Thursday, August 31, 2017

Ars Technica on patent trolls

NantKwest panel decision on USPTO attorneys’ fees goes en banc at CAFC

An order at the CAFC on August 31, 2017 noted:

A sua sponte request for a poll on whether to reconsider this case was made. A poll was conducted and a majority of the judges who are in regular active service voted for sua sponte en banc consideration.

The question presented:

The parties are requested to file new briefs. The briefs should address the following issue: Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the United States Patent and Trademark Office’s attorneys’ fees?

See previous post on IPBiz

CAFC in Nantkwest: “[a]ll expenses of the proceedings” under § 145 includes the pro-rata share of the attorneys’ fees the USPTO incurred to defend applicant’s appeal.


Kevin Noonan at Patent Docs begins his post on the en banc order:

The first scene in the iconic dystopian 1985 sci-fi movie Brazil by Terry Gilliam (one of the Monty Python troop) is of a peaceful citizen being snatched from his comfy chair by jackbooted, black-clad members of a SWAT team, who unceremoniously stuff him into a body bag-restraint as they take him away. As a final insult, they leave something behind for his wife and family -- a bill, for the cost of taking him into custody.

Of the word "dystopian," one finds mention in case law. For example, from footnote 4 of the 7th Circuit case, National Power, 864 F.3d 529 (CA7 2017) :

National Power cites to a Wikipedia article about Judge Dredd to claim that the penalty imposed was arbitrary and capricious and as if "a police officer arrested a bank robber, summarily declared the robber's guilt and sentenced him to prison time ... ." Judge Dredd, both in the pages of comic books and on the screen, is a "street judge" in a dystopian future who is empowered to summarily arrest, convict, sentence, and execute offenders. See (visited July 18, 2017). It is obvious to us that the Administrator did not engage in the type of justice Judge Dredd embodies. The Administrator did not arbitrarily declare, "I am the law!" and hand down a penalty without considering all of the relevant factors.

In the context of copyright [320 F. Supp. 2d 84 ]:

Finally, it bears emphasis that The Forest's alteration of the tone, lyrics and musical features of Wonderful World makes clear that the song itself is a target of parodic criticism, and that the creators of The Forest are not merely using the original song as an ironic or satirical device to comment on what they view as a less than wonderful world. The latter kind of use, which typically requires licensing, can be illustrated by the song's use in certain films. For example, in Terry Gilliam's 12 Monkeys, the Armstrong recording of Wonderful World is played over the final credits, ironically contrasted with the film's depiction of a distinctly dystopian science fiction future, and in Barry Levinson's Good Morning, Vietnam, the song is played on the sound track accompanying scenes of wartime violence and destruction. In these cases, the original song itself is used (essentially in its entirety) to comment on negative aspects of the real or imagined worlds depicted by the filmmakers, but the song itself is not parodied.
Sony concedes that Wonderful World is a significantly creative work, and therefore resides within the core of copyright protection. (Def. Mem. at 14-15.) This does not weigh heavily against a finding of fair use, however, because in the context of parody, HN15Go to this Headnote in the case.this factor "is not much help … in separating the fair use sheep from the infringing goats … since parodies almost invariably copy publicly known, expressive works." Campbell, 510 U.S. at 586; Leibovitz, 137 F.3d at 115.

[In passing, recall "We'll meet again," at the end of Dr. Strangelove.]

Also in the context of copyright [ 2016 U.S. Dist. LEXIS 92516 ]:

Accordingly, the elements of a dangerous maze and robotic creatures are unprotectable scenes a faire, as these elements often recur in science fiction, dystopian, and horror genres. The Court, therefore, finds the Complaint lacks any allegations, beyond Plaintiffs' conclusory statement, that Defendants infringed on Plaintiffs' protectable expressions of a giant maze and robotic creatures. Thus, Plaintiffs' Count I is subject to dismissal with prejudice under Rule 12(b)(6). See Brereton v. Bountiful City Corp., 434 F.3d 1213, 1219 (10th Cir. 2006) ("A dismissal with prejudice is appropriate where a complaint fails to state a claim under Rule 12(b)(6) and granting leave to amend would be futile.").

Separately, the word "dystopian" appeared in an August 31, 2017 post by K. Hill:

Deliberately manipulating search results to eliminate references to a story that Google doesn’t like would be an extraordinary, almost dystopian abuse of the company’s power over information on the internet. I don’t have any hard evidence to prove that that’s what Google did in this instance, but it’s part of why this episode has haunted me for years: The story Google didn’t want people to read swiftly became impossible to find through Google.

This sort of thing would be like what IPBiz has referenced as a Sikahema, in homage to the disappearance of the "Rutgers is Wrong" rant.

David Clarke resigns as Milwaukee County sheriff

Back in June 2017, IPBiz had a post on the Clarke/Milwaukee/plagiarism matter titled

No, David Clarke did not plagiarize.

In an August 31, 2017 post, FoxNews stated Clarke had resigned. Within the post,
FoxNews noted:

Clarke denied the report in which it was claimed that he failed to properly attribute his sources at least 47 times in his 2013 thesis, titled "Making U.S. security and privacy rights compatible."

Wednesday, August 30, 2017

CAFC finds PTAB inconsistent in its determinations in Vicor/Syncor matter

The CAFC decision in Vicor has interesting text on the front end:

We address these two appeals in a single opinion because
the two patents claim very similar inventions, and
their respective reexaminations share common patentability
issues. Both reexaminations were decided by the
same panel of administrative patent judges. The panel’s
decision in the ’290’s reexamination issued on the same
date as the panel’s decision on rehearing in the ’021’s
reexamination. Despite sharing a common panel and
having opinions issued on the same date, the decisions in
the respective reexaminations contain inconsistent findings
on identical issues
and on essentially the same
record. We affirm in part, vacate in part, and remand the
Board’s decisions in both reexaminations.1

There was an "incorporation by reference" issue in
prior proceedings:

We reversed in part, vacated in part, and remanded.
Vicor Corp. v. SynQor, Inc., 603 F. App’x 969, 970 (Fed.
Cir. 2015) (SynQor II). Steigerwald ’090, we held, incorporates
Steigerwald ’539 by reference, and the combined
reference discloses an alternative embodiment of a power
converting system having a non-regulating isolation stage
and a plurality of non-isolating regulation stages, in
which the uncontrolled rectifiers in Steigerwald ’090 are
replaced with controlled rectifiers from Steigerwald ’539.9
Id. at 974–75. We concluded that “[t]he combined reference
teaches a single embodiment that anticipates all
elements of representative claim 20” of the ’190 patent,
that is, a two-stage DC-DC power converter system having
a non-regulating isolation stage and a plurality of
non-isolating regulation stages. Id. We also vacated the
Board’s nonobviousness determinations of the remaining
claims, which relied in part on the same objective evidence
of nonobviousness discussed in SynQor I and submitted
to the Board in Murata, and remanded for further
consideration in light of our anticipation decision. Id.
Regarding the objective evidence of nonobviousness, we
instructed the Board to reconsider whether a nexus exists
between the proffered secondary considerations evidence
and the merits of the claimed invention in light of our
conclusion that representative claim 20 is anticipated:

Of the inconsistency issue:

The Board’s decision on these proposed rejections was
erroneous and must be vacated for two reasons. First, the
Board improperly analyzed Vicor’s obviousness arguments
under only one of the four Graham factors when it
looked exclusively at the objective evidence, without
considering the remaining factors and the relative
strength of the factors. Second, the Board reached inconsistent
conclusions as to the evidentiary weight to be
given to the secondary considerations evidence presented
in the respective reexaminations of the ’290 and ’021
patents, without any explanation to justify such inconsistency.
The Board’s legal error is underscored by its opinion
issued on the same day in the related reexamination of
the ’021 patent. In that decision, the Board applied all
four Graham factors in the ’021’s reexamination and
stated that “[t]he Federal Circuit has determined that
only after considering the four Graham criteria together
can the decision maker make the legal determination of
whether the invention is nonobvious.” -2288 J.A. 14
(citing Panduit v. Dennison Mfg. Co., 810 F.2d 1561, 1570
(Fed. Cir. 1987)).

The Supreme Court instructed that, in
performing an obviousness inquiry, “the scope and content
of the prior art are to be determined; differences between
the prior art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or
nonobviousness of the subject matter is determined.”
Graham, 383 U.S. at 17. We have interpreted this mandate
to require that “evidence relating to all four Graham
factors—including objective evidence of secondary considerations—
must be considered before determining
whether the claimed invention would have been obvious
to one of skill in the art at the time of invention.”

2013) (emphasis added). The Board was clearly aware of
these requirements but nevertheless chose to affirm the
examiner rather than send the issue back with instructions
to consider Vicor’s obviousness arguments. This was

The Board’s decision is also erroneous because the
Board reached inconsistent conclusions regarding the
weight to be accorded the objective indicia evidence presented
in both reexaminations of the SynQor Patents.
the ’290’s reexamination, the Board found the objective
evidence to be so persuasive that it approved of the examiner’s
decision to withdraw rejections without analyzing
the remaining Graham factors and without considering
our holding in SynQor II that claims covering IBA’s basic
concept were anticipated by Steigerwald. In the ’021’s
reexamination, however, the Board determined that the
objective evidence principally related to features of the
claims that were found to be anticipated in SynQor II and,
therefore, found that there was no nexus between the
objective evidence and the claims of the ’021 patent. The
Board’s decisions do not evince any explanation or justification
for these inconsistent findings, given the similarity
between the claims at issue in the respective reexaminations.
While not every instance of an agency reaching
inconsistent outcomes in similar, related cases will necessarily
be erroneous, under the circumstances here, where
a panel simultaneously issues opinions on the same
technical issue between the same parties on the same
record, and reaches opposite results without explanation,
we think the best course is to vacate and remand these
findings for further consideration. See Local 814, Int’l
Bhd. of Teamsters v. N.L.R.B., 512 F.2d 564, 567 (D.C.
Cir. 1975) (remanding two decisions of the National Labor
Relations Board that were “factually similar and ostensibly
inconsistent” because the Board “ha[d] not explained
its reasons for reaching different results”).

Tuesday, August 29, 2017

Escape from Prometheus?

Patent Docs has a post on the July 21 decision in MOMENTA PHARMACEUTICALS v. AMPHASTAR PHARMACEUTICALS, INC., 2017 U.S. Dist. LEXIS 113713 (earlier decision in June 2017 U.S. Dist. LEXIS 101125).

The issue is [patentee] Momenta's motion for judgment as a matter of law

The opinion is short, with the key points:

The two-step framework for patentable subject [*6] matter is described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 132 S. Ct. 1289, 1293, 182 L. Ed. 2d 321 (2012). First, the Court must determine whether the patent claims are "directed" to a patent-ineligible concept, such as a natural law, natural phenomenon or abstract idea. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 132 S. Ct. at 1296-97). If the claims are not so directed, they are patentable. Id. If the claims are directed to an ineligible concept, then the Court determines whether the elements of the invention "transform" the claims into an application eligible for a patent. Id. Patent eligibility is a question of law. Id.

Because the '886 patent "[is] directed to a new and useful method" of ensuring the quality of enoxaparin and involves a series of laboratory steps rather than a law of nature or abstract idea, this Court concludes that the asserted claims involve patentable subject matter. See CellzDirect, 827 F.3d at 1048. Therefore, with respect to the affirmative defense that the asserted claims do not involve patent eligible subject matter, Momenta's motion will be allowed.

With respect to the indefiniteness defense, a patent's specification must be sufficiently "definite" so as to include at least one claim that "particularly point[s] out and distinctly claim[s] the subject matter which the applicant regards as [the] invention." 35 U.S.C. § 112 (2002). Pursuant to Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, 189 L. Ed. 2d 37 (2014),
[a] patent [*7] is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

Although "[s]ome modicum of uncertainty" is permissible, the "patent must be precise enough to afford clear notice of what is claimed." Trusted Knight Corp. v. Int'l Bus. Machines Corp., No. 2016-1510, 2017 U.S. App. LEXIS 3979, 2017 WL 899890, at *3 (Fed. Cir. Mar. 7, 2017) (quoting Nautilus, 134 S. Ct. at 2128-29).

When a Court evaluates indefiniteness by examining intrinsic evidence, such as the claims and specifications in the patent, indefiniteness is a question of law. Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir.), cert. denied, 136 S. Ct. 569, 193 L. Ed. 2d 431 (2015).
Amphastar contends that all of the claims are indefinite because they are limited to "the non naturally occurring sugar associated with peak 9 of FIG. 1" and there is no specific "FIG. 1" in the '886 patent. Based on the intrinsic evidence, however, the "Figure 1" in the patent is composed of Fig. 1A and Fig. 1B. The only figure in the patent with peak 9 is FIG. 1A. Moreover, the claims of the patent involve enoxaparin and the Fig. 1A is titled "Lovenox" which is the brand name for enoxaparin. Furthermore, the "Brief Description of the Drawings" in the patent clarifies that FIG. 1A is a "[c]apillary electrophoresis (CE) profile of enoxaparin (Lovenox™)". Therefore, [*8] this Court concludes that the patent "afford[s] clear notice of what is claimed." Trusted Knight Corp., 2017 U.S. App. LEXIS 3979, 2017 WL 899890, at *3 (quoting Nautilus, 134 S. Ct. at 2128-29) and, with respect to the infiniteness defense, the motion for judgment as a matter of law with be allowed

Chudik loses at CAFC

Finally, Dr. Chudik argues that Leonard does not disclose the “humeral implant” limitation of claim 5 because Leonard is directed to a glenoid implant and not a humeral implant. The patentability of an apparatus claim “depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l v., Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”) Thus, Dr. Chudik’s contention that his apparatus will be used in a humeral, as opposed to a glenoid, implant is not a patentable distinction, and cannot prevent Leonard from anticipating the claim.

Monday, August 28, 2017

Appellant Ultratec prevails at CAFC. PTAB decision vacated.

The outcome

Because the Board failed to consider material
evidence and failed to explain its decisions to exclude the
evidence, we vacate and remand.

This is another case wherein the Board and a District Court reached
different outcomes:

Ultratec and CaptionCall are currently litigating in
both district court and before the Board. Ultratec sued
CaptionCall and its parent company for infringement in
the Western District of Wisconsin. The case proceeded to
trial, where the jury found the patents valid and infringed
and awarded damages of $44.1 million. Five months after
the verdict, the Board issued final written decisions
holding all challenged claims of Ultratec’s patents were
either anticipated or would have been obvious. The
district court subsequently stayed all post-judgment
proceedings pending final resolution of the IPRs.

An issue:

Ultratec sought to introduce the trial testimony into the
IPRs, alleging that Mr. Occhiogrosso’s trial testimony
conflicted with written declarations he made in the IPRs
Ultratec moved to supplement the record with the inconsistent
Occhiogrosso trial testimony. Because Ultratec
had not first requested authorization to file the motion
with the inconsistent testimony, the Board expunged the
motion from the record. PTO Br. at 10 n.8.

The CAFC noted:

A number of problems with the Board’s procedures
contributed to its errors in this case. First, the Board
lacked the information necessary to make a reasoned
decision. According to the Board, the movant cannot
submit for consideration the evidence it seeks to admit
into the record, and its briefing “must not include a discussion
of the contents or types of the particular documents
sought to be entered.” PTO Br. at 10 n.8. In this
case, the Board denied a request to admit evidence without
ever seeing the evidence it was denying
; it never
reviewed Mr. Occhiogrosso’s testimony because Ultratec
was not allowed to submit that evidence with its request
to file a motion to supplement the record. The Board’s
only exposure to the disputed testimony was the parties’
competing characterizations of it during the conference
call for which there exists no record.

The CAFC criticized the Board:

Second, the Board’s procedures allowed it to make significant
evidentiary decisions without providing an explanation
or a reasoned basis for its decisions. See Motor
Vehicle Mfs. Ass’n of U.S. v. State Farm Mut. Auto. Ins.
Co., 463 U.S. 29, 43 (1983) (“[T]he agency must examine
the relevant data and articulate a satisfactory explanation
for its action including a rational connection between
the facts found and the choice made.” (internal quotation
marks omitted)).

Third, the Board’s procedures impede meaningful appellate
review of the agency decision-making. “[W]e will
uphold a decision of less than ideal clarity if the agency’s
path may reasonably be discerned, but we may not supply
a reasoned basis for the agency’s action that the agency
itself has not given.” Rovalma, S.A. v. Bohler-Edelstahl
GmbH & Co., 856 F.3d 1019, 1024 (Fed. Cir. 2017) (internal
quotation marks omitted). “For judicial review to be
meaningfully achieved within these strictures, the agency
tribunal must present a full and reasoned explanation of
its decision.” In re Lee, 277 F.3d 1338, 1342 (Fed. Cir.
2002). The agency does not have unfettered discretion in
these matters, and we cannot affirm agency decisionmaking
where the agency fails to provide a reasoned basis
for its decision. See SEC v. Chenery Corp., 318 U.S. 80, 94
(1943) (“[T]he orderly functioning of the process of review
requires that the grounds upon which the administrative
agency acted b[e] clearly disclosed and adequately sustained.”);
SEC v. Chenery Corp., 332 U.S. 194, 196 (1947)
(“That rule is to the effect that a reviewing court, in
dealing with a determination or judgment which an
administrative agency alone is authorized to make, must
judge the propriety of such action solely by the grounds
invoked by the agency. If those grounds are inadequate
or improper, the court is powerless to affirm the administrative
action by substituting what it considers to be a
more adequate or proper basis.”). There is no Board order
explaining why it denied Ultratec’s request to file a mo
tion to supplement the record. Nor is there any Board
explanation capable of review from the conference call.5
We are also prohibited from viewing Mr. Occhiogrosso’s
testimony because it is not part of the record. In district
court litigation, a party dissatisfied with a ruling excluding
evidence is allowed to make an offer of proof to preserve
error. Fed. R. Evid. 103. Parties in IPRs are not
given similar protections.6 In this case, the PTO forbade
even a “discussion of the contents or types of the particular
documents sought to be entered.” PTO Br. at 10 n.8.
And it refused to permit the record to include Ultratec’s
email requesting authorization to file a motion to supplement
the record. Excluding such discussion from the
record contributes to the unreviewability of the Board’s

Footnotes 5 and 6 are of interest:

Footnote 5:

The PTO indicated that the Board typically utilizes
conference calls to address issues such as requests for
extensions or requests to extend page limits. Oral Arg. at
54:45, 1:02:00. We do not address whether the Board can
decide these types of minor procedural issues during
conference calls. We hold that when the Board makes a
substantive evidentiary ruling, it is required to explain its

Footnote 6:

During oral argument, CaptionCall argued that
although Mr. Occhiogrosso’s trial testimony was not part
of the IPR record, it is publicly available as part of the
district court record, and therefore we could take judicial
notice of the testimony and determine in the first instance
whether it was consistent with his IPR declarations. Oral
Arg. at 40:30–43:25. Our court does not have authority,
as CaptionCall urges, to review evidence not considered
by the agency and make factual determinations about the
substance of that evidence.

Also of interest:

The Board
reasoned that “Patent Owner argues that the record is
incomplete because we did not issue an order denying its
motion. Req. Reh’g 13–14. Patent Owner’s [sic]
mischaracterizes the events in this proceeding because no
such motion was denied; we denied Patent Owner’s
request for authorization to submit evidence and, as such,
no order denying its motion was necessary.” Id. If the
APA requires the Board to explain a denial of a motion
then it likewise requires the Board to explain the denial
of a request to make a motion. To the extent the Board
views the two-step process it created to file motions as
insulating it from its APA obligations, this is incorrect.

The final thoughts:

The Board abused its discretion when it refused to
admit and consider Mr. Occhiogrosso’s trial testimony and
when it refused to explain its decision. Because the Board
relied on Mr. Occhiogrosso’s credibility in every IPR, we
vacate every decision. See In re Van Os, 844 F.3d 1359,
1362 (Fed. Cir. 2017) (“[W]hen the Board’s action is
potentially lawful but insufficiently or inappropriately
explained, we have consistently vacated and remanded for
further proceedings.” (internal quotation marks omitted)).
On remand, the Board shall admit and consider Mr.
Occhiogrosso’s trial testimony. If the Board finds he gave
inconsistent testimony, the Board shall consider the
impact on the specific patents at issue in the trial testimony
as well as on his credibility as a whole.

The meaning of "person" in the AIA, and issues with estoppel are addressed in "Return Mail"

The practical issue in Return Mail v. USPS is seen in the line:

Yet construing
§ 18(a)(1)(B) to allow the government to petition for CBM
review, as we do today, means that the government would
enjoy the unique advantage of not being estopped in the
Claims Court from re-litigating grounds raised during a
CBM review proceeding.

Of waiver, the majority noted:

Return Mail’s
failure to develop any arguments on this issue would
typically constitute waiver. See SmithKline Beecham, 439
F.3d at 1319 (“Our law is well established that arguments
not raised in the opening brief are waived.”); see also Nat.
Res. Def. Council, Inc. v. EPA, 25 F.3d 1063, 1074 (D.C.
Cir. 1994) (“[F]ailure to raise a particular question of
statutory construction before an agency constitutes waiver
of the argument in court.”).

[And see footnote 15]

In dissent, Judge Newman began:

An important threshold issue before the court is
whether the United States and its agency the United
States Postal Service are within the definition of “person”
in § 18(a)(1)(B) of the America Invents Act, and thus
entitled to proceed under that Act. The panel majority
states that the appellant waived the issue because it was
not raised in its opening brief. Maj. Op. at 24–25. However,
matters of jurisdiction are not subject to disposition
by waiver.

Of the "person" issue

The general statutory definition is that a “person”
does not include the United States and its agencies unless
expressly provided. It is at least as reasonable to assume
that Congress, and those seeking the improvements
provided by the America Invents Act, knew that “person”
did not include the United States, lest additional complexities
appear in the path of enactment of the America
Invents Act.

Footnote 1 of the dissent

The panel majority states that in this dissent I
“engage[] in mere speculation that Congress intended to
exclude the government from filing petitions despite the
lack of a record or any indication that it intended this
result.” Maj. Op. 27. I do not speculate as to the meaning
of “person”; its meaning has been defined by Congress for
legislative use. Nor do I speculate as to the decade of
legislative history of the America Invents Act. As Justice
Frankfurter wrote, statutory interpretation “demands
awareness of certain presuppositions.” Some Reflections
on the Reading of Statutes, 47 Colum. L. Rev. 527, 537
(1947). The majority ignores the extensive backdrop of
law and history on which the AIA was enacted.

Related to waiver, Judge Newman wrote:

In addition, “[u]nder certain circumstances, we
may consider issues not previously raised . . . .” Automated
Merch. Sys., Inc. v. Lee, 782 F.3d 1376, 1379 (Fed. Cir.
2015). Such circumstances include whether “the issue
involves a pure question of law and refusal to consider it
would result in a miscarriage of justice” and whether “the
issue presents significant questions of general impact or
of great public concern” or “the interest of substantial
justice is at stake.” Id. (citations omitted). This question
requires resolution.

Friday, August 25, 2017

Judges Newman and Lourie express differences on obviousness in Stepan case

The background technology:

The ’567 application is directed to herbicidal formulations containing glyphosate salt with a surfactant system. Surfactants can enhance glyphosate’s effectiveness as an herbicide by providing better adherence to leaves, thereby enhancing penetration. According to the specification, “[t]he present invention is based on the unexpected discovery that surfactant systems comprising dialkoxylated alkylamine, water miscible solubilizer and amine oxide allow for formulation of ultra-high loaded (‘high-strength’) glyphosate salt concentrates possessing high or no cloud points.” J.A. 29 ¶ 13. A cloud point is the temperature at which a solution becomes cloudy due to the surfactants becoming insoluble and separating into layers. Cloudiness can be avoided if the cloud point is higher than the solution’s temperature or if the solution is cooled before adding the surfactant. The specification explains that because glyphosate salt is created at about 75ºC, it is advantageous to formulate glyphosate with a surfactant system exhibiting a high cloud point to “obviate the necessity of waiting for the temperature of the glyphosate salt reaction product to cool down.” J.A. 27–28 ¶ 7. Surfactant systems with high cloud points or no cloud point, in which the solution never becomes cloudy, allow for quicker formulation of glyphosate concentrates and thus quicker delivery to the market. Id.

The CAFC found fault with the PTAB decision, in part for PTAB's failing to adequately articulate its reasoning:

The Board found Stepan failed to provide evidence that it would not have been routine optimization for a skilled artisan to select and adjust the claimed surfactants to achieve a cloud point above at least 70ºC “since Pallas teaches the surfactant component comprises any combination of surfactants” and “teaches the ideal cloud point should be above 60[ºC].” J.A. 8–9. It rejected evidence in Pallas that certain surfactant combinations failed the cloud point test at 60ºC because it concluded that these failures did not involve the claimed surfactants. J.A. 9. It found Stepan failed to establish the criticality of its claimed range of surfactants, showing neither that a 70ºC cloud point was unexpectedly good nor that the prior art was silent on the connection between optimizing surfactants and cloud point. J.A. 10. Because the Board failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability, we vacate the Board’s decision that claims 1–31 of the ’567 application would have been obvious.

The CAFC found PTAB's merely stating a conclusion was unsatisfactory:

The Board failed to explain why it would have been “routine optimization” to select and adjust the claimed surfactants and achieve a cloud point above at least 70ºC. See J.A. 8–9. “The agency tribunal must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action.” In re Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002). Stating that a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization falls short of this standard. Missing from the Board’s analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention.

There was an allusion to "common sense":

Similar to cases in which the Board found claimed inventions would have been “intuitive” or “common sense,” the Board must provide some rational underpinning explaining why a person of ordinary skill in
the art would have arrived at the claimed invention through routine optimization. See, e.g., Van Os, 844 F.3d at 1361 (“Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’”); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (“[R]eferences to ‘common sense’ . . . cannot be used as a wholesale substitute for reasoned analysis and evidentiary support . . . .”). Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.

As to PTAB invoking "routine experimentation":

This evidence could be relevant to whether there would have been a motivation to combine the claimed surfactants with a reasonable expectation of achieving a cloud point above at least 70ºC. The Board, however, did not make any of these findings. We “may not accept appellate counsel’s post hoc rationalization for agency action.” Lee, 277 F.3d at 1345 (quoting Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 168 (1962)). We
leave it to the Board to assess these arguments on remand

As to "reasonable expectation of success":

“[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). Reciting Pallas’ teachings that “any combination” of surfactants may be used and that a cloud point above 60ºC is desired fails to illuminate why a skilled artisan would have selected the claimed combination of surfactants and reasonably expected a cloud point above at least 70ºC.

There was a problem of burden:

Lastly, the Board erred when it shifted the burden of proving patentability to Stepan. The PTO bears the burden of establishing a prima facie case of obviousness. In re Deuel, 51 F.3d 1552, 1557 (Fed. Cir. 1995). “Only if this burden is met does the burden of coming forward with rebuttal argument or evidence shift to the applicant.” Id. In holding that Stepan had not met its burden, the Board cited case law in which the patentee claimed a range within the prior art and had to rebut a prima facie case of obviousness by showing criticality of its claimed range. See J.A. 10. This line of case law does not apply here for two reasons. First, for the reasons discussed above, the Board did not establish a prima facie case of obviousness because it failed to adequately articulate its reasoning. See In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“[T]o establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.”). Second, Stepan’s ’567 application does not merely claim a range of surfactants that is within or overlaps with the range of surfactant systems taught by Pallas. The claimed surfactant system contains four elements. The first three elements describe the surfactants, and their respective ranges, that comprise the surfactant system. The fourth element limits the combination of those surfactants to only those combinations that produce a cloud point above at least 70ºC or no cloud point at all. The cloud point thus limits and defines the scope of what surfactant combinations satisfy the claimed composition. It therefore may be that not all compositions that contain the claimed combination and range of surfactants fall within the claims. As an element of the composition claims, it was the PTO’s—not Stepan’s—burden to show that achieving a cloud point above 70ºC would have been obvious to a person of ordinary skill in the art. To the extent the Board shifted the burden to Stepan to show the criticality of the cloud point element, the Board erred.

Judge Lourie dissented:

The majority focuses its decision on the 70ºC cloud point and points to the failure of examples in Pallas to recite a cloud point above at least 70ºC. But a 70ºC cloud point is not a component of this composition claim; it is a result, or a property.


But discovery of a new property or result does not make a claim to what is essentially disclosed by the prior art nonobvious

On reasonable expectation of success:

Moreover, the majority focuses on the lack of a reasonable expectation of success in making any modification to Pallas to achieve the invention of claim 1, including the 70ºC or more cloud point result. Even if reasonable expectation of success is a proper test in such a situation, what is the success for which there must be a reasonable expectation? Where, as here, there is a single prior art reference, there does not need to be a finding of reasonable expectation of success for those skilled in a particular art to make conventional modifications to the prior art and look for improvements in some parameter. See In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”). Such improvements may be nonobvious and patentable, but they must be claimed as such, constrained by what it takes to achieve that unexpected and desirable result. But that is not the situation here.

AND, of interest,

While the majority faults the Board for not explaining itself adequately, based on reasoning with which I do not disagree, the rejection of the claims based on a reference we can plainly see, and which nearly anticipates the claims, does not in my view justify overturning the Board.

Thursday, August 24, 2017

Can the court order that a deposition of a fact witness be substituted for a noticed 30(b)(6) deposition?

In a 2014 post titled Duty to Produce a 30(b)(6) Designee , Michael Lowry reproduces text from MJ Leen’s unpublished order in Elan Microelectronics Corp. v. Pixcir Microelectronics Co. Ltd., 2013 U.S. Dist. LEXIS 114164, 2013 WL 4101813 (D. Nev. August 13, 2013)

Among other points, the text observes

In re: Vitamins Antitrust Litigation, 216 F.R.D. at 172 (corporation is obligated to produce one or more Rule 30(b)(6) witnesses who are thoroughly educated about the noticed deposition topics and facts known to the corporation or its counsel).

As to the matter of facts, can the Court order that a party depose a fact witness INSTEAD OF a 30(b)(6) witness?

The Court in Richardson v. Rock City, 2010 U.S. Dist. LEXIS 16647 (MD Tenn 2010) answered this question in the negative:

The defendant also describes many of the 21 topics, see Docket Entry No. 44-1, as relating to fact-intensive issues requiring the testimony of fact witnesses rather than a Rule 30(b)(6) deposition of a corporate designee.

The defendant objects to Topics 4, 5, 6, 8, 9, 10, 11, 13, and 17 in large part because the plaintiff seeks fact-specific information that is normally elicited by means other than a Rule 30(b)(6) deposition since such information does not relate to the defendant's corporate position. The plaintiff contends that he is entitled to take discovery as he sees fit and should not have to be forced into a mold defined by the defendant.


However, the J.M. Taylor Court did not, as the defendant suggests, hold that a Rule 30(b)(6) witness cannot be noticed to testify about the facts to which a "mere corporate employee" could also testify or that a Rule 30(b)(6) deposition is limited to the defendant's "position" in the case. Instead, the J.M. Taylor Court simply explained the rationale of Rule 30(b)(6) and emphasized that the Rule 30(b)(6) testimony is the testimony of the corporation, not the individual deponent.


However, the Court does not find support for the defendant's position that the testimony of a Rule 30(b)(6) witness cannot be used as a substitute for testimony of fact witnesses.

In fact, the only case that the Court found that addressed the issue head-on was Emon v. State Farm Mut. Auto. Ins. Co., 2007 U.S. Dist. LEXIS 5679, 2007 WL 216138 (E.D. Mich. Jan. 26, 2007), in which the Court affirmed the Magistrate Judge's order granting the plaintiff's motion to compel Rule 30(b)(6) depositions when the defendant argued that the notice required testimony from a fact witness rather than a Rule 30(b)(6) witness, pointing out that the defendant had not cited any authority in support of its position. Here too, the Court finds that the defendant has not cited any authority to support its position that the plaintiff is precluded from noticing a Rule 30(b)(6) deposition on topics to which fact witnesses could testify.

On Māori novelist Witi Ihimaera

Māori novelist Witi Ihimaera is one of the winners of the 2017 Prime Minister’s Awards for Literary Achievement.

About 8 years earlier, in November 2009,, iol had a post

Writer Witi Ihimaera - a university professor who became in 1973 the first indigenous Maori to have a novel published and went on to write The Whale Rider - has admitted plagiarism in his latest book, just as he was named a national arts treasure.

Reviewer Jolisa Gracewood outed Ihimaera in the weekly New Zealand Listener, saying that she stopped looking after identifying 16 different passages written by other authors in Ihimaera's historical novel The Trowenna Sea, which was published this month.


Ihimaera, 65, who has had 14 novels and 12 collections of short stories published since his debut 36 years ago, apologised for his "inadvertent copying" in The Trowenna Sea and said he would buy back all unsold copies and produce a second edition acknowledging all sources next year.

His announcement was followed by the revelation that Ihimaera had also plagiarised a book by a fellow professor at Auckland University, Keith Sorrensen, in another historical novel, The Matriarch, published in 1986.


Tuesday, August 22, 2017

CAFC in ALVARADO HOSPITAL. A dissent by Judge Newman.

One must always keep in mind that the CAFC has jurisdiction in non-patent areas.
On 22 August 2017:

Because Prime Hospitals’ breach of contract claim is
fundamentally a suit to enforce a contract and it does not
arise under the Medicare Act, we hold that the Court of
Federal Claims has exclusive jurisdiction over that claim
under the Tucker Act, 28 U.S.C. § 1491. We also hold
that the Court of Federal Claims does not have jurisdiction,
however, over Prime Hospitals’ alternative claims
seeking declaratory, injunctive, and mandamus relief.
Accordingly, we affirm the district court’s transfer order
in-part, reverse-in-part, and remand for further proceedings.

Judge Newman dissented:

I respectfully dissent from the ruling that the Medicare
Act’s jurisdictional assignment to the district courts
does not apply when there is an offer of settlement of a
Medicare reimbursement claim.

Nonetheless, my colleagues endorse the transfer of
this action from the district court to the Court of Federal
Claims under the Tucker Act, reasoning that the statutory
assignment of Medicare jurisdiction does not apply
when the issue includes a proposal for settlement of a
Medicare claim. However, as precedent has resolved,
settlement of a Medicare claim does not remove the
statutory Medicare Act jurisdiction. See Pines Residential
Treatment Ctr., Inc. v. United States, 444 F.3d 1379 (Fed.
Cir. 2006)

Two CAFC judges in Nidec case: we question whether the practice of expanding panels

The outcome was that appellant lost:

Nidec Motor Corporation (“Nidec”) appeals a final
written decision of the Patent Trial and Appeal Board
(“Board”) in an inter partes review (“IPR”). The Board
determined that claims 1–3, 8, 9, 12, 16, and 19 of U.S.
Patent No. 7,626,349 (the “’349 Patent”) are invalid as
anticipated or obvious. We affirm.

What the CAFC did not decide:

Both Broad Ocean and the Director argue that the
Board properly applied the joinder and time bar statutes
to allow joinder and institution in this case. Nidec disagrees.
We need not resolve this dispute. Nor need we
address the Director’s and Broad Ocean’s arguments that
the Board’s joinder determination is non-appealable in
light of 35 U.S.C. § 314(d)’s bar of judicial review for
institution decisions or Nidec’s argument that the Board’s
practice of expanding panels violates due process. For the
reasons set forth below, we affirm the Board’s conclusion
that all of the challenged claims are unpatentable as
obvious over Bessler and Kocybik. Because there is no
dispute that Broad Ocean timely filed the First Petition
(containing the obviousness ground), the issues on appeal
relating only to the Board’s joinder determination as to
anticipation ultimately do not affect the outcome of this
case. Both parties agree that, if we affirm as to obviousness,
we need not address Nidec’s argument that various
procedural aspects of the Board’s joinder decision require
reversal of its holding concerning anticipation by Hideji.
See Oral Arg. at 1:28–2:33 (June 8, 2017), available at
16-2321.mp3 (Nidec agreeing that we need not address
the anticipation ground based on Hideji in any respect if
we determine that the Board was correct in its obviousness
determination under Bessler and Kocybik).

Nidec loses:

The Board concluded that “the use of
sinewave commutation and independent Q and d axis
currents would have provided predictable results to
address known problems associated with other types of
motors.” J.A. 29. Nidec asks us to reweigh the evidence
the Board used to make its determination, which we may
not do. See In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
1334 (Fed. Cir. 2016).

The opinion was per curiam. There was a two judge
concurring opinion which included:

Although we do not decide the issues here, we
have serious questions as to the Board’s (and the Director’s)
interpretation of the relevant statutes and current


The issue in this case is whether the time bar provision
allows a time-barred petitioner to add new issues,
rather than simply belatedly joining a proceeding as a
new party, to an otherwise timely proceeding. Section
315(c) does not explicitly allow this practice. We think it
unlikely that Congress intended that petitioners could
employ the joinder provision to circumvent the time bar
by adding time-barred issues to an otherwise timely
proceeding, whether the petitioner seeking to add new
issues is the same party that brought the timely proceeding,
as in this case, or the petitioner is a new party.

Of some interest as to the expanded panel:

Nidec alleges that the two administrative judges added
to the panel were chosen with some expectation that
they would vote to set aside the earlier panel decision.
The Director represents that the PTO “is not directing
individual judges to decide cases in a certain way.” Director
Br. 21 (quotation marks omitted). While we recognize
the importance of achieving uniformity in PTO decisions,
we question whether the practice of expanding panels
where the PTO is dissatisfied with a panel’s earlier decision
is the appropriate mechanism of achieving the desired
uniformity. But, as with the joinder issue, we need
not resolve this issue here. Nor need we address the
predicate issue of appealability.

Monday, August 21, 2017

CAFC uses an analogy to a "cookie jar" to rule against appellant Thought

The relevant portion of a "system" claim contained the

a first adapter responsive to the object application
including an application bridge
receiving an object comprising object attributes
and an object name from the object
application, said first adapter
extracting the object attributes and the object
name from the object to effect packing
of the object attributes
and the object
name as data, said first adapter unpacking
the data to effect instantiating the object
attributes and the object name into a
new object; and

From the decision:

Just as a child might “extract” all of the
cookies from the cookie jar and leave the cookie jar itself
behind, the first adapter may extract all of the data
contained within the object but must leave behind the
data container of the object itself. Taking, or making an
exact copy of, the container and all of the contents held
within the container is not extracting the contents from
the container

CAFC in Walter declines to enter into a highly subjective inquiry depending “on the unpredictable vagaries of any one person’s opinion.”

The outcome of an ex parte re-exam of a patent directed to artificial reefs
for cultivating marine life was that appellant Walter lost at the CAFC:

David Walter appeals the decision of the Patent Trial
and Appeal Board (“Board”) in an ex parte reexamination
proceeding involving U.S. Patent No. 7,513,711 (“the ’711
patent”). See Ex parte David Walter, No. 2015-006121,
2015 WL 5144184 (P.T.A.B. Aug. 31, 2015). In its decision,
the Board ruled that all twelve claims of the ’711
patent lack adequate written description and are indefinite
under 35 U.S.C. § 112. Id. at *2–3. We affirm.

As to "written description," the CAFC wrote:

Compliance with the written description requirement
is a question of fact we review for substantial evidence.
ULF Bamberg v. Dalvey, 815 F.3d 793, 797 (Fed. Cir.
2016) (citing Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011)). Substantial evidence justifies a finding if a reasonable
mind might accept the evidence to support it.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

As to indefiniteness:

At the outset, we decline to adopt the Board’s implicit
determination that a patent claim is indefinite because
the specification uses a term differently from its dictionary
definition. See Ex parte Walter, 2015 WL 5144184, at
*2. The specification is “always highly relevant to the
claim construction analysis. Usually, it is dispositive.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (internal quotation marks omitted) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). If there is a conflict between the
specification and a general purpose dictionary as to a
claim’s proper meaning, the specification controls. Id. at


Here, “block-like” is a term of degree without any accompanying
guidance in the intrinsic record for determining
its scope. The term ostensibly covers a range of
shapes that are sufficiently “like” a “block” and excludes
those that are not. But nothing in the intrinsic record
offers “objective boundaries” for ascertaining whether a
given shape falls into either category. See Interval Licensing,
766 F.3d at 1371. And because the “present invention
10 can be fabricated in any shape without deviating
from the objectives thereof,” see ’711 patent, col. 3 ll. 52–
54 (emphasis added), determining whether a particular
shape is “block-like” thus strikes us as devolving into a
highly subjective inquiry depending “on the unpredictable
vagaries of any one person’s opinion.” Interval Licensing,
766 F.3d at 1371 (quoting Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)).
When, as here, “nothing in the specification, prosecution
history, or proper art provides any indication as to what
range of [structures] is covered by the term,” the claim is
indefinite. Amgen, Inc. v. Chugai Pharm. Co., Ltd. 927
F.3d 1200, 1218 (Fed. Cir. 1991).


And even if it were possible to
harmonize all of Mr. Walter’s statements, it is not enough
“that a court can ascribe some meaning to a patent’s
claims; the definiteness inquiry trains on the understanding
of a skilled artisan at the time of the patent application,
not that of a court viewing matters post hoc.”
Nautilus I, 134 S. Ct. at 2130. Here, the term’s ill-defined
boundaries coupled with the patentee’s erratic use of the
term fails to inform skilled artisans about the scope of the
invention with reasonable certainty. Id. at 2124. The
term is indefinite.

Of interest

Citing to Mr. Miller’s expert declaration, Mr. Walter
urges that “block-like” is a term of art in the structural
engineering field. Appellant’s Br. 12, 17–18, 23. We are
not persuaded by this argument. First, Mr. Miller does
not support his opinion with evidence or analysis, and his
testimony is wholly conclusory. See J.A. 178 ¶ 6.
“[C]onclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court,” Phillips,
415 F.3d at 1318, and thus we give Mr. Miller’s
testimony no weight. See SkinMedica, Inc. v. Histogen
Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) (giving “no
weight” to expert testimony in similar circumstances).
Second, it is difficult to fault the Board for purportedly
overlooking Mr. Miller’s declaration when Mr. Walter
never relied on it. In both his opening and reply briefs to
the Board, Mr. Walter argued that the claims were consistent
with the examiner’s construction of “block” and did
not urge that the phrase implicated a term of art. See
J.A. 401–02, 482–83. Nor did Mr. Walter rely on
Mr. Miller’s declaration during the oral hearing before the
Board. See J.A. 509–13. We therefore see no error in the
Board’s decision to disregard Mr. Miller’s testimony.

In the end, "written description" was not addressed:

Having determined that claims 1–12 of the
’711 patent, as amended, are indefinite, we do not reach
the issue of whether they are also unpatentable for failing
to comply with the written description requirement under
35 U.S.C. § 112, first paragraph.

Thursday, August 17, 2017

Issues with statues of Roger Taney

WJLA reported:

The Robert E. Lee and "Stonewall" Jackson statue in Wyman Park, the Roger B. Taney statue in Mount Vernon, the Confederate Women’s Monument in Bishop Park and the Confederate Soldiers and Sailors Monument on Mount Royal Avenue were all removed between 12:00 a.m. and 3:30 a.m. Wednesday morning. [16 August 2017]

On 17 August 2017, the Washington Post stated:

Maryland Senate President Thomas V. Mike Miller Jr. (D-Calvert) on Thursday [17 Aug 17] lashed out at Gov. Larry Hogan (R) for quickly advancing plans this week to remove a controversial State House statue of former U.S. Supreme Court justice Roger B. Taney, who defended slavery in the landmark 1857 Dred Scott decision.

In a letter to the governor, Miller defended Taney’s legacy and said the memorial should stay put to help educate people about the past. He also criticized Hogan for pushing a vote on the matter “outside the public eye.”

link to WaPo:

Of interest to patent people, Taney was in the dissenting four in Winans v. Denmead, 56 U.S. 15, with Curtis (a dissenter in Dred Scott) writing the majority opinion in Winans. Of the dissent in Winan:

The plaintiff confines his claim to the use of the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly. He might have been unwilling to expose the validity of his patent, by the assertion of a right to any other. Can he abandon the ground of his patent, and ask now, for the exclusive use of all cars which, by experiment, shall be found to yield the advantages which he anticipated for conical cars only?

The claim of today is that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanical industry of the country may freely exert itself? What restraints does this patent impose in this branch of mechanic art?


Curtis was so disgusted with Dred Scott that he resigned from the Supreme Court.

Of the dissent in Dred Scott, from wikipedia:

Justice Benjamin Robbins Curtis, in dissent, attacked much of the Court's decision as obiter dicta, on the ground that once the Court determined that it did not have jurisdiction to hear Scott's case, it must simply dismiss the action, and not pass judgment on the merits of the claims. The dissents by Curtis and McLean also attacked the Court's overturning of the Missouri Compromise on its merits, noting both that it was not necessary to decide the question, and also that none of the authors of the Constitution had ever objected on constitutional grounds to the United States Congress' adoption of the antislavery provisions of the Northwest Ordinance passed by the Continental Congress, or the subsequent acts that barred slavery north of 36°30' N.

Wednesday, August 16, 2017

Georgetown Rail prevails over Holland at the CAFC. Analysis of the preamble.

An issue in the case was the position of the accused infringer that an element in the preamble (“mounted on a vehicle for movement along the railroad track”) was a limitation of the claim. The CAFC wrote:

In the context of the entire patent, it is apparent that
the term “mounted on a vehicle for movement along the
railroad track” is meant to describe the principal intended
use of the invention but not to import a structural limitation
or to exclude from the reach of the claims an assembly
that does not include a vehicle mount. Nothing in the
specification or prosecution history states, or even suggests,
that Georgetown intended to exclude use of technology
that was structurally identical to its claimed
product but that was installed and performed analysis on
a non-vehicle mount.


The body of
the claim itself describes a “structurally complete invention,”
Rowe, 112 F.3d at 478, because it describes a closed
“system” comprised of a “light generator,” “optical receiver,”
and “processor,” which are the objects required to
perform the stated purposes of gathering and processing
data on misaligned track ties, (...) The location of the system is not an
essential feature of the invention. Indeed, as the District
Court noted, the specification states that “[t]he computer
analysis can be performed by the processing device . . .
located on the inspection vehicle. Alternatively, the
computer analysis can be performed by another computer
system having image processing software known in the
art.” Georgetown Rail I, 2014 WL 11498109, at *2−3
(quoting ’329 patent col. 7 ll. 10−14).

Of colorful language by the CAFC:

Holland argues as an example of the need to include the
preamble in the claim language that the claim terms
“plurality of images” and light generator and cameras
that are “positioned adjacent” to the track would not
make sense without the preamble. Id. (internal quotation
marks omitted). This puts the caboose before the locomotive.
It is easy to imagine that the patented system could
be manually carried or pulled across tracks, and that
software configured in any type of device, on-site or off,
could process the data.

As to enhanced damages:

None of the arguments Holland makes with respect to
the findings of enhanced damages demonstrate abuse of
discretion by the District Court. The District Court made
detailed factual findings which, taken together, support
its award of enhanced damages. It did not merely look at
the jury’s finding of willfulness; rather, it applied and
considered all nine Read factors. Specifically, after ana
lyzing each Read factor individually, the District Court
stated that “[f]actors 1, 2, and 5 support enhancement;
factors 3, 4, and 7 slightly support enhancement; and
factors 6, 8, and 9 are neutral.” Georgetown Rail II, 2016
WL 3346084, at *21. It also found that “no single factor
weighs against enhancement.” Id. Finally, the District
Court took into account the degree of willfulness and
found that it was “not warranted” to enhance damages to
the full maximum statutory amount of treble damages
(over $4,500,000); rather, it awarded only an additional
$1,000,000. Id. Considering all of the Read factors and
the District Court’s statutory authority to treble damages
under § 284, the award of $1,000,000 in addition to the
damages award of $1,544,333 was not an abuse of discretion.

Tuesday, August 15, 2017

Clinton Pastor Plagiarized, but victim notes: “The last thing the world needs right now is two pastors having a public dispute over a blog,”

From time to time, IPBiz has discussed pastors who plagiarize (e.g., Plagiarizing pastors, revisited ) and sermons which have been copied (e.g.,
The issue of copying sermons, re-visited

Related to a book by United Methodist minister Rev. Bill Shillady, which book presented compiled emails sent to Hillary Clinton, the Washington Post noted

Indiana pastor Matt Deuel read a prominent piece of Shillady’s book — the email Shillady sent to Clinton the morning after the 2016 election — when CNN published it last week. He recognized it as resembling his own March 2016 blog post and on Saturday he contacted a reporter for CNN, which first published the news Monday.


The publisher, Abingdon Press, said it will cite Deuel in future printings of the book, “Strong for a Moment Like This.”

Stipulating that there was unattributed copying, one notes, as to copyright, this would likely count as a transformative work. The major import of the emails was not the specific content, but rather that they were sent to Hillary Clinton and when (and why) they were sent.

Going back to sermons, IPBiz had a post Popsicle patent wars of yesteryear, which began:

Ministers, in sermons about sharing, frequently point to the story of the two-stick Popsicle. Sometimes the ministers mention that the Popsicle was invented by an eleven year old boy, Frank Epperson, in 1905. And during the depression, the two stick popsicle was introduced so that one could share.

AND there is a sermon about a (mythical?) US submarine sunk in New York City harbor, with a sailor inside tapping out in code: is there hope?

***UPDATE. October 22, 2019

The matter of Rev. Bill Shillady did not receive much traction, and is largely forgotten in the year 2019. HOWEVER, there are other matters within the United Methodist Church which are attracting attention in the year 2019. From a church bulletin on October 20, 2019:

CROCS loses on design patent

In 2015, there was an article in JPTOS titled -- Unpatentability by Design: The Overlooked Use of Inter Partes and Post-grant Review to Challenge Design Patents -- [97 JPTOS 96 ]

In August 2017, CNBC had a story on a CROCS design patent application, which included:

The U.S. Patent and Trademark Office recently issued a final rejection of Crocs' key design patent, which Crocs has said it plans to appeal, according to Footwear News.

SD NY assesses damages against Costco for Tiffany trademark violation

In a 2015 decision, SD NY gave summary judgment in favor of TIFFANY AND COMPANY, holding Costco liable for trademark infringement and trademark counterfeiting under the Lanham Act with respect to engagement rings sold under certain signage that referenced the mark "Tiffany" as a standalone term. A decision on August 14, 2017 addressed damages.

An issue in Tiffany v. Costco, 2017 U.S. Dist. LEXIS 128946, was "equitable vs. legal":

In the Summary Judgment Opinion, the Court stated that "[i]t was still an open question in the Second Circuit as to whether the accounting of profits in a trademark infringement action is an equitable or legal remedy." (S.J. Op. at 36.) In the parties' post-trial briefing, Costco contends that the jury verdict on the "Accounting of Profits Issues" was rendered on an equitable remedy for which there is no federal right to a jury trial, and that the Court is obligated to make an independent determination as to the accounting of profits. Tiffany, likewise, urges that "regardless of where the Court comes out on the state of the law, Tiffany believes the Court should set out findings of fact that would support the jury's determinations, whether or not it was advisory on actual profits." (Tiffany Br. at 3.) Although the Second Circuit has not explicitly ruled on the issue, in Gucci America, Inc. v. Weixing Li, a trademark infringement action under 15 U.S.C. Section 1117(a), the court characterized the accounting of profits sought by the plaintiff as an "equitable remedy." 768 F.3d 122, 130 (2d Cir. 2014). The Court will treat the jury verdict as to accounting of profits as advisory and make its own findings.

The issue of profits through membership fees arose:

Tiffany also presented credible evidence that Costco's profits are not limited to the margin between product costs and sales, but also include very substantial sums derived from warehouse membership fees. Douglas Schutt, Costco's Chief Merchandising Officer, acknowledged that Costco's "business model of charging the membership fee . . . is one of the things that enables [Costco] to charge less of a markup on the individual products [Costco] sell[s]." (Tr. 444.) Costco uses a "treasure hunt" marketing concept - creating "buzz" among members by offering "brand name merchandise at exceptional values" to drive frequent member visits and renewals. (Id. 461-63.) Kaczmarek, Tiffany's expert, testified credibly that even the 13% markup figure that he had used in his analysis is very low, and that Costco is "able to survive with that low markup because they charge membership fees annually. So they make most of their money on the membership fees and so that's how they can actually make such small profits on the items. That's what attracts customers to want to go to Costco." (Tr. 281.)


The Court finds that Costco has failed to prove that its profits on sales of rings under Standalone Signage were limited to the 10.31% margin computed by Costco's damages expert. That margin is artificially small, and was made possible chiefly by the subsidizing impact of membership fees, which are themselves enhanced by the pull of the "treasure hunt" tactic in which Costco uses extraordinary bargains on brand-name merchandise to pull customers into its stores. Fine jewelry is the first display case customers encounter in Costco's standard store layout, along with name-branded luxury watches. (Tr. 451-452, 466-467, 470.) In light of the role of the membership fees in Costco's business model and of its use of Tiffany's mark in selling fine jewelry, which is prominently displayed at the entrance of the stores to catch the [*16] eye of the customer, the Court finds it necessary and appropriate as an equitable matter to impute a sufficient portion of the membership revenue to the sale of these rings to bring the recoverable profit margin on the rings into the profit margin range of a typical run-of-the-mill jewelry store, which is approximately 50-100%. The Court further finds that the advisory jury's award of $3.7 million in profits on the Standalone Signage sales, a figure that is slightly more than 50% of the sales revenue proven in connection with those sales, constitutes a just and appropriate award of Costco's profits attributable to the infringing sales.

As to punitive damages:

The issues of whether punitive damages were warranted and, if so, of how much punitive damages to award were within the province of the jury, and the jury's decision cannot be set aside unless "there exists such a complete absence of evidence supporting the verdict that the jury's findings could only have been the result of sheer surmise and conjecture, or the evidence in favor of the movant is so overwhelming that reasonable and fair minded persons could not arrive at a verdict against it." Providencia v. ex rel. K.V. v. Schultze, No. 02 CV 9516, 2009 U.S. Dist. LEXIS 30411, 2009 WL 890057, at *1 (S.D.N.Y. Apr. 2, 2009) (quoting Brady v. Wal-Mart Stores, Inc., 531 F. 3d 127, 133 (2d Cir. 2008) (internal quotation marks omitted)). As the Court stated in its Summary Judgment Opinion, "Tiffany . . . proffered [in connection with that motion practice] evidence upon which the finder of fact could conclude that Costco's behavior satisfied the 'gross, wanton or willful' standard" required for awarding punitive [*21] damages." (Docket entry no. 175 at 34.) Even more evidence of conduct supporting punitive damages was adduced at trial, including evidence of the conduct and attitude of Costco's senior executives towards use of the "Tiffany" mark and the lawsuit, customer confusion, and marketing strategies designed to invoke an association with Tiffany. Given that there plainly was enough evidence to support the jury's award of punitive damages, the jury's finding that punitive damages were warranted will not be disturbed.

The outcome:

Treating the jury's verdict as advisory only as to the recovery of profits, the Court finds that Plaintiffs are entitled to recover trebled profits of $11.1 million, and judgment will be entered in their favor in that amount, plus prejudgment interest at the annual rate set under 26 U.S.C. § 6621(a)(2) for the period from February 15, 2013, through the date of judgment and punitive damages of $8.25 million, unless Plaintiffs file within seven (7) days from the date hereof a written election to instead recover the $2 million in statutory and $8.25 million in punitive damages awarded by the jury.
Costco is permanently enjoined from using the mark TIFFANY as a standalone term, not combined with any immediately following modifiers such as "setting," "set" or "style," in connection with its advisement and/or sale of any products that were not manufactured by Plaintiffs or their affiliates.

Visual Memory claims survive 101 challenge by 2-1 vote at CAFC

Visual Memory, LLC appeals the district court’s dismissal
of its patent infringement complaint against
NVIDIA Corporation. The district court held that Visual
Memory’s U.S. Patent No. 5,953,740 is drawn to patent ineligible
subject matter, and therefore its complaint
failed to state a claim under Federal Rule of Civil Procedure
12(b)(6). We conclude instead that the ’740 patent
claims an improvement to computer memory systems and
is not directed to an abstract idea. Accordingly, we reverse
the district court and remand for further proceedings

Of the analysis:

Our analysis begins with Alice step one. Although the
two steps in the Alice framework “involve overlapping
scrutiny of the content of the claims,” the “Supreme
Court’s formulation makes clear that the first-stage filter
is a meaningful one, sometimes ending the § 101 inquiry.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016). In this regard, we must articulate with
specificity what the claims are directed to, Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir.
2017), and “ask whether the claims are directed to an
improvement to computer functionality versus being
directed to an abstract idea.” Enfish, 822 F.3d at 1335
(“[S]ome improvements in computer-related technology
when appropriately claimed are undoubtedly not abstract,
such as a chip architecture, an LED display, and the


With these guideposts in mind, and cognizant of the
difficulty inherent in delineating the contours of an abstract
idea, we turn to the claims at issue here. Our
review of the ’740 patent claims demonstrates that they
are directed to an improved computer memory system, not
to the abstract idea of categorical data storage. Claim 1
requires a memory system “having one or more programmable
operational characteristics, said characteristics
being defined through configuration by said computer
based on the type of said processor,” and “determin[ing] a
type of data stored by said cache.” ’740 patent col. 6
ll. 29–38. Dependent claims 2 and 3 narrow the cache’s
programmable operational characteristic to storing certain
types of data (“only code data or . . . both code data
and non-code data”) and buffering data from certain
sources (“buffering of data solely from said bus master or
. . . both from said bus master and said processor”), respectively.
Id. at col. 6 ll. 39–51. Claim 6 recites the fast
page mode embodiment with a programmable operational
characteristic, and dependent claim 7 defines the programmable
operational characteristic as the type of data
to be stored. Id. at col. 7 ll. 3–26. None of the claims
recite all types and all forms of categorical data storage.

Can a state law or regulation define ownership of a US Patent?

At PatentlyO, Dennis Crouch wrote:

An important element of the original district court decision here (that was affirmed without opinion) points out a Florida State Regulation that “An invention which is made in the field or discipline in which the employee is employed by the University or by using University support is the property of the University…” R. 6C4–10.012(3)(c) (emphasis added). To be clear, this regulation is not a “contract” with the future inventor but instead a regulation in the Florida code that identifies ownership of the patent right — seemingly in conflict with the statement in Stanford v. Roche that “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”


The post is about the case AIA America v. Avid Radiopharma (Fed. Cir. 2017), which case includes the text:

Dr. Hardy and his team believed the Athena agreement
undervalued their research. Soon thereafter, Mr.
Sexton, a Kansas City businessman who had no experience
in scientific research but saw a business opportunity
for himself, offered Dr. Hardy and his team a better deal
than they had with Athena. Initially, Dr. Hardy and his
team attempted to undermine the agreement with Athena
by misrepresenting the origins of their work on the London
Mutation. This attempt failed when Imperial determined
that it owned the discovery under United Kingdom
law by its employment of the inventors.
Dr. Hardy, his
team, and Mr. Sexton then “decided to make sure [they]
didn’t give anything else away.” J.A. 2759:13–14.

The question of Dennis related to the power of the Florida government to
dictate patent ownership, but then there was a question of the power of
the federal government to do so.

LBE wrote:

In Stanford v. Roche, 563 U.S. 776; 131 S. Ct. 2188; 180 L. Ed. 2d 1 , — Stanford claimed that Holodny had no rights to assign because the University’s HIV research was federally funded, giving the school superior rights in the invention under the Bayh-Dole Act. — The Supreme Court noted: The
question here is whether the University and Small Busi-
ness Patent Procedures Act of 1980—commonly referred to
as the Bayh-Dole Act—displaces that norm and automati-
cally vests title to federally funded inventions in federal
contractors. We hold that it does not.
Theoretically, Congress might have written Bayh-Dole differently, to displace the norm, and that would have been within the scope of Congressional powers. But, as you suggest, not likely within the scope of powers of Florida lawmakers. Or, is there an 11th Amendment/Florida Prepaid Postsecondary kind of issue?


Prior to Bayh-Dole, many government agencies were reluctant to relinquish their ownership of the government funded patents to universities or industry. Instead these agencies granted nonexclusive licenses to anyone who wished to produce the inventions.

AND from a 1924 case:

It is unthinkable that, where a valuable instrument in the war against disease is developed by a public agency through the use of public funds, the public servants employed in its production should be allowed to monopolize it for private gain and levy a tribute upon the public which has paid for its production, upon merely granting a nonexclusive license for its use to the governmental department in which they are employed.

Not clear what the answer to Dennis’ question is…

Further on the pre-Bayh-Dole period:

Before the Bayh-Dole Act was passed in 1980, federal funding to universities resembled a system of government selection and subsidization of private innovators. Researchers received federal money either through allocation by the university or based on the individual research proposal. The intellectual property resulting from such federally funded research then belonged to the federal government, who usually dedicated it to the public domain, and granted nonexclusive licenses for its use

from 18 Harv. J. Law & Tec 459 (2005)


Before 1980, most inventions made with government funding were never patented. n4 The U.S. government generally held title to those few inventions that were actually patented, whether created at federal labs or in academia. n5 Non-exclusive licenses were usually available at a reasonable rate, though these were never very popular. n6

from 2005 B.C. Intell. Prop. & Tech. F. 93001


Innovation's Golden Goose, supra note 10. ("Before Bayh-Dole, the fruits of research supported by government agencies had belonged strictly to the federal government.

from Carl E. Gulbrandsen , 2007 Wis. L. Rev. 1149


As to state law and patents-->

To support this position, the court looked to Jim Arnold Corp. v. Hydrotech Systems, n58 which held that patent ownership is a state court question. n59 In doing so, the court read that holding expansively; though Jim Arnold Corp.'s holding concerned only whether the state court had jurisdiction, here the court read it to mean that state law controls in patent ownership cases. n60
Having established that state law generally controls patent ownership, Akazawa held that the same doctrine should apply when foreign law, rather than [*64] state law, controls.

from 64 Okla. L. Rev. 57 (2011)


Other state laws regulating issues related to patents have not been preempted. This seems to create some room for state legislatures to regulate a limited range of patent related issues.
For example, a state contract law has overcome preemption challenges where it governed agreements to license or assign a patent. n146 In deciding this case, the Supreme Court stated that "[c]ommercial agreements traditionally are the domain of state law." n147 The Court then found that the [*781] state law did not violate any of the three objectives of federal patent law. n148 First, it found that the state law actually encouraged invention by providing royalties to patent owners. n149 Second, the Court found that the state licensing law encouraged disclosure of inventions. n150 Third, the enforcement of a licensing agreement under state licensing law did not withdraw any idea from the public domain. n151 Based on these findings, the Supreme Court determined that the state contract law was not preempted. n152

from 68 S.C. L. Rev. 761 (2017)


We have previously held that patent ownership is determined by state, not federal law. Akazawa, 520 F.3d at 1357 (citing Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) ("[T]he question of who owns the patent rights and on what terms typically is a question exclusively for state courts.")). However, "the question of whether [**11] a patent assignment clause creates an automatic assignment or merely an obligation to assign is intimately bound up with the question of standing in patent cases," and therefore we have "treated it as a matter of federal law." DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008). Usually, federal law is used to determine the validity and terms of an assignment, but state law controls any transfer of patent ownership by operation of law not deemed an assignment.

from Sky Technologies, 576 F.3d 1374

Under the classical conception of the patent, individual states lost the power to determine entitlement to a patent or the scope of the patent property right. But the Constitution's Patent Clause authorized Congress only to "secure" the exclusive patent right. Once a patent was issued and entered the stream of commerce, its management as a property right largely befell the states. That division of responsibility has very largely persisted, although with qualifications emanating from the first sale doctrine, federal antitrust, and misuse policy. Federal law defines entitlement to a patent, its appropriate scope, and enforcement power by means of infringement actions. By contrast, state commercial law determines questions about licensing, assignment, and descent.

from 58 Ariz. L. Rev. 263 (2016)


"there is nothing that limits assignment as the only means for transferring patent operation of law," Akazawa, 520 F.3d at 1356
The Tenth Circuit acknowledged that "states retain the power to 'adopt rules for the promotion of intellectual creation within their own jurisdictions' so long as those rules do not impermissibly interfere with the federal patent scheme."

174 F.3d 1104, 1108-9 (10th Cir. 1999).


See also the discussion of University Patents v. Kligman, 762 F. Supp. 1212 (1991), within
Therein a policy presented in a "handbook" was deemed sufficient to transfer patent ownership

Monday, August 14, 2017

CAFC goes through FRCP 60 in Piccone case

The CAFC decision in PICCONE v. Matal (and others) is per curiam and not precedential. There apparently were some disciplinary issues with registered patent attorney Piccone, but in this sequence, Piccone sued the PTO (and others) in ED Va for items including alleged
constitutional violations by the Individual Defendants,
challenges to the PTO’s FOIA decisions, and a request for
declaratory relief from the PTO’s disciplinary proceedings.

His complaint was dismissed on October 27, 2015. The district court
issued a separate order later that day informing Mr. Piccone he had
thirty days to file a notice of appeal.

On December 9, 2015, Mr. Piccone filed a motion to
reconsider the October 27 order.

The district court denied the
motion for reconsideration on December 30, 2015.

On February 29, 2016, Mr. Piccone filed a notice of
appeal to the Court of Appeals for the Fourth Circuit,
which transferred the case to our court. His notice stated
that he was appealing “the final judgment dismissing the
above-identified case, entered December 29, 2015.” We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

The CAFC began its discussion with

Although the majority of Mr. Piccone’s brief to our
court addresses the district court’s October 27, 2015 order
granting summary judgment, our appellate jurisdiction is
limited to reviewing the district court’s December 30,
2015 order denying Mr. Piccone’s motion for reconsideration.1
The timely filing of a notice of appeal in a civil case
is a jurisdictional requirement. Bowles v. Russell, 551
U.S. 205, 214 (2007). Under the Federal Rules of Appellate
Procedure, Mr. Piccone had sixty days from the date
of the October 27, 2015 order to file his notice of appeal.
See Fed. R. App. P. 4(a)(1)(B)(ii); Gist v. United States,
504 F. App’x 918, 918 (Fed. Cir. 2013). Mr. Piccone did
not file his notice of appeal until February 29, 2016, more
than four months after the summary judgment order.
And his notice of appeal only identified the district court’s
December 30, 2015 order denying reconsideration. We
therefore lack jurisdiction to review the October 27, 2015

Of some interest is the discussion of the "motion for reconsideration":

The district court interpreted Mr. Piccone’s December
9, 2015 motion for reconsideration as a motion under Rule
60 rather than Rule 59 of the Federal Rules of Civil
Procedure. We see no error in this conclusion. Under
Rule 59, a party must file a motion to amend a judgment
within twenty-eight days of the entry of the judgment.
Fed. R. Civ. P. 59(e). Mr. Piccone filed his motion fortythree
days after the October 27, 2015 order. The district
court properly treated his motion as a Rule 60 motion,
which may be filed within a year of entry of judgment.
See Fed. R. Civ. P. 60(c)(1).

For a court to reconsider an initial ruling, there is not much time
for the losing party to file. In D NJ, Local Rule 7.1(i) states:
Unless otherwise provided by statute or rule (such as Fed. R. Civ. P. 50, 52 and 59), a motion for reconsideration shall be served and filed within 14 days after the entry of the order or judgment on the original motion by the Judge or Magistrate Judge. A brief setting forth concisely the matter or controlling decisions which the party believes the Judge or Magistrate Judge has overlooked shall be filed with the Notice of Motion.

On FRCP 59, from PETERSON v. Brooks, 2008 U.S. Dist. LEXIS 66904 :

Federal Rule of Civil Procedure 59(e) provides that a party may file a motion within ten days of the entry of a judgment requesting that the court alter or amend the judgment. Fed. R. Civ. P. 59(e). Such a motion is considered a motion for reconsideration.

"A proper Rule 59(e) motion must be based on either an intervening change in controlling law, the availability of new or previously unavailable evidence, or the need to correct clear error or prevent manifest injustice." Choi v. Kim, 258 Fed. App'x 413, 416 (3d Cir. 2007) (citing North River Ins. Co. v. CIGNA Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir. 1995)).

The current version of FRCP 59(e) does recite 28 days: A motion to alter or amend a judgment must be filed no later than 28 days after the entry of the judgment.

**One notes a curious error in the CAFC decision:

The Fourth Circuit reviews
the denial of a Rule 60(b) motion for abuse of discretion.
Aikens v. Ingram, 652 F.3d 496, 501 (Fed. Cir. 2011).

The Aikens case, of course, is from the Fourth Circuit, not from the Fed. Cir. [ Plaintiff Frederick Aikens, a former colonel in the North Carolina Army National Guard, filed a complaint against defendant National Guard officers alleging that they violated his Fourth Amendment rights by wrongfully intercepting, reading, and forwarding his e-mails while he was deployed in Kuwait. Aikens lost his appeal. ]

[In passing, FRCP 54 is used to seek clarification of a non-final order: : “Federal Rule of Civil Procedure 54(b) provides that any non-final decision or order "may be revised at any time before the entry of judgment adjudicating all the claims." Fed.R.Civ.P. 54(b). Pursuant to this rule, Hines seeks clarification of this court's May 9, 2011 order, arguing that the order was unclear… “ ]

Friday, August 11, 2017

Amgen loses appeal at CAFC in Hospira / Epogen case

The issue was appeal of a denial of a motion to compel:

Amgen Inc. (“Amgen”) appeals an order of the United
States District Court for the District of Delaware denying
Amgen’s motion to compel discovery from Hospira, Inc.
(“Hospira”) in a patent infringement case governed by the
Biologics Price Competition and Innovation Act of 2009

The material in question was Epogen:

Hospira filed a subsection (k) application with the
FDA in December 2014 seeking approval of a biosimilar of
EPOGEN®, a biological product developed by Amgen and
approved by the FDA under section 262(a) in 1989. In
accordance with paragraph (l)(2)(A), Hospira provided a
copy of its application to Amgen. Hospira did not separately
provide information concerning “the process . . .
used to manufacture the biological product”—again, as
required by the statute—but contends that such information
was disclosed in its application.

The motion to compel was denied by D. Delaware for lack of

Hospira refused Amgen’s discovery requests, and
Amgen ultimately filed a motion to compel discovery. The
district court denied Amgen’s motion, stating that the
cell-culture information sought by Amgen had “essentially,
no relevance to the patents that are asserted,” J.A. 37,
a conclusion that Amgen does not now dispute.
Amgen appealed the district court’s interlocutory order.
Hospira then moved this court to dismiss Amgen’s
appeal for lack of jurisdiction. We denied Hospira’s motion,
but asked the parties to brief “whether this court has
jurisdiction pursuant to the collateral order doctrine or
under the All Writs Act.” Order, Amgen, Inc. v. Hospira,
Inc., No. 16-2179 (Fed. Cir. Aug. 12, 2016), ECF No. 16

Of note in the case:

Nothing in Sandoz suggests that the BPCIA somehow
supplants the preexisting rules of civil procedure. Our
opinion in Amgen merely acknowledged that a sponsor
“can access the required information through discovery,”
794 F.3d at 1356, but our statement did not purport to
hold that the usual rules governing discovery do not apply
in the BPCIA context. Nor does anything in Sandoz
suggest otherwise


Under Amgen’s reading of the statute,
an applicant could effectively control the scope of litigation
under the BPCIA by withholding information under
paragraph (l)(2)(A), thereby preventing the sponsor from
identifying and bringing suit on patents related to the
biological product that the sponsor “believes a claim of
patent infringement could reasonably be asserted” under
paragraph (l)(3)(A). We note that the statute penalizes
sponsors that decline to participate in the BPCIA’s information
exchanges because under 35 U.S.C. § 271(e)(6)(C),
a sponsor that fails to list a patent that “should have been
included in the list described in [paragraph (l)(3)(A)] . . .
may not bring an action under this section for infringement
of the patent with respect to the biological product.”
In contending that a sponsor would be unable to list a
patent under paragraph (l)(3)(A), Amgen emphasizes that
the sponsor must form a good-faith belief that a patent
listed under paragraph (l)(3)(A) “could reasonably be
asserted.” Amgen asserts that a sponsor listing a patent
without the benefit of the applicant’s paragraph (l)(2)(A)
disclosures would later be subject to sanctions under
Federal Rule of Civil Procedure 11 or antitrust liability
for asserting baseless claims of patent infringement.


Amgen’s argument misunderstands the statute. Paragraph
(l)(3)(A) merely requires the sponsor to list patents
that it “believes . . . could reasonably be asserted.” (emphasis
added). The statute provides no sanction for holding
or asserting a mistaken belief in good faith. Moreover,
once a patent is listed by the sponsor, the BPCIA’s information
exchange further requires the applicant to “provide
to the . . . sponsor, with respect to each patent listed
. . . a detailed statement that describes, on a claim by
claim basis, the factual and legal basis of the opinion of
the subsection (k) applicant that such patent is invalid,
unenforceable, or will not be infringed.” 42 U.S.C.
§ 262(l)(3)(B)(ii) (emphases added). In other words, once a
sponsor lists a patent under paragraph (l)(3)(A), the
applicant must once again come forward with additional
disclosures under paragraph (l)(3)(B) that inform whether
“a claim of patent infringement . . . could” or could not
“reasonably be asserted.” If the applicant fails to comply
with its obligation to respond under paragraph (l)(3)(B),
the sponsor would have a reasonable basis for asserting a
claim of patent infringement.
Furthermore, under Rule 11, one submits a filing “to
the best of the person’s knowledge, information, and
belief, formed after an inquiry reasonable under the
circumstances.” Fed. R. Civ. P. 11(b). The rule also expressly
permits factual allegations that “will likely have
evidentiary support after a reasonable opportunity for
further investigation or discovery.” Fed. R. Civ. P.
11(b)(3). Thus, if a sponsor forms a belief based on an
inquiry limited by an applicant’s withholding of information,
the sponsor has still satisfied Rule 11. See, e.g.,
Hoffman-La Roche Inc. v. Invamed Inc., 213 F.3d 1359,
1363–64 (Fed. Cir. 2000) (affirming denial of Rule 11
sanctions where patentees unsuccessfully sought manufacturing
information from defendants before suit and
“attempted to ascertain whether the processes so used
were infringing, but were unable to do so”); Morda v.
Klein, 865 F.2d 782, 785–86 (6th Cir. 1989) (affirming
denial of Rule 11 sanctions because “[i]t would be particularly
difficult to fault plaintiffs for a lack of prefiling
inquiry when, as here, defendants have refused plaintiffs
access to material information that would bear on certain
allegations made in the complaint”). The Supreme Court
appears to have contemplated the filing of suit after an
applicant fails to disclose information under paragraph
(l)(2)(A). See Sandoz, 137 S. Ct. at 1676 (“If the applicant
failed to provide that information, then the sponsor but
not the applicant, could bring an immediate declaratory
judgment action pursuant to § 262(l)(9)(C).”).

There was reference to a Supreme Court decision on finality.

A final decision of a district court means, with limited exceptions, an order that ends the litigation on the merits and leaves nothing for the district court to do but execute the judgment. Coopers & Lybrand v. Livesay, 437 U.S. 463, 467, 98 S. Ct. 2454, 2457, 57 L. Ed. 2d 351 (1978).