.2d 1123, 1126 (Fed. Cir. 1987)).

Tuesday, November 15, 2016

CAFC in Perfect Surgical : An attorney’s work in preparing a patent application is evidence of an inventor’s diligence

Of the diligence issue:

A patent owner need not prove the inventor continuously
exercised reasonable diligence throughout the
critical period; it must show there was reasonably continuous
diligence. See, e.g., Tyco Healthcare Grp. v. Ethicon
Endo-Surgery, Inc., 774 F.3d 968, 975 (Fed. Cir. 2014);
Monsanto, 261 F.3d at 1370. Under this standard, an
inventor is not required to work on reducing his invention
to practice every day during the critical period. See
Monsanto, 261 F.3d at 1369. And periods of inactivity
within the critical period do not automatically vanquish a
patent owner’s claim of reasonable diligence. For example,
in Monsanto, we held that substantial evidence
supported the jury’s presumed finding that an inventor
was reasonably diligent where there was no corroborating
evidence of any activity for a series of months. Id.
at 1370. We explained that, notwithstanding the absence
of daily notebook entries and the resulting gaps during
the critical period, “the work involved in the experiments
was continuous in nature” and therefore the reduction to
practice was “reasonably continuous.” Id. In Brown v.
Barbacid, we held that the patent owner’s evidence of
diligence during a 31-day critical period was “sufficient to
show substantially continuing activity” despite the lack of
activity during six single-day gaps. 436 F.3d at 1380–83.

Our holdings in these cases are consistent with the purpose
of the diligence inquiry. In determining whether an
invention antedates another, the point of the diligence
analysis is not to scour the patent owner’s corroborating
evidence in search of intervals of time where the patent
owner has failed to substantiate some sort of activity. It
is to assure that, in light of the evidence as a whole, “the
invention was not abandoned or unreasonably delayed.”
Id. at 1379. That an inventor overseeing a study did not
record its progress on a daily, weekly, or even monthly
basis does not mean the inventor necessarily abandoned
his invention or unreasonably delayed it. The same logic
applies to the preparation of a patent application: the
absence of evidence that an inventor and his attorney
revised or discussed the application on a daily basis is
alone insufficient to determine that the invention was
abandoned or unreasonably delayed. One must weigh the
collection of evidence over the entire critical period to
make such a determination.

Our decision in In re Mulder, 716 F.2d 1542, 1542–46
The Board
cites In re Mulder for the proposition that “[e]ven a short
period of unexplained inactivity may be sufficient to
defeat a claim of diligence.” J.A. 16. In In re Mulder, a
competing reference was published just days before the
patent at issue was constructively reduced to practice.
716 F.2d at 1544. The patent owner was tasked with
showing reasonable diligence during a critical period
lasting only two days. Id. at 1545. But the patent owner
did not produce any evidence of diligence during the
critical period. Id. Nor could it point to any activity
during the months between the drafting of the application
and the start of the critical period. Id. Although the
critical period spanned just two days, we declined to
excuse the patent owner’s complete lack of evidence. Id.
In re Mulder does not hold that an inventor’s inactivity
during a portion of the critical period can, without more
destroy a patent owner’s claim of diligence.

Here, the Board’s erroneously heightened burden of
proof infected its analysis. First, the Board did not
properly weigh PST’s evidence under a rule of reason. See
Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)
(explaining that under a rule of reason analysis, “[a]n
evaluation of all pertinent evidence must be made so that
a sound determination of the credibility of the inventor’s
story may be reached”). Rather than evaluating PST’s
evidence as a whole, the Board fixated on the portions of
the critical period where PST did not provide evidence of
Dr. Nezhat’s specific activities to conclude Dr. Nezhat’s
exercise of diligence was not “continuous.” See J.A. 21–
22. In doing so, the Board repeatedly condemned PST for
not being “sufficiently specific as to facts and dates for the
entire critical period during which diligence is required.”
J.A. 21; see also id. (noting a portion of the critical period
where “Dr. Nezhat does not identify any specific activities
undertaken or the dates of those activities”). Th
(Fed. Cir. 1983), does not instruct otherwise.

Under a rule of reason analysis, PST was not required
to corroborate every day the application was worked on,
every surgery Dr. Nezhat performed, or specify precisely
what work was done. See In re Jolley, 308 F.3d 1317,
1328 (Fed. Cir. 2002) (“[C]orroboration may be provided
by sufficient independent circumstantial evidence, and
corroboration of every factual issue contested by the
parties is not a requirement of the law.”).

The Board compounded its error by summarily dismissing
the activities of Dr. Nezhat’s attorney,
Mr. Heslin, after determining that PST’s evidence of
Dr. Nezhat’s activities did not alone establish reasonable
diligence. J.A. 22 (“[W]e also need not reach and, therefore,
do not address whether Patent Owner provides
sufficient evidence to demonstrate Mr. Heslin’s continuous
exercise of reasonable diligence for the entire critical
period.”). This was error. An attorney’s work in preparing
a patent application is evidence of an inventor’s
diligence. See Brown, 436 F.3d at 1380 (citing Bey v.
Kollonitsch, 806 F.2d 1024, 1030 (Fed. Cir. 1986)). By
preparing and filing the application that would issue as
the ’384 patent on behalf of Dr. Nezhat, Mr. Heslin was
acting as Dr. Nezhat’s agent.

As to patentee as lexicographer:

The patentee is free to
define or limit a term used in a patent. See Thorner v.
Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66
(Fed. Cir. 2012). We conclude that the specification’s
separation of the terms perforated and passages with the
disjunctive phrase “or otherwise” makes clear that the
patentee intended that the term “perforated” is not the
same as “passages.” The patentee claimed only jaws that
are “perforated”; this claim does not extend to passages.
In light of the intrinsic record, we conclude that the term
“perforated” is not coextensive with or the same as “passages.”
Thus the Board’s finding that JP ’551 disclosed at
least one “perforated” jaw because JP ‘551 referenced a
passage cannot be supported. We vacate the Board’s
decision invalidating claims 11, 38, 41–44, 46, 47, and 49
over JP ’551 and remand for proceedings consistent with
this construction.

Judge Schall dissented on the diligence question.
[ I believe the Patent Trial and Appeal Board (“Board”)
applied the correct legal standard
in finding that Perfect Surgical Techniques, Inc. (“PST”)
failed to establish that Dr. Camran Nezhat, the inventor
named on U.S. Patent No. 6,030,384 (“the ’384 patent”),
exercised reasonably continuous diligence during the
critical period. I also believe the Board’s finding on
diligence is supported by substantial evidence. ]

To establish priority of an invention, a party must
show either an earlier reduction to practice or an earlier
conception followed by a diligent reduction to practice.
Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237
F.3d 1359, 1365 (Fed. Cir. 2001); see also In re Steed, 802
F.3d 1311, 1316 (Fed. Cir. 2015) (“When the issue of
priority concerns the antedating of a reference, the applicant
is required to demonstrate, with sufficient documentation,
that the applicant was in possession of the laterclaimed
invention before the effective date of the reference.”);
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576–
78 (Fed. Cir. 1996) (explaining that a party attempting to
overcome anticipatory prior art has the burden to prove
an earlier date of invention). When a party relies on an
earlier conception (PST’s circumstance), it must “connect[]
the conception with [the inventor’s] reduction to practice
by reasonable diligence on his part, so that they are
substantially one continuous act.” Mahurkar, 79 F.3d at
1577 (quoting Christie v. Seybold, 55 F. 69, 76 (6th Cir.
1893)). The inventor must show diligence throughout the
entire critical period, which runs from a date just before
the prior art’s invention date to the inventor’s filing date.
See Creative Compounds, LLC v. Starmark Labs., 651
F.3d 1303, 1312–13 (Fed. Cir. 2011); Mahurkar, 79 F.3d
at 1578; 35 U.S.C. § 102(g) (2006) (“In determining priority
of invention . . . there shall be considered . . . the reasonable
diligence of one who was first to conceive and last
to reduce to practice, from a time prior to conception by
the other.”).

Other cases, however, have couched the test in different
terms. In Gould v. Schawlow, our predecessor court
asked whether an inventor’s testimony “support[s] a
finding of that continuity of activity which constitutes
reasonable diligence.” 363 F.2d 908, 916 (C.C.P.A. 1966)
(emphases added). In Griffith v. Kanamaru, we inquired
whether an inventor was “continuously or reasonably
diligent” during the critical period. 816 F.2d 624, 629
(Fed. Cir. 1987) (internal quotations omitted); see also
Scharmann v. Kassel, 179 F.2d 991, 996 (C.C.P.A. 1950)
(“continuing and reasonable diligence”) (citing Hull v.
Davenport, 90 F.2d 103 (C.C.P.A. 1937)). Still other cases
have used different expressions for the test. See, e.g.,
Mahurkar, 79 F.3d at 1577 (defining “reasonable diligence”
as “one continuous act”); Bey v. Kollonitsch, 806
F.2d 1024, 1030 (Fed. Cir. 1986) (requiring “reasonable
diligence during the continuous . . . critical period”). But
perhaps most importantly for our purposes here, our
predecessor court in In re McIntosh asked whether an
applicant showed “continuous exercise of reasonable
diligence.” 230 F.2d 615, 619 (C.C.P.A. 1956). This
standard is the same one recited by the Board. Ante, 7

As to review under the "substantial evidence" standard:

We review the Board’s factual findings on diligence
for substantial evidence. Monsanto, 261 F.3d at 1369.
Substantial evidence justifies a finding if a reasonable
mind might accept the evidence to support it. Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). This
standard involves an examination of the record as a
whole, taking into account evidence supporting and
detracting from an agency’s finding. Universal Camera
Corp. v. NLRB, 340 U.S. 474, 487–88 (1951). Substantial
evidence does not require the Board’s finding to be the
only one possible from the record so long as it is reasonable.
“[T]he possibility of drawing two inconsistent conclusions
from the evidence does not prevent [a] finding from
being supported by substantial evidence.” In re Gartside,
203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consolo v.
Fed. Maritime Comm’n, 383 U.S. 607, 620 (1966)); see also
Jolley, 308 F.3d at 1320 (“If the evidence in record will
support several reasonable but contradictory conclusions,
we will not find the Board’s decision unsupported by
substantial evidence simply because the Board chose one
conclusion over another plausible alternative.”)

Of the actions of the patent attorney:

I also agree with the majority in faulting the Board
for failing to consider Mr. Heslin’s activities during the
Third Gap. Id. 10–11. An attorney’s diligence is imputable
to the inventor. E.g., Bey, 806 F.3d at 1027. Mr.
Heslin undertook actions during the Third Gap that could
be attributed to Dr. Nezhat, such as preparing an information
disclosure statement and finalizing the application.
Ante, 11. Had the Board investigated Mr. Heslin’s
actions, it may have arrived at a different conclusion on
Dr. Nezhat’s diligence during the Third Gap. Accordingly,
I agree that it was error for the Board to disregard Mr.
Heslin’s activities during the critical period.

As to the scope of the dissent:

To conclude, I believe substantial evidence supports
the Board’s finding that Dr. Nezhat failed to demonstrate
reasonable diligence during the entire critical period. I
therefore respectfully dissent from the majority’s decision
on this point. Accordingly, while I agree that we should
vacate the Board’s decision and remand the case to the
Board for further proceedings, I would limit the remand
proceedings to determining whether, under the correct
claim construction, the invention claimed in the ’384
patent is anticipated or rendered obvious in view of JP

CAFC addresses nonanalogous art and "motivation to combine" in Unwired Planet; Google wins

Unwired Planet lost its appeal against Google:

Unwired Planet, LLC (“Unwired”) appeals from the
final written decisions of the Patent Trial and Appeal
Board (“Board”) in Inter Partes Review (“IPR”) No. 2014-
00036 and Covered Business Method (“CBM”) Patent
Review No. 2014-00005. Google Inc. v. Unwired Planet,
LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar.
30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired
Planet, LLC, CBM2014-00005, 2015 WL 1519056
(P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the
reasons stated below, we affirm the Board’s decision that
the challenged claims of U.S. Patent No. 7,024,205 (the
“’205 patent”) are invalid as obvious in the IPR appeal
and dismiss the CBM appeal as moot

This was an obviousness case, and, yes, KSR is cited:

A claim would have been obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
In order to determine if a claim would have been obvious,
“the scope and content of the prior art are to be determined;
differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill
in the pertinent art resolved.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
Deere Co., 383 U.S. 1, 17 (1966)). Given the differences
between the prior art and the claimed invention, the
claimed combination would have been obvious only if
there was an apparent reason for a skilled artisan “to
combine the known elements in the fashion claimed by
the patent at issue.” KSR, 550 U.S. at 418.

Unwired makes three challenges to the Board’s basis
for the first ground of obviousness in the IPR. Unwired
argues (1) that Galitz is not analogous prior art, (2) that
the prior art does not teach farther-over-nearer ordering,
and (3) that a person of skill in the art would not have
been motivated to combine Brohoff with Galitz.

[As background to Galitz: Wilbert O. Galitz’s book
The Essential Guide to User Interface Design: An Introduction
to GUI Design Principles and Techniques (John
Wiley & Sons, Inc. (1997)) (“Galitz”). It discusses principles
for interface design, including discussing the advantages
of various techniques for ordering text
information and menus. Id. at 120–21, 255–56. It also
discusses the benefits and applications of several ordering
techniques, including alphabetic order. Id. at 256. Galitz
further suggests how the design principles it discusses
may be applied in designing interfaces for future, specialized
devices. Id. at 32. ]

As to the argument suggesting nonanalogous art, the CAFC stated:

Prior art is analogous and can be applied in an obviousness
combination if it either (1) “is from the same field
of endeavor, regardless of the problem addressed” or
(2) “is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992). To determine if art is analogous,
we look to “the purposes of both the invention and the
prior art.” Id. at 659. If a reference disclosure and the
claimed invention have a same purpose, the reference
relates to the same problem, which supports an obviousness
rejection. Id.

Of note:

Taken together, this evidence establishes that Galitz
is analogous prior art to the ’205 patent. The field of
endeavor of a patent is not limited to the specific point of
novelty, the narrowest possible conception of the field, or
the particular focus within a given field.
Here, both
Galitz and the ’205 patent are in the field of interface
design, with Galitz focusing on graphical user interfaces
and the ’205 patent focusing on interfaces for location-based
services. These two areas of focus overlap within
the broader field of interface design because the teachings
in graphical user interface design, including design principles
for displaying text and ordering menus, have relevance
in interfaces for location-based applications.
Likewise, a skilled artisan seeking to apply interface
design principles to display addresses—one of the particular
problems dealt with by the inventor of the ’205 patent—would
reasonably look to Galitz, which teaches
solutions to this same problem. As the Board found, Dr.
Cox’s testimony shows a skilled artisan would have
understood the applicability of Galitz’s teachings to this
problem by providing an example of conventional address
text and ordering in the location-based context.

Of "farther over nearer"

The claims only require using prioritization
information that results in a farther-over-nearer
order. ’205 patent, cl. 1, col. 10 ll. 53–55 (“wherein said
first location information is assigned a higher priority
than said second location information”). The claimed
result, where a farther first location is given priority over
a nearer second location, could result from many prioritization
schemes that do not depend on location.
It does not matter that the use of alphabetical order
for locations would not always result in farther-over-nearer
ordering. It is enough that the combination would
sometimes perform all the method steps, including farther-over-nearer
ordering. See Hewlett-Packard, 340 F.3d
at 1326. Because the use of alphabetical order as prioritization
information would sometimes meet the farther-over-nearer
claims elements, the Board was correct to
conclude that the proposed combination taught all of the
elements of claim 1.

Of motivation:

The Court in KSR described many potential rationales
that could make a modification or combination of
prior art references obvious to a skilled artisan. 550 U.S.
at 417–22; see also MPEP § 2143. KSR overturned the
approach previously used by this court requiring that
some teaching, suggestion, or motivation be found in the
prior art. 550 U.S. at 415.
Instead, the Court explained
that a rationale to combine could arise from “interrelated
teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace;
and the background knowledge possessed by a
person having ordinary skill in the art.” Id. at 418. For
example, the Court stated that “if a technique has been
used to improve one device, and a person of ordinary skill
in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”
Id. at 417. For the technique’s use to be obvious, the
skilled artisan need only be able to recognize, based on
her background knowledge, its potential to improve the
device and be able to apply the technique.

Monday, November 14, 2016

Foreseeability and predictions

Leaving aside the media predictions of the winner of the Presidential election of 2016, recall also that Strat-O-Matic
predicted the Cleveland Indians to win Game 6 by a score of 7-2:

That's right, Strat expects the Indians to finish things off in Game 6, winning by a five-run margin. Cubs starter Jake Arrieta disappointed in the simulation, walking six batters in 2 2/3 innings. Danny Salazar, meanwhile, made an impressive relief appearance for the Indians -- allowing one baserunner in 1 1/3 innings. Jose Ramirez was the offensive hero for the Indians, driving in a pair of runs. Oh, and the final out? A Dexter Fowler fly out to Coco Crisp.

Will Strat-O-Matic get this one right? We'll find out soon enough.

Arrieta won 2 games in the Series and had an ERA of 2.38.
Kluber won 2 games in the Series and had an ERA of 2.81.

Chapman and Miller had the same ERA, 3.52 , each allowing 3 earned runs in 7.2 innings and each winning one game.
Salazar gave up no runs and 1 hit in 3 innings in the series, including 2 innings/one hit in game 6.
Ramirez was 1 for 4 in game 6, with no RBIs.

Many things suggested to be predictable/foreseeable are not.

The "four amigos of patent reform" are back!

Back in 2008, IPBiz posted on "the four amigos of patent reform" (below).

Well, they are back, although one of the four gave a rather curious pose:




An earlier picture of turkey buzzard on IPBiz:


AND, also on IPBiz,

Lex Luther Vanquishes the Four Amigos of Patent Reform


Christian Faith beats Adidas at CAFC on "use in commerce" issue; TTAB reversed

The outcome of the case before the CAFC, Christian Faith Fellowship beats Adidas:

Christian Faith Fellowship Church appeals a final judgment of the Trademark Trial and Appeal Board that, in response to a petition filed by adidas AG, cancelled its trademarks for failing to use the marks in commerce before registering them. The Board held that the Church’s documented sale of two marked hats to an outof-state resident were de minimis and therefore did not constitute use of the marks in commerce under the Lanham Act. Because the Lanham Act defines commerce as all activity regulable by Congress, and because the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause, we reverse the Board’s cancellation of the Church’s marks on this basis and remand for further proceedings.

The CAFC stated the issue:

The dispute between the parties in this case is limited to whether the Church, which filed its applications under § 1051(a)’s “use in commerce” subsection, made a sale of marked goods in commerce regulable by Congress before applying for its marks.

Of the hearsay issue:

We review the Board’s admission of the check for abuse of discretion. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1363 (Fed. Cir. 2012) (citing Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1390 (Fed. Cir. 2010)). “We will reverse only if the Board’s evidentiary ruling was: (1) ‘clearly unreasonable, arbitrary, or fanciful’; (2) ‘based on an erroneous conclusion[] of law’; (3) premised on ‘clearly erroneous findings of fact’; or (4) the record ‘contains no evidence on which the Board could rationally base its decision.’” Id. (quoting Crash Dummy Movie, 601 F.3d at 1390–91).

The Federal Rules of Evidence provide, however, an exception to the bar on hearsay evidence for business records of regularly conducted conduct kept in the ordinary course. Fed. R. Evid. 803(6). The Board relied on this exception in admitting Ms. Howard’s check. A Church pastor, whose duties included Church recordkeeping, testified that the check was maintained in the Church’s records in the normal course of Church bookstore sales, along with the corroborating entry in the bookstore ledger of sales. Adidas argues that the pre-printed address on the check had nothing to do with Church business, and therefore, the check should not have been admissible under the business records exception. We disagree.

The business records exception “does not require that the document actually be prepared by the business entity proffering the document.” Air Land Forwarders, Inc. v. United States, 172 F.3d 1338, 1343 (Fed. Cir. 1999). When a business relies on a document it has not itself prepared, two factors bear on the admissibility of the evidence as a business record: “[1] that the incorporating business rely upon the accuracy of the document incorporated[;] and [2] that there are other circumstances indicating the trustworthiness of the document.” Id. We hold that the Board did not abuse its discretion in determining that the Church relied on the check, a bank-issued negotiable instrument, as accurate and trustworthy. We also hold that the check is self-authenticating as commercial paper under Federal Rule of Evidence 902(9). See United States v. Pang, 362 F.3d 1187, 1192 (9th Cir. 2004) (“[A] check is a species of commercial paper, and therefore selfauthenticating” (citing Fed. R. Evid. 902(9))). Based on the admitted check and a Church pastor’s testimony that many Church parishioners reside in Wisconsin, the Board found that Ms. Howard resided in Wisconsin. Adidas argues this factual conclusion was unsupported. We review the Board’s factual determinations under a substantial evidence standard. In re Chippendales USA, Inc., 622 F.3d 1346, 1350 (Fed. Cir. 2010) (citing In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003); 5 U.S.C. § 706(2)(E)). We conclude that the admitted check and the Church pastor’s testimony constitute substantial evidence to support the Board’s determination regarding Ms. Howard’s residence.

As to the "use in commerce" issue:

Moving to the facts of this case, it is clear in light of the foregoing precedent that the Church’s sale of two “ADD A ZERO”-marked hats to an out-of-state resident is regulable by Congress under the Commerce Clause and, therefo
re, constitutes “use in commerce” under the Lanham Act. We reach this conclusion without defining the outer contours of Congress’s Commerce Clause powers because the transaction at issue falls comfortably within the bounds of those powers already sketched for us by the Supreme Court. The Lanham Act is a comprehensive scheme for regulating economic activity—namely the marking of commercial goods—and the “use in commerce” pre-registration requirement is an “essential part” of the Act. Lopez, 514 U.S. at 561. Further, it cannot be doubted that the transaction at issue—the private sale of goods, particularly apparel, to an out-of-state resident—is “quintessentially economic.” Raich, 545 U.S. at 25; see United States v. Morrison, 529 U.S. 598, 611 (2000)


This transaction, taken in the aggregate, would cause a substantial effect on interstate commerce and thus it falls under Congress’s Commerce Clause powers. Taylor, 136 S. Ct. at 2080–81; Raich, 545 U.S. at 17; Wickard, 317 U.S. at 125. The Church did not need to present evidence of an actual and specific effect that its sale of hats to an out-ofstate resident had on interstate commerce. Nor did it need to make a particularized showing that the hats themselves were destined to travel out of state. See Taylor, 136 S. Ct. at 2081. The Board’s rationale that the sale to Ms. Howard was “de minimis” and thus “insufficient to show use that affects interstate commerce” is squarely at odds with the Wickard progeny of Commerce Clause cases. Board Op. at *7. In particular, the Board’s reasoning contravenes Raich, which expressed that “the de minimis character of individual instances” arising under a valid statute enacted under the Commerce Clause “is of no consequence.” 545 U.S. at 17. “[I]t makes no difference under our cases that any actual or threatened effect on commerce in a particular case is minimal.” Taylor, 136 S. Ct. at 2081 (citing Perez, 402 U.S. at 154); see also Larry Harmon, 929 F.2d at 666.

Adidas’s argument that the Church must present actual proof that its sale to Ms. Howard directly affected commerce also contradicts precedent. “[P]roof that the defendant’s conduct in and of itself affected or threatened commerce is not needed. All that is needed is proof that the defendant’s conduct fell within a category of conduct that, in the aggregate, had the requisite effect.” Taylor, 136 S. Ct. at 2081.


For the foregoing reasons, we reverse the Board’s cancellation of the Church’s “ADD A ZERO” marks for not using them in commerce before federally registering them and remand for the Board to address Adidas’s other cancellation grounds.


Saturday, November 12, 2016

CAFC in Yufa v. TSI: consequences to patentee of filing a bad infringement case

The present appeal follows
from Dr. Yufa’s filing of a
complaint in the District Court alleging that TSI’s predecessor
-in-interest infringed the ’983 patent. T
he District Court granted
summary judgment of noninfringement in
favor of TSI.
See generally Yufa v. TSI, Inc., No. CV 09-01315-
KAW, 2014 WL 2120023 (N.D. Cal. May 21, 2014).
TSI moved for attorney fees and costs, and the District
Court found that Dr. Yufa’s claims of infringement were
“objectively baseless,” granted TSI’s motion, and awarded
TSI $166,364.88.
See Yufa v. TSI, Inc., No. CV 09
-0 1315-KAW, 2014 WL 4071902, at *5
(N.D. Cal. Aug. 14, 2014);
Appellant’s App. 32

The bad news for the patentee:

TSI filed a motion to appoint Greyhound as receiver
and to compel the assignment of the Patent Portfolio to
Greyhound to satisfy the Judgment.

Within the conclusion

At some point, a pro se plaintiff
has to recognize that when a court says a cause of action
is without merit, the defendant can no longer be forced to
incur expenses associated with the litigation and must be
allowed to collect money owed. Failure to accept that
objective reality must necessarily result in the pro se
plaintiff bearing the expenses
the defendant is being
forced to pay without good reason. This is such a case.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1784.Opinion.11-4-2016.1.PDF

Tuesday, November 08, 2016

The CAFC delves into analytical chemistry and hearsay in REG Synthetic v. Neste Oil

Overview of the case:

This appeal arises from a petition for inter partes review
filed by Neste Oil Oyj (Neste) against claims 1–5 and
8 of U.S. Patent No. 8,231,804 (’804 patent), which is
owned by REG Synthetic Fuels, LLC (REG). The United
States Patent and Trademark Office, Patent Trial and
Appeal Board (Board) instituted trial, and in its final
written decision, the Board found claims 1, 3, 4, and 8
anticipated by U.S. Patent No. 4,992,605 (Craig), and
claims 1–3, 5, and 8 anticipated by U.S. Published Patent
Application No. 2008/0312480 (Dindi). Neste Oil Oyj v.
REG Synthetic Fuels, LLC, No. IPR2013-00578, 2015 WL
1263029, at *14, 17 (PTAB Mar. 12, 2015). During trial,
both parties filed motions to exclude documentary evidence,
and the Board excluded several REG exhibits
based on hearsay and other grounds. REG appeals the
Board’s unpatentability determinations and its exclusion
of certain REG exhibits. For the reasons stated herein,
we affirm-in-part, reverse-in-part, vacate-in-part, and
remand for further proceedings.

The subject matter:

The ’804 patent is directed to paraffin compositions
containing primarily even-carbon-number paraffins and
methods of making them.

Claim 1 is representative for purposes of this appeal:
1. A phase change material composition comprising
at least 75 wt% even carbon number paraffins,
wherein the paraffins are produced by hydrogenation/hydrogenolysis
of naturally occurring fatty
acids and esters

Of the evidentiary issues:

We review the Board’s evidentiary rulings for abuse of
discretion. Chen v. Bouchard, 347 F.3d 1299, 1307 (Fed.
Cir. 2003).

GC/MS data were being contested:

The Board noted
that the GC-MS area percentages do not by themselves
establish, by a preponderance of evidence, weight percentages
within the claimed ranges of the ’804 patent.
The Board agreed, however, with Neste’s expert (Dr.
Klein) that a person of ordinary skill in the art could use
relative response factors to convert GC-MS area percentages
into weight percentages.

REG argued to the Board that Craig does not provide
enough information to accurately convert the GC-MS
peak area percentages to weight percentages using relative
response factors, but the Board disagreed.

REG argues that the Board used an erroneous inherency
standard because the Board found it unlikely that
Craig did not disclose the claimed limitations of “weight
percentages.” REG believes that the Board relied on Dr.
Klein’s testimony to “fill the gap” in Craig by estimating
weight percentages using the area percentages of Craig,
and in REG’s view, this conversion is not so straightforward.
REG points to evidence that converting weight and
area percentages requires calibration of the instrument to
account for actual instrument operating conditions. Dr.
Klein did not perform this calibration, and instead used
several different estimates to suggest precision. REG
contends that precision does not mean accuracy, absent

The CAFC did not agree with REG:

We agree with Neste. Dr. Klein converted the area
percentages of Craig into the weight percentages recited
in the ’804 patent using several different relative response
factors from the prior art, including Göröcs and
Chaurasia, which REG’s own expert, Dr. Lamb, cited in
his expert declaration. J.A. 2895–98.

This is not an inherency issue,
however, because the challenged limitation is not missing
from Craig. See Cont’l Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1268 (Fed. Cir. 1991) (“To serve as an anticipation
when the reference is silent about the asserted inherent
characteristic, such gap in the reference may be filled
with recourse to extrinsic evidence.”). Craig is not silent
as to the concentration of even-carbon-number paraffins
because it expressly discloses this concentration in area
percentage. Dr. Klein simply converted one unit of measurement
(area percent) into another unit of measurement
(weight percent) by using relative response factors from
the prior art. Dr. Klein explained that this conversion
was a reliable technique given the very similar weight
percentage results after using three different sets of
relative response factors. J

As to a different claim issue, the CAFC reviewed the
legal meaning of "conception":

REG argued before the Board that Dindi was not prior
art to the ’804 patent because Mr. Abhari invented the
subject matter of the ’804 patent before the June 13, 2008
filing date of Dindi. The Board recognized that to antedate
Dindi, REG had to “prove (1) a conception and reduction
to practice before the filing date of [Dindi] or (2) a
conception before the filing date of [Dindi] combined with
diligence and reduction to practice after that date.”
Taurus IP, 726 F.3d at 1323. In either case, REG had to
prove conception prior to the June 13, 2008 filing date of
Dindi. Id.

Conception is “the formation, in the mind of the inventor
of a definite and permanent idea of the complete
and operative invention, as it is thereafter to be applied in
practice.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir.
1985) (emphasis in original) (quoting Gunter v. Stream,
573 F.2d 77, 80 (C.C.P.A. 1978)). Conception must include
every feature or limitation of the claimed invention.
Davis v. Reddy, 620 F.2d 885, 889 (C.C.P.A. 1980). “Conception
must be proved by corroborating evidence which
shows that the inventor disclosed to others his ‘completed
thought expressed in such clear terms as to enable those
skilled in the art’ to make the invention.” Coleman, 754
F.2d at 359 (quoting Field v. Knowles, 183 F.2d 593, 600
(C.C.P.A. 1950)). However, “there is no final single formula
that must be followed in proving corroboration.”
Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997)
(quoting Berry v. Webb, 412 F.2d 261, 266 (C.C.P.A.

We agree with REG that it has proven conception prior
to the filing date of Dindi, based on Exhibits 2011 and
2058, both already admitted in evidence, and the content
of Exhibit 2061, which the Board incorrectly excluded
from evidence based on hearsay.

Of Exhibit 2061:

it is
true that nothing from Mr. Abhari in Exhibits 2011 and
2058 expressly stated that the percentages of evencarbon-number
paraffins should be summed up or that
the sum of these percentages met claim 2’s limitation of
“at least 80 wt%.” This “knowledge” of Mr. Abhari is
supplied by Exhibit 2061, which contains an email dated
April 29, 2008 from Mr. Abhari to Microtek, another third
party who specialized in PCM materials, stating that he
could achieve an 80% purity C18 product.

Of the hearsay issue:

Neste argued before the Board that these emails were hearsay
because they contain out of court statements by Ms.
Mantz. REG responded that these emails were not hearsay,
because it did not offer the emails to prove the truth
of the matter asserted. Rather, REG contended that it
offered the emails to show that Mr. Abhari recognized the
usefulness of high even-carbon-number paraffins as a
PCM material and that he would not have otherwise
contacted Microtek. The Board agreed with REG, in part,
finding that the fact that Mr. Abhari contacted Microtek
was a non-hearsay use of Exhibit 2061, and the Board
admitted Exhibit 2061 for that limited purpose. The
Board did not consider the content of Exhibit 2061, which
it found to be hearsay.

We find that the Board erred to the extent that it excluded
the content of Exhibit 2061 based on hearsay
because REG offered Exhibit 2061 for the non-hearsay
purpose to show that Mr. Abhari thought he had achieved
80 wt% purity C18 product.9 The act of writing and sending
the email is, by itself, probative evidence on whether
Mr. Abhari recognized—at the time that he had written
the email—that the sum of the weight percentages of
even-carbon-number paraffins in his compositions was at
least 80 wt% and communicated this to a third party. In
Knorr v. Pearson, 671 F.2d 1368, 1372–73 (C.C.P.A. 1982),
the U.S. Court of Customs and Patent Appeals found that
a statement was not hearsay if “the communication (as
opposed to the truth) ha[d] legal significance.” Knorr
involved a telephone call, in which two co-inventors,
Buergin and Pearson, discussed an invention, and which
was overheard by a third party, Rutkowski. Id. at 1370.
The court held that Rutkowski’s testimony on what he
heard Buergin say to Pearson was not hearsay because
the communication of the idea had legal significance as
the basis for the conception of the invention
Id. at 1373-74. By contrast, Rutkowski’s testimony on “Buergin’s
statements to Rutkowski regarding what Pearson said”
was hearsay. Id. at 1373.

[So, Rutowski testimony of what Buergin said "not hearsay" but
Rutkowski on what Buergin said that Pearson said hearsay (double-hearsay?).
The CCPA is allowing "what Rutowski heard" of Buergin's end of
the phone call but not what Buergin told Rutowski that Pearson said.]

The CAFC also noted:

The Board also found that it could not determine
from Exhibit 2061 the specific product or process that Mr.
Abhari had in mind, or the fact that Mr. Abhari had
recognized that he had created something new, when he
had emailed Microtek that he could achieve at least 80
wt% purity C18 product. Conception, however, does not
require that Mr. Abhari recognize that he created a PCM
material, or the specific process by which he had created
80 wt% purity C18 product, because the Board’s construction
of the claims did not limit the invention based on
these features. The only feature at issue here is whether
Mr. Abhari disclosed a composition containing at least 80
wt% even-carbon-number paraffins to others, and we find
that he did. Mr. Abhari’s email to Microtek expressly
states that he could achieve at least 80% purity C18 product,
which was new in April 2008 because this product did
not exist in the prior art, given the record before us. Nor
does Neste dispute that Mr. Abhari sent this email to
Microtek because the Board admitted Exhibit 2061 to
show that Mr. Abhari contacted Microtek, which Neste
does not appeal.

The CAFC reverses the Board on "lack of conception":

We reverse the Board’s findings on conception and its
exclusion of the contents of Exhibit 2061 based on hearsay.
We find that Exhibit 2061 shows that Mr. Abhari
“disclosed to others,” see Coleman, 754 F.2d at 359, a
composition including every feature or limitation of the
claimed invention, see Davis, 620 F.2d at 889. We also
find that, based on Exhibits 2011, 2058, and 2061, Mr.
Abhari’s disclosure was a “‘completed thought expressed
in such clear terms as to enable those skilled in the art’ to
make the invention.” Coleman, 754 F.2d at 359. However,
because the Board did not make factual findings on
diligence or reduction to practice in the first instance, we
remand for the Board to make these findings.

Sunday, November 06, 2016

CBS Sunday Morning on 6 Nov 2016: Martha Teichner does cover story on "The Big Picture"

Jane Pauley introduced the stories for November 6, which included Martha Teichner doing "The Big Picture" on aspects of the coming election. Second, Pauley presented aspects of Barry Petersen's piece on marijuana legalization proposals coming up in five states. Third, Mo Rocca on James Buchanan as possibly the worst president. Lee Cowan on Paul Simon; Erin Moriarity; Seth Doane; Steve Hartman. The headlines were the incident with Donald Trump in Reno. Arrest in DC.

A quick factoid appeared: Abraham Lincoln the tallest president at 6'4" and Madison shortest at 5'4"

In the cover story, Teichner spoke to historian Douglas Brinkley ("which is the worst of the two evils"), Joseph Cummins, and Robert Lechter of George Mason University.

Erin Moriarty spoke to artist Steve Penley.

Small clips. Tim Russert introduced notation red states/blue states. Donkey symbol from 1824. Republican symbol from 1871.

In the context of a review of a national park in American Samoa, the fact that residents of Samoa are "nationals," but not citizens, arose. The LA Times had noted in June 2016 of a denial of cert in the Tuana case:

During the 20th century, Congress extended citizenship rights to the people of the other territories, except for the people of American Samoa.

The timing of appeal may have played a role in its dismissal. Since the death of Justice Antonin Scalia in February, the eight justices have granted review of only a handful of new cases, and most of those arose because the lower courts had split on an issue of law.

On Monday, the court said it had denied review in more than 100 pending appeals, including Tuana vs. United States, the Samoans’ case. No new cases won a review.

link: http://www.latimes.com/nation/la-na-court-samoans-20160613-snap-story.html

From an SSRN article by N. Doehler:

This article re-examines the status of non-citizen nationals of the United States. In the Insular Cases of the early 1900s the U.S. Supreme Court determined that the Constitution did not provide birthright citizenship for persons born in "unincorporated territories," which were territories they considered to be under the jurisdiction of but not part of the United States. Instead, persons born in those territories were deemed "non-citizen nationals" of the U.S. Since then Congress has legislated birthright citizenship for Guam, the Northern Mariana Islands, Puerto Rico and the U.S. Virgin Islands, but not for American Samoa. While arguments have been made that the territories have in fact been incorporated into the United States and therefore the Fourteenth Amendment's citizenship clause, which guarantees citizenship for all persons born in and subject to the jurisdiction of the U.S., applies, I argue from a different perspective. Birthright citizenship does not derive from the Fourteenth Amendment but from the original Constitution. While citizenship is not defined in the Constitution, courts have determined that as a sovereign state, the U.S. had citizens and the rules for citizenship were to be found in English common law regarding subjects. English common law recognizes all persons born under the sovereignty of the state to be English subjects, regardless of whether or not they were born in the realm. As a result, anyone born in any territory under U.S. jurisdiction should be considered a citizen.

Doehler, Nicholas, The U.S. Constitution and Birthright Citizenship in the Unincorporated Territories (October 4, 2016). Available at SSRN: https://ssrn.com/abstract=2847593

Other items on Sunday Morning on Nov. 6:
Andy Borowitz. Joy Woodhaven and her two sons.
Moment of nature: Mt. Rushmore

Saturday, November 05, 2016

Summary judgment of non-infringement affirmed by CAFC in Red Dog v. KAT

The non-precedential case of RED DOG MOBILE SHELTERS v. KAT INDUSTRIES is of interest because of subject matter and legal citations.

Red Dog’s 8,534,001 patent, entitled “Re-Deployable Mobile
Above Ground Shelter,” discloses certain protective shelters
having features whose purpose is to help the shelter
stay in place during high winds or similar conditions.
’001 patent, col. 3, lines 37–40.
According to the record on summary judgment that
governs the decision on review, KAT manufactures mobile
protective shelters that are designed to protect occupants
during storms or tornadoes, and the particular one at
issue here is the Tuffy shelter. Red Dog brought this
infringement suit against KAT in the United States
District Court for the Northern District of Texas, alleging
that KAT’s Tuffy shelter infringed Red Dog’s ’001 patent.
Red Dog asserted claims 44, 45, 47, 48, 55, 57, 60, 77, 89,
90, 91, 92, 93, and 94 of the ’001 patent.

The idea of applying "common sense" is hiding in the background:

We think that the district court properly concluded
that Red Dog’s interpretation is not one a person of ordinary
skill in the art would adopt, at least for this patent.
As already noted, the ’001 patent clearly contemplates
rails that lift the bottom plate above the ground, creating
a gap between the floor panel and the ground. ’001 patent,
col. 3, lines 45–46; id., col. 2, lines 29–30; see also id.,
col. 4, lines 24–39 (particular embodiment allowing “the
free passage air from any locale beneath the shelter to
any other locale”) (emphasis added). More generally, the
district court explained, under Red Dog’s interpretation,
“it would be impossible to create a floor that was not
elevated,” because the floor would be the (twodimensional)
top of some (necessarily three-dimensional)
material, which “would have to have a thickness to it.”
J.A. 12. Red Dog’s “expert’s application of ‘elevate’ does
not make any sense.”

Of legal matters:

We review the grant of summary judgment de novo.
See Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
1334, 1338 (Fed. Cir. 2016); Wright v. Excel Paralubes,
807 F.3d 730, 732 (5th Cir. 2015). Summary judgment is
proper where “the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56.
Infringement, which is a question of fact, “is amenable
to summary judgment when no reasonable factfinder
could find that the accused product contains every claim
limitation or its equivalent.” Akzo, 811 F.3d at 1339.
That determination depends on claim construction. Id.
Claim construction is a matter of law, with any underlying
findings about extra-patent understandings or other
facts outside the patent documents calling for clear-error
review. Id.

One recalls from Intellectual Ventures v. Symantec, 120 U.S.P.Q.2D 1353 (CAFC 2016) :

We review the grant or denial of summary judgment de novo. See Nicini v. Morra, 212 F.3d 798, 805 (3d Cir. 2000) (en banc). For the district court's entry of judgment under Rule 52(c), we review the district court's factual findings for clear error and its legal conclusions de novo. See EBC, Inc. v. Clark Bldg. Sys., Inc., 618 F.3d 253, 273 (3d Cir. 2010). Patent eligibility under § 101 is an issue of law which we review de novo. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).

As to "clear error", from Dickinson v. Zurko, 527 U.S. 150; 119 S. Ct. 1816; 144 L. Ed. 2d 143 (1999):

This Court has described the APA court/agency "substantial evidence" standard as requiring a court to ask whether a "reasonable mind might accept" a particular evidentiary record as "adequate to support a conclusion." Consolidated Edison, 305 U.S. at 229. It has described the court/court "clearly erroneous" standard in terms of whether a reviewing judge has a "definite and firm conviction" that an error has been committed. United States v. United States Gypsum Co., 333 U.S. 364, 395, 92 L. Ed. 746, 68 S. Ct. 525 (1948). And it has suggested that the former is somewhat less strict than the latter. Universal Camera, 340 U.S. at 477, 488 (analogizing "substantial evidence" test to review of jury findings and stating that appellate courts must respect agency expertise).

One also recalls the text of Judge Mayer from the Intellectual Ventures case:

Like all congressional powers, the power to issue patents and copyrights is circumscribed by the First Amendment. See Golan v. Holder, 565 U.S. 302, 132 S. Ct. 873, 889-93, 181 L. Ed. 2d 835 (2012); Eldred v. Ashcroft, 537 U.S. 186, 219-21, 123 S. Ct. 769, 154 L. Ed. 2d 683 (2003). In the copyright context, the law has developed "built-in First Amendment accommodations." Eldred, 537 U.S. at 219; see also Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 201, 105 S. Ct. 658, 83 L. Ed. 2d 582 (1985) (noting that the Lanham Act contains safeguards to prevent trademark protection from "tak[ing] from the public domain language that is merely descriptive"). Specifically, copyright law "distinguishes between ideas and expression and makes only the latter eligible for copyright protection." Eldred, 537 U.S. at 219; see also Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985) (explaining that "copyright's idea/expression dichotomy" supplies "a definitional balance between the First Amendment and the Copyright Act [*35] by permitting free communication of facts while still protecting an author's expression" (citations and internal quotation marks omitted)). It also applies a "fair use" defense, permitting members of "the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances." Eldred, 537 U.S. at 219; see 17 U.S.C. § 107 ("[T]he fair use of a copyrighted work, including such use by reproduction in copies . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.").

And one recalls from Golan v. Holder a simple economic argument to counter First Amendment issues:

Before we joined Berne, domestic works and some foreign works were protected under U.S. statutes and bilateral international agreements, while other foreign works were available at an artificially low (because royalty-free) cost. By fully implementing Berne, Congress ensured that most works, whether foreign or domestic, would be governed by the same legal regime. The phenomenon to which Congress responded is not new: Distortions of the same order occurred with greater frequency--and to the detriment of both foreign and domestic authors--when, before 1891, foreign works were excluded entirely from U.S. copyright protection. See Kampelman, The United States and International Copyright, 41 Am. J. Int'l L. 406, 413 (1947) (“American readers were less inclined to read the novels of Cooper or Hawthorne for a dollar when they could buy a novel of Scott or Dickens for a quarter.”). Section 514 continued the trend toward a harmonized copyright regime by placing foreign works in the position they would have occupied if the current regime had been in effect when those works were created and first published. Authors once deprived of protection are spared the continuing effects of that initial deprivation; §514 gives them nothing more than the benefit of their labors during whatever time remains before the normal copyright term expires.

The strange co-existence of two characters each named "Dennis the Menace"

Independent creation is a defense in copyright law:

“Bolton and Goldmark also contend that their witnesses rebutted the Isley Brothers' prima facie case of copyright infringement with evidence of independent creation. By establishing reasonable access and substantial similarity, a copyright plaintiff creates a presumption of copying. The burden shifts to the defendant to rebut that presumption through proof of independent creation. See Granite Music Corp. v. United Artists Corp., 532 F.2d 718, 721 (9th Cir.1976). See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000).”

One of the more interesting examples of "independent creation" is the name "Dennis the Menace" given to two different comic strips in March 1951, one in the US and one in Britain. Other than the name, the two "Dennis's" bear little in common, and have co-existed for over 50 years.

Independent creation is not a defense in patent law.

**Separately, from blawgsearch on 5 Nov 2016

Does the First Amendment limit the power of Congress as to Intellectual Property?

The concurring opinion of Judge Mayer in the Intellectual Ventures case, bringing up First Amendment issues in IP law, has drawn some attention. JD Supra wrote:

Putting eligibility issues aside for a moment, Judge Mayer wrote that "patents constricting the essential channels of online communication run afoul of the First Amendment." In his view, "[p]atents, which function as government-sanctioned monopolies, invade core First Amendment rights when they are allowed to obstruct the essential channels of scientific, economic, and political discourse."

Citing the '610 patent as particularly pernicious in this regard, Judge Mayer was concerned that its claims "could reasonably be read to cover most methods of screening for harmful content while data is being transmitted over a network." Notably, he concluded that "[e]ssential First Amendment freedoms are abridged when the Patent and Trademark Office ("PTO") is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression."

link: http://www.jdsupra.com/legalnews/intellectual-ventures-i-llc-v-symantec-38901/

It is worthwhile mentioning another case that involved the relation between the First Amendment and IP law: Golan v. Holder.
The district court judge had written: In the United States, that body of law includes the bedrock principle that works in the public domain remain in the public domain. Removing works from the public domain violated Plaintiffs’ vested First Amendment interests

The Supreme Court decision had the effect, among other things, of taking the 1927 movie of Fritz Lang ("Metropolis") out of the public domain. [The original series Star Trek episode "The Cloud Minders" bears some resemblance to Metropolis.]

See also:
David L. Lange et al., Golan v. Holder: Copyright in the Image of the First Amendment, 11 John Marshall Review of Intellectual Property 83-132 (2011)

Gordon, Wendy J., Dissemination Must Serve Authors: How the U.S. Supreme Court Erred (August 3, 2013). Review of Economic Research on Copyright Issues, 2013, 10(1), 1-19; Boston Univ. School of Law, Public Law Research Paper No. 13-33; Boston Univ. School of Law, Law and Economics Research Paper No. 13-33. Available at SSRN: https://ssrn.com/abstract=2305535

Tuesday, November 01, 2016

Appellant Walker loses appeal against Harvard University in case involving copying of dissent in Bilski

Walker v. Harvard, Cosgrove, Weinreb, 2016 U.S. App. LEXIS 19164 (CA1 Oct. 24, 2016 ) was an appeal by former law student Walker of an unfavorable summary judgment decision.

The decision by CA1 includes a brief summary:

Between 2006 and 2009 Megon Walker ("Walker") attended Harvard Law School ("HLS"). Walker was a member of the staff of a student-run law journal, the Journal of Law and Technology ("JOLT"). During her final semester at HLS, Walker delivered a draft article (the "Note") to senior staff of JOLT. After concerns arose among the senior staff regarding the Note, an investigation was launched by HLS. The HLS Administrative Board (the "Board") subsequently held a hearing and found the Note contained plagiarism in violation of the HLS Handbook of Academic Policies (the "Handbook"). Walker received a formal reprimand and a notation regarding the matter was added to her transcript. Despite the reprimand, Walker graduated on time from HLS. However, after the notation was placed on her transcript, at least one law firm rescinded a lucrative offer of employment.

Seeking to have the notation removed from her transcript, Walker initiated this suit asserting claims for breach of contract and defamation against the President and Fellows of Harvard College ("Harvard")1; Ellen Cosgrove ("Cosgrove"), then-Dean of Students at HLS; and Lloyd Weinreb, a Professor at HLS and Chair of the Board in 2009 (together "Defendants").2 After the completion of discovery and a stipulation of dismissal as to some claims, Defendants filed their Motion for Summary Judgment. The district court granted summary judgment for Defendants on all counts and dismissed the action. Walker has appealed the ruling on two of the counts. After reviewing the issues de novo, we affirm.

At issue was proper citation in a comment about a patent case:

During her last year of law school, Walker applied to write a comment for JOLT on a recently decided patent case.
In early March, when JOLT staff began editing the Note, concerns arose that much of Walker's argument was derivative of the dissent in the case about which she was writing. The Article Editor for the Note prepared a summary of the draft for comparison with other publications and Ungberg compared the Note with the dissent from the case. On March 11, 2009, Volftsun, the JOLT staffer who had spoken with Walker at the IT Help area on February 16, 2009, sent an email offering to help Walker fix issues with the Note. Around the same time, Hamburger used Google to run searches on full sentences from the Note. He created an annotated version of the Note showing which sentences were copied from other sources. He stopped after documenting 23 instances. In mid-March, Hamburger and Kitzinger discussed their attribution concerns with Walker and then with Cosgrove, the Dean of Students.

As to legal standards:

Where, as here, a private-school student or former student sues a school alleging breach of contract, the standard of reasonable expectation applies. Schaer, 735 N.E.2d at 378; see also Driscoll, 873 N.E.2d at 1185-86. Under this reasonable [*10] expectation standard, courts ask, in interpreting the contractual terms, "what meaning the party making the manifestation, the university, should reasonably expect the other party [, the student,] to give it." Schaer, 735 N.E.2d at 378 (quoting Cloud, 720 F.2d at 724). A breach of contract is established if the facts show that the university has "failed to meet [the student's] reasonable expectations." Id.

The appellant lost:

Walker has not presented facts a student could have relied upon to form a reasonable expectation that the plagiarism policy had the meaning she is asserting. The HLS plagiarism policy refers to "[a]ll work submitted," a phrase that on its face applies to any student work for any academic or nonacademic exercise, whether in draft or final form, turned in to an instructor or student editor of an extracurricular law journal.

The district court decision [82 F. Supp. 3d 524; 2014 U.S. Dist. LEXIS 178301; Judge Rya Zobel] identifies the patent case in question as In re Bilski:

In plaintiff's third year of law school, JOLT accepted her application to write a case comment on In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc),

The dissent in Bilski, written by Judge Newman, involved three judges of the CAFC ( NEWMAN; MAYER; RADER ) and began:

The court today acts en banc to impose a new and far-reaching restriction on the kinds of inventions that are eligible to participate in the patent system. The court achieves this result by redefining the word "process" in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today's Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

This exclusion is imposed at the threshold, before it is determined whether the excluded process is new, non-obvious, enabled, described, particularly claimed, etc.; that is, before the new process is examined for patentability. For example, we do not know whether the Bilski process would be found patentable under the statutory criteria, for they were never applied.

The innovations of the "knowledge economy"--of "digital prosperity"--have been dominant contributors to today's economic [page 977] growth and societal change. Revision of the commercial structure affecting major aspects of today's industry should be approached with care, for there has been significant reliance on the law as it has existed, as many amici curiae pointed out. Indeed, the full reach of today's change of law is not clear, and the majority opinion states that many existing situations may require reassessment under the new criteria.

Uncertainty is the enemy of innovation. These new uncertainties not only diminish the incentives available to new enterprise, but disrupt the settled expectations of those who relied on the law as it existed. I respectfully dissent.

As a footnote, Cosgrove was a student at UofChicago Law: 1988 – 1991 and was an associate dean/dean at Chicago during the years: 1995 – 2004 .