Tuesday, May 30, 2017

CAFC affirms ND Cal's finding of indefiniteness in Twin Peaks v. IBM

The CAFC affirmed ND Cal in Twin Peaks:

Twin Peaks Software Inc. (“Twin Peaks”) appeals
from a judgment of the United States District Court for
the Northern District of California that claims 1 and 4 of
U.S. Patent 7,418,439 (“the ’439 patent”) are invalid as
indefinite following a claim construction order by the
district court. See Twin Peaks Software Inc. v. IBM Corp.,
No. 3:14-cv-03933-JST, 2016 WL 1409748 (N.D. Cal. Apr.
11, 2016) (“Order”). Because the district court did not err
in its claim construction or in concluding that the challenged
claims are invalid as indefinite, we affirm.

IBM's argument:

IBM responds that, although Twin Peaks refers to
multiple columns and figures of the ’439 patent, it fails to
identify any algorithm that is clearly linked or associated
with the “means for mounting” function, and that all of
the descriptions identified by Twin Peaks disclose the
outcome of, or what results from, the MFS mounting
function. IBM also contends that Twin Peaks is improperly
relying on the knowledge of one of ordinary skill in
the art to “fill in gaps in disclosure.” Id. at 35–36.

The CAFC noted:

the “means for mounting” limitation is circularly
described by referring to the very term “mount” and the
results of various “mount” operations, rather than by
disclosing the identity of the “means for mounting.”
Twin Peaks appears to argue that the “MFS Mount
Protocol” involves multiple regular mount operations
known in the art, but even assuming arguendo that that
contention is accepted, the specification does not describe
to what extent the MFS mount protocol involves the
regular mount operations or to what extent the “MFS
mount” operation is different from the regular “mount”
operation. See Biomedino, 490 F.3d at 953 (holding that
“a bare statement that known techniques or methods can
be used does not disclose structure”); Med. Instrumentation
& Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1211 (Fed. Cir. 2003) (noting “[t]he requirement that a
particular structure be clearly linked with the claimed
function in order to qualify as corresponding structure”).

Of the "ordinary skill" argument:

Lastly, Twin Peaks argues that a person of ordinary
skill in the art reading the specification would understand
what structure corresponds to the “means for mounting”
limitation and could implement it because “some structure
is disclosed” and therefore, omitting certain details is
“of no significance.” Appellant’s Br. 44. Twin Peaks cites
our case law holding that, in some cases, disclosure of
“some structure” can be sufficient, e.g., Atmel Corp. v.
Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir.
1999), as supporting its proposition. However, the “some
structure” in the specification that would be sufficient still
should be “some structure corresponding to the means”
recited in the claims “so that one can readily ascertain
what the claim means and comply with the particularity
requirement of ¶ 2.” Atmel, 198 F.3d at 1382 (emphasis
added). Indeed, the “interpretation of what is disclosed
must be made in light of the knowledge of one skilled in
the art,” but “the understanding of one skilled in the art
in no way relieves the patentee of adequately disclosing
sufficient structure in the specification.” Id. at 1380; see
also Biomedino, 490 F.3d at 952. Here, as discussed
above, other than the post hoc synthesis of what the
“means for mounting” limitation corresponds to as proposed
by Twin Peaks, the ’439 patent specification itself
does not adequately disclose the corresponding structure
of the “means for mounting” limitation, and that inadequate
disclosure cannot be cured simply by relying on the
knowledge of a person skilled in the art. Biomedino, 490
F.3d at 953 (“The inquiry is whether one of skill in the art
would understand the specification itself to disclose a
structure, not simply whether that person would be
capable of implementing a structure.” (citation omitted)).
We therefore conclude that the “means for mounting”
limitation of claim 1 is indefinite and that the district
court did not err in so concluding.

**Separately, from Blawgsearch on 30 May 2017:

Saturday, May 27, 2017

CAFC considers "final decisons" in Halo v. Pulse case

The case concerned U.S. Patents 5,656,985, 6,297,720, and
6,344,785 of patentee Halo, which were found infringed by Pulse.

The outcome of Halo v. Pulse :

Pulse Electronics, Inc. and Pulse Electronics Corporation
(together, “Pulse”) appeal from the decision of the
United States District Court for the District of Nevada
awarding Halo Electronics, Inc. (“Halo”) prejudgment
interest. See Halo Elecs., Inc. v. Pulse Elecs., Inc., No.
2:07-cv-00331-APG-PAL, slip op. (D. Nev. Apr. 6, 2016)
(Joint Appendix “J.A.” 1–2). Because we lack jurisdiction,
we dismiss.


We must first address whether we have jurisdiction.1
Pursuant to 28 U.S.C. § 1295(a)(1), which embodies the
final judgment rule, our jurisdiction is limited to an
appeal from a “final decision” of a district court. 28 U.S.C.
§ 1295(a)(1). The Supreme Court has stated that a final
decision “generally is one which ends the litigation on the
merits and leaves nothing for the court to do but execute
the judgment.” Catlin v. United States, 324 U.S. 229, 233
(1945); see also Van Cauwenberghe v. Biard, 486 U.S. 517,
521–22 (1988).

Of interest is footnote 2:

Although it is our practice to follow precedent of
the regional circuits on issues not unique to our areas of
exclusive jurisdiction, we have adopted our own precedent
on matters relating to our own appellate jurisdiction. See
Woodard v. Sage Prods., Inc., 818 F.2d 841, 844 (Fed. Cir.
1987) (en banc).

No final decision here:

As a result, there is no final decision because the district
court has not “determine[d], or specif[ied] the means for
determining the amount” of prejudgment interest. F. &
M. Schaefer Brewing, 356 U.S. at 233–34 (holding that a
district court opinion setting the amount of the refund
was not a final judgment where “the action also sought
recovery of interest . . . from the date of payment to the
date of judgment” and the district court’s “opinion does
not state the date or dates of payment and, hence, did not
state facts necessary to compute the amount of interest to
be included in the judgment”).4 We therefore lack jurisdiction
under § 1295(a)(1).
For similar reasons, we also lack jurisdiction pursuant
to § 1292(c)(2). “As an exception to the final judgment
rule, § 1292(c)(2) is to be interpreted narrowly.” Arlington
Indus., Inc. v. Bridgeport Fittings, Inc., 759 F.3d 1333,
1339 (Fed. Cir. 2014). Regardless whether prejudgment
interest is part of an accounting or not, the award of
prejudgment interest itself in this case is not final. We
have held that § 1292(c)(2) “does not go so far as to permit
us to consider [a] non-final order” that is related to the
accounting. Alfred E. Mann Found. for Sci. Research v.
Cochlear Corp., 841 F.3d 1334, 1347 (Fed. Cir. 2016)

Separately, from Blawgsearch on 27 May 2017:

Thursday, May 25, 2017

The future of generic Copaxone?

A post concerning future generic "Copaxone" at raps.org begins

Generic versions of Teva's multi-billion-dollar per year multiple sclerosis drug Copaxone (glatiramer) are coming, but a closer look at which competitor might win the coveted 180-day exclusivity for its generic reveals an unusual and complex situation.

Back in January, a US District Court for the District of Delaware ruling invalidated all asserted claims on Teva's patents on its 40mg version of Copaxone, opening the door for generic competitors.

Link: http://raps.org/Regulatory-Focus/News/2017/05/25/27667/Copaxone-Generics-Who-Will-Win-First-Filer-Exclusivity/#sthash.7P2SLVjY.dpuf

From a press release on 30 January 2017:

Teva Pharmaceutical Industries Ltd. today [30 January 2017] confirmed the U.S. District Court for the District of Delaware ruling invalidating all asserted claims of the ‘250, ‘413, ‘776 and ‘302 patents for COPAXONE® (glatiramer acetate injection) 40 mg/mL. The patent infringement case involved five of six Abbreviated New Drug Application (ANDA) filers. Teva plans to appeal the decision.

“We intend to move forward with an immediate appeal,” said Erez Vigodman, Teva President and CEO. “We will continue to vigorously protect our COPAXONE® franchise against further challenges and through the duration of this process.”

Separately, a suit was filed against all six ANDA filers on December 19, 2016 in the U.S. District Court for the District of Delaware to assert a fifth Orange Book patent, U.S. Patent 9,402,874. Additionally, Teva has brought suit against multiple ANDA filers to assert a non-Orange Book process patent, U.S. Patent No. 9,155,775, in various jurisdictions.

In passing, by the time of the Supreme Court decision in Teva/Sandoz, all claims in the contested cases had expired except for those of US 5,800,808, which single claim recited:

A method of manufacturing copolymer-1, comprising reacting protected copolymer-1 with hydrobromic acid to form trifluoroacetyl copolymer-1, treating said trifluoroacetyl copolymer-1 with aqueous piperidine solution to form copolymer-1, and purifying said copolymer-1, to result in copolymer-1 having a molecular weight of about 5 to 9 kilodaltons.

See also: TEVA PHARMACEUTICALS USA, INC. v. Sandoz, Inc., 749 F. Supp. 2d 130 (S.D.N.Y. 2010)

See also: http://scholarship.law.berkeley.edu/cgi/viewcontent.cgi?article=2112&context=btlj

Wednesday, May 24, 2017

CAFC discusses written description in Rivera v. ITC

Rivera appealed an adverse ITC decision in the technical realm of
Single Service Beverage Brewers.

The CAFC affirmed a finding of invalidity through lack of written description:

The Commission and Solofill respond that the broader
definition of a “pod” does not provide written description
support for the claimed “container . . . adapted to hold
brewing material” (i.e., a container with an integral filter)
because: (1) every embodiment and teaching in the specification
shows the “pod” and the cartridge or container as
distinct elements; (2) the distinction of the “pod” from the
cartridge or container is fundamental to the problem and
solution taught in the specification; and (3) the embodiments
shown in the specification would not work without
a separate filter.

We agree with the Commission and Solofill. The underlying
concern addressed by the ’320 patent is enabling
compatibility between pods used in pod-type beverage
brewers and cartridges used in cartridge-type beverage
brewers. S

The distinction between “pods” and cartridges permeates
the entire patent. There is no hint or discussion of a
cartridge or pod adaptor assembly or receptacle that also
serves as the “pod.” Instead, the specification explains
how the cartridge may be adapted to accept a separate
“pod” to be used inside the cartridge. F

Of note:

Finally, Rivera argues that the background
knowledge of those skilled in the art can supplement the
teaching in the specification to provide written description
support. For this proposition, Rivera relies on Boston
Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353,
1366 (Fed. Cir. 2011) and Falkner v. Inglis, 448 F.3d
1357, 1367–68 (Fed. Cir. 2006). Rivera argues as follows:
(1) ordinary artisans recognized the need for some type of
filter in the cartridge; (2) ordinary artisans were aware of
the availability of an integrated filter; (3) nothing in the
patent limits the use of a filter to an enclosed package to
put into a separate cartridge; and therefore (4) the ’320
patent provides written description support for an integrated
We reject Rivera’s argument. As we explained in Ariad,
the written description inquiry looks to “the four
corners of the specification” to discern the extent to which
the inventor(s) had possession of the invention as broadly
claimed. Ariad, 598 F.3d at 1351;
The knowledge of ordinary artisans may be used to inform
what is actually in the specification, see Lockwood, 107
F.3d at 1571, but not to teach limitations that are not in
the specification, even if those limitations would be rendered
obvious by the disclosure in the specification. Id

CAFC vacates TTAB because of an analysis of the "fame" factor which was "contrary to law"

Joseph Phelps Vineyards, LLC (“Vineyards”) has produced
and sold wines bearing the trademark INSIGNIA
since 1978, and brought a cancellation proceeding against
Fairmont Holdings, LLC (“Fairmont”) who
received federal registration for the mark ALEC
BRADLEY STAR INSIGNIA for cigars and cigar products.

The TTAB denied the petition, but the TTAB decision was vacated by the CAFC.
The CAFC found the decision was "contrary to law":

TTAB erred in its legal analysis, in analyzing the “fame”
of INSIGNIA wine as an all-or-nothing factor, and discounting
it entirely in reaching the conclusion of no
likelihood of confusion as to source, contrary to law and

From the decision:

The record contains many more examples. We are perplexed
at the Board’s finding that INSIGNIA wine has no
“fame,” giving no discernable weight to this factor. The
TTAB applied an incorrect standard, for “fame” is determined
from the viewpoint of consumers of like products.
The record shows appreciation by consumers and the wine
market of Vineyards’ INSIGNIA brand. It was error to
refuse to accord any “fame” to Vineyards’ INSIGNIA
mark. The factor of “fame” warrants reasonable weight,
among the totality of the circumstances.

Judge Newman wrote separately and observed:

Of course, cigars and wine are different. However, as
noted in Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1267 (Fed. Cir. 2002), “[e]ven if the
goods . . . are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin.” See In re Shell Oil Co., 992 F.2d
1204, 1207 (Fed. Cir. 1993) (the Board is to “consider the
degree of overlap of consumers exposed to the respective
services, for . . . even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
The Board treated relatedness as an all-or-nothing
factor, although this factor should be analyzed along a
sliding scale. As stated in DuPont, there is
no warrant, in the statute or elsewhere, for discarding
any evidence bearing on the question of
likelihood of confusion. Reasonable men may differ
as to the weight to give specific evidentiary elements
in a particular case. In one case it will
indicate that confusion is unlikely; in the next it
will not. . . . In every case turning on likelihood of
confusion, it is the duty of the examiner, the board
and this court to find, upon consideration of all
the evidence, whether or not confusion appears
likely. That determination ends the decisional
In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1362
(C.C.P.A. 1973).

Judge Newman mentioned In re Licores Veracruz, S.A. de C. V., Serial No.
77753913 (TTAB January 26, 2012) and observed:

In the present case, the TTAB relied
on different reasoning: “Thus, the mere fact that two
goods are used together in the same setting or venue does
not, in and of itself, demand a finding that confusion is
likely.” TTAB Op.14 (quoting 4 J. McCarthy, on Trademarks
and Unfair Competition § 24:26 (4th ed. 2015)).
McCarthy cautions that these are fact-bound determinations
and that no fact may “demand” a particular outcome.
However, it devolves on the TTAB to provide


Here, the Board concluded that wine and cigars are
not “related” because they are products differing in both
composition and method of manufacture. TTAB Op. 14.
However, relatedness is a broad concept; products may
exhibit “relatedness” when they “are complementary
products sold in the same channels of trade to the same
classes of consumers.” See In re Licores Veracruz, supra
(finding that rum and cigars meet the criteria of relatedness).
See also John Walker & Sons Ltd. v. Tampa Cigar
Co., 124 F.Supp. 254, 256 (S.D.Fla. 1954), aff’d 222 F.2d
460 (5th Cir. 1955) (“Whisky and cigars are closely related
in distribution and use.”); Geo. A. Dickel Co. v. Stephano
Bros., 155 USPQ 744 (TTAB 1967) (relying on John
Walker in finding confusion for whiskey and cigarettes).
But see Schenley Distillers, Inc. v. Gen. Cigar Co., 427
F.2d 783 (CCPA 1970) (the court rejected any principle
that the same mark on tobacco and alcoholic beverage
products necessarily results in likelihood of confusion; the
court did not address the relatedness of all tobacco products
and all alcoholic beverages under all circumstances).

Separately, from Blawgsearch on May 24, 2017:

Monday, May 22, 2017

Patent venue restricted in Supreme Court TC Heartland case by 8-0 vote

Reuters noted: The justices ruled 8-0 that patent suits can be filed only in courts located in the jurisdiction where the targeted company is incorporated.

Sunday, May 21, 2017

The CAFC works through a chemical doctrine of equivalents case in Mylan v. Aurobindo

The first paragraph of Mylan v. Aurobindo:

Aurobindo Pharma Ltd., Aurobindo Pharma USA Inc.,
and Auromedics Pharma LLC (together, “Aurobindo”)
appeal from a decision of the United States District Court
for the Eastern District of Texas granting Mylan Institutional
LLC’s (“Mylan Inst.”) and Apicore US LLC’s
(“Apicore”) (together, “Mylan”) motion for a preliminary
injunction precluding Aurobindo from making, using,
selling, offering to sell, and importing the accused isosulfan
blue (“ISB”) product that allegedly infringes three of
Apicore’s patents—U.S. Patent 7,622,992 (“the ’992 patent”),
U.S. Patent 8,969,616 (“the ’616 patent”), and U.S.
Patent 9,353,050 (“the ’050 patent”). See Mylan Institutional
LLC v. Aurobindo Pharma Ltd., No. 2:16-cv-00491,
2017 WL 497593 (E.D. Tex. Feb. 7, 2017) (“Order Adopting
R&R”). Because the district court did not err in its
grant of the preliminary injunction under the ’050 patent,
although it did err in granting the injunction under the
’992 and ’616 patents, we affirm.

The relevant issue is the use of silver oxide as an oxidant:

Apicore owns, and Mylan Inst. is the exclusive licensee
of, the ’992, ’616, and ’050 patents, which relate to
ISB, a triarylmethane dye used to map lymph nodes. The
’992 and ’616 patents (together, “the process patents”) are
directed to a process for preparing ISB by reacting isoleuco
acid with silver oxide in a polar solvent, followed by
reaction with a sodium solution.


Aurobindo acknowledged to the FDA that it was looking for a
reagent “other than silver oxide.” It eventually selected manganese diox-
ide, and its process resulted in ISB with a 5–10% impurity
which could not be removed by recrystallization.
Instead, it used preparatory HPLC to achieve an ISB
purity of greater than 99.5%. Mylan sued Aurobindo for
infringement and sought a preliminary injunction, which
the district court granted.

One issue

We first consider whether the district court erred in
finding that Mylan is likely to succeed on the merits
because Aurobindo “more likely than not” infringes the
process patents under the doctrine of equivalents. Report
and Recommendation, 2016 WL 7587325, at *12. To
establish a likelihood of success on the merits, a patentee
must show that it will likely prove infringement of the
asserted claims and that its infringement claim will likely
withstand the alleged infringer’s challenges to patent
validity and enforceability. Sciele Pharma, Inc. v. Lupin
Ltd., 684 F.3d 1253, 1259 (Fed. Cir. 2012) (citing Amazon.com,
239 F.3d at 1350). A preliminary injunction
should not issue if the accused infringer “raises a substantial
question concerning either infringement or validity.”
Amazon.com, 239 F.3d at 1350.

The position of the accused infringer Aurobindo:

Aurobindo argues that it had raised a substantial
question of infringement of the process patents under the
doctrine of equivalents because manganese dioxide oxidizes
isoleuco acid in a different way than silver oxide in
that manganese dioxide is a strong oxidizing agent,
whereas silver oxide is a weak oxidizing agent. Additionally,
Aurobindo continues, manganese dioxide oxidation
requires the use of an acid and the patents specifically
report the use of silver oxide as not requiring an acid.

The counter:

Mylan responds that the district court correctly found
a likelihood of success on the merits of infringement
under the doctrine of equivalents because the court
properly found that manganese dioxide and silver oxide
are equivalent in the context of the process patents.
Specifically, the court credited Sessler’s testimony in light
of record evidence that the silver oxide and manganese
dioxide processes produce crude ISB in similar yields.
The court explained that if manganese dioxide was a
substantially stronger oxidizing agent than silver oxide, a
skilled artisan “would expect different results.”

The CAFC noted:

As set forth below, we conclude that the district
court’s analysis of equivalence in this case was flawed, no
doubt because of the sparse and confusing case law concerning
equivalents, particularly the paucity of chemical
equivalence case law, and the difficulty of applying the
legal concepts to the facts. We will attempt to provide
more clarity on these subjects.
Moreover, the law on the doctrine of
equivalents as applied to chemical materials is not clear,
and its misapplication can lead to unsound results. This
appears to be such a case.

Yes, the CAFC does mention Graver Tank.

The CAFC considered the district court to err in its analysis
of the "way" the chemicals acted:

The district court correctly evaluated the “function”
aspect of the FWR test—deciding, in effect, that the
function of the silver oxide was to oxidize the precursor
isoleuco compound to ISB acid.6 But that is not considering
the “way” the oxidation works. Manganese dioxide
and silver oxide may have the same function, but the
question is whether they operate in the same way. Critical
facts that might be considered in an equivalents
analysis include the relative oxidation strengths of the
two oxidizing agents, as argued by Aurobindo, and the
fact that manganese dioxide requires the use of an acid
for oxidation, but silver dioxide does not, and results in a
different yield. All of this in fact may at trial indicate a
different “way.” Thus, there is room for sufficient doubt
as to whether silver oxide and manganese dioxide oxidize
isoleuco acid in the same way so as to satisfy the “way”
prong of the FWR test.

Accordingly, the district court erred in its equivalents
analysis under FWR and we reverse its determination.

Of interest to practitioners in the chemical arts AND to

For example, consider the well-known compounds aspirin
and ibuprofen, which chemists would not usually
consider to be structural equivalents under the insubstantial
differences test. Chemical compounds are characterized
by their structures, and these two compounds differ
substantially in structure (see appendix). However, the
two compounds would seem to be substantial equivalents
under the FWR test. They each provide analgesia and
anti-inflammatory activity (“function”) by inhibiting
prostaglandin synthesis (“way”) in order to alleviate pain,
reduce fevers, and lessen inflammation (“result”). See,
e.g., Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62
F.3d 1512, 1546 (Fed. Cir. 1995) (Lourie, J., dissenting).
Thus, a compound may appear to be equivalent under the
FWR test, but not under the substantiality of the differences
test. Hence, the substantial differences test may be
more suitable than FWR for determining equivalence in
the chemical arts. Warner-Jenkinson, 520 U.S. at 40
(“Different linguistic frameworks may be more suitable to
different cases, depending on their particular facts.”).
Manganese dioxide and silver oxide are substantially
different in many respects. For example, manganese and
silver are in different groups of the Periodic Table. In
oxide form, manganese has an oxidation state of +4, while
silver is +1. Those differences may well be relevant to
equivalence at trial. Thus, the choice of test under the
doctrine of equivalents may matter in this case.

The CAFC's mention of Graver Tank was brief. In Graver, the
patentee claimed alkaline earth silicates, which encompass magnesium.
The infringer was using manganese silicates.

The dissent of Justice Douglas was short, and likely the correct

The Court applies the doctrine of equivalents in a way which subverts the constitutional
and statutory scheme for the grant and use of patents.

The claims of the patent are limited to a flux "containing a major proportion of alkaline earth metal silicate."
Manganese silicate, the flux which is held to infringe, is not an alkaline earth metal silicate.
It was disclosed in the application and then excluded from the claims.
It therefore became public property. See Mahn v. Harwood, 112 U. S. 354, 112 U. S. 361.
It was, to be sure, mentioned in the specifications.
But the measure of the grant is to be found in the claims,
not in the specifications. Milcor Steel Co. v. Fuller Co.,
316 U. S. 143, 316 U. S. 145-146. The specifications can be used to limit,
but never to expand, the claim. See McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 424.

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article.

Did Sheriff David Clarke copy without attribution?

A post by ANDREW KACZYNSKI at TriState titled Sheriff David Clarke plagiarized portions of his master's thesis on homeland security has text:

In all instances reviewed by CNN's KFile, Clarke lifts language from sources and credits them with a footnote, but does not indicate with quotation marks that he is taking the words verbatim.

According to guidelines on plagiarism posted on the Naval Postgraduate School's website, "If a passage is quoted verbatim, it must be set off with quotation marks (or, if it is a longer passage, presented as indented text), and followed by a properly formulated citation. The length of the phrase does not matter. If someone else's words are sufficiently significant to be worth quoting, then accurate quotation followed by a correct citation is essential, even if only a few words are involved."

One notes that IPBiz attributes the text to KACZYNSKI without quotation marks or indentation. Plagiarism?

The Guardian notes of previous work by Kaczynski :

Monica Crowley, a radio host, columnist and Fox News contributor, was picked by Donald Trump for a communications post with the national security council. In January she withdrew from consideration, after Politico and Kaczynski reported that she allegedly plagiarised parts of a PhD thesis and a 2012 book.

In 2013, Kaczynski, then at Buzzfeed, reported that Rand Paul, a US senator from Kentucky and a contender for the Republican presidential nomination, had plagiarised portions of books, articles and speeches. Paul told CNN: “Ultimately, I’m the boss, and things go out under my name, so it is my fault. I never had intentionally presented anyone’s ideas as my own.”

link: https://www.theguardian.com/us-news/2017/may/21/david-clarke-denies-thesis-plagiarism-claims

The Clarke matter is distinct from the Walsh matter (involving a paper at the War College) wherein Walsh presented no attribution at all (i.e., no footnote).
Major plagiarism scandal brewing as to Senator John Walsh
including a comment from one of Walsh's "victims."

Lonnie Johnson and the SuperSoaker invention discussed on "CBS Sunday Morning" "by design" episode on 21 May 2017

Jane Pauley appeared on the show remotely from Amsterdam, with the news being covered by a different person.

Of note for intellectual property was the story by Mo Rocca on Lonnie Johnson, the inventor of the SuperSoaker.

More details of Johnson's career are available in a story in Forbes, which illustrates some of the problems a single inventor can face:

Inventing was more of a hobby. Also I thought that once I got a patent, the world would beat a path to my door. But nobody knocked. When I realized the technology was being commercialized, it didn’t dawn on me that it was something I should pursue.


I was experimenting with nozzles I’d made that shot a stream of water across the bathroom and I thought they’d make a good water gun. I was having trouble getting people to understand the hard science inventions I had like a heat pump or the digital measuring instrument. I thought the toy was something anyone could look at and appreciate.


Initially I wanted to manufacture it myself and I talked to some companies that could handle that. But when they told me it would cost $200,000 to get the first 1,000 guns off the production line, I figured at $200 each, nobody was going to pay that much for a water gun. I didn’t understand that the tooling costs a lot but once you got the production line set up, you’d get the cost way down. I had spent my career in the military, so manufacturing and business were outside my bailiwick.


In 1987 I launched a successful toy, the Jammin Jet, powered by compressed air and water that would shoot out the back. It was made of Styrofoam and had a five-foot wingspan. A company called Entertech made it but an engineer inside the company put the rudder at an angle so the plane would fly in a circle. I tried to convince him not to do that. They manufactured 60,000 planes, spent $1 million in TV advertising and shipped planes with a design flaw. A kid would take the plane out of the box, and it would dive and break apart.


It was 1989 and I’d written letters to companies including Hasbro, who dismissed the idea. Eventually I went to the Toy Fair and I met a guy in the hallway who said I should talk to the folks at Larami, a small company that made knock-off toys. At the fair, I managed to meet with someone there and he said, “If you’re ever in Philadelphia, come and see us and we’ll be happy to talk to you.” He said, “Don’t make a special trip.” So I went to Philadelphia and waited over an hour in the reception area before I got in to see someone. I took the gun out of my suitcase. They asked if it worked and I shot water across the conference room. They turned the prototype into the first Super Soaker.


I can tell you that I received a royalty on sales, that the Super Soaker was the No. 1 selling toy in the world and that between 1992 and 1995, it topped $1 billion in sales. Because of the success of the Super Soaker, Hasbro bought Larami.


As to the value of a strong trademark over a patent:

The toy is still around but the patents have expired. In hindsight, one of the things I learned was the value of the brand. The Super Soaker name was the result of a discussion between myself and the president of Larami. If I’d understood the value of the brand, I would have put it in my contract, which was just a patent license.

Johnson has some interest in the battery biz:

My other invention is an all-ceramic battery. Existing batteries use liquid electrolytes. My battery uses glass as an electrolyte. We can hold between two and three times the energy that a lithium ion battery can. The idea is that the JTEC could convert heat from the sun to electricity and the battery could store the heat until you’re ready to use it. Solar power would be one application. You could also use it in nuclear power plants.

link to Forbes: https://www.forbes.com/sites/forbestreptalks/2017/03/03/the-inventor-of-the-super-soaker-talks-about-turning-inventions-into-products-and-his-next-big-idea/#4aba592b555c

link to CBS Sunday Morning: http://www.cbsnews.com/news/this-week-on-sunday-morning-by-design-may-21/

Moment of nature: Keukenhof Garden outside Amsterdam.
This was not unrelated to the Pauley piece on Hortus Bulborum in Limmen, established in the 1920s by tulip enthusiast Peter Boschman.

Saturday, May 20, 2017

An open question on Federal Rule of Civil Procedure 72(a)?

Concerning objections to a magistrate's non-dispositive order, the last sentence of FRCP 72(a) states:

The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law.

But what does "contrary to law" mean?

Within a footnote in CRAWFORD v. US, 2016 U.S. Dist. LEXIS 86685 (MD Fl 2016) one finds the text:

The Court notes some authority that the contrary to law standard invites plenary review of a magistrate judge's legal conclusions. See e.g., Haines v. Liggett Group, Inc., 975 F.2d 81, 91 (3d Cir. 1992); Milwaukee Carpenter's Dist. Council Health Fund v. Philip Morris, Inc., 70 F. Supp. 2d 888, 892 (E.D. Wis. 1999); Computer Econs., Inc. v. Gartner Group, Inc., 50 F. Supp. 2d 980, 983 & n.2 (S.D. Cal. 1999). In this Circuit, however, the contrary to law standard has been distinguished as more deferential than de novo review. See Merritt, 649 F.2d at 1016-17 ("[A] magistrate['s non-dispositive discovery orders] are reviewable under the 'clearly erroneous and contrary to law' standard; they are not subject to a de novo determination as are a magistrate's proposed findings and recommendations.") Nonetheless, even to the extent the contrary to law standard may invite some level of plenary review, it is evident that because a magistrate judge is afforded broad discretion [*5] as to discovery matters, reversal as to a magistrate's resolution of a discovery dispute is appropriate only where that discretion is abused. See Tracy P. v. Sarasota County, No. 8:05-CV-927-T-27EAJ, 2007 U.S. Dist. LEXIS 33988, 2007 WL 1364381, at * 2 (M.D. Fla. May 9, 2007) ("Magistrate judges are afforded broad discretion in the resolution of nondispositive discovery disputes. The magistrate's determination will therefore be overturned only if the magistrate judge abused her discretion or the decision is clearly erroneous."); Botta, 475 F. Supp. 2d at 185; Doe v. Hartford Life and Accident Ins. Co., 237 F.R.D. 545, 547-48 (D. N. J. 2006); Doe v. Marsh, 899 F. Supp. 933, 934 (N.D.N.Y. 1995); see also 12 Charles Alan Wright, Arthur R. Miller, & Richard L. Marcus, Federal Practice and Procedure § 3069 (2d ed. 1997) ("Regarding legal issues, the language 'contrary to law' appears to invite plenary review. But many matters such as discovery scheduling or disputes might better be characterized as suitable for an abuse-of-discretion analysis.").

One notes that the 2006 case from D. N.J. (within the Third Circuit) seems to be in conflict with the [earlier] 1992 decision of the Third Circuit Court of Appeals, which text states:

The district court is bound by the clearly erroneous rule in findings of facts; the phrase "contrary to law" indicates plenary review as to matters of law. See also Rule 72(a), Fed. R. Civ. P. ("Nondispositive Matters").

Also of note, within a single decision in the District of New Jersey (629 F. Supp. 2d 416):

A magistrate judge's order is contrary to law "when the magistrate judge has misinterpreted or misapplied the applicable law." Doe v. Hartford Life & Accident Ins. Co., 237 F.R.D. 545, 548 (D.N.J. 2006) (citing Pharm. Sales & Consulting Corp. v. J.W.S. Delavau Co., 106 F. Supp. 2d 761, 764 (D.N.J. 2000)). While a magistrate judge's decision typically is entitled to deference, "a magistrate judge's legal conclusions on a non-dispositive motion will be reviewed de novo." Id.

BUT (!)

A magistrate judge's ruling on a non-dispositive matter such as a discovery motion is [page 434] "entitled to great deference and is reversible only for abuse of discretion." Kresefky v. Panasonic Commc'ns & Sys. Co., 169 F.R.D. 54, 64 (D.N.J. 1996).

Does anyone have any thoughts on this?

Wednesday, May 17, 2017

Writers on plagiarism guilty themselves of plagiarism?

A post in Discover mentions the situation of a paper on plagiarism copying (without proper attribution) from another source:

Regular readers will know that I have an interest in plagiarism. Today I discovered an amusing case of plagiarism in a paper about plagiarism.

The paper is called The confounding factors leading to plagiarism in academic writing and some suggested remedies. It recently appeared in the Journal of the Pakistan Medical Association (JPMA) and it’s written by two Saudi Arabia-based authors, Salman Yousuf Guraya and Shaista Salman Guraya.

link: http://blogs.discovermagazine.com/neuroskeptic/2017/05/17/paper-about-plagiarism-contains-plagiarism/#.WRz3w0XyvIU

As background, see the 2010 post on IPBiz:


and the 2009 post on IPBiz:


Nothing new in the revelation in Discover.

**Separately, from Blawgsearch for 16 May 2017


and for 17 May 2017:

Tuesday, May 16, 2017

Apple's pizza container patent application, published US 20120024859

The Verge has a post on Apple's published application US 20120024859, titled "Container," but useful for serving pizzas.
The first published claim:

A molded fiber container suitable for containing a food item, comprising:

a base, the base comprising:

a plurality of ridges integrated with an interior surface of the base, wherein when the food item is placed on at least some of the plurality of ridges, a gap is formed between the food item and the interior surface of the base, the gap assisting in thermally isolating the food item and allowing moisture expelled from the food item to be transported away from the food item;


a lid, the lid comprising:
a plurality of openings arranged in accordance with at least some of the plurality of ridges, and
a moisture channeling feature integrally formed in the lid, the moisture channeling feature cooperating with at least some of the plurality of openings and the gap to provide a path by which at least some of the moisture expelled from the food item is transported out of the container and into an external environment.

The Verge did NOT mention the final rejection of 1 December 2016 (37 pages), for among other things, lack of written description and indefiniteness. There are also rejections for obviousness, over various combinations of references.

link to the post of The Verge:


Although The Verge refers to "a pizza box" , one notes a box is usually not considered round

a container with a flat base and sides, typically square or rectangular and having a lid.
"a cereal box"
synonyms: carton, pack, packet; More
an area or space enclosed within straight lines, in particular.

Valuing patents?

The article in the NLJ does not explicitly mention patent citation analysis for valuation, but does state

Valuation sometimes requires something other than a generalized categorization of value. Valuing patents monetarily can often be difficult. While objective analytical measures of portfolios can be done, they are often poor estimates of the value for any particular patent or patent family. Economic estimates, which are generally used to put a price on patents, are similarly limited. Those that consider future value are highly speculative and those that are based on actual costs fail to consider the potential use of the patent.

link: http://www.natlawreview.com/article/preparing-or-avoiding-schoolyard-brawl-rationalizing-patent-value

Recall the work of Edlyn Simmons, "Patent Statistics: Comparing Grapes and Watermelons"

Western tertiary education for Chinese and Indian nationals

Wikipedia defines tertiary education in the following way: Tertiary education, also referred to as third stage, third level, and post-secondary education, is the educational level following the completion of a school providing a secondary education. The World Bank, for example, defines tertiary education as including universities as well as institutions that teach specific capacities of higher learning such as colleges, technical training institutes, community colleges, nursing schools, research laboratories, centers of excellence, and distance learning centers

A post on radionz suggested problems with certain tertiary education institutions in New Zealand that cater to Indian and Chinese students:

The report said Linguis had about 1000 mostly Indian and Chinese students enrolled in business courses in 2015 and had expanded rapidly from just 158 students in 2012.

link: http://www.radionz.co.nz/news/national/330899/private-tertiary-institution-closed-after-widespread-plagiarism

A 2-1 CAFC majority finds the absence of an "unconditional" covenent not to sue and thus, because no mootness, subject matter jurisdiction

The decision of Judge Robinson of D. Del. in Arcelormittal vs. AK Steel was affirmed in a 2-1 vote:

Plaintiffs sued Defendants in 2010 for infringing U.S.
Patent No. 6,296,805.

After our most recent remand in
this case, the district court invalidated
claims 24 and 25 of U.S. Patent No. RE44,153, the reissue
of the ’805 patent. We conclude that
the district court possessed subject matter jurisdiction
when it granted summary judgment, that the court properly followed
our most recent mandate, and that the court
properly exercised its discretion to deny ArcelorMittal’s Rule 56(d) request.

Accordingly, we affirm.

Of note in the majority opinion:

In this fact-specific context,
we must give effect to ArcelorMittal’s express
intent to make conditional delivery of an unconditional covenant
mean something different than unconditional delivery of
an unconditional covenant.

Judge Wallach, in a lengthy dissent, argued that the case had become moot after
the signing of the covenant not to sue.

Did the covenant not to sue take effect when signed, or when delivered to the
federal district court?

Monday, May 15, 2017

Twitter prevails over Easyweb at CAFC

Easyweb lost under 35 USC 101:

EasyWeb appeals the district court’s grant of summary judgment of patent ineligibility under 35 U.S.C. § 101 and in the alternative, non-infringement. Because all asserted claims recite patent-ineligible subject matter, we affirm.

No invention:

Turning to the second step [of Alice], we find claim 1 does not contain an inventive concept sufficient to “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355. The elements of claim 1 simply recite an abstract idea or an abstract idea executed using computer technology. Although EasyWeb argues that an inventive concept arises from the ordered combination of steps in claim 1, we disagree. Claim 1 recites the most basic of steps in data collection, analysis, and publication and they are recited in the ordinary order.

In sum, all the claims are directed to the abstract idea of receiving, authenticating, and publishing data, and fail to recite any inventive concepts sufficient to transform the abstract idea into a patent eligible invention. Because we find all the claims ineligible, we do not reach the remaining issues raised on appeal.

Separately, from Blawgsearch on May 15, 2017:

Saturday, May 13, 2017

UMaryland to adopt TurnItIn's "Feedback Studio"

From dbknews:

Turnitin Feedback Studio has features that allow students to check their work for plagiarism, collect student feedback anonymously and reveal content matches in student writing to "help students take ownership of their work and practice proper citation," among other features, according to the Turnitin website.


Turnitin Feedback Studio checks a student's work against databases that include billions of web pages, thousands of periodicals, journals and publications and a repository of student works collected from other institutions

link: http://www.dbknews.com/2017/05/12/umd-plagiarism-software-turnitin-canvas/

The prediction of the movie Cherry2000 for the year 2017

The movie "Cherry 2000," made in 1987, but set in the year 2017, predicted humanoid robots for 2017. In reality,
we are at self-driving cars.

**Separately,Matt LeBlanc got his start in the movie Grey Knight (aka Ghost Brigade) a horror movie (set in the time frame of the Civil War) with several stars showing up.

Scott Brooks of Wizards to talk to trademark attorneys?

Wizards' coach Scott Brooks on all-black "funeral" attire of Boston Celtics, who nevertheless lost game 6:: "I'm going to talk to my lawyers. I think we have that trademarked. That's our thing."

Thursday, May 11, 2017

CAFC vacates PTAB decision in Rovalma

From the CAFC decision:

Rovalma, S.A. owns U.S. Patent No. 8,557,056, which describes and claims methods for making steels with certain desired thermal conductivities. In October 2014, Böhler-Edelstahl GmbH & Co. KG (Böhler) petitioned the Patent Trial and Appeal Board for an inter partes review of claims 1–4 of the ’056 patent. The Board instituted a review based on Böhler’s construction of the claims at issue. In its final written decision, however, the Board rejected Böhler’s construction and adopted Rovalma’s construction instead. Böhler had not submitted arguments or evidence for unpatentability based on Rovalma’s construction. Nevertheless, the Board determined that Rovalma’s own submissions demonstrated that the claims, construed as Rovalma urged, would have been obvious to a relevant skilled artisan over the same prior art that Böhler invoked. Rovalma appeals. It argues both that substantial evidence does not support the Board’s determination and that the Board committed prejudicial procedural errors in relying on Rovalma’s own submissions when determining that the claims would have been obvious under Rovalma’s construction. We conclude that the Board did not set forth its reasoning in sufficient detail for us to determine what inferences it drew from Rovalma’s submissions. We therefore cannot determine whether the Board’s decision was substantively supported and procedurally proper. We vacate the Board’s decision and remand for further proceedings.


In challenging the Board’s decision in this case, Rovalma argues both evidentiary insufficiency and procedural inadequacy. We address those arguments in turn. We conclude that a remand is advisable in both respects, for related reasons.

Of the insufficiency:

In this case, the Board did not adequately explain the basis for the findings that Rovalma challenges. The Board found that EP ’813 and the other asserted prior-art references expressly disclosed steel compositions “including carbidic constituents and, by weight, 2–10% Mo+W+V,” as required by the “providing” steps in claims 1 and 4 of Rovalma’s patent. Final Written Decision 22. But the Board did not sufficiently lay out the basis for its implicit findings regarding the remaining process limitations. With respect to those limitations, the Board found that a person of ordinary skill “would have at least inherently completed the ‘selecting’ steps” and apparently determined that the other steps would have been obvious in view of Rovalma’s submissions. Id. But it did not explain the evidentiary basis for those determinations, and Böhler did not provide any explanation regarding the process claim elements that the Board could adopt as its own.


Adequate explanation is also lacking for why a person of ordinary skill in the art would have reasonably expected success in achieving the claimed thermal conductivities. The Board found that Rovalma’s submissions disclosed that a person of ordinary skill would have understood “heat transfer through metallic matrices and entrained metal carbides” and “the ability to model the effects of thermal processing on steel alloy microstructure,” and from that finding the Board inferred that a person of ordinary skill “would have had a reasonable expectation of success in arriving at the claimed invention.” Id. Again, however, the Board did not cite any evidence to support the inference that a person of ordinary skill would have reasonably expected to achieve the specific thermal conductivities recited in the claims. Without more explanation than we have, we are not prepared to reach a bottom-line judgment on Rovalma’s substantial-evidence challenge. The Board has not provided a sufficiently focused identification of the relevant evidence or explanation of its inferences for us to confidently review its decision and avoid usurping its factfinding authority. See Consolidated Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938) (“Substantial evidence . . . means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”). Accordingly, as we have concluded in similar circumstances, these deficiencies call for a vacatur and remand for further explanation from the Board. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1044 (Fed. Cir. 2017); In re Van Os, 844 F.3d 1359, 1360–62 (Fed. Cir. 2017); Personal Web Technologies, 848 F.3d at 991–94; Ariosa Diagnostics, 805 F.3d at 1364–67.

Of procedure:

Rovalma makes essentially two arguments in favor of its contention that the Board committed prejudicial procedural error. One argument is that the inter partes review statute prohibited the Board, after adopting Rovalma’s own claim construction, from relying on Rovalma’s own submissions in determining that the claims, so construed, would have been obvious over the Böhler-asserted prior art. The other argument is that Rovalma was denied adequate notice of and an adequate opportunity to address the possibility that the Board would rely on Rovalma’s submissions, as it ultimately did. 1


Magnum Oil, we conclude, is best understood as supporting Rovalma’s contention only with respect to the requirement of notice and opportunity to be heard, and no further. Here, the Board resolved an active dispute over claim construction in favor of the patent owner and, using the patent owner’s construction, relied on the patent owner’s own submissions to determine how a skilled artisan would have read the very prior-art references on which the petitioner’s obviousness challenge was based


Magnum Oil was addressing only the Director’s broad assertion that the Board could raise any argument that could have been included in a petition. Rejecting that broad assertion does not imply precluding reliance on a patent owner’s own submissions (part of the record created by the parties) essentially as admissions, if adequate notice and opportunity to be heard are provided. And Rovalma has identified nothing in the statute that forbids the Board to follow the principle, which is well established in other adjudicatory settings, that a tribunal may use a party’s own submissions against it, even if the opposing party bears the burden of persuasion. See, e.g., Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817, 832 (Fed. Cir. 2010) (“To the extent that the district court relied on Mr. Riceman’s testimony to explain Mr. Bauer’s motives for listing himself as the ’773 patent inventor, . . . we find this error harmless because [the patent owner’s] own evidence . . . provided a sufficient basis on which to infer that Mr. Bauer intended to deceive the PTO.”);

Aylus loses appeal at CAFC in Apple case

The outcome

Aylus Networks, Inc. appeals the United States District Court for the Northern District of California’s grant of summary judgment finding that Apple Inc.’s AirPlay feature does not infringe the asserted claims of U.S. Patent No. RE 44,412. For the reasons below, we affirm.

The CAFC observed:

The “ultimate interpretation” of a claim term, as well as interpretations of “evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history),” are legal conclusions, reviewed by this court de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). “Subsidiary factual determinations based on extrinsic evidence are reviewed for clear error.” Info–Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265 (Fed. Cir. 2015) (citing Teva, 135 S. Ct. at 841). The purpose of claim construction is to give claim terms the meaning understood by a person of ordinary skill in the art at the time of invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “There is a heavy presumption that claim terms are to be given their ordinary and customary meaning.” Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013). “Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.” Phillips, 415 F.3d at 1321. A patent’s prosecution history, though generally “‘less useful for claim construction purposes’ than the claim language and written description, plays various roles in resolving uncertainties about claim scope.” SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1349 (Fed. Cir. 2016) (quoting Phillips, 415 F.3d at 1317).

A key legal determination:

We must initially determine an issue of first impression for this court: whether statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction. As explained below, we hold that they can.


This doctrine is deeply rooted in Supreme Court precedent. See, e.g., Roemer v. Peddie, 132 U.S. 313, 317 (1889). As the Supreme Court has explained, “when a patentee, on the rejection of his application, inserts in his specification, in consequence, limitations and restrictions for the purpose of obtaining his patent, he cannot after he has obtained it, claim that it shall be construed as it would have been construed if such limitations and restrictions were not contained in it.” Id. Over time, prosecution disclaimer has become “a fundamental precept in our claim construction jurisprudence,” which “promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Eng’g, 334 F.3d at 1323–24. The doctrine is rooted in the understanding that “[c]ompetitors are entitled to rely on those representations when determining a course of lawful conduct, such as launching a new product or designing-around a patented invention.” Biogen, 713 F.3d at 1095. Similarly, we have explained that the prosecution history “provides evidence of how the [PTO] and the inventor understood the patent.” Id. (quoting Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1327 (Fed. Cir. 2009) (alteration in original)).

Ultimately, the doctrine of prosecution disclaimer ensures that claims are not “construed one way in order to obtain their allowance and in a different way against accused infringers.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).


We note that many district courts have addressed this issue and have likewise concluded that statements made by patent owners during an IPR can be considered for prosecution disclaimer. See Ilife Techs., Inc. v. Nintendo of Am., Inc., No. 3:13-cv-04987, 2017 WL 525708, at *7 (N.D. Tex. Feb. 9, 2017) (“[S]tatements during the IPR may be considered for prosecution disclaimer.”); Signal IP, Inc. v. Fiat U.S.A., Inc., No. 14-cv-13864, 2016 WL 5027595, at *16 (E.D. Mich. Sept. 20, 2016) (finding that “statements in the prosecution history, particularly during the recent IPR proceeding are unmistakable statements disavowing the plain and ordinary meaning of” a claim term).3 We endorse this conclusion.

Note also:

Aylus next argues that its statements were not part of an IPR proceeding because they were made in a preliminary response before the Board issued its institution decision. We disagree. An IPR proceeding is a two-step process: “the Director’s decision whether to institute a proceeding, followed (if the proceeding is instituted) by the Board’s conduct of the proceeding and decision with respect to patentability.” St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373, 1375–76 (Fed. Cir. 2014). We have said that an “IPR does not begin until it is instituted,” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016), but for the purposes of prosecution disclaimer, we find the differences between the two phases of an IPR to be a distinction without a difference. A patent owner’s preliminary response filed prior to an institution decision and a patent owner’s response filed after institution are both official papers filed with the PTO and made available to the public.

Nova loses exceptional case appeal at CAFC

The outcome for Nova, represented by Donald Dunner, was adverse:

NOVA Chemicals Corp. (Canada) and NOVA Chemicals Inc. (Delaware) (collectively, “NOVA”) appeal the district court’s award of approximately $2.5 million in attorney fees to Dow Chemical Co. (“Dow”) under 35 U.S.C. § 285. NOVA filed the underlying action in equity, seeking relief from a prior judgment that it had infringed certain Dow patents. The only issue in this appeal is whether the district court abused its discretion in finding this case exceptional for purposes of § 285. Because it did not abuse its discretion, we affirm.

Of background

The [district] court, however, granted Dow’s motion under § 285, which allows courts to award “reasonable attorney fees to the prevailing party” in “exceptional cases.” 35 U.S.C. § 285. The district court did so based on the weakness of NOVA’s litigating position and the manner in which NOVA pursued this case. Dow IV, 2015 WL 5766257, at *5–7. In particular, the court reiterated that NOVA’s claims for relief “just didn’t stand up” and were “not even plausible.” Id. at *6 (internal quotation marks omitted); see also id. at *2–3 (reiterating the insufficiency of NOVA’s allegations). It also stated that NOVA “could have dealt with the situation” in “less inflammatory ways.” Id. at *5. The court concluded that, despite the “high burden” applicable, NOVA “nonetheless moved forward with its theories, theories which the [c]ourt ultimately found were not even plausible.” Id. at *6.

Note a nuance in the CAFC decision:

A party whose only option for relief from a prior judgment is to file a separate action in equity should not be disincentivized from doing so if that party has a plausible basis for relief. Therefore, despite the extraordinary nature of relief that NOVA sought, the district court erred to the extent it based its exceptional-case determination on NOVA’s filing of the equity action itself.


To the extent the district court relied on NOVA’s extensive pre-suit diligence to support an exceptional-case finding, doing so would appear counterintuitive. In context, though, we think the better reading is that the district court properly relied on the extensiveness of NOVA’s pre-suit diligence to confirm NOVA’s high burden and the gravity of its allegations. The court did not rely on the pre-suit diligence itself as an independent basis to find the case exceptional. It later clarified that even though NOVA’s pre-suit diligence “undercut[] Dow’s assertion” of bad faith, “it d[id] nothing to sway the [c]ourt to find that this case [wa]s not exceptional.” Id. We agree, as a general matter, that the extent of a party’s pre-suit investigation or how fervently it believed in its allegations does not affect the objective strength of that party’s litigating position.


Any concern regarding the district court’s comparison is tempered because, again, it did not hold that this case stood out merely because NOVA requested that a prior judgment be set aside for fraud whereas many other patent cases do not present such circumstances. The equity action was a direct extension of, and intertwined with, the prior infringement action.3 Requiring the district court in this circumstance to narrow its comparison to other independent actions requesting relief from judgment would run counter to the Supreme Court’s general instruction that “[d]istrict courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” Octane Fitness, 134 S. Ct. at 1756. The district court therefore did not commit reversible error in comparing this case to patent cases more generally.

Monday, May 08, 2017

Intellectual Ventures loses appeal at CAFC of IPR decisions: 2016-1739, 2016-1740, 2016-1741

Following institution of inter partes reviews, the
United States Patent Trial and Appeal Board found
certain claims of Intellectual Ventures’ patents anticipated
by or obvious over the prior art. Intellectual Ventures
appeals from those decisions, arguing that the Board
denied it procedural due process and misconstrued two
claim terms. We find no due process violation and find
that the Board’s claim construction was correct. We


Intellectual Ventures argues on appeal that the
Board erred by (1) adopting a surprise construction that
denied Intellectual Ventures due process; (2) misconstruing
“an indication of an operating bandwidth”; and
(3) misconstruing “reconfigurable filters.” We address
each argument below.

As to the due process argument of Intellectual Ventures:

We disagree. Due process requires notice and an opportunity
to be heard by an impartial decision-maker.
Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed.
Cir. 2013). As formal administrative adjudications, IPRs
are subject to the Administrative Procedure Act (“APA”).
SAS, 825 F.3d at 1351. Under the APA, the Board must
inform the parties of “the matters of fact and law asserted.”
5 U.S.C. § 554(b)(3). It also must give the parties an
opportunity to submit facts and arguments for consideration.
Id. § 554(c). Each party is entitled to present oral
and documentary evidence in support of its case, as well
as rebuttal evidence. Id. § 556(d). Pursuant to these
provisions, the Board may not change theories midstream
without giving the parties reasonable notice of its change.
Belden, 805 F.3d at 1080.

The record demonstrates that Intellectual Ventures
had notice and an opportunity to be heard. The parties
engaged in “a vigorous dispute over the proper construction”
of “an indication of an operating bandwidth.” J.A. 8.
Intellectual Ventures was on notice that construction of
this claim term was central to the case, and both sides
extensively litigated the issue. Intellectual Ventures and
Google proposed constructions during briefing, while
Ericsson argued that no construction was necessary. J.A.
762, 4219, 7359. Upon reviewing Google’s and Ericsson’s
arguments, Intellectual Ventures could have requested
leave to file a sur-reply. Belden, 805 F.3d at 1081.
It did
not do so. At the Ericsson oral argument, the Board
questioned counsel for both Intellectual Ventures and
Ericsson about the construction of “an indication of an
operating bandwidth.” See, e.g., Oral Arg. Tr. at 45–46,
49, 66.2 At the Google oral argument later that day, the
Board asked Intellectual Ventures and Google to respond
to a proposed construction. J.A. 7541–7542, 7576.

After the Board issued its Final Written Decision, Intellectual
Ventures was entitled to seek rehearing. 37 C.F.R.
§ 42.71(d)(2). It did not.

**Of judicial notice:

Though not included in the Joint Appendix, this
citation refers to the August 25, 2015 consolidated oral
argument in IPR2014-00915 and IPR2014-00919. We
may judicially notice matters of public record for purposes
of appeal. See Biomedical Patent Mgmt. Corp. v. Cal.
Dep’t of Health Servs., 505 F.3d 1328, 1331 n.1 (Fed. Cir.

As to SAS:

To be clear, after the Board adopts a construction, it
may not change theories without giving the parties an
opportunity to respond. Id. No such change occurred
here. Intellectual Ventures, Ericsson, and Google each
submitted arguments as to whether and how to construe
“an indication of operating bandwidth.” The Board questioned
counsel about it at oral argument, asked for reaction
to a hypothetical construction, and issued its
construction in its Final Written Decision. This is not the
situation in SAS, where the Board construed a claim term
one way in its Institution Decision and, unexpectedly, a
different way in its Final Written Decision. 825 F.3d at
1351. Because Intellectual Ventures had notice and an
opportunity to be heard, Abbott Labs., 710 F.3d at 1328,
the Board did not violate Intellectual Ventures’ due
process. We thus turn to the merits of Intellectual Ventures’
two claim construction arguments.

Note also:

Intellectual Ventures’ proposed
construction requiring two separate filters,
therefore, would exclude the preferred embodiment of a
single filter. A construction excluding a preferred embodiment
“is rarely, if ever, correct.” PPC Broadband, Inc.
v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755
(Fed. Cir. 2016). The Board acknowledged that the
phrase “are reconfigurable” normally indicates a plurality
of filters. But in light of the ’353 patent’s incorporation of
a single-filter embodiment, we find the Board’s construction
to be reasonable. See id. (“[E]ach and every claim”
need not “be interpreted to cover each and every embodiment.”).

Sunday, May 07, 2017

CBS Sunday Morning on May 7, 2017

Jane Pauley introduced the stories for May 7, with the cover story by Lee Cowan on prostitution. Also noted, Mo Rocca on Lucy Liu, Seth Doane on slow images, Anthony Mason on Diane Lane, Pauley on Condoleeza Rice, and Rita Braver on Marc Chagall (and music).

The headlines were the French election, release of girls in Abuja, Nigeria, the death of the then-oldest US Olympian, Adolph Kiefer, Kentucky Derby winner Always Dreaming seen by crowd of 158,000.

Yesterday was Free Comic Book Day.

Lee Cowan's story started on Aurora Avenue in Seattle, a city which emphasizes punishing the buyers/customers of prostitution. Peter Holmes. Nordic model. Prostituion is $32 billion per year business. Buyer beware model vs. zero tolerance model (crack down on everyone). Sheri's Ranch in Nevada.

The Almanac feature was May 7, 1925, the date of death of William Lever of Lever Brothers, later Unilever. Sunlight Soap. Lifebuoy.
Knorr Soup, Lipton, Ben and Jerry, Hellman's. Of relevance to IP (but not mentioned) was the lawsuit brought over Hampton Creek's "Just Mayo" products being falsely advertised because they did not contain eggs. The PatSnap blog noted the following about patent strategy:

Using PatSnap Insights, we were able to see the abandonment/renewal rate for Unilever and its number one competitor, P&G. In the graph below it is clearly visible that P&G is in a defense mode by letting its patents go whereas Unilever is in a growth mode by keeping hold of its patents. From this we can extrapolate that Unilever keeps on top of their Intellectual Property portfolio and renews most of their patents when they are approaching expiration.

Seth Doane's piece on "slow" included a reference to a "moment of nature" piece on Bighorn sheep at Jackson Hole as an example of slow tv.

Of note was an ad (in the Philly area) for Joe Khan, noting Khan "studied law under Barack Obama."

Anthony Mason on Diane Lane. Colleen Farrington, Miss October in 1957. La Momma. At 13, Runaways. "A Little Romance." Cover of TIME magazine at age 14. "The Outsiders," "The Cotton Club."

Saturday, May 06, 2017

Patent maintenance fees can be a burden to the small inventor; the case of Catherine Hettinger and the fidget spinner

Note the text from US News on Catherine Hettinger, the inventor of the fidget spinner :

As the fidget spinner craze spreads through schools and toy stores, its Florida-based creator hasn't seen a penny of profit decades after inventing the gadget.

Catherine Hettinger couldn't afford to update the patent on her creation – small top-like gadgets that people can spin fast with their fingers and are meant to help children focus – and hasn't banked any money from their rise in popularity. Hettinger's patent expired in 2005, and she couldn't afford the $400 renewal fee, according to The Guardian.

link: https://www.usnews.com/news/national-news/articles/2017-05-05/fidget-spinner-inventor-misses-major-payday-after-patent-on-toy-expires

CAFC tackles colon cleansing and purgation; Braintree wins its appeal

The decision Braintree v. Breckenridge by the SDNY is reversed by the CAFC in
2017 U.S. App. LEXIS 7980: "we reverse the district court's grant
of summary judgment of noninfringement and remand for
entry of judgment for Braintree."

Braintree Laboratories, Inc. (“Braintree”) appeals
from the Southern District of New York’s summary judgment
that Breckenridge Pharmaceutical, Inc. (“Breckenridge”)
does not directly infringe or induce infringement of
the asserted claims of U.S. Patent No. 6,946,149 (“the
’149 patent”). For the reasons discussed below, we reverse
and remand.

The subject matter related to bowel preps for colonoscopies:

The ’149 patent is directed to compositions and methods
for purging a patient’s colon, as is routinely performed
prior to a colonoscopy. Braintree markets a bowel prep
kit named SUPREP, which is listed in the Food and Drug
Administration’s (“FDA”) Approved Drug Products with
Therapeutic Equivalence Evaluations as covered by one or
more claims of the ’149 patent. SUPREP is sold as a kit
consisting of two six-ounce bottles of an aqueous hypertonic
solution of potassium sulfate, magnesium sulfate,
and sodium sulfate.

At issue was the meaning of "purgation":

We previously construed the “purgation” limitation of
the ’149 patent in Braintree Laboratories, Inc. v. Novel
Laboratories, Inc., 749 F.3d 1349 (Fed. Cir. 2014). In that
appeal, Novel—another ANDA applicant for a generic
version of SUPREP—argued the district court erred in
construing “purgation” to encompass something less than
full colon cleansing. Novel argued “purgation” must mean
full cleansing of the colon sufficient for a colonoscopy.
Under Novel’s noninfringement theory, one bottle of its
generic version of SUPREP could not satisfy the “purgation”
limitation because full cleansing only occurs after
ingestion of two bottles. But two bottles could not satisfy
the volume limitation “from about 100 ml to about
500 ml” because two bottles contain 946 mL of solution.
We rejected Novel’s argument and affirmed the district
court’s construction of “purgation” to mean “an
evacuation of a copious amount of stool from the bowels
after oral administration of the solution.” Id. at 1354–55.
We reasoned the claims only require “inducing purgation.”
Id. We stated Braintree’s “one bottle” theory of
infringement—in which one bottle of Novel’s proposed
product both induces “purgation” and satisfies the volume
limitation—“can prevail” under the district court’s construction.
Id. at 1354.

The dissent stated that Braintree’s “one bottle” infringement
theory is erroneous as a matter of law because
under 35 U.S.C. § 271(e), Braintree can only assert infringement
over the product as described in Novel’s
ANDA, which discloses 946 mL in volume. Id. at 1361–
63. The dissent added that apart from the § 271(e) issue,
Braintree’s “one bottle” theory rests on an incorrect claim
construction because “from about 100 ml to about 500 ml”
must refer to the total volume of consumed solution. Id.
at 1363–65.

The district court granted Breckenridge’s motion for
summary judgment of noninfringement. It held that
Novel did not preclude Breckenridge’s noninfringement
theory because that opinion did not address the separate
volume limitation. It construed “from about 100 ml to
about 500 ml” to mean “the entire volume of solution
administered to a patient over a treatment period rather
than the volume of a single bottle, or half-dose.” J.A. 13–
14. Because every asserted claim requires “from about
100 ml to about 500 ml,” the district court found that
Breckenridge’s proposed product, with a total volume of
946 mL, does not infringe any of the asserted claims. The
district court also agreed that Breckenridge’s ANDA label
could not induce infringement under § 271(e), finding
inducing purgation without “achieving a fully cleansed
colon” is not an FDA-approved use of Breckenridge’s
product. For method claim 23, it found no induced infringement
because the effective amount that is administered
in two or more doses must be in the range of from
about 100 ml to about 500 ml. Braintree appeals. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Reviewing the past-->

There was a parallel case:

We previously construed the "purgation" limitation of the '149 patent
in Braintree Laboratories, Inc. v. Novel Laboratories, Inc., 749 F.3d 1349 (Fed. Cir. 2014).
In that appeal, Novel-another ANDA applicant for a generic version of SUPREP-
argued the district court erred in construing "purgation"
to encompass something less than full colon cleansing.
Novel argued "purgation" must mean full cleansing of the colon
sufficient for a colonoscopy. Under Novel's noninfringement theory,
one bottle of its generic version of SUPREP could not satisfy the "purgation"
limitation because full cleansing only occurs after ingestion of two bottles.
But two bottles could not satisfy the volume limitation
"from about 100 ml to about 500 ml" because two bottles contain 946 mL of solution.

We rejected Novel’s construction of “purgation”
and held that “while cleansing is the goal specifically
articulated in the specification, it is not a claim requirement.”
Novel, 749 F.3d at 1355. We concurrently interpreted
“from about 100 ml to about 500 ml” as what is
necessary to induce purgation. Our construction stemmed
from the arguments presented and the claim language,
which linked the “purgation” and “from about 100 ml to
about 500 ml” limitations. The parties do not dispute that
the preamble, “[a] composition for inducing purgation,” is
limiting. The claim’s recitation of “the composition comprising
from about 100 ml to about 500 ml” derives antecedent
basis from the preamble. The same composition
for “inducing purgation” must be “from about 100 ml to
about 500 ml.”

The "due process" issue:

We are mindful of the due process implications of
binding Breckenridge to a claim construction decision in
which it was neither a party nor in privity with one. See,
e.g., Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402
U.S. 313, 329 (1971) (“Due process prohibits estopping
[litigants who never appeared in a prior action] despite
one or more existing adjudications of the identical issue
which stand squarely against their position.”). However,
Breckenridge expressly stipulated that “the claim construction
of ‘purgation’ adopted by the District Court in
the Novel Case will apply.” J.A. 296 ¶ 5. Breckenridge
further agreed “to be bound by a final decision in the
Novel Case” on “any issues” related to patent invalidity
and noninfringement. J.A. 297 ¶ 8. Whether or not the
construction Breckenridge advocates has merit, in light of
its stipulations, Novel foreclosed the district court’s construction
of “from about 100 ml to about 500 ml.”

Of label infringement:

This case is distinguishable from the cases in which
we have held an ANDA applicant’s proposed label would
not induce infringement. In Warner-Lambert Co v. Apotex
Corp., 316 F.3d 1348 (Fed. Cir. 2003), we held that an
ANDA applicant’s labeled indication for partial seizures
would not induce infringement of a “method for treating
neurodegenerative diseases.” We noted that the two
indications were entirely distinct because partial seizure
is not a neurodegenerative disease. Id. at 1353. We
explained that to gain approval for the neurodegenerative
disease indication, which was not an approved indication
for the brand product, the ANDA applicant would have
had to submit safety and efficacy data to the FDA. Id.
at 1360, 1361 n.6. Similarly, in Allergan, Inc. v. Alcon
Labs., Inc., 324 F.3d 1322 (Fed. Cir. 2003), we held that
an ANDA applicant’s labeled indication for reducing
intraocular pressure would not induce infringement of
methods of “protecting the optic nerve and retina” and
“providing neural protection.” Because the claimed uses
were not approved by the FDA, the ANDA applicant could
not be held liable for infringement “even though [the
proposed drug] necessarily had those protective effects in
patients who took the drug for the approved purpose.”
Bayer Schering Pharma AG v. Lupin, Ltd., 676 F.3d 1316,
1321 (Fed. Cir. 2012) (citing Allergan, 324 F.3d at 1324).


In contrast, inducing purgation is not a distinct use of
Breckenridge’s proposed product; inducing purgation is
the means by which the approved indication achieves its
result. Breckenridge concedes that its proposed product
“cleanses the colon of a patient by inducing purgation”
when taken as directed by its label. J.A. 1780–81 ¶¶ 25,
37–38 (emphasis added). Its stipulations make clear that
inducing purgation is not supplemental or ancillary to its
proposed indication of colon cleansing—it is plainly within
the scope of Breckenridge’s proposed indication.
We hold that Breckenridge’s labeled indication for
colon cleansing “recommends or suggests to physicians
that the drug is safe and effective for administration to
patients for the purposes of inducing [purgation].” Bayer,
676 F.3d at 1322. There can be no dispute that, given
SUPREP’s sole approved use, the FDA has approved
SUPREP as safe and effective for the indication of colon
cleansing. Because Breckenridge’s labeled indication of
colon cleansing requires performing the claimed steps in
order to achieve colon cleansing, it follows that a physician
would understand Breckenridge’s ANDA label to
recommend or suggest that “inducing purgation” is safe
and effective. To hold otherwise would lead to the absurd
result that a physician would understand Breckenridge’s
proposed product to be safe and effective for fully cleansing
the colon, but not safe and effective at accomplishing a
partial colon cleansing.

Because Breckenridge’s ANDA
label “instruct[s] how to engage in an infringing use, [it]
show[s] an affirmative intent that the product be used to
infringe.” AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042,
1059 (Fed. Cir. 2010) (citation omitted).
Breckenridge stipulated that its proposed product
infringes claims 15, 18, 19, 20, and 23 of the ’149 patent if
its motion for summary judgment of noninfringement is
denied. J.A. 296 ¶ 3. It further agreed not to raise any
defenses or counterclaims other than the noninfringement
defense articulated in its motion for summary judgment.
Id. ¶¶ 4, 6. We thus reverse the district court’s grant of
summary judgment and remand with an instruction to
enter judgment for Braintree.

**Separately, from blawgsearch on 6 May 2017

Friday, May 05, 2017

Photojournalist Souvid Datta caught in cut and paste job; his Facebook, Twitter and website accounts go down

From the Huffington Post:

In 2014, HuffPost featured a series from award-winning photographer Souvid Datta titled “In the Shadows of Kolkata.” The photos depict women living and working in Sonagachi, a red-light district in Kolkata, India, focusing on the relationships between mothers and daughters amidst a backdrop of sex work riddled with assault and abuse.

Upon seeing the HuffPost piece, a shrewd Bangalore-based reader named Shreya Bhat noticed something strange ― that a woman featured in the background of one of Datta’s photos suspiciously resembled a subject of the late photographer Mary Ellen Mark, who famously documented Mumbai’s red light district in the 1970s.

In fact, Datta’s subject and Mark’s weren’t just similar, they were identical.

“I was working in Calcutta, in the red light district of Sonagachi, as a social worker in the year 2014,” Bhat wrote in an email to HuffPost. “When I came across the picture in question, I started to look more closely, not because I thought it was doctored, but because the woman in the background looked familiar. Like I had seen her somewhere else, in another photograph.”

On a whim, Bhat decided to check Mark’s portfolio, as she considered the photographer’s work to be the most extensive when it comes to covering sex work in India. “I had looked through every bit of her work in the past and started doing that again, image by image,” she recalled. “Until I came to the photograph Souvid had nicked the woman from.”

As to the "here today, gone tomorrow" nature of the internet (refer to IPBiz posts on "Rutgers is Wrong" and the term "Sikahama'd"):

In an essay featured on The Scribbler, Datta explained the story behind his image ― or at least, what he claimed the story was before taking his comments offline. Thankfully, PetaPixel took a screenshot before the comments were removed.


Upon learning of Bhat’s detective work, HuffPost reached out to Datta for comment with no reply. Since the allegations were published on Wednesday, he took down his website, Facebook and Twitter accounts. One day later, in an interview with Time, the photographer appeared to have admitted to plagiarism.

“I foolishly doctored images,” Datta said, “inexcusably lied about others’ work being my own and then buried these wrongdoings in the years that followed.”

link to HuffPost text: http://www.huffingtonpost.com/entry/souvid-datta-plagiarism-photography_us_590b7208e4b0104c734ce127

**The DailyO gives some detail of "what happened":

The woman Datta refers to as Asma, is in fact, not a part of the photo at all. The character called Asma actually belongs to a rather famous photo-series by Mary Ellen Mark, an American photojournalist who spent considerable time in Mumbai, capturing the life at the brothels of Falkland Road in the late 70’s. Mark’s grisly photographs of the dark dingy brothels of Mumbai are iconic. Thus stealing a photo from her corpus is rather difficult.

What Datta did, as is evident, was cut out one of the subjects from one a photograph, flipped it horizontally and placed it in his photo. The original photograph is titled “Transvestites getting dressed in a courtyard” and dates back to 1978.

link: http://www.dailyo.in/arts/souvid-datta-plagiarism-mary-ellen-mark-sonagachi-photography/story/1/17017.html

**Thequint posted text from The Alexia Foundation:

Over the past week, a number of serious ethical allegations have arisen about the work of Souvid Datta.
Mr. Datta received a student Award of Excellence Grant from The Alexia Foundation in 2013. The award gives a cash grant of $500 and up to $1500 to attend an education workshop. The deadline for the submission of final projects is a year from receipt of funding. At his request and because of the long term nature of his work, we granted him several extensions. To date, we have yet to receive his final project yet.

Because of the serious nature of the allegations against Mr. Datta, we have commenced an investigation to determine the best course of action for the Alexia Foundation to take.

link: https://www.thequint.com/india/2017/05/05/souvid-datta-confesses-to-plagiarism

In IN RE: AFFINITY LABS OF TEXAS, LLC, case, CAFC emphasizes that estoppel provisions of pre-AIA section 317(b) are CLAIM-CENTRIC and PARTY-CENTRIC

The CAFC decision related to cases merged from different patent challenges at the PTAB level:

This appeal arises from two inter partes reexaminations
and an ex parte reexamination of U.S. Patent No.
7,324,833 (the ’833 patent), owned by Affinity Labs of
Texas, LLC (Affinity). Richard King requested ex parte
reexamination of all original claims of the ’833 patent,
based on multiple asserted grounds of unpatentability.
Volkswagen Group of America, Inc. (Volkswagen) requested
inter partes reexamination of all claims based on
additional, different asserted grounds of unpatentability.
And Apple Inc. (Apple) requested inter partes reexamination
of all claims based on still different asserted grounds
of unpatentability. The United States Patent and Trademark
Office (PTO) granted all three requests and sua
sponte merged these three reexaminations into a single

Volkswagen subsequently received an adverse final
judgment in a parallel district court proceeding, upholding
the validity of claims 28 and 35 of Affinity’s ’833
patent. In response, Affinity petitioned the PTO to vacate
the entire merged reexamination proceeding, arguing that
the estoppel provision in pre-America Invents Act (AIA)
35 U.S.C. § 317(b)1 extends to all parties, not just
Volkswagen, and all claims challenged in the three reexaminations,
not just litigated claims 28 and 35. The PTO
denied Affinity’s termination request, but it severed the
Volkswagen reexamination from the merged proceeding
and held that no rejection could be maintained in that
reexamination as to the claims at issue in the district
court action. The Examiner then evaluated the
Volkswagen reexamination separately from the merged
King/Apple reexamination and ultimately issued a Right
of Appeal Notice in each proceeding, rejecting numerous
claims of the ’833 patent as unpatentable. The Patent
Trial and Appeal Board (Board) affirmed the Examiner’s
rejections. See Apple Inc. v. Affinity Labs of Tex., LLC,
No. 2015-004281, Reexamination Nos. 95/001,264 and
90/010,333, 2015 WL 4038964, at *1 (P.T.A.B. June 30,
2015) (-4281 Board Decision); Apple Inc. v. Affinity Labs
of Tex., LLC, No. 2015-006122, Reexamination No.
95/001,223, 2015 WL 5092841, at *1 (P.T.A.B. Aug. 26,
2015) (-6122 Board Decision). Affinity appealed to this
court and the Director of the United States Patent and
Trademark Office (Director) intervened. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).

Affinity first argues that the PTO erred in maintaining
the reexaminations in light of the final decision that
Volkswagen failed to prove invalidity of two of the patent’s
claims, which were asserted in the co-pending
litigation and, therefore, the Board’s decisions in the
reexaminations should be reversed pursuant to the section
317(b) estoppel provision. Affinity also asserts that,
assuming the reexaminations were properly maintained,
the Board’s decisions are based on misreadings of the
asserted prior art and a misevaluation of Affinity’s objective
indicia evidence of nonobviousness. Because the
plain language of pre-AIA section 317(b) precludes Affinity’s
estoppel argument and because we see no error in the
-4281 Board Decision upholding the Examiner’s findings
of unpatentability as to all claims at issue, we affirm.
therefore, dismiss as moot Affinity’s appeal of the -6122
Board Decision upholding the unpatentability of a subset
of claims affirmed as unpatentable in the -4281 Board

As to legal standards:

We review the PTO’s decisions under the standards
set forth in the Administrative Procedure Act (APA), 5
U.S.C. § 706. Pride Mobility Prods. Corp. v. Permobil,
Inc., 818 F.3d 1307, 1313 (Fed. Cir. 2016). We set aside
the agency’s actions if they are “arbitrary, capricious, an
abuse of discretion, or otherwise not in accordance with
law” or “unsupported by substantial evidence.” 5 U.S.C.
§ 706(2). We review its legal conclusions de novo and its
factual findings for substantial evidence. In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported
by substantial evidence if a reasonable mind might
accept the evidence as adequate support for the finding.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

The termination component of Affinity's argument:

We first address Affinity’s argument that the PTO
improperly maintained all three reexaminations over the
estoppel provision of pre-AIA 35 U.S.C. § 317(b). Affinity
argues that § 317(b) requires the PTO to terminate the
Volkswagen reexamination in its entirety after
Volkswagen received an adverse ruling as to the asserted
claims—claims 28 and 35—in the co-pending litigation.

The CAFC observed:

A few notable features of the inter partes reexamination
statutory estoppel provision stand out from its plain
language: (1) it applies to the party in the civil action that
loses its validity attack against “any patent claim” as well
as the party’s privies; (2) it applies to validity issues
raised in the civil action or that could have been raised in
that action; (3) unlike section 317(a), it speaks in terms of
any “patent claim,” as opposed to the “patent;” (4) it
prohibits the losing party and its privies from requesting
an inter partes reexamination “of any such patent claim;”
and (5) “on the basis of such issues,” it prohibits the PTO
from “maintain[ing]” any inter partes reexamination
requested by the losing party.

Affinity urges that we order the PTO to terminate all
three reexamination proceedings—even though they
involve several claims beyond the litigated claims 28 and
35, the other inter partes reexamination requester had no
involvement or relationship to that prior litigation, and
the third proceeding was an ex parte reexamination—
based on its reading of section 317(b).

The PTO offers a
counter reading of this statutory estoppel provision, which
follows its established practice set forth in Manual of
Patent Examining Procedure (MPEP) § 2686.04(V)(A).
“Our first step in interpreting a statute is to determine
whether the language at issue has a plain and
unambiguous meaning with regard to the particular
dispute in the case. Our inquiry must cease if the statutory
language is unambiguous and the statutory scheme
is coherent and consistent.” Pennzoil–Quaker State Co. v.
United States, 511 F.3d 1365, 1373 (Fed. Cir. 2008) (quoting
Robinson v. Shell Oil Co., 519 U.S. 337, 340 (1997)).
“Absent a clearly expressed legislative intention to the
contrary, [the statute’s plain] language must ordinarily be
regarded as conclusive.” Wyeth v. Kappos, 591 F.3d 1364,
1369 (Fed. Cir. 2010) (quoting Consumer Prod. Safety
Comm’n v. GTE Sylvania, Inc., 447 U.S. 102, 108 (1980))
(alteration in original).

[Note Chevron is NOT cited!]

The problem with Affinity's argument:

The crux of Affinity’s argument is that the statute operates
differently and has a much broader impact against
a losing party’s active, pending inter partes reexamination
compared to a losing party’s request for an inter partes
reexamination. According to Affinity, if a patent challenger
conclusively loses its validity challenge in court
against, say, claims 1–5 of a 20-claim patent, section
317(b) prevents that party from requesting an inter partes
reexamination on just claims 1–5 (and not claims 6–20) of
that patent on issues that had been raised or could have
been raised in the civil action. No one disagrees there.
But, in Affinity’s view, section 317(b) requires termination
of a pending inter partes reexamination that had been
requested by the losing party, regardless of which claims
of the patent are being reexamined in the proceeding: it
could be claims 1–10, or 1–20, or even 6–20.

As to the scope of estoppel:

We disagree with Affinity’s proposed
interpretation and instead see the estoppel provision’s
claim-based approach applying in the same way to
both a request for inter partes reexamination and the
maintenance of a pending inter partes reexamination.
The structure of pre-AIA section 317(b) contemplates
a parallel and consistent approach to limiting a party’s
ability to request a reexamination and to maintain a
reexamination once a final decision has been entered
against the party in a civil action. The statute first
explains that the party may not request reexamination on
“any such patent claim on the basis of issues which that
party or its privies raised or could have raised in such
civil action.” This language limits the scope of estoppel in
two ways: (i) to the specific claims that were actually at
issue in the district court proceeding; and (ii) to challenges
to those claims that were raised or could have been
raised. In other words, the “issues that could have been
raised” are necessarily bounded by the preceding reference
to “any such patent claim.”


Thus, as
with section 317(b), the statute in section 315(c) similarly
estops the requester from challenging again, in a different
venue, the validity of claims that were actually decided
against the requester. Nothing in section 315(c), however,
estops the requester from challenging at a later time the
validity of a claim that was not previously requested
pursuant to section 311 and reexamined pursuant to
section 313.


We also find no basis in the statute for Affinity’s argument
that the final decision in the Volkswagen litigation
should have preclusive effect on the reexaminations
requested by King or Apple. By its plain and unambiguous
terms, pre-AIA section 317(b) extends only to inter
partes reexaminations—not ex parte reexaminations. The
estoppel effect of the statute, therefore, has no bearing on
the ex parte King reexamination. Moreover, the statute
also imposes the aforementioned limitations only on a
requester that was a party to the civil action or its privies.
Because Apple was neither a party to the Volkswagen
litigation nor was there any evidence Apple was
Volkswagen’s privy, we also find no error in the PTO’s
decision not to terminate the inter partes reexamination
requested by Apple.

As to policy arguments:

Affinity’s invocation of the general policy goal of preventing
abusive reexamination practices cannot override
the statute. “It is a bedrock canon of statutory construction
that our judicial inquiry ends where statutory language
is plain and unambiguous.” Pfizer, Inc. v. Lee, 811
F.3d 466, 471 (Fed. Cir. 2016) (quoting White v. United
States, 543 F.3d 1330, 1337 (Fed. Cir. 2008)). “[O]nly a
‘most extraordinary showing of contrary intentions’ by
Congress justifies a departure from the plain language of
a statute.” Wyeth, 591 F.3d at 1371 (quoting Garcia v.
United States, 469 U.S. 70, 75 (1984)). The plain language
of the statute does not permit extending the reach
of estoppel as far as Affinity suggests.

Footnote 4 is of interest as to time-logic:

We also find meritless Affinity’s argument that by
merging the proceedings the PTO “effectively created an
inter partes review.” Affinity Opening Br. at 25. Affinity
provides no statutory, regulatory, or rule-based support
for its allegation, nor can we comprehend how it could do
so, given the PTO merged the proceedings on June 14,
2010—more than two years before inter partes review was
We are also unaware of any justification
supporting Affinity’s suggestion that the PTO’s sua sponte
decision to merge the proceedings somehow modifies the
scope of the statutory estoppel applied against the requester.

Footnote 5 should be noted:

We reject the Director’s alternative argument that
dismissal of Affinity’s petitions to terminate the reexaminations
was not a “final” agency action pursuant to the
Manual of Patent Examining (MPEP) § 1002.02 (“A
dismissal of a petition, a denial of a petition without
prejudice, and other interlocutory orders are not final
agency action.”). To the extent the Director argues the
refusal to terminate the proceeding under section 317(b)
is unreviewable under 5 U.S.C. § 704, we have previously
held that such a decision is reviewable once the Board
issues a decision on the merits. See Automated Merchandising
Sys., Inc. v. Lee, 782 F.3d 1376, 1381 (Fed. Cir.
2015). We also reject the Director’s argument that Affinity
was required to first seek reconsideration under the
circumstances of this case. There was no indication in the
PTO dismissal of Affinity’s petitions that further action
was required by Affinity to receive the PTO’s final an
swer. Indeed, the PTO’s dismissal—a fifteen-page decision
from the Office of Patent Legal Administration—had
all the hallmarks of a final action marking the consummation
of the agency’s decision-making process. In that
decision, the PTO did not reference MPEP § 1002.02, nor
did it inform Affinity that it was required to seek reconsideration
in the dismissal. We, therefore, think it would
be unnecessary to have required Affinity to have done

**As to anticipation, the CAFC determines that reasonable inferences
constitute substantial evidence:

A claim is unpatentable as anticipated “if each and
every limitation is found either expressly or inherently in
a single prior art reference.” King Pharm., Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (citation
omitted). Anticipation is a question of fact we review for
substantial evidence. REG Synthetic Fuels, LLC v. Neste
Oil Oyj, 841 F.3d 954, 958 (Fed. Cir. 2016).


Given the disclosure above, the Board was reasonable
to conclude that Dwyer’s portable electronic device necessarily
displays name information on the graphical interface
to allow the user to meaningfully navigate the digital
files stored on the device. Substantial evidence supports
the Board’s finding that this limitation is disclosed by


Based on this disclosure, the Board’s finding that Dwyer
teaches soft buttons (comprised of the icon 220 and name
222 information found in field 218) linked to respective
audio information sources (as stored in the portable
digital recorder) is eminently reasonable. We, therefore,
conclude that substantial evidence supports the Board’s
finding that claims 1–27, 39, and 45 are unpatentable
based on the asserted Dwyer rejections.

As to obviousness,

Obviousness is a question
of law based on underlying findings of fact. Harmonic
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir.
2016). The underlying findings of fact include the scope
and content of the prior art, the differences between the
prior art and the claimed invention, whether there is a
motivation to combine prior art references, the level of
ordinary skill in the art, and relevant secondary considerations.
Merck & Cie v. Gnosis S.P.A., 808 F.3d 829, 833
(Fed. Cir. 2015), cert. denied, 137 S. Ct. 297 (2016).


From this, it was reasonable for the
Board to find that Naim discloses communicating the
claimed information from the portable electronic device 2
to the external communications device, PC 11. We therefore
conclude substantial evidence supports the Board’s
finding that this limitation is disclosed by Naim.

As to secondary considerations to refute obviousness:

Finally, we are not persuaded that the Board erred in
its analysis of Affinity’s proffered objective indicia of
nonobviousness. Affinity pointed to (i) a $25 billion
industry developed around in-vehicle device integration,
which it says is covered by the claims of the ’833 patent;
and (ii) Affinity’s licensing of the ’833 patent and its
siblings to a number of entities in excess of $50 million.
Upon review, however, we agree with the Examiner that
this evidence, at best, establishes a tenuous connection
with the claimed invention.

Evidence of commercial success is only relevant to the
obviousness inquiry “if there is a nexus between the
claimed invention and the commercial success.” Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir.
2006). There is no nexus unless the evidence presented is
“reasonably commensurate with the scope of the claims.”
See Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir.
2013). Here, the Board correctly recognized that Affinity
provided no explanation or analysis that corroborates the
relationship between the claims of the ’833 patent and the
market for in-vehicle device integration technology generally.
Affinity’s argument that the claims of the ’833
patent are directed to the general field of device connectivity
and interoperability, without more, does not establish
a meaningful connection with the asserted
commercial success.


Moreover, the mere fact of licensing alone cannot be
considered strong evidence of nonobviousness if it cannot
also be shown that the licensees did so out of respect for
the patent rather than to avoid the expense of litigation.
See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d
1317, 1324 (Fed. Cir. 2004) (“Our cases specifically require
affirmative evidence of nexus where the evidence of
commercial success presented is a license, because it is
often ‘cheaper to take licenses than to defend infringement
suits.’”). To support its licensing argument, Affinity
did not enter the actual licenses into the record but,
rather, submitted the unsupported declaration of Affinity’s
President that it “has generated revenues of over
$50,000,000 for licensing the ’833 patent and related
patents.” J.A. 10488 (emphasis added).

The outcome

For the foregoing reasons, we affirm the -4281 Board
Decision that claims 1–27, 37–42, and 45–46 are unpatentable.
Because claim 36 was rejected by the Examiner
and Affinity has made no independent argument that
claim 36 was improperly rejected apart from those arguments
made with respect to the independent claims, we
remand to the Board for the limited purpose of correcting
the record to reflect that claim 36 is rejected as unpatentable
before issuing a reexamination certificate. Because
we affirm the -4281 Board Decision, we need not resolve
Affinity’s appeal relating to the -6122 Board Decision
upholding the unpatentability of claims 1–5, 8–20, and
22–27, and dismiss that appeal as moot.

**Separately, from blawgsearch on 5 May 2017: