Monday, February 27, 2017

CAFC to PTAB in Icon v. Strava: Attorney argument is not evidence or explanation in support of a conclusion.

The issues:

Icon presents two arguments on appeal. First, Icon
contends that “[t]he principal error affecting all aspects of
the reexamination proceedings is Strava’s use of an expert
to supply legal conclusions of obviousness” and the
PTAB’s reliance on those conclusions. Appellant’s Br. 10.
Second, Icon avers that the PTAB erred in affirming the
Examiner’s rejection of the Asserted Claims, either for
lack of substantial evidence or for legal error in the conclusion
of obviousness. Id. at 17–35.

Of the first argument:

Icon’s arguments ignore the standard against which
we review PTAB determinations. “We review the PTAB’s
factual findings for substantial evidence and its legal
conclusions de novo.” Redline, 811 F.3d at 449 (citation
omitted). To the extent Icon challenges the PTAB’s
factual findings, as adopted from the Examiner, the PTAB
is permitted to weigh expert testimony and other record
evidence and, in so doing, rely on certain portions of an
expert’s declaration while disregarding others. See Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
(“[W]hat the [PTAB] consistently did was accord little
weight to broad conclusory statements that it determined
were unsupported by corroborating references. It is
within the discretion of the trier of fact to give each item
of evidence such weight as it feels appropriate.” (citation
omitted)); see also In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he [PTAB] is entitled
to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions
expressed in the declarations . . . .” (citations omitted)).
To the extent Icon makes a legal argument, there is
no per se prohibition against relying on an expert’s declaration
in support of factual findings underlying a legal
conclusion of obviousness solely because the declaration
states that something “would have been obvious.”

we frequently have affirmed PTAB determinations on
obviousness that rely on expert declarations that include
such statements, so long as other aspects of the declarations
contain statements related to factual findings. See
Veritas Techs. LLC v. Veeam Software Corp., 835 F.3d
1406, 1413 (Fed. Cir. 2016) (affirming the PTAB’s conclusion
of obviousness that relied on, inter alia, an expert’s
statements that “it would have been obvious that” a prior
art reference discloses a limitation in the disputed patent
application (emphasis added) (internal quotation marks
and citation omitted)); MCM Portfolio LLC v. HewlettPackard
Co., 812 F.3d 1284, 1293 (Fed. Cir. 2015) (affirming
the PTAB’s conclusion of obviousness that was based,
in part, upon an expert’s statement that “it would have
been obvious . . . to incorporate” a prior art reference’s
capabilities into another prior art reference (emphasis
added) (citation omitted)).

Of the second argument:

To determine whether the PTAB made the necessary
factual findings with an adequate evidentiary basis, we
must determine whether the PTAB incorporated by
reference the Examiner’s factual findings and whether
those findings were adequate, as Strava alleges. Appellees’
Br. 24. The PTAB rejected Icon’s arguments as to
claims 57–62 and 65 by asserting only that Icon “merely
restates previous arguments regarding contacts of the
cradle as discussed above.” Strava, 2015 WL 5723014, at
*11. But, as Strava admits, the PTAB had never actually
addressed those arguments above. Oral Argument,
lt.aspx?fl=2016-1475.mp3. In fact, that one sentence is
the PTAB’s only reference to the “cradle,” “contacts,” or
“electrical” limitations recited in claims 57–62 and 65.
See generally Strava, 2015 WL 5723014. The PTAB’s
Decision on Appeal thus contains no substantive discussion
of the limitations at issue for claims 57–62 and 65.

As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings. “It is commonplace in
administrative law for a reviewing body within an agency
to adopt a fact-finding body’s findings. On judicial review,
the adopted material is treated as if it were part of the
reviewing body’s opinion.” In re Cree, Inc., 818 F.3d 694,
698 n.2 (Fed. Cir. 2016) (emphases added) (citations
omitted). The PTAB is no exception. See In re Brana, 51
F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (upholding the
PTAB’s findings, although it “did not expressly make any
independent factual determinations or legal conclusions,”
because it had “expressly adopted” the examiner’s findings
by stating that it “agree[d] with the examiner’s well
reasoned, well stated[,] and fully supported by citation”
findings (alterations modified) (internal quotation marks
and citation omitted)). Therefore, the PTAB was authorized
to adopt the Examiner’s findings in the Right of
Appeal Notice.


Nevertheless, the PTAB’s incorporation by reference
of the Examiner’s factual findings as to claims 57–62 and
65 gives us considerable pause. The PTAB purported to
incorporate portions of the Examiner’s Right of Appeal
Notice that address these claims. Strava, 2015 WL
5723014, at *9. In the Right of Appeal Notice, however,
the Examiner only stated that it “agree[d] with” and
“incorporated by reference” Strava’s November 2013
Comments as to claims 57–62 and 65. J.A. 1643. Neither
the PTAB nor the Examiner made any factual findings;
instead, both purported to incorporate by reference arguments
drafted by Strava’s attorneys. See Strava, 2015
WL 5723014, at *9 (citing Strava’s PTAB Response Brief
(J.A. 2591–98) and Examiner’s Right of Appeal Notice
(J.A. 1641–56), the latter of which cites Strava’s November
2013 Comments (J.A. 1541–42)).

Attorney argument is not evidence. See, e.g., Gemtron
Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed.
Cir. 2009) (“[U]nsworn attorney argument . . . is not
evidence and cannot rebut . . . other admitted evidence
. . . .”); see also Manual of Patent Examining Procedure
§ 2145 (9th ed. Nov. 2015) (“Attorney argument is
not evidence unless it is an admission, in which case, an
examiner may use the admission in making a rejection.”).
Neither the PTAB’s adoption of Strava’s PTAB Response
Brief nor the Examiner’s adoption of Strava’s November
2013 Comments transform Strava’s attorney argument
into factual findings or supply the requisite explanation
that must accompany such findings. As we recently
[t]wo distinct yet related principles are relevant to
our review. First, the PTAB must make the necessary
findings and have an adequate evidentiary
basis for its findings. . . . Second, the PTAB must
examine the relevant data and articulate a satisfactory
explanation for its action including a rational
connection between the facts found and the
choice made. . . .
This explanation enables the court to exercise its
duty to review the PTAB’s decision to assess
whether those decisions are arbitrary, capricious,
an abuse of discretion, or . . . unsupported by substantial
evidence . . . .
NuVasive, 842 F.3d at 1382 (internal quotation marks
and citations omitted). Because the PTAB failed to comport
with what these principles demand, the PTAB’s
rejection of these claims must be vacated and the case
remanded for additional PTAB findings and explanation.
See, e.g., In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir.
2017) (explaining that the court vacates and remands
when additional fact finding and explanation is warranted).


To the extent that the PTAB adopted the Examiner’s
determination as to claims 46 and 74, we find it similarly
inadequate. In contrast to its discussion of claim 86, the
Examiner never made a factual finding based on record
evidence and failed to explain its reasoning for rendering
claims 46 and 74 unpatentable. Instead, the Examiner
stated only that he “agree[d] with” and “incorporated by
reference” Strava’s November 2013 Comments regarding
the voice activated controller limitation in claims 46 and
74. J.A. 1643. Attorney argument is not evidence or
explanation in support of a conclusion. See, e.g., Gemtron,
572 F.3d at 1380; see also NuVasive, 842 F.3d at 1383
(providing that the fact finder must explain it why accepts
the prevailing argument).


Although the PTAB
made a factual finding, this finding did not have an
adequate basis in the record, and the PTAB did not adequately
explain its reasoning. Thus, we vacate and remand
for additional PTAB findings and explanation. See
Van Os, 844 F.3d at 1362.


Once again,
the Examiner stated only that it “agree[d] with” and
“incorporated by reference” Strava’s November 2013
Comments, J.A. 1654, but attorney argument is not
evidence, see, e.g., Gemtron, 572 F.3d at 1380.

Thursday, February 23, 2017

Burneko discusses plagiarism at SB Nation

Albert Burneko commented on a plagiarism issue at SB Nation, in which an "unpaid" provider to SB Nation copied text from somewhere else.

See if you can follow the logic, here, such as it is. This happened on one of the hundreds of websites on which SB Nation happily farms out the production of virtually all its editorial content to unpaid amateurs operating with little to no editorial oversight ... therefore it somehow is not “an indictment of the company [that of its own volition chose a business model whose bedrock is the monetizing of content produced mostly by unpaid amateurs].” This, my good buddies, is bad media criticism.

SB Nation, as an institution, mostly has been able to avoid the kind of criticism that competing blog farm Bleacher Report endured for years, while running a shop not meaningfully different in its reliance upon amateur writers cranking out volume blogs for little or no pay. The network sites, run by a site manager who receives a monthly “stipend” and populated by unpaid content-uploaders, are treated as fully consubstantial with the central site and parent company when it suits the latter’s purposes—the top current article on Mile High Report contains a sponsored StubHub widget and commerce links to the Denver Broncos’ team apparel shop—but can be essentially disavowed when something like this happens.

But this logic is precisely backward.

One commenter to Albert's post stated:

Albert is absolutely right: It was the direct consequence of an institutional culture and business model that prioritized cheap content at all costs.


Wednesday, February 22, 2017

CAFC tackles "covered business method" patents in SecureAxcess

In SecureAxcess v. PNC, Judge Plager begins the majority decision:

This is a patent case—the issue turns on what is a
covered business method patent. Appellant Secure Axcess,
LLC (“Secure Axcess”) challenges a Final Written
Decision of the Patent Trial and Appeal Board (“Board” or
“PTAB”). As part of that decision, the Board reaffirmed
its determination that the patent at issue, U.S. Patent
No. 7,631,191 (“’191 patent”), owned by Secure Axcess,
was a covered business method (“CBM”) patent under
§ 18 of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, 125 Stat. 284 (2011). The Board
further held that claims 1–32, all the claims in the patent,
were unpatentable under that statute on the grounds that
they would have been obvious under the cited prior art.

Of note as to covered business patents and PTAB, the CAFC noted:

On appeal, Secure Axcess challenges the Board’s determination
to decide the case as a covered business
method patent, as well as the Board’s obviousness determination.
We agree with Secure Axcess on the first point
and therefore do not reach the second. Recently, in Unwired
Planet, LLC v. Google Inc., 841 F.3d 1376, 1379–82
(Fed. Cir. 2016), we concluded that the Board-adopted
characterization of CBM scope in that case was contrary
to the statute. We draw the same conclusion here, and
further conclude that the patent at issue is outside the
definition of a CBM patent that Congress provided by

In dissent, Judge Lourie stated:

I respectfully dissent from the majority’s conclusion
that the claims of the ’191 patent are not directed to a
covered business method (“CBM”) and hence are not
subject to review under AIA § 18. See Leahy-Smith
America Invents Act (“AIA”), Pub. L. No. 112–29, § 18,
125 Stat. 284, 329–31 (2011).1

The statute defines a CBM patent as “a patent that
claims a method or corresponding apparatus for performing
data processing or other operations used in the practice,
administration, or management of a financial
product or service, except that the term does not include
patents for technological inventions.” Id. at § 18(d)(1).
The claims of the ’191 patent are surely claims to “a
method or corresponding apparatus for performing data
processing or other operations used in the practice, administration,
or management of a financial product or service.”
I do recognize that the Board’s overly broad language,
i.e., “incidental to a financial activity,” has now been
cabined by our recently issued decision in Unwired Planet,
LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016).
That curtailment should not cause this panel to topple
over an otherwise sound decision by the Board in this case
that the ’191 patent is directed to financial management.

The invention of the [Edison] lightbulb is mentioned:

Suffice it to say that the
relation of this invention to the financial world is one of
substantial identity compared with an incidentally-used
invention like a lightbulb or ditch-digging. Cf. Unwired
Planet, 841 F.3d at 1382.

[ Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2014-
00100 ]

Seminar on “Invention Analysis and Claiming” for Chicago, DC area, New York

Ron Slusky is presenting a two-day “Invention Analysis and Claiming” seminar at the dates and places indicated:

Chicago, March 13-14
Arlington, March 22-23
New York, April 3-4

Complete information is available at

The program is based on Slusky's book "Invention Analysis and Claiming: A Patent Lawyer’s Guide" published by the ABA . The sminar presents strategic approaches for analyzing inventions and claiming them based on the problem/solution paradigm and other time-honored patent practice principles. The program is not about claim drafting mechanics an so is appropriate for both newly admitted and experienced attorneys and agents.

Promega loses at U.S. Supreme Court

The disagreement between Life Technologies and Promega grew out of a licensing deal.
Bloomberg noted

Promega sold Life Technologies a license to make and sell genetic testing kits for specified law enforcement fields. Four years into the agreement, Promega sued, claiming Life Technologies was selling the kits to clinical and research markets outside the licensed fields.

The legal issue related to the meaning of a --substantial portion of the components of a patented invention --

Federal patent law says companies that don’t hold a license can be sued for supplying "from the United States all or a substantial portion of the components of a patented invention" that’s assembled and sold overseas.

The opinion by Justice Sotomayor indicated --a single component-- didn’t fulfill th definition of a "substantial portion."

Thursday, February 16, 2017

Toro loses at CAFC to MetalCraft (Scag)

In MetalCraft, Judge Moore wrote an opinion denying the appeal of Toro
concerning a preliminary injunction:

The United States District Court for the Eastern
District of Wisconsin granted Metalcraft of Mayville,
Inc.’s [Scag's] motion for a preliminary injunction precluding The
Toro Company and Exmark Manufacturing Co., Inc. from
making, using, selling, and offering to sell lawnmowers
equipped with platform suspension systems that infringe
U.S. Patent No. 8,186,475 (“the ’475 patent”). We affirm.

The technical area was that of riding lawnmowers:

Metalcraft of Mayville, Inc., d/b/a Scag Power Equipment
(“Scag”), manufactures commercial riding
lawnmowers. To improve its mowers, Scag developed a
suspended operator platform, which is disclosed and
claimed in the ’475 patent.

Toro's noninfringement defense was that the accused products lacked one
claim element:

Toro did not dispute that its accused mowers meet the asserted
patent claims, except with respect to one limitation.
J.A. 374. Toro argued its accused mowers do not infringe
because the accused devices do not meet the limitation
“an entire body of an operator.” Id. It argued its mowers
lack this limitation because the steering controls of the
accused mowers are mounted to the chassis, not the
operator platform, and therefore the operator’s hands and
arms are not supported by the platform.

The reason Toro lost appears in footnote 1:

Toro relies for its claim that the district court held
that an operator’s entire body does not include an operator’s
arms or hands on one sentence in the district court’s
opinion that states “[a]ll of the accused mowers have
steering controls connected to the chassis, not the suspended
operator platform, which means that the platform
does not support the rider’s arms and hands,” to understand
that the district court made such a finding. We
decline to interpret this single sentence, located in the
middle of the court’s discussion of the parties’ arguments,
as a fact-finding. J.A. 10. We agree with Scag that this
sentence is merely part of the court’s summary of the
positions taken by each party and refers to Toro’s position.

There was a separate argument about "where" the steering controls
are mounted:

Toro also argues that the “entire body of an operator”
limitation requires the steering controls be mounted on
the operator platform or else the operator’s hands will not
be isolated from shock loads. It argues that since its
accused mowers have steering controls connected to the
chassis, its mowers do not isolate the operator’s entire
body from shock loads and therefore do not meet the
“entire body of an operator” limitation. Toro improperly
equates supporting the entire body of an operator with
isolating every aspect of an operator’s body from shock

No doubt, the ’475 patent discusses the advantages of
isolating an operator’s body from shock loads. However,
the ’475 patent treats supporting the entire body of an
operator and isolating the operator from shock loads as
two distinct aspects of the claimed invention.

Toro's argument on invalidity failed for "lack of motivation to

The district court rejected Toro’s motivation to combine
argument. It recognized that “a patent ‘composed of
several elements is not proved obvious merely by demonstrating
that each of its elements was, independently,
known in the prior art’” and that “it can be important to
identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements
in the way the claimed new invention does.”
J.A. 13–14 (quoting KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–19 (2007)). It concluded that Toro failed to
raise a substantial question of validity, stating Toro
offered “no reason, and the Court cannot imagine one,
that a person of ordinary skill in this field would combine
a motorcycle shock with a suspended truck cab and come
up with a suspended operator platform.”


We hold that the district court’s finding that there
would not have been a motivation to combine is not clearly
erroneous. The district court correctly acknowledged
that it is not enough for Toro to merely demonstrate that
elements of the claimed invention were independently
known in the prior art. Often, every element of a claimed
invention can be found in the prior art. In re Kotzab, 217
identifies a problem that Henriksson sought to solve.
However, “knowledge of a problem and motivation to
solve it are entirely different from motivation to combine
particular references.” Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363, 1373 (Fed. Cir. 2008).
We agree with the district court that Toro provides no
explanation or reasoning for concluding that one of skill in
the art would have combined these particular references
to produce the claimed invention. Without any explanation
as to how or why the references would be combined to
arrive at the claimed invention, we are left with only
hindsight bias that KSR warns against. See KSR, 550
U.S. at 421. And while we understand that “[t]he obviousness
analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation,”
we also recognize that we cannot allow hindsight
bias to be the thread that stitches together prior art
patches into something that is the claimed invention.

The CAFC did not address the anticipation issue:

We decline to address the anticipation issue. A party
may establish a likelihood of success by showing that at
least one valid and enforceable patent claim is likely to be
infringed. Abbott Labs. v. Andrx Pharm., Inc., 473 F.3d
1196, 1201 (Fed. Cir. 2007). Because asserted claim 21
covers the accused products and because we conclude that
the district court did not abuse its discretion in determin-
ing that Metalcraft established a likelihood of success as
to infringement and validity with respect to claim 21, we
need not reach the anticipation arguments regarding
claims 11 and 14 to sustain the injunction as to claim 21
which reaches all of the accused products.

Wednesday, February 15, 2017

CAFC trims sails of "Red Wing" in Xilinx v. Papst

The CAFC observed:

We disagree with Papst that this case is controlled by
Red Wing and its holding that certain types of contacts,
by themselves, are not sufficient to establish the reasonableness
of jurisdiction. As we have discussed in the
minimum contacts analysis, Papst has done more than
just send letters to Xilinx. Representatives from Papst
traveled to California to meet with Xilinx in person to
discuss Papst’s infringement contentions and licensing
offer with respect to the patents-in-suit.5 The Supreme
Court noted in Burger King that “territorial presence
frequently will enhance a potential defendant’s affiliation
with a State and reinforce the reasonable foreseeability of
suit there.” 471 U.S. at 476.

Moreover, there are other facts that, under the Burger
King analysis, confirm the view that the burden on the
defendant is not undue. For instance, the burden on
Papst is mitigated by Papst’s status as a non-practicing
patent holder residing outside the United States.
This is
not a case like Red Wing, where the defendant conducts
its affairs in one state and is called to litigate in a distant
state rather than its own residence. See 148 F.3d at 1357.
By the very nature of its business, Papst must litigate its
patents in the United States in fora far from its home
business relationship” and that the policy favoring settlement
“squarely invokes one of the considerations
enumerated by the Supreme Court for the second prong of
a proper Due Process analysis, namely, ‘the interstate
judicial system’s interest in obtaining the most efficient
resolution of controversies.’” Id. (quoting World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)).

AND prior litigations are a factor:

The lack of significant burden on Papst is also evidenced
by Papst’s prior litigations in California itself.
Papst has repeatedly availed itself of the California
federal court system—at least seven times—by filing
patent infringement lawsuits there. In this respect, this
case is similar to Viam. In Viam, we held that requiring
an Italian patent owner and its Iowa exclusive agent to
litigate a declaratory judgment action in California was
not unduly burdensome where those entities had initiated
a suit enforcing the same patent in the same district in
California against other parties. 84 F.3d at 430. Our
reasoning that personal jurisdiction was fair rested in
relevant part on the fact that the suit demonstrated that
the patent owner “has found a way to shoulder successfully
the burden of litigating in California.” Id.
Our decision in Acorda Therapeutics Inc. v. Mylan
Pharmaceuticals Inc., 817 F.3d 755, 764 (Fed. Cir. 2016),
makes clear the relevance of a defendant’s litigations in
the forum. There we explained that the burden on an
accused infringer answering an infringement lawsuit “will
be at most modest, as [the accused infringer], a large
generic manufacturer, has litigated many . . . lawsuits in
[the forum], including some that it initiated.” Id.


Tuesday, February 14, 2017

CAFC affirms PTAB in MPHJ v. Ricoh


MPHJ Technology Investments, LLC appeals the decision
of the Patent Trial and Appeal Board (“Board” or
“PTAB”), on Inter Partes Review, that claims 1–8 of
MPHJ’s U.S. Patent No. 8,488,173 (“the ’173 Patent”) are
invalid on the grounds of anticipation or obviousness.1
On appellate review, we affirm the Board’s decision.

To determine the validity of a patented invention, the
meaning and scope of the claims are first determined. See
Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1353 (Fed. Cir. 1999) (“[T]he first step in any validity
analysis is to construe the claims of the invention to
determine the subject matter for which patent protection
is sought.”). As ratified by the Supreme Court in Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
when unexpired patents are reviewed by the Board, the
claims are given their broadest reasonable interpretation
consistent with the specification and the prosecution
history, from the viewpoint of persons skilled in the field
of the invention.

The impact of a DELETION from a corresponding provisional
is at issue:

We agree that a provisional application can contribute
to understanding the claims. See Trs. of Columbia Univ.
in New York v. Symantec Corp., 811 F.3d 1359, 1365 (Fed.
Cir. 2016) (looking to the provisional application for
guidance as to claim construction); Vederi, LLC v. Google,
Inc., 744 F.3d 1376, 1383 (Fed. Cir. 2014) (same). In this
case, it is the deletion from the ’798 Provisional application
that contributes understanding of the intended scope
of the final application.

We conclude that a person of skill in this field would
deem the removal of these limiting clauses to be significant.
The ’173 Patent in its final form contains no statement
or suggestion of an intent to limit the claims to the
deleted one-step operation. Neither the specification nor
the claims state that this limited scope is the only intended
scope. Instead, the ’173 Patent describes the singlestep
operation as “optional.”

Inherent anticipation arose:

The Board credited Petitioner’s
expert witness’ testimony that Harkins inherently discloses
employing email protocols to transmit email. Bd.
Op. 35–36. Substantial evidence supports the Board’s
finding that Harkins contemplates the same sequential
scanning and transmission as discussed for the XNS
system, and anticipates the ’173 Patent’s claims as construed
by the Board.

The CAFC finds PTAB's obviousness reasoning in "Personal Web" inadequate; vacates and remands

The CAFC vacated and remanded in the precedential case Personal Web v. Apple :

Apple Inc. petitioned for inter partes review of various
claims of PersonalWeb Technologies, LLC’s U.S. Patent
No. 7,802,310, asserting unpatentability for obviousness
based on two prior-art references. After instituting review,
the Patent Trial and Appeal Board reviewed the
claims and agreed with Apple. PersonalWeb appeals the
Board’s construction of certain claim terms and the ultimate
obviousness determination. We affirm the Board’s
claim construction. We vacate the Board’s obviousness
determination as to the appealed claims, because the
Board did not adequately support its findings that the
prior art disclosed all elements of the challenged claims
and that a relevant skilled artisan would have had a
motivation to combine the prior-art references to produce
the claimed ’310 inventions with a reasonable expectation
of success. We remand for further proceedings.

The CAFC criticized PTAB's discussion of obviousness:
" the Board has not done enough
to support its conclusion.

On the factual components of the inquiry, we “ask[] ‘whether a
reasonable fact finder could have arrived at the agency’s
decision,’” which “requires examination of the ‘record as a
whole, taking into account evidence that both justifies and
detracts from an agency’s decision.’” Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1366 (Fed. Cir. 2016) (quoting Gartside, 203 F.3d at

The CAFC set out what PTAB needed to have done:

Under the obviousness theory presented by Apple and
adopted by the Board, the Board had to make findings,
supported by evidence and explanation, on two points.
First, the Board had to find in Woodhill and Stefik all of
the elements of the ’310 patent claims at issue. But that
would not be enough. See In re Kotzab, 217 F.3d 1365,
1371 (Fed. Cir. 2000) (explaining that a finding of obviousness
“cannot be predicated on the mere identification
in [the prior art] of individual components of claimed
limitations”). Second, the Board had to find that a person
of ordinary skill in the art would have been motivated to
combine the prior art in the way claimed by the ’310
patent claims at issue and had a reasonable expectation of
success in doing so. See In re NuVasive, Inc., 842 F.3d
1376, 1381–82 (Fed. Cir. 2016); In re Warsaw Orthopedic,
Inc., 832 F.3d 1327, 1333–34 (Fed. Cir. 2016); Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364–
67 (Fed. Cir. 2015).

And the CAFC pointed to a need for a record:

Our review of the Board is rooted not just in the law
of obviousness but in basic principles of administrative
law. We review the Board’s IPR decisions to ensure that
they are not “arbitrary, capricious, an abuse of discretion,
. . . otherwise not in accordance with law . . . [or]
unsupported by substantial evidence.” 5 U.S.C.
§ 706(2)(A), (E); see Pride Mobility Prods. Corp. v. Permobil,
Inc., 818 F.3d 1307, 1313 (Fed. Cir. 2016). Critically,
in order to “allow effective judicial review, . . . the agency
is obligated to ‘provide an administrative record showing
the evidence on which the findings are based, accompanied
by the agency’s reasoning in reaching its conclusions.’”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
1309, 1322 (Fed. Cir. 2016) (quoting Lee, 277 F.3d at
1342); see Lee, 277 F.3d at 1342 (“For judicial review to be
meaningfully achieved within these strictures, the agency
tribunal must present a full and reasoned explanation of
its decision. The agency tribunal must set forth its findings
and the grounds thereof, as supported by the agency
record, and explain its application of the law to the found
facts.”). The Board, as an administrative agency, “must
articulate ‘logical and rational’ reasons for [its] decision[].”
Synopsys, 814 F.3d at 1322; see Power Integrations, Inc. v.
Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015).

Yes, the CAFC cited SEC v. Chenery Corp., 318 U.S. 80 (1943).

The PTAB decision was inadequate:

The Board’s decision here is inadequate. The Board
did not sufficiently explain and support the conclusions
that (1) Woodhill and Stefik disclose all of the elements
recited in the challenged claims of the ’310 patent and (2)
a relevant skilled artisan would have been motivated to
combine Woodhill and Stefik in the way the ’310 patent
claims and reasonably expected success.

Of the motivation point:

The Board’s reasoning is also deficient in its finding
that a relevant skilled artisan would have had a motivation
to combine Woodhill and Stefik in the way claimed in
the ’310 patent claims at issue and would have had a
reasonable expectation of success in doing so. The Board’s
most substantial discussion of this issue merely agrees
with Apple’s contention that “a person of ordinary skill in
the art reading Woodhill and Stefik would have understood
that the combination of Woodhill and Stefik would
have allowed for the selective access features of Stefik to
be used with Woodhill’s content-dependent identifiers
feature.” Id. at *8 (emphasis added). But that reasoning
seems to say no more than that a skilled artisan, once
presented with the two references, would have understood
that they could be combined. And that is not enough: it
does not imply a motivation to pick out those two references
and combine them to arrive at the claimed invention.
See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
skilled artisan not only could have made but would have
been motivated to make the combinations or modifications
of prior art to arrive at the claimed invention.”);

The wording of the CAFC conclusion is of interest:

We conclude that the Board’s reasoning does not meet
the requirements for a sustainable obviousness determination
in this case. We do not address whether the
Board’s ultimate obviousness determination would be
permissible, or should be made, on this record. We leave
such issues for the Board to consider on remand. The
remand is not for explanation or clarification of what the
Board meant in the decision we have under review now,
or what it considered in reaching that decision.
remand is for the Board to reconsider the merits of the
obviousness challenge, within proper procedural constraints.
See id. at 1366–67.

Take note of footnote 1:

We recently held the broadest-reasonableinterpretation
standard inapplicable, outside the IPR
setting, where the patent at issue had expired in a reexamination
before the Board reviewed the examiner’s
decision. In re CSB–Sys. Int’l, Inc., 832 F.3d 1335, 1340–
41 (Fed. Cir. 2016). In the IPR setting, the PTO regulations
applicable to the present case stated simply that the
broadest-reasonable-interpretation standard applied to
“[a] claim in an unexpired patent.” 37 C.F.R. § 42.100(b)
(2015). A recent revision, not applicable to the present
case, now states that the broadest-reasonableinterpretation
standard applies to “[a] claim in an unexpired
patent that will not expire before a final written
decision is issued,” but allows an IPR party to “request a
district court-type claim construction approach to be
applied” if the patent will expire within 18 months of the
IPR petition’s filing (as further specified in the rule).
37 C.F.R. § 42.100(b) (2016). The 18-month rule, had it
been in effect, would not have applied here: the time from
the relevant filing date (September 27, 2013) to expiration
(April 11, 2015) was just over 18 months.

National Review piece on Crowley incident confuses plagiarism and copyright infringement

Within a discussion in the National Review of the Monica Crowley "plagiarism" incident in the post The Anti-Trump Media’s Attack on Monica Crowley, one finds text about Ph.D. theses:

Dissertations exist to synthesize.

In context of the Crowley matter, this is to suggest that "historical" research necessarily draws on that which is already recorded.

To synthesize is to combine (a number of things) into a coherent whole. In the realm of patent law, a combination claim is the synthesis of claim elements, each of which individually is known in the art, into
an invention which is novel and non-obvious. A point of discussion in the analysis of patentability of combination claims is whether or not they are obvious [see KSR]. An entirely different patent claim is one that comprises elements, not all of which are known in the art. One would hope there are some theses which are more than syntheses of prior art elements.

Some text about KSR appears in the 14 Feb 2017 decision in Personal Web:

The Supreme Court in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007), explained that, “because inventions
in most, if not all, instances rely upon building blocks long
since uncovered, and claimed discoveries almost of necessity
will be combinations of what, in some sense, is already
known,” “it can be important to identify a reason
that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.” Id. at 418–19.

one wonders how many fewer Ph.D.'s would be granted if the "obviousness" approach of patent law were applied. If the grad student of ordinary abilities would have been motivated to combine the same elements to reach the same conclusion,
"no Ph.D."

Moving on to the plagiarism issue, the gist of the article in the National Review is that the plagiarism charges against Crowley were a political hit job. Let's stipulate that. So were the charges against Glenn Poshard as to his Ph.D. thesis at SIU and against Joe Biden over his copying of speeches of Neil Kinnock. [But Biden's copying in law school was not a political hit job.] Apart from motivation for bringing such charges, the question as to plagiarism is whether or not there was copying of a source without attribution, such that the intended recipient would not be aware of the source. For example, Abraham Lincoln's use of "house divided" language is not plagiarism of the Bible if the audience knows of the text from the Bible. But if Biden's audience did not know about Kinnock, there would be a problem.

As has been pointed out on IPBiz previously, plagiarism and copyright infringement are not co-extensive. One can infringe a copyright without plagiarizing (copying with attribution but without permission of the copyright owner) and one can plagiarize without infringing a copyright (taking credit for text in a public domain work; see Dastar).

Thus, it was sad to see the discussion in the National Review analyzing plagiarism in terms of copyright concepts:

The match often seemed computer-generated from shared proper names and generic phrases, or news and anecdotes repeated by aggregators and editorialists. This type of material is generally considered fair use and/or public domain. As a result, this CNN list was misleadingly long, possibly a calculated attempt to condemn her with manufactured, but false, bulk.

For details of how an attributed quotation can constitute copyright infringement outside of "fair use", see New Era v. Carol (SDNY 1990).

Monday, February 13, 2017

Plagiarism issues at the National Science Foundation

In a post titled Taxpayer-Funded Scientists Caught Plagiarizing Were Allowed To Keep Researching , Daily Caller reports on 23 incidents of plagiarism by scientists seeking funding from the National Science Foundation [NSF].

Of note:

Researchers submit some dubious justifications for their plagiarism. The principal researcher on one project was caught using someone else’s material without attribution, and argued that “the use of quotation marks around directly copied text in his proposals was not required by the standards of his research community,”

The Daily Caller cites to an earlier post:

Innovation differs from invention: the case of Airbnb

In a post titled Airbnb didn't create a brand new concept. So, what made it different?, Leigh Gallagher writes:

[Airbnb's] experience shows that you don’t always have to bring to market a completely new invention in order to be significantly disruptive

The text, however obliquely, illustrates that innovation [changing the way we live] and invention
[implementing a new concept] are two different things.

Apple didn't invent the mouse, but it used the mouse to change the way "home" computers were used.

Separately, the post mentioned -- The End of Employment --

One recalls Job Shift by William Bridges. Of it, Industry Week wrote in 1994:

William Bridges, management consultant and author of Job Shift, due to be released by Addison Wesley Publishing in October [1994], contends that the jobs lost in the last recession will never return, because the U.S. is on its way to becoming a jobless society. "What's really disappearing isn't a certain number of jobs, or jobs in certain industries, or even U.S. jobs," he says. "What is disappearing is the job itself."
Instead of hiring workers to fill full-time, permanent job slots, employers are finding it's more cost-effective to expand and contract the workforce on an as-needed basis by hiring part-timers, independent contractors, and temporary employees. These workers are brought in for specific work assignments, not prepackaged jobs.

Are people who lose jobs history?
. This topic is not unrelated to the underlying motivation for some amici briefs in Washington v. Trump (2017 U.S. App. LEXIS 2369).

The Gallagher post plugs a book: Leigh Gallagher is author of the new book The Airbnb Story: How Three Ordinary Guys Disrupted an Industry, Made Billions . . . and Created Plenty of Controversy.

Separately, one can "innovate" using the patented inventions of others.
In February 2017, IPCloseUp reported:

In a well-researched post, PatentVue reports that approximately 245 of Snap’s 328 issued patents have been purchased from IBM.
Excluding the patent applications, this means roughly $36-40k per patent.

Twitter acquired 945 patents from IBM in 2014 for a reported $36 million, in an effort to settle patent infringement claims brought against it by the technology giant. This comes out to approximately $38k per patent, again, excluding patent applications.


Sunday, February 12, 2017

Yale University "expels" John C. Calhoun name

The re-naming of a residence hall at Yale University from Calhoun to Hopper was big news on 11 Feb. 2017, just one day before
Lincoln's birthday. The Washington Post, among others, discussed the matter:

Yale University will rename one of its residential colleges, replacing the name of an alumnus remembered as an advocate of slavery [Calhoun] with that of an alumna who was a pioneering mathematician and computer scientist who helped transform the way people use technology [Hopper, who obtained MS and PhD degrees from Yale].

The legacy of Calhoun, who graduated from Yale in 1804 and 1822 and served as a U.S. vice president, secretary of state, secretary of war and senator, becoming an influential champion of slavery, had been debated at the school over the years. But those discussions turned to urgent pleas in 2015 after a white man who revered the Confederacy fatally shot nine black worshipers at a church in Charleston, S.C. That led South Carolina lawmakers to take down the Confederate flag that had long flown at the state Capitol, and efforts at Yale and elsewhere to stop honoring the name of Calhoun and other people associated with slavery and white supremacy.

[link: ]

Yes, Calhoun, a Southern firebrand, graduated from Yale University (in fact, class valedictorian) and separately went to Litchfield law in Connecticut. Calhoun was vice-president TWICE under two different presidents (JQ Adams AND Jackson). His appointment as secretary of state is connected to the very unusual incident involving the USS Princeton, which has some curious New Jersey connections. Also curious is the origin of Calhoun's ideas on nullification, from the New Englanders he met at Yale, who were unhappy with life under Thomas Jefferson.

As to some invention connections, Eli Whitney, who also went to Yale, wanted to be a lawyer, but didn't have the funds, so he got an appointment in South Carolina, and on the way got the inspiration for the invention of the cotton gin. The USS Princeton was the Navy's first screw-propelled steam sloop and was designed by one John Ericsson (later the inventor of the Monitor). Ericsson also designed a novel 12 inch gun, initially called the Orator, and later the Oregon. Robert Stockton (of New Jersey fame) provided the political clout for the project but also started claiming inventorship credit. A second gun designed by Stockton {the Peacemaker), but lacking the improvements of Ericsson, exploded on February 28, 1844, killing, among others, then Secretary of State Abel Upshur, which opened that position for Calhoun. Armistead, the slave and valet of President Tyler, was also killed, and "but for" going down ship, President Tyler likely would have been killed. Stockton shifted blame for the disaster to Ericsson, who developed a distrust of the US Navy, which may have delayed adoption of Ericsson's later inventions.

** Some text about the "cotton gin":

from Joseph H. Sommer, 15 Berkeley Tech. L.J. 1145 (2000) on the relationship between the cotton gin and slavery:

In 1793, while the "peculiar institution" of slavery was quietly dying of its own economic inefficiency, Eli Whitney invented the cotton gin. Cotton became King, and slavery became profitable again. n14 Law, commerce, [p. 1152] and society rapidly adapted to the new profitability of slavery. This new technology profoundly influenced antebellum commercial law, n15 human rights law, n16 family law, n17 and potentially the law of electronic commerce. n18 In the years 1865-67, the law of the cotton gin reached as far as the U.S. Constitution, with the adoption of the Thirteenth through Fifteenth Amendments. In the latter decades of the nineteenth century, the older law of the cotton gin began to re-emerge, with the advent of Jim Crow. n19 This retrograde trend, in turn, was checked in the early twentieth century n20 and has subsequently retreated.

Accord, Stephen M. Feldman, 81 Brooklyn L. Rev. 1 (2015) :

Yet the Framers did not anticipate how important slavery would soon become. In 1793, Eli Whitney invented the cotton gin and transformed the cotton industry. n120 In short order, cotton became an incredibly profitable crop that was highly reliant on slave labor. n121

from Michael Risch. AMERICA'S FIRST PATENTS, 64 Fla. L. Rev. 1279 (2012) :

In addition to determining whether the patent covered an improvement or not, courts also considered the principles of inventions to determine what the invention was in the first place. For example, in Whitney v. Carter, a case involving the cotton gin, the court attempted to determine whether prior machines invalidated Eli Whitney's patent due to lack of novelty. n158 To make this determination, the trial court had to first decide what the invention was, and the court
agreed with the plaintiff's counsel that the legal title to a patent consists, not in a principle merely, but in an application of a principle, whether previously in existence or not, to some new and useful purpose. And [the judge] was also of opinion that the principle of Mr. Whitney's machine was entirely new . . . . n159

While the court noted that principles were not patentable, the statement was merely an aside to the important question in the case: how the patentee applied the principles and whether the prior art applied the same principles.

from Steven Cherensky, 81 Calif. L. Rev. 595 (1993) , on how Whitney's invention was what the framers had in mind when discussing patents:

Eli Whitney's invention of the cotton gin in many ways typifies late- eighteenth-century invention. n49 Whitney did not study to be an inventor; indeed, such an education would have been unavailable had he desired it. n50 While a guest at a South Carolina plantation, he heard neighboring planters discuss the difficulty of cleaning the local upland cotton of its seeds and the importance to the region of an improved cleaning machine. Whitney was persuaded to try his hand at a solution:

Whitney had never seen a cotton boll and had scarcely listened to the talk around him. But when his hostess proposed, albeit without undue urging, that he try to devise a machine, he pursued her suggestion ...

... A few days later he "involuntarily happened to be thinking on the subject and struck out a plan of a machine ...." n51

That machine, of course, was the cotton gin. Whitney built his first model from wood, wire, and other materials that were readily available on the plantation. n52

Invention has changed dramatically in the 200 years since Whitney "struck out a plan" of his machine. Whitney's development of the cotton [*608] gin is the inventorship paradigm envisioned by the drafters of the first Patent Act: the ad hoc problem-solving of the individual, generalist "hero-inventor." Organized invention was virtually unheard of at this time. n53 Although the work of independent inventors remains important, n54 most economically significant inventions today arise out of organizational environments. n55 Thus, this Comment proceeds from the assumption that the most important changes in inventorship paradigms over the last two centuries have been due to the appearance and growth of industrial laboratories and the professionalization of invention.

from Benjamin N. Roin, 81 U. Chi. L. Rev. 999 (2014) on how Whitney monetized his invention:

In 1802, South Carolina purchased Eli Whitney's patent rights on the cotton gin within the state for $ 50,000, although Whitney experienced some trouble collecting the prize. See id at 1145.

BUT see also, Elizabeth M. Thoman, 83 U. Cin. L. Rev. 989 (2015) :

Thomas Jefferson issued Eli Whitney a patent for the cotton gin [p. 993] on March 14, 1794. n17 Shortly after receiving his patent, Eli Whitney went on to be christened the first patent troll. n18 While Whitney revolutionized plantation life through his invention, his commercial success was stunted due to the simplicity of product replication and the costs associated with manufacturing. n19 Whitney spent nearly ten years in court litigating against other manufacturers of similar mechanisms, claiming that they had infringed on his rightfully possessed patent. n20

AND from Ryan Hauer, 24 DePaul J. Art Tech. & Intell. Prop. L. 367 (2014) :

In fact, some believe that the one of the first "patent trolls" was Eli Whitney, the inventor of the cotton gin. n8 Whitney's first attempts of manufacturing and selling the cotton gin proved to be commercially unsuccessful, forcing Whitney to sue plantation owners that used Whitney's patented gin in order profit from his invention. n9

AND from DAVID G. BARKER, 2005 Duke L. & Tech. Rev. 9 (2005) :

The desirability of such patent purchases is demonstrated by the conditions surrounding Eli Whitney's cotton gin. Whitney received a patent for the cotton gin in 1794. n32 Prior to Whitney's invention, one farm worker could produce one pound of cotton lint per day by hand. However, with the advent of the cotton gin, one worker was able to produce nearly fifty times that amount. n33 Before Whitney invented the gin, the South was exporting 487,000 pounds of cotton to England per year. One year after the cotton gin, that number increased to 1.6 million pounds. n34 By the time Whitney died in 1825, cotton exports to England alone reached 171 million pounds. n35 In 1850, Thomas Macaulay noted, "What Peter the Great did to make Russia dominant, Eli Whitney's invention of the gin has more than equaled in its relation to the power and progress of the United States." n36 The cotton gin was a useful, novel and nonobvious invention, meeting the criteria for patentability.

from ALAN L. DURHAM, 53 B.C. L. Rev. 489 (2012) , related to Lemley's "Myth of the Sole Inventor":

Even breakthrough inventions like Eli Whitney's cotton gin were modifications [p. 506] of existing technology. n158

from Catherine L. Fisk, 65 U. Chi. L. Rev. 1127 (1998) :

The notion that a single person was the inventor of an idea, and that he owned not only the particular thing he built (for example, the cotton gins that Eli Whitney himself made), but also the idea embodied in that thing (and thus had an exclusive right [*1142] to make any similar thing), was a conception of property in ideas, an attribution of causation, and an individuation of what is necessarily a social process. That notion of individual inventorship and of property in ideas developed over the course of several centuries. By the nineteenth century, however, it was so widely accepted as to seem a matter of natural right. n42 The legal and philosophical roots of the individual inventor's right to exclusive dominion over his ideas were deep and strong by the time courts began to combine the law of patents with the law of master and servant in the late nineteenth century.

---And as footnotes to this post

** from Mark L. Wolf, 1 B.U. J. SCI. & TECH. L. 1 (1995) :

It is, therefore, not surprising that only three patents were granted that first year, 1790. n11 Eventually, there were more patents issued during Jefferson's tenure as Secretary of State. These included Eli Whitney's cotton gin, which had such profound and dark consequences for our national history. [11]

Still seated at my desk, if I look over my right shoulder, I see a statue of Abraham Lincoln and a print that was published as a memorial after his death. Lincoln had only one reported case outside of Illinois. His fame as a lawyer was very much local, but he was known as a very effective Illinois lawyer. The one case that took him outside of Illinois was a patent case. [12]

When the patent for Cyrus McCormick's reaper was challenged in Illinois, Lincoln was hired to argue the case as local counsel. n12 Lincoln was associated in that litigation with two other lawyers, Edwin Stanton, who was nationally renowned as a general litigator, and a gentlemen named Harding, who was a leading patent lawyer of his era. n13 The case, however, was transferred to Cincinnati where it was assigned to Supreme Court Justice John McLean, who was then riding the circuit, trying cases. n14 [13]

Lincoln took this assignment very seriously. He prepared thoroughly. He arrived in Cincinnati, expecting to be a partner in the trial team. His distinguished colleagues, however, would have nothing to do with him. Stanton said, in Lincoln's presence, that he would not be professionally associated with "that Gorilla." n15 When it came time to go to the courthouse, Lincoln suggested that the three lawyers walk over together. Stanton and Harding, however, refused to be seen with him. n16 It was also the custom during that era for the lawyers who were presenting the case to dine with the judge. Nevertheless, Stanton and Harding would not let Lincoln join them and Justice McLean. n17 [14]

That experience did not turn Abraham Lincoln off on patent law. Rather, in 1859, shortly before he was elected President, Lincoln gave a talk on "Discoveries and Inventions." n18

**History of Slavery in New Jersey

Friday, February 10, 2017

The issue of standing, as discussed by CA9 in Washington v. Trump

The issue in Washington v. Trump (2017 U.S. App. LEXIS 2369) was the federal government's motion for an emergency stay of the district court's temporary restraining order [TRO] while its appeal of that order proceeds.

The Ninth Circuit Court of Appeals, in a per curiam opinion, noted that it "must consider several factors, including whether the Government has shown that it is likely to succeed on the merits of its appeal, the degree of hardship caused by a stay or its denial, and the public interest in granting or denying a stay. We assess those factors in light of the limited evidence put forward by both parties at this very preliminary stage and are mindful that our analysis of the hardships and public interest in this case involves particularly sensitive and weighty concerns on both sides. Nevertheless, we hold that the Government has not shown a likelihood of success on the merits of its appeal, nor has it shown that failure to enter a stay would cause irreparable injury, and we therefore deny its emergency motion for a stay."

Whether the states had standing to bring this case was addressed in the following:

The [federal] Government argues that the district court lacked subject matter jurisdiction because the States have no standing to sue. We have an independent obligation to ascertain our jurisdiction, Arbaugh v. Y & H Corp., 546 U.S. 500, 514 (2006), and we consider the Government's argument de novo, see, e.g., Hajro v. U.S. Citizenship & Immigration Servs., 811 F.3d 1086, 1098 (9th Cir. 2016). We conclude that the States have made a sufficient showing to support standing, at least at this preliminary stage of the proceedings.
The States argue that the Executive Order causes a concrete and particularized injury to their public universities, which the parties do not dispute are branches of the States under state law. See, e.g., Hontz v. State, 714 P.2d 1176, 1180 (Wash. 1986) (en banc); Univ. of Minn. v. Raygor, 620 N.W.2d 680, 683 (Minn. 2001).

Specifically, the States allege that the teaching and research missions of their universities are harmed by the Executive Order's effect on their faculty and students who are nationals of the seven affected countries. These students and faculty cannot travel for research, academic collaboration, or for personal reasons, and their families abroad cannot visit. Some have been stranded outside the country, unable to return to the universities at all. The schools cannot consider attractive student candidates and cannot hire faculty from the seven affected countries, which they have done in the past.

According to declarations filed by the States, for example, two visiting scholars who had planned to spend time at Washington State University were not permitted to enter the United States; one was informed he would be unable to obtain a visa.


Under the "third party standing" doctrine, these injuries to the state universities give the States standing to assert the rights of the students, scholars, and faculty affected by the Executive Order. See Singleton v. Wulff, 428 U.S. 106, 114-16 (1976) (explaining that third-party standing is allowed when the third party's interests are "inextricably bound up with the activity the litigant wishes to pursue"; when the litigant is "fully, or very nearly, as effective a proponent of the right" as the third party; or when the third party is less able to assert her own rights). Vendors, for example, "have been uniformly permitted to resist efforts at restricting their operations by acting as advocates of the rights of third parties who seek access to their market or function." Craig v. Boren, 429 U.S. 190, 195 (1976). Likewise, doctors have been permitted to assert the rights of their patients. See, e.g., Griswold v. Connecticut, 381 U.S. 479 (1965). And advocacy organizations such as the NAACP have been permitted to assert the constitutional rights of their members. See, e.g., NAACP v. Alabama, 357 U.S. 449 (1958).


We therefore conclude that the States have alleged harms to their proprietary interests traceable to the Executive Order. The necessary connection can be drawn in at most two logical steps: (1) the Executive Order prevents nationals of seven countries from entering Washington and Minnesota; (2) as a result, some of these people will not enter state universities, some will not join those universities as faculty, some will be prevented from performing research, and some will not be permitted to return if they leave. And we have no difficulty concluding that the States' injuries would be redressed if they could obtain the relief they ask for: a declaration that the Executive Order violates the Constitution and an injunction barring its enforcement. The Government does not argue otherwise.

We therefore hold that the States have standing

[Note footnote 5: The States have asserted other proprietary interests and also presented an alternative standing theory based on their ability to advance the interests of their citizens as parens patriae. Because we conclude that the States' proprietary interests as operators of their public universities are sufficient to support standing, we need not reach those arguments. ]

On 9 February 2017, the CAFC touched on the issue of standing in PPG v. Valspar, 2017 U.S. App. LEXIS 2310. The "Consumer Watchdog" case was mentioned:

The evidence presented by PPG demonstrates that it possessed more than a "general grievance concerning" these patents, sufficient to show "a particularized, concrete interest in the patentability" of the subject matter, as discussed in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258, 1263 (Fed. Cir. 2014).
PPG's standing thus differs from the scenario we faced in Consumer Watchdog. Unlike Consumer Watchdog, PPG is and was "engaged in . . . activity involving [the patented subject matter] that could form the basis for an infringement claim," and has "other connection[s] to the [patents] or the claimed subject matter," Consumer Watchdog, 753 F.3d at 1261, sufficient to "have a particularized, concrete stake in the outcome of the reexamination," id. at 1262. This stake is enhanced by the "estoppel provisions contained within the inter partes reexamina-tion statute." Id. This is sufficient to establish PPG's standing to appeal the Board's decision.

PPG also stresses the statutory appeal paths for judicial review of PTAB decisions. It is unlikely that the legislative intent was, by silence, to limit appeals from PTAB decisions to parties then in litigation in the district court. In any event, as we recognized in Consumer Watchdog, although the immediacy and redressability requirements for Article III standing can be relaxed when Congress accords a procedural right to a litigant-e.g., the right to appeal an administrative decision-the "requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute." Id. at 1261

Of the matter of "third party standing," the Third Circuit in PENNSYLVANIA PSYCHIATRIC SOCIETY, 280 F.3d 278 has addressed the issue.

While successful third-party standing claims have involved alleged violations of third parties' constitutional rights, Singleton and its progeny have not stipulated that constitutional claims are a prerequisite. It is true that the rule against third-party standing normally bars litigants from asserting the rights or legal interests of others in order to obtain relief from injury to themselves. Furthermore, the United States Supreme Court has noted that courts must consider the relationship of the litigant to the person whose rights are being asserted, the ability of the person to advance his own rights, and the impact of the litigation on third-party interests. But the Court has not held that a constitutional claim must also be alleged. Simply raising a third party's constitutional claims will not in and of itself satisfy the requirements for third-party standing. For instance, a litigant may not assert a third party's Fourth Amendment rights against unreasonable search and seizure to prevent the admission of damaging evidence.

The Third Circuit in Amato 952 F.2d 742 observed

The longstanding basic rule of third party standing is that "in the ordinary course, a litigant must assert his or her own legal rights and interests, and cannot rest a claim to relief on the legal rights or interests of third parties." Powers v Ohio, 113 L. Ed. 2d 411, 111 S Ct 1364, 1370 (1991). The rule serves at least two judicial purposes. First, the rule fosters judicial restraint: courts faced with unsettled questions avoid pronouncements that are perhaps unnecessary and undesirable because the rightholders do not wish to assert their rights. See Secretary of State of Maryland v Munson, 467 U.S. 947, 955, 104 S Ct 2839, 81 L. Ed. 2d 786 (1984); Singleton v Wulff, 428 U.S. 106, 113-14, 96 S Ct 2868, 49 L. Ed. 2d 826 (1976) (plurality opinion). Second, the rule assures concrete, sharp presentation of the issues and enables courts to avoid ruling on abstract grievances. Generally, the third party will be the best advocate of its own position, and the plaintiff may place a slightly different, self-interested "spin" on its presentation. See Munson, 467 U.S. at 955; Singleton, 428 U.S. at 114.

The general rule against third party standing is not ironclad, however. The rule does not reflect an Article III "Case or Controversy" requirement, but stems from prudential concerns. See, for example, Caplin & Drysdale, Chartered v United States, 491 U.S. 617, 623 n. 3, 109 S Ct 2646, 105 L. Ed. 2d 528 (1989); Hodel v Irving, 481 U.S. 704, 711; 107 S. Ct. 2076 , 95 L. Ed. 2d 668 (1987); Craig v Boren, 429 U.S. 190, 193, 97 S Ct 451, 50 L. Ed. 2d 397 (1976). Accordingly, in limited circumstances where the policies supporting the general rule are not served, the Supreme Court has approved third party standing. See Singleton, 428 U.S. at 114-15. Where rightholders are unable to raise their own rights and their relationship with the plaintiff suggests an identity of interests, courts can be more certain that the litigation is necessary and that the issues will be framed clearly and effectively. See id at 114-16. Moreover, other policy considerations, notably the fear of chilling expression in First Amendment cases, may at times outweigh the policies behind the general rule against [page 749] third party standing. See, for example, Munson, 467 U.S. at 956-60.

The Supreme Court has thus recognized the dangers inherent in third party standing, yet has also recognized that third party standing may at times be appropriate. While the Justices have frequently disagreed on the proper outcomes in third party standing cases, the Court's opinions do give federal courts rather clear guidance on what factors are relevant in determining whether to make an exception to the general rule. Where a plaintiff asserting third party standing has suffered concrete, redressable injury (that is, the plaintiff has Article III standing), federal courts are to examine at least three additional factual elements before allowing the suit to proceed. Caplin & Drysdale, 491 U.S. at 623 n. 3. First, the court must examine the relationship between the plaintiff and the third party whose rights are asserted; second, the court must consider the ability of the third party to advance its own rights -- whether some obstacle impedes the rightholder's own suit; and third, the court must inquire into the impact on third party interests -- whether the plaintiff and the third party have consistent interests. Id.

Separately, from 20 F.3d 1118:

A second factor recognized by the Supreme Court as a justification for third-party standing is the existence of a substantial relationship between the litigant and the third party. As the Supreme Court recognized in Singleton, in certain circumstances "the relationship between the litigant and the third party may be such that the former is fully, or very nearly, as effective a proponent of the right as the latter." 428 U.S. at 115, 96 S. Ct. at 2874. In the past, the Supreme Court has recognized various relationships that may give rise to third-party standing. See, e.g., Griswold v. Connecticut, 381 U.S. 479, 481, 85 S. Ct. 1678, 1679, 14 L. Ed. 2d 510 (1965) (doctor-patient); United States Dep't of Labor v. Triplett, 494 U.S. 715, 721, 110 S. Ct. 1428, 1432, 108 L. Ed. 2d 701 (1990) (attorney-client); Craig v. Boren, 429 U.S. 190, 192-93, 97 S. Ct. 451, 454, 50 L. Ed. 2d 397 (1976) (vendor-vendee). Where this "congruence of interests" exists, it may be "necessary and appropriate" for the litigant to raise the rights of the third party. Powers, 499 U.S. at 414, 111 S. Ct. at 1372.

Wednesday, February 08, 2017

Does the patent system view innovation as individual endeavor?

Within the law review article titled THE EMERGENCE OF THE INNOVATIVE ENTITY: IS THE PATENT SYSTEM LEFT BEHIND? [16 J. Marshall Rev. Intell. Prop. L. 65 (2016) ] , one has text

Despite the changes the patent system has undergone over the years, one main attribute remains constant: the patent system views innovation as an individual endeavor. The innovator is the intellectual genius: "an individual who creates new ideas though his intellectual capacities." n15 American culture loves its individual innovators: Thomas Edison, Alexander Graham Bell, Henry Ford, David Packard, Steve Jobs, and Bill Gates were all given a place in the hall of fame of individual inventors. n16 The problem is however that innovation production theories do not share this view.

with footnote 16 stating:

Michael J. Meurer, Inventors, Entrepreneurs and Intellectual Property Law, 45 HOUS. L. REV. 1201, 1202-03 (2008); See, e.g., Christopher A. Cotropia, The Individual Inventor Motif in the Age of the Patent Troll, 12 YALE J.L. & TECH. 52, 54 (2009); Edward G. Greive, The Doctrine of Inventorship: Its Ramifications in Patent Law, 17 W. RES. L. REV. 1342, 1342 (1966) ("The traditional inventors were usually individuals like Thomas Edison, who alone had 1039 patents issued to him."). But c.f., Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709, 745 (2012) (claiming that the canonical story of the lone genius inventor is largely a myth, since almost all the great inventions, which were invented by individuals, were in fact invented simultaneously or nearly simultaneously by two or more people working independently of each other); and John Lienhard, Reflections on Information, Biology, and Community, 32 HOUS. L. REV. 303, 309 (1995) ("We all recite the myth of the lonely intellectual. Yet, creativity, with all its need for retreat and isolation, is not a lonely act after all. If great inventors like Edison or Bell had one overriding form of genius, it was a genius for forming communities of open and inventive collaborators around themselves. These scholars, too, treasured community.").

One might question the use of "individual," given that the patent system allows "joint" inventors. One might also question the use of "innovation" by the author. The patent system is about invention, with the issuance of patents facilitating innovation in some cases.

Separately, from 69 SMU L. Rev. 37 (2016) ,

The final argument pertains to the considerable recognition individual inventors have achieved, especially before the Second World War. As children have been taught in elementary schools--whether entirely correct or not n47--Samuel Morse invented the telegraph, Alexander Graham Bell the telephone, Thomas Edison the gramophone and the light bulb, Guglielmo Marconi the radio, and the Wright Brothers the airplane. n48 The more we focus on individual inventors and the human dimension of their inventions, the more we are ready to recognize their human rights.

with footnote 47

As Mark Lemley declared:

The canonical story of the lone genius inventor is largely a myth. Edison didn't invent the lightbulb; he found a bamboo fiber that worked better as a filament in the lightbulb developed by Sawyer and Man, who in turn built on lighting work done by others. Bell filed for his telephone patent on the very same day as an independent inventor, Elisha Gray; the case ultimately went to the U.S. Supreme Court, which filled an entire volume of the United States Reports resolving the question of whether Bell could have a patent despite the fact that he hadn't actually gotten the invention to work at the time he filed. The Wright Brothers were the first to fly at Kitty Hawk as a result of an improvement they made to a basic wing structure designed by others, but their plane didn't work very well. It was quickly surpassed by aircraft built by Glenn Curtiss and others--planes that the Wrights delayed by over a decade with patent lawsuits. And on and on.

Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709, 710-11 (2012) [hereinafter Lemley, Myth of the Sole Inventor]; see also Susan Scafidi, Digital Property / Analog History, 38 LOY. L.A. L. REV. 245, 251-58 (2004) (discussing whether Guglielmo Marconi should be heralded as the "Father of Radio").

Judge Michelle Friedland of the CA9 panel on Trump immigration matter

Appointed by President Obama, Judge Friedland (now sitting on the appeal of Trump's immigration matter at the 9th Circuit Court of Appeals, has New Jersey and Stanford ties. From wikipedia:

She graduated from The Pingry School in Basking Ridge, NJ. She received a Bachelor of Science degree in ecology and population biology in 1995 from Stanford University (,,,) She received a Juris Doctor in 2000 from Stanford Law School

There is no mention of any judicial experience obtained prior to being nominated to CA9.

In oral argument on the Trump matter, Judge Friedland asked: “Are you arguing, then, that the president’s decision in that regard is unreviewable?”

As to Pingry, Wikipedia also notes: Pingry's motto is Maxima reverentia pueris debetur, a Latin phrase literally meaning "the greatest respect is owed to the boys."

Pingry grads include William ("Bull") Halsey Jr., who was a firm believer in the aircraft carrier as the primary naval offensive weapon system, and thus a major innovator in naval warfare.

Tuesday, February 07, 2017

The CAFC remands Apple v. Samsung on 7 Feb. 2017

The outcome of Apple v. Samsung at the CAFC [2014-1335, 2015-1029 ]
was a remand to ND Cal.

Both parties filed statements urging us to take different
actions. While Apple requests continued panel review,
Samsung requests that we remand to the district court for
a new trial on damages. For the reasons explained below,
we adopt neither suggested course of action. Instead, we
remand this case to the district court for further proceedings,
which may or may not include a new damages trial.

Section 289 provides, in relevant part, that whoever
manufactures or sells “any article of manufacture to
which [a patented] design or colorable imitation has been
applied shall be liable to the owner to the extent of his
total profit.” 35 U.S.C. § 289. The Supreme Court clarified
that a damages award under § 289 involves two
steps: (1) “identify the ‘article of manufacture’ to which
the infringed design has been applied;” and (2) “calculate
the infringer’s total profit made on that article of manufacture.”
Samsung, 137 S. Ct. at 434. The Court then
explained that the only question before it was narrow:
“whether, in the case of a multicomponent product, the
relevant ‘article of manufacture’ must always be the end
product sold to the consumer or whether it can also be a
component of that product.” Id.2

The CAFC observed

the parties dispute what jury instructions
the current trial record supports. Because the district
court is better positioned to parse the record to evaluate
the parties’ competing arguments, we remand for the
district court to consider these issues in the first instance.

Monday, February 06, 2017

Lincoln and Transylvania

With February 12 approaching, IPBiz contemplates Lincoln as a lawyer. His path was influenced by John Todd Stuart, under whom Lincoln served in the Black Hawk war. It was Stuart who suggested Lincoln take up the study of law. Initially, Lincoln borrowed law books from Stuart for self-education in law and by 1837, Stuart took Lincoln as his junior partner but the partnership dissolved in 1841.

See Christopher A. Schnell, 36 N. Ky. L. Rev. 263 (2009)

Some of Lincoln's colleagues were trained at Transylvania University in Lexington, KY which was likely the closest site of formal legal training to Lincoln's location.

Of legal theory at Transylvania University:

Closer to the Hoffman model than either the Story or Butler model was the organization of the law school at Transylvania University in Lexington, Kentucky. n49 The law department at Transylvania was one of the earliest and most successful university affiliated law schools of the antebellum period. n50 Its faculty was drawn almost exclusively from the ranks of the South's most distinguished jurists, including Judges George Robertson and Daniel Mayes. n51 Both have left, in pamphlet form, introductory lectures outlining their theories of legal education and providing other views on the subject of the integration of theoretical and practical elements in the training of young lawyers. Robertson's lecture on the importance of the Constitution to the maintenance of a free society and of the importance of the law and lawyers in its preservation is of little interest for our present purposes. n52 Mayes' lecture, however, is another m atter.

Daniel Mayes' Introductory Lecture, presented at Transylvania in 1833, is one of the most comprehensive statements of legal educational philosophy to survive from the antebellum period. n53 Mayes begins his analysis by drawing an important distinction between the notion of the law as an art and as a science:

There are to be found in our profession, as in every other, many, who either have not learned, or having learned cease to remember, that there is a science of jurisprudence as well as an art of jurisprudence. Who standing in the same relation to law, that the cook does to chemistry, are actively engaged in practice during long lives, ignorant of the principles upon which there science is founded ... Just so it sometimes is in our profession ... He dreams not that there is any thing of science to be taught from what he has done, and laughs at the idea, that a sensible reason ought to be sought for in everything connected with the profession ... His students are engaged in reading, without comprehending, and impressing on the memory, without being instructed by adjudged cases, and forms of proceeding. n54

66 Temp. L. Rev. 123 (1993)

See also MARK L. JONES, 39 J. Marshall L. Rev. 1041 (2006)

Of the earliest law schools, from James P. White, 78 Marq. L. Rev. 371 (1995):

Indeed, the three earliest law schools, Yale, Harvard, and Transylvania, were, at the time of their creation, law schools of religiously affiliated colleges. In the latter part of the nineteenth century we saw a tremendous growth of American law schools.

Of evening law schools:

One of the earliest such law schools was Columbian College (now George Washington University), which opened its doors in 1865. n10 Next, Georgetown University (the first Jesuit law school) and National University opened in 1870, also in the District of Columbia, both as evening and early-morning law schools designed to provide a legal education to government workers. n11 The Iowa Law School, another very early example, opened its doors in Des Moines in 1866 as an independent evening law school granting a bachelor of law degree; it soon became part of the University of Iowa. n12 The various access missions also include that of Howard University, which began as an evening law school in 1868 for African American men and women. n13

from Joyce Sterling, Ronit Dinovitzer & Bryant Garth, 36 Sw. U. L. Rev. 389 (2007)

Of David Hoffman,

A scholarly and ambitious practitioner, n57 he received an appointment in 1814 as a Professor of Law at one of the nation's earliest law schools, the fledgling University of Maryland. n58

from Russell G. Pearce,
8 U Chi L Sch Roundtable 381 (2001)

**As to Transylvania University, YES, there was once a trademark issue. As Wikipedia notes:

In 1988, Transylvania University experienced an infringement on the institution's trademark when Hallmark Cards began selling Transylvania University T-shirts. The product, developed for the 1988 Halloween season, was intended to be a novelty item purporting to be college wear from the fictional Count Dracula's alma mater. When contacted by Transylvania University, Hallmark admitted that they were not aware of the Kentucky-based institution and recalled all unsold product immediately.

Wikipedia also notes of an earlier issue, during the time Transylvania University was known as "Kentucky University":

An institution that aided in the development of today's Transylvania University was Bacon College of Georgetown, named after Sir Francis Bacon, a school that would, for a brief time, be known as Kentucky University.
ransylvania's seminary eventually became a separate institution, but remained housed on the Kentucky University campus until 1950. It later changed its name to the Lexington Theological Seminary. In 1903, Hamilton College, a Lexington-based women's college founded in 1869, merged into Kentucky University.[10] Due to confusion between Kentucky University and its daughter institution, the University of Kentucky, the institution was renamed "Transylvania University," in 1908.


In New Jersey, there was a related problem, because "Princeton University" was once known as the College of New Jersey.
See the 1996 article in the New York Times:

**In a separate vein, recall Abraham Lincoln: Vampire Hunter , which included Rufus Sewell as vampire Adam.
Rufus Sewell played Dr. Hood in "Eleventh Hour," the subject of some posts on IPBiz.
For example:

"Eleventh Hour" depicts evil university/industry cabal in biotech

Plagiarism problem in science? Check out legal literature!

note the post at Neuroskeptic titled Science Has A Plagiarism Problem

Law, of course, has an even bigger plagiarism problem.

For example
Plagiarism in law review brought up in judicial nomination

And don't forget Joe Biden's escapade as a 1L at Syracuse Law.

Saturday, February 04, 2017

Judge James Robart, the TRO, and intellectual property

The order of Judge James Robart in Washington v. Trump, C17-0141 uses the words "parens patrie" to describe how the harms to residents extend to harms to the states.
Judge Robart cites to Texas v. United States, 809 F.3d 134 (CA5 2015) to justify extending the TRO from Washington/Minnesota to all states.

CNBC wrote

The challenge in Seattle was brought by the state of Washington and later joined by the state of Minnesota. The judge ruled that the states have legal standing to sue, which could help Democratic attorneys general take on Trump in court on issues beyond immigration.

Washington's case was based on claims that the state had suffered harm from the travel ban, for example students and faculty at state-funded universities being stranded overseas. and Expedia, both based in Washington state, had supported the lawsuit, asserting that the travel restrictions harmed their businesses.

Tech companies, which rely on talent from around the world, have been increasingly outspoken in their opposition to the Trump administration's anti-immigrant policies.

Judge Robart probed a Justice Department lawyer on what he called the "litany of harms" suffered by Washington state's universities, and also questioned the administration's use of the Sept. 11, 2001, attacks on the United States as a justification for the ban.


At least one company, the ride-hailing giant Uber, was moving quickly Friday (3 Feb 2017) night to take advantage of the ruling.

CEO Travis Kalanick, who quit Trump's business advisory council this week in the face of a fierce backlash from Uber customers and the company's many immigrant drivers, said on Twitter: "We have a team of in-house attorneys who've been working night & day to get U.S. resident drivers & stranded families back into country.

Those in the intellectual property community may remember Judge Robart's role in RAND/FRAND in the case between Microsoft and Motorola.

**Also note, as to visas for foreign workers:

Schumer to put his imprint on patent reform, immigration matters?

IAM on IBM's Kappos, not touching the political or patent pulse?

AND remember the story of Rick Clark

**UPDATE on 7 Feb. 2017

On Friday, Judge Robart denigrated Donald Trump before the President said a word about him

Friday, February 03, 2017

CAFC affirms D. Utah's invalidity determination in 3Form v. Lumicor

Of interest in 3Form v. Lumicor :

The district court adopted its construction despite the
parties largely agreeing to a different one.
3form proposed that “unnatural appearing conformation”
means “the appearance of an object when its structural
integrity collapses, such that the object splits, cracks, or
substantially deforms.” Dist. Ct. Op., 2015 WL 9463092,
at *5. Lumicor only disputed the “substantially deforms”
portion of 3form’s proposed construction, asserting that
instead of “substantially deforms,” the term requires
“significantly deforms.” Id. We agree with the arguments
the parties made before the district court regarding this
term’s construction

Also, the CAFC noted another disagreement with the district

We also disagree with the district court’s decision to
limit the term to a mathematical requirement of 75%
compression based on a sentence in the specification that
merely states that there “are varying degrees of collapse,
or compression” and that an unnatural conformation
“may” mean that an object has compressed to 90% of its
thickness or as little as 75% of its thickness “and so on.”
Id. col. 4 ll. 40–45 (emphasis added). Plucking one of
these percentages out of a range of possibilities was not a
proper approach for claim construction. See Conoco, Inc.
v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357–58
(Fed. Cir. 2006) (“[W]hen a claim term is expressed in
general descriptive words, we will not ordinarily limit the
term to a numerical range that may appear in the written
description or in other claims.”) (quoting Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1249
(Fed. Cir. 1998)).

Of indefiniteness:

We reject
Lumicor’s indefiniteness argument. “[A] claim must
‘inform those skilled in the art about the scope of the
invention with reasonable certainty’ to meet the definiteness
requirement of 35 U.S.C. § 112, ¶ 2.” Liberty Ammunition,
Inc. v. United States, 835 F.3d 1388, 1396
(Fed. Cir. 2016) (quoting Nautilus, Inc. v. Biosig Instrs.,
Inc., 134 S. Ct. 2120, 2129 (2014)). Yet, “absolute precision
is unattainable” when drafting patent claims. Nautilus,
134 S. Ct. at 2129. Thus, “a patentee need not define
his invention with mathematical precision in order to
comply with the definiteness requirement.” Sonix Tech.
Co. v. Publ’ns Int’l, Ltd., No. 2016-1449, 2017 WL 56321,
at *5 (Fed. Cir. Jan. 5, 2017) (quoting Invitrogen Corp. v.
Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005))
We therefore reject Lumicor’s indefiniteness argument
and adopt 3form’s proposed construction of “substantially
natural conformation” to mean “[t]he
appearance of an object in a relatively uncompressed or
natural state, even if not perfectly natural or uncompressed.”

The topic of waiver arose:

The district court also held that Schober anticipates
dependent claims 2–3, 5–6, 8–14, and 16–18. On appeal,
3form challenges the district court’s anticipation findings
for dependent claims 5 and 16, which require that at least
one of the two extruded resin sheets “comprise extruded
polycarbonate.” Before the district court, 3form did “not
dispute [whether] the ’327 Patent [Schober] describes the
use of polycarbonate,” J.A. 1022, 1028, and it never specifically
argued or articulated why Schober’s use of polycarbonate
would impact the “substantially natural appearing
conformation” limitation, as it does now for the first time
on appeal. We conclude, therefore, that 3form waived its
separate arguments on these claims. Thus, we affirm the
district court’s summary judgment holding that Schober
anticipates dependent claims 2–3, 5–6, 8–14, and 16–18.

Of the design patent:

The obviousness
inquiry for design patents is not so limited, as it asks
whether a designer “would have combined teachings of the
prior art to create the same overall visual appearance as
the claimed design,” not merely the figures or illustrations.
Durling v. Spectrum Furniture Co., 101 F.3d 100,
103 (Fed. Cir. 1996) (emphasis added). Because 3form’s
expert did not consider Schober’s teachings in full, her
testimony regarding motivation to combine does not
preclude summary judgment of obviousness.

Thursday, February 02, 2017

The "Rule 36" practice of the CAFC

In a post at PatentlyO titled Wrongly Affirmed Without Opinion , Dennis Crouch raises the issue that, as to Rule 36 Affirmances Without Opinion, "the Federal Circuit is required by statute to issue an opinion in these PTO appeals."

Within an SSRN article, Professor Crouch noted:

By 1989, however, members of the court [the CAFC] recognized the increasing potential
of a docket backlog and implemented local Rule 36 to allow for affirmances
without opinion.44 In discussing the rule change then Chief Judge Markey
offered this new “third form of disposition where it’s not necessary to
explain, even to the loser, why he lost.” 45

But, years later, Judge Plager stated in In re Packard, 751 F.3d 1307, 1314 (CAFC 2014) :
“I write separately because I am of the view that a petitioner to this court seeking
reversal of a decision is entitled to an explanation of why the arguments on which
he relied for his appeal did not prevail."

**The California Supreme Court in People v. Kelly (2006) observed:

Article VI, section 14, of the California Constitution provides that
"[d]ecisions of the Supreme Court and the courts of appeal that determine
causes shall be in writing with reasons stated."
As a result of the 1966 repeal and reenactment of article VI of the California Constitution,
the requirement of opinions in writing is now found in article VI, section 14, and reads:
"Decisions of the Supreme Court and courts of appeal that determine causes shall be in writing
with reasons stated." There is no indication in the background materials prepared in the 1960's
for the members of the California Constitution Revision Commission committee that was responsible
for proposed revisions to article VI, or elsewhere, that any change in substance was intended
with respect to the new wording of the "in writing" requirement. fn. 1 {Page 40 Cal.4th 117}
From this history, we discern a variety of purposes in the requirement that appellate decisions be in writing.
Of course, some decisions establish precedent for future cases. Others provide guidance only to the parties
and to the judiciary in subsequent litigation arising out of the same "cause." In all instances,
the requirement of a written opinion promotes a careful examination of the facts and the legal issues,
and a result supported by law and reason.

What if opinions of courts were held to the same standard as that applied to parties?
For example, from the blog docketreport , discussing Yodlee v. Plaid :

[T]he Court agrees with [defendant] that [the expert's] failure to expressly account for varying pricing structures and the lack of a sufficiently detailed explanation for how he reached the 'compromises' set out in Table 15 renders [his] reasonable royalty analysis, as presently articulated, insufficiently reliable."

Holmes once wrote:

“The language of judicial decisions is mainly the
language of logic. And the logical method and form flatter that longing for certainty and
for repose which is in every human mind. But certainty generally is an illusion, and
repose is not the destiny of man.”

**In passing, the CAFC in IN RE: JENNIFER SCHWEICKERT gives
an example where the factual findings of PTAB did not meet the
"substantial evidence" standard. The CAFC noted:

We review the Board’s factual findings for substantial
evidence and its legal conclusions without deference. Flo
Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367,
1375–76 (Fed. Cir. 2012) (citing cases). Substantial
evidence “means such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1337
(Fed. Cir. 2016) (quoting Consol. Edison Co. of N.Y. v.
NLRB, 305 U.S. 197, 217 (1938)).
This record describes no problem in Birrell that
would be resolved by the semaphore in Cunniff.

The Board’s decision is deficient in another respect.
Even if the semaphore in Cunniff were readily applicable
to the RAM in Birrell, the Board has not explained why or
how a skilled artisan would further configure or manipulate
Birrell’s RAM such that there would be multiple
lockable buffers as claimed in the ’272 Patent. See ’272
Patent col. 10 ll. 42–563; see also KSR, 550 U.S. at 418
(stressing that it is “important to identify a reason that
would have prompted [a skilled artisan] to combine the
elements in the way the claimed new invention does”
(emphasis added)).
Given these findings, the Board needed to explain why a skilled
artisan would still have a reason to combine Birrell and
Cunniff to achieve the claimed invention. See, e.g., Intelligent
Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1368 (Fed. Cir. 2016). Although it asserts that
Birrell would have “benefitted from the advantages of . . .
Cunniff’s semaphore mechanism,” the Board did not
explain why this is so.
The PTO suggests that a skilled artisan would have
been motivated to combine Cunniff and Birrell despite the
difficulties of doing so because Birrell’s system would be
more cost-effective to manufacture with Cunniff’s semaphore.
See Appellee Br. at 24 (first citing J.A. at 536; and
then citing Cunniff col. 1 ll. 34–38). But the Board never
made this finding. And even if the Board did, the record
does not appear to substantiate it.

The Board, at best, merely posits that a skilled artisan
could combine Birrell and Cunniff, notwithstanding
any difficulties, and would do so because these references
were within the knowledge of a skilled artisan. But in
view of the foregoing, this broadly-stated conclusion
suffers from hindsight bias. See, e.g., In re Giannelli, 739
F.3d 1375, 1380 (Fed. Cir. 2014) (reversing affirmance of
examiner’s obviousness determination where the Board’s
analysis “contained no explanation why or how [a skilled
artisan] would modify” the prior art to arrive at the
claimed invention); In re Rouffet, 149 F.3d 1350, 1358
(Fed. Cir. 1998).

From a comment by David Boundy at PatentlyO:

As you briefly mention, all decisions of administrative agencies that are
adverse to a party must be supported by a “a brief statement of the grounds,”
5 U.S.C. § 555(e), sufficient to satisfy the “arbitrary and capricious”
standard of the Administrative Procedure Act, 5 U.S.C. § 706(2)(A).
“We have explained that a ‘fundamental requirement of administrative
law is that an agency set forth its reasons for decision;
an agency’s failure to do so constitutes arbitrary and capricious agency action.’”
Amerijet Int’l Inc. v. Pistole, 753 F.3d 1343, 1350 (D.C. Cir. 2014).
“The fundamental principle of reasoned explanation embodied in …
(agency) decisions serves at least three interrelated purposes:
enabling the court to give proper review to the administrative determination;
helping to keep the administrative agency within proper authority and discretion,
as well as helping to avoid and prevent arbitrary, discriminatory, and
irrational action by the agency; and informing the aggrieved person of the grounds
of the administrative action so that he can plan his course of action (including
the seeking of judicial review).” McHenry v. Bond, 668 F.2d 1185, 1192 (11th Cir. 1982).

As a separate matter, Boundy has a post on Cuozzo at PatentlyO, which includes

The heart of the majority opinion is a long paragraph toward the end of section II, beginning “Nonetheless.” The majority explains that most issues arising under patent law are precluded, but that issues arising under other bodies of law are not. Review remains available for constitutional questions, and most importantly, for issues slotted into one of the pigeonholes of APA § 706. The latter half of the “long paragraph” reads as follows:

[W]e do not categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under § 112” in inter partes review. Such “shenanigans” may be properly reviewable in the context of § 319 and under the Administrative Procedure Act, which enables reviewing courts to “set aside agency action” that is “contrary to constitutional right,” “in excess of statutory jurisdiction,” or “arbitrary [and] capricious.”[11]

The latter half of the long paragraph, especially the last sentence, opens a wide barn door. The Cuozzo majority’s long paragraph indicates that the full reach of § 706 applies to underlying issues in decisions to institute. Cuozzo tells us that issues that are losers when presented in patent law vocabulary become winners when wrapped in administrative law vocabulary.


and note: This paper is a short version of an article in the current issue of ABA Landslide, vol. 9, no. 3, electronic edition.

UPDATE on 6 Feb 2017

See article in National Law Review, Are Patent-Friendly PTAB Decisions On the Rise?