Saturday, September 30, 2017

Benzinga on Tesla patent applications

The patents [sic: patent applications ] included safety mechanisms, communication redundancies and a replacement technique for lithium-ion batteries; weight-supporting structures, fluid-directing valves, auto-configured seat belts, air conditioning vents and traction control systems for Tesla’s all-wheel-drive electric vehicles; and a heat-recovering industrial oven for materials treatment.


Dr. Jang loses ensnarement argument at CAFC

The complicated issue in the case pertained to "doctrine of equivalents":

Dr. Jang also challenges the district court’s vacatur of the jury’s finding that the Express stent infringed the asserted claims under the doctrine of equivalents, as well as the entry of judgment of non-infringement in favor of BSC, on the ground that the district court incorrectly held that he failed to provide an acceptable hypothetical claim for an ensnarement analysis, and thereby failed to prove that his doctrine of equivalents theory did not ensnare the prior art.

Of burdens in this case as to direct infringement, the CAFC noted:

The Ninth Circuit reviews the denial of a motion for a new trial for abuse of discretion. Incalza v. Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007). It reverses the denial only if the record lacks any evidence supporting the verdict or if the district court made a mistake of law. Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir. 2007).

Here, as to the verdict of no literal infringement, there was evidence and the CAFC quickly dealt with the matter:

In sum, a reasonable jury could have returned a verdict of no literal infringement based on the evidence presented at trial. We consequently have no basis to order a new trial.

The doctrine of equivalents issue was more complicated:

In an appeal relating to the doctrine of equivalents, a party often challenges the fact finding made below of infringement (or no infringement) under that doctrine, which is usually analyzed under the well-established “substantially the same function-way-result” or “insubstantial differences” inquiry. Here, however, the jury’s finding that the Express stent satisfies each claim element of the asserted claims under the doctrine of equivalents is not on appeal. Instead, this appeal centers on the district court’s application of a limitation on the reach of the doctrine, known as “ensnarement.”

A doctrine of equivalents theory cannot be asserted if it will encompass or “ensnare” the prior art. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1322 (Fed. Cir. 2009). “This limitation is imposed even if a jury has found equivalence as to each claim element.” Id. at 1323 (citing Wilson Sporting Goods Co. v. David Geoffrey & Assocs., 904 F.2d 677, 683, 687 (Fed. Cir. 1990), overruled in part on other grounds, Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 92 n.12 (1993)).


We have explained: Hypothetical claim analysis is a two-step process. The first step is “to construct a hypothetical claim that literally covers the accused device.” Next, prior art introduced by the accused infringer is assessed to “determine whether the patentee has carried its burden of persuading the court that the hypothetical claim is patentable over the prior art.” In short, [the court] ask[s] if a hypothetical claim can be crafted, which contains both the literal claim scope and the accused device, without ensnaring the prior art. Id. at 1363 (quoting DePuy, 567 F.3d at 1324, 1325); see also Ultra-Tex Surfaces, 204 F.3d at 1364–65 (“Under a hypothetical claim analysis, a patentee proposes a hypothetical claim that is sufficiently broad in scope to literally encompass the accused product or process. If that claim would have been allowed by the PTO over the prior art, then the prior art does not bar the application of the doctrine of equivalents.” (citations omitted)).

Footnote 5:

We have described the ensnarement inquiry as one of determining the patentability of the hypothetical claim, rather than its validity. That is because “[t]he pertinent question” is “whether that hypothetical claim could have been allowed by the PTO over the prior art” as the PTO has never actually issued it. Wilson Sporting Goods, 904 F.2d at 684.


Following Dr. Jang’s troubles in drafting a proper hypothetical claim that encompassed the Express stent yet was also patentable in the face of seemingly crowded prior art (a venture that began with generating approximately ten different hypothetical claims), the district court was under no obligation to undertake a hypothetical claim analysis on his behalf. A patentee, like Dr. Jang, bears the burden of proving that it is entitled to “the range of equivalents which it seeks.” Wilson Sporting Goods, 904 F.2d at 685. And, when utilizing the hypothetical claim tool, that burden starts with proposing a proper hypothetical claim that only broadens the issued
asserted claims. See Streamfeeder, 175 F.3d at 983. Dr. Jang cannot effectively transfer the responsibility of defining the range of equivalents to which he is entitled to the district court.7 See Ultra-Tex Surfaces, 204 F.3d at 1364 (“Under a hypothetical claim analysis, a patentee proposes a hypothetical claim . . . .” (emphasis added)). Because, as a threshold matter, Dr. Jang failed to submit a proper hypothetical claim for consideration, he was unable to meet his burden of proving that his doctrine of equivalents theory did not ensnare the prior art. The district court thus correctly vacated the jury verdict of infringement under the doctrine of equivalents.

Of procedure:

We are unpersuaded by Dr. Jang’s attempt to conflate two different concepts. We have explained before that “[t]he ensnarement inquiry . . . has no bearing on the validity of the actual claims” asserted in a case. DePuy, 567 F.3d at 1323 (citing Wilson Sporting Goods, 904 F.2d at 685). And that is because ensnarement concerns patentability with respect to a hypothetical patent claim as opposed to the validity of an actual patent claim. See Wilson Sporting Goods, 904 F.2d at 685 (“Leaving this burden [of proving that the range of equivalents sought does not ensnare the prior art] on [the patentee] does not, of course, in any way undermine the presumed validity of [its] actual patent claims.

Sunday, September 24, 2017

Nothing is really original in a strong sense?

In passing, on the subject of plagiarism, note
There is no such thing as plagiarism so you can’t possibly be guilty of it
which includes the text:

Nothing is really original in a strong sense, everything is derivative, recycled or upcycled. Harold Bloom, in the The Anxiety of Influence, argued that the key to understanding any great artist is the struggle (or “agon”) that is going on between the new woman and her precursor, that shadowy presence/absence that you love and hate, Oedipally, and must ultimately overcome.

CBS Sunday Morning starts new season on Sept. 24, 2017

Jane Pauley, in a green dress, started the new season in the old set, but quickly appeared on the new set, marking the first change of set in the history of "CBS Sunday Morning."

The cover story by Susan Spencer, titled -- What's in a name? Plenty -- was a vacuous puff piece, beginning and ending with one "Billion Ayer," a resident of Northport, NY and affiliated with the North Shore Country Club. In the story was the concept of "nominative determinism," a theme of "the name makes the man," illustrated by among others Usain Bolt. If such were to be believed, the person known to us as Ty Hardin ("Bronco" of Warner Brothers TV), actually born as Orison Whipple Hungerford Jr. would never have been an actor in Westerns.

Lee Cowan did a piece on Shania Twain, which obliquely related to "what's in a name": Twain grew up Eileen Edwards in Ontario, Canada. There is uncertainty as to the origin of the name "Shania."

The Almanac feature was a plug for CBS's "60 Minutes," which first appeared on September 24, 1968, 49 years ago.

There was a piece on Iain Armitage of the CBS show "Young Sheldon."

The Nature segment was a reprise: Whooping cranes in South Texas, which first aired on February 25, 1979. Sunday Morning itself launched on January 28, 1979.

Wikipedia notes of CBS Sunday Morning:

Despite the stereotype of the program appealing primarily to senior citizens, Sunday Morning actually placed first in its time slot in the key demographic of adults 25–54, beating all of the political discussion-driven Sunday morning talk shows.

BroadwayWorld in June 2017 wrote:

CBS SUNDAY MORNING, the nation's #1 Sunday morning news program, posted year-to-year audience gains, according to Nielsen live plus same day ratings for June 11. CBS SUNDAY MORNING delivered 5.20 million viewers (up +7% from 4.85m the same week a year ago) and a 1.0/07 with adults 25-54, the demographic that matters most to those who advertise in news. Broadcast year-to-date, CBS SUNDAY MORNING is the #1 Sunday morning news program with viewers (5.94m) and adults 25-54 (1.2/07).

On January 20, 2017, AdWeek wrote:

CBS Sunday Morning with Jane Pauley continues its lead as the most-watched morning TV show, drawing more than 6 million viewers last Sunday.

UPDATE on Pauley interview of Clinton on "deplorables":

Marc Thiessen of the Washington Post News Service on September 17, 2017 began

Hillary Clinton's new memoir of her failed presidential campaign is titled "What Happened." A better title would be "What Happened?" because Clinton apparently has no idea.

(and continued)

One problem with her analysis: Millions of those white people who voted for Donald Trump also proudly voted for Barack Obama. There are nearly 700 counties in the United States that voted twice for Barack Obama, one-third of which flipped to Trump in 2016. According to Nate Cohn of the New York Times, "almost one in four of President Obama's 2012 white working-class supporters defected from the Democrats in 2016, either supporting Mr. Trump or voting for a third-party candidate." Are all those Trump-Obama voters bigots? Millions of once reliably Democratic voters pulled the lever for the first black president, yet they were suddenly whipped up into a racist furor by Trump's "racial and ethnic and sexist appeals"?

Saturday, September 23, 2017

Inequitable conduct case in ND Ill

The outcome in Felt v. Beacon, 2017 U.S. Dist. LEXIS 154714 (DJ SHARON JOHNSON COLEMAN) :

Based on the foregoing, this Court again finds that Feit fails to meet its burden to show that Nilssen made a materially false misrepresentation to the U.S. Patent Office with the intent to deceive. Feit's motion for summary judgment is denied.

A law review with an interesting title is cited:

Moreover, it appears in the '887 application's "Description of Prior Art" that Nilssen identified the '107 application as the "original-in-part progenitor," filed on August 14, 1980, of the invention described [*16] in the '887 application. Dkt. 7903 at FEIT_012774. "'Progenitor applications' are applications unrelated to any previously filed U.S. patent application." Michael Carley, Deepak Hedge, & Alan Marco, What is the Probability of Receiving a U.S. Patent?, 17 Yale J. L. & Tech 203 (2015). Thus, it seems that Nilssen may have disclaimed any filing date earlier than August 14, 1980, on the face of the '887 application. Accordingly, there is insufficient evidence from which to conclude as the only reasonable inference that Nilssen intended to deceive the U.S. Patent Office by claiming an earlier effective filing date to which the '140 patent was not entitled.

ED Wisc discusses "a sandbox for gratuitous sniping" in case about lithium-ion batteries used in power tools

Of the case, MILWAUKEE ELECTRIC TOOL v. Snap-on, 2017 U.S. Dist. LEXIS 155132 :

Plaintiffs [ MILWAUKEE ELECTRIC TOOL et al] assert infringement of the following claims against Snap-on:

claims 1 and 8-10 of U.S. Patent No. 7,554,290 (the "'290 Patent"), claims 1, 4, 5, 7-13, and 16-19 of U.S. Patent No. 7,999,510 (the "'510 Patent"), and claims 1, 8-10, 12, and 13 of U.S. Patent No. 7,944,173 (the "'173 Patent"). Independent claim 1 of the '290 Patent, which is representative of its counterparts, recites
a battery [*2] pack for power a hand held power tool, the battery pack comprising:
a housing connectable to and supportable by the hand held power tool; and
a plurality of battery cells supported by the housing, the battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps, the battery cells having a lithium-based chemistry.

(Docket #187-1 at 77). Further, later claims provide, in relevant part, that the pack's battery cells each have "a nominal voltage of 4.2 volts" and that they have "a capacity of approximately 3.0 ampere-hours [("Ah")]." Id.

Because of the vast factual record presented, the Court will provide here a broad overview of the relevant background and timeline. Facts pertinent only to one narrow argument or another will be discussed at the appropriate juncture. This may lead to some repetition, but the Court has found no better way to fully and fairly treat each matter for decision.1

1 The Court pauses here to note that the parties often treated their factual briefing as a sandbox for gratuitous sniping at each other. Even when the core, material fact at issue could not be disputed, they rarely overlooked a chance to disagree over minutiae. Additionally, in stating the facts, they often included their own interpretive gloss on the document or testimony in question, which invited

Of claim constructiuon:

Tethering construction to a person of ordinary skill in the art is critical, teaches the Federal Circuit, because such a person reads the words of the claims against the context of their meaning in the relevant field of study, including any special meanings or usages, and in light of closely related documents such as the specification and the prosecution history. Id. at 1313. Because of the sometimes specialized meanings attributed to terms based on the field in question, general-purpose dictionaries are not always useful. See id. Before resorting to such a resource, courts should begin with the materials that a person of skill in the art would use: "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the [*19] meaning of technical terms, and the state of the art." Id.
After evaluating the claim language itself, the Federal Circuit instructs that the specification "is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. Although the patent specification may not be used to rewrite the claim language, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004), the specification may be used to interpret what the patent holder meant by a word or phrase in the claim,
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
After considering the claim language and the specification, a court may consult the final piece of intrinsic evidence: the patent's prosecution history. Vitronics, 90 F.3d at 1582. "[S]tatements made during the prosecution of a patent may affect the scope of the invention." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001). This is especially true if a particular interpretation of the claim was considered and specifically disclaimed during the prosecution of the patent. Warner-Jenkinson Co., Inc.
v. Hilton Davis Chem. Co., 520 U.S. 17, 30 (1997); Vitronics, 90 F.3d at 1582- 83.
Generally, the body of intrinsic evidence will eliminate any ambiguity in the claim terms, rendering unnecessary any reference to extrinsic evidence. Vitronics, 90 F.3d at 1583. Yet, if needed, a court may consider extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." [*20] Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art, and how the invention works, but it may not be used in derogation of the intrinsic evidence. Id.

Of the argument by Snap-on:

Snap-On asks the Court to engraft an additional limitation onto the 20 Amp Limitation out of practicality-that is, because tools in the field are not routinely turned on and their batteries run down completely without pause. See (Docket #201 ¶¶ 5, 12-13). Snap-On reasons that "the word 'average' in the 20 Amp Limitation implies that the discharge current may drop well below 20 amps so long as the average current remains above 20 amps." (Docket #207 ¶ 127). According to Snap-On, it is unlikely that any power too would have to deliver a constant current discharge reasonably close to 20 amps for its entire rated capacity in any real-life application. (Docket #201 ¶ 12).

But the standard of review is not what a person of skill in the art would find realistic; it is instead what a person of skill in the art would understand. There is no question that, [*26] putting aside matters of practicality, a person of ordinary skill in the art would comprehend the meaning of the 20 Amp Limitation, including the requirement that 20 amps be continuously delivered during the entire rated capacity of the battery pack. Such a person would understand that the limitation describes the capability, not the potential real-world use, of the invention. See Hitachi, 2012 WL 10161527, at *4 ("[T]he fact remains that the capacity of a battery is normally measured by discharging at a constant current until the battery has reached its terminal voltage, consistent with Metco's construction."). This is true notwithstanding the fact that even Plaintiffs concede that tool simulations are an important part of assessing the real-world functionality of the ultimate product.5

5Snap-On claims that Plaintiffs' construction reads the word "average" out of the claim language, (Docket #205 at 13), but the Court does not agree. Plaintiffs' construction incorporates the concept of "average" as meaning "reasonably close to" the required discharge current. Snap-On rightly notes that there are other senses of the word "average," including averaging a discharge current over a specified interval, but Snap-On's belief that its interpretation of the word is the only reasonable one does not make it so. Moreover, the deposition testimony of the named inventors on this point cannot undermine the clarity of the intrinsic [*28] record, which supports Plaintiffs' interpretation. See Kara Tech. Inc. v. Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (finding that "extrinsic sources like expert testimony cannot overcome more persuasive intrinsic evidence").

Finally, the Court rejects Snap-On's suggestion that the 20 Amp Limitation is indefinite and therefore invalid. A patent must "conclude with one or more claims particularly pointing out and distinctly [*27] claiming the subject matter which the applicant regards as [the] invention" 35 U.S.C. § 112, ¶ 2 (emphasis added).6If, when "read in light of the specification delineating the patent, and the prosecution history, [a patent claim] fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention," the claim is invalid as indefinite under Section 112. Nautilus, Inc. v. Biosig Instrums., Inc., 134 S. Ct. 2120, 2124 (2014). A claim "must be precise enough to afford clear notice of what is claimed, thereby appris[ing] the public of what is still open to them." Id. at 2129; see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Moreover, a reviewing court must remember that "[i]t cannot be sufficient that a court can ascribe some meaning to a patent's claim; 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, 134 S. Ct. at 2130.

Of indefiniteness:

A claim is indefinite where it can be measured in several ways and the claim language, considered against the specification and prosecution history, do not provide adequate guidance on which method to use. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1344-45 (Fed. Cir. 2015); Eli Lilly, 845 F.3d at 1370. Put differently, "the patent and prosecution history must disclose a single known approach or establish that, where multiple known approaches exist, a person having ordinary skill in the art would know which approach to select." Dow Chem. Co. v. Nova Chems. Corp., 803 F.3d 620, 634-35 (Fed. Cir. 2015).
However, "a patentee need not define his invention with mathematical precision." Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005). Instead, "[t]he definiteness requirement mandates clarity, while recognizing that absolute precision is unattainable." Apple Inc. v. Samsung Elecs., Co., 786 F.3d 983, 1002-03 (Fed. Cir. 2015) (quotations and alterations omitted), rev'd on other grounds in 137 S. Ct. 429 (2016); Nautilus, 134 S. Ct. at 2128 (recognizing that "[s]ome modicum of [*29] uncertainty" may be tolerated). Indefiniteness is a question of law and must, like any other invalidity defense, be proven by clear and convincing evidence. Sonix Tech. Co., Ltd. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017); Teva, 789 F.3d at 1345.
Snap-On's indefiniteness objection has two aspects. First, it says that Plaintiffs conveniently used functional language-the requirement for a 20-amp discharge current-just at the point of novelty from prior art, which is not permitted under General Electric Co. v. Wabash Co., 304 U.S. 364, 371 (1938). However, the Federal Circuit has explained that functional language, standing alone, is not sufficient to render a claim indefinite.
Application of Swinehart, 439 F.2d 210, 213 (C.C.P.A. 1971); Cox Commc'ns,
Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224, 1232 (Fed. Cir. 2016). Although neither expressly considered the matter, is it worth noting that neither Magistrate Callahan nor the PTAB had difficulty in construing the 20 Amp Limitation, much less such insurmountable difficulty as to render the limitation indefinite. Rather, the relevant materials provide a skilled artisan with sufficient information to describe the claimed subject matter and distinguish it from prior art, which is all that is required. See Microprocessor Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Snap-On devotes little space to this argument and does no more than point out the functional language, expecting that effort to carry the day, and so the Court need not address the point further. See Hardrick v. City of Bolingbrook, 522 F.3d 758, 762 (7th Cir. 2008); United States v. Berkowitz, 927 F.2d 1376, 1384 (7th Cir. 1991) [*30] .
The second aspect of the indefiniteness challenge is more involved. According to Snap-On, the 20 Amp Limitation is fraught with uncertainty as to how to test the "average discharge current" of the battery pack which a person of ordinary skill in the art could not unravel, including in relation to "how long the battery is used, the application or task for which the tool is used, the acceptable voltage performance, and even the ambient temperature." (Docket #182 at 7). Put simply, Snap-On claims that a pack might not be able to produce a constant 20-amp discharge current over its entire rated capacity but could do so on average if used intermittently. (Docket #187-5 ¶ 32). In light of this, one of its experts, Yet-Ming Chiang ("Chiang"), opines that a pack must be tested in various ways that simulate real-world applications. Id. ¶ 34. This makes Meyer's 2001 cutting test and pulse test at least as relevant-indeed more so-that the constant-current test he performed. Id. ¶ 39; see also (Docket #187-13 163:6-23) (Reimers
testifying that average discharge current denotes averaging the discharge produced during pulse or profile tests). On this point, Snap-On asserts that Magistrate Callahan failed to [*31] consider the issue of indefiniteness as reinvented by the Supreme Court in Nautilus, rendering his opinion less persuasive. See Dow, 803 F.3d at 630 ("[T]here can be no serious question that Nautilus changed the law of indefiniteness.").

The district court referenced the Teva/copaxone case

Plaintiffs admit that tool simulation profiles are among the tests used to assess the performance of Li-ion battery packs. (Docket #201 ¶¶ 14-15). Moreover, other witnesses, include two of the named inventors, testified that a battery pack could be run both intermittently and constantly to ascertain an average discharge current. See id. ¶¶ 24-26. Because of the diversity of potential testing conditions and applications, Chiang concludes that skilled artisans could reasonably differ in how they assess whether the 20 Amp Limitation is met and that the patents-in-suit, even when considered alongside the specification and prosecution history, do not provide adequate instruction on which test should be used. (Docket #187-5 ¶¶ 45-47); see also (Docket #187-10 47:19-48:18) (testimony of Plaintiffs' expert during IPR, opining that continuously running a power tool until its battery runs out is not a "typical" way such tools are operated).

The Court does not agree. The Federal Circuit [*32] has found indefinite patent claims that do not teach how they are to be measured. For instance, in Teva, a patent claim prescribed a particular "molecular weight" of a product but did not specify which of three methods should be used to measure it. Teva, 789 F.3d at 1345. Neither the claims nor the specification provided guidance, and the prosecution history contained inconsistent statements by the patentee about which measure was correct. Id. at 1344- 45.

After lengthy discussion, the outcome:

For the reasons stated above, the Court adopts Plaintiffs' proposed
construction of the disputed claim terms. The Court further finds that Snap-On's motion for summary judgment should be denied in its entirety, and
that Plaintiffs' motion should be denied as to assignor estoppel, granted in part as to IPR estoppel, and granted in full as to Snap-On's anticipation, derivation, invalidity, and inequitable conduct defenses.
IT IS ORDERED that Plaintiffs' motion for summary judgment (Docket #185) be and the same is hereby GRANTED IN PART and DENIED IN PART as stated herein;
IT IS FURTHER ORDERED that Defendant's motion for summary judgment (Docket #183) be and the same is hereby DENIED;
IT IS FURTHER ORDERED that Plaintiffs' motion for leave to file its opening claim construction [*115] brief (Docket #177) be and the same is hereby

Friday, September 22, 2017

CAFC discusses venue issues in In re Cray

This petition arises from a patent infringement action
filed by Raytheon against Cray in the Eastern District of
Texas. Cray sells advanced supercomputers that Raytheon
accuses of infringement. Cray is a Washington corporation
with its principal place of business located there.
It also maintains facilities in Bloomington, Minnesota;
Chippewa Falls, Wisconsin; Pleasanton and San Jose,
California; and Austin and Houston, Texas.
Although Cray does not rent or own an office or any
property in the Eastern District of Texas, it allowed Mr.
Douglas Harless and Mr. Troy Testa to work remotely
from their respective homes in that district. Transfer
Order, 2017 WL 2813896, at *1–2 & n.1. Mr. Testa
worked for Cray as a senior territory manager while
residing in the district from 2010 to 2011 before the
underlying suit was filed. Id. at *1 n.1

Mr. Harless worked as a “sales executive” for approximately
seven years with associated sales of Cray systems
in excess of $345 million. Id. at *1. Mr. Harless’s responsibilities
also included “new sales and new account development
in [the] Central U.S.” and “management of key
accounts within the Financial, Biomedical and Petroleum
Industries.” Id. (alteration in original) (quotation marks
omitted). Cray’s “Americas Sales Territories” map, an
internal document, identified Mr. Harless as a “Named
Account Manager” and his location at his Eastern District
of Texas personal home. Id. Mr. Harless received reimbursement
for his cell phone usage for business purposes,
internet fees, and mileage or “other costs” for business
travel. Id. Cray provided Mr. Harless with “administrative
support” from its Minnesota office. Id.


Cray moved to transfer this suit under 28 U.S.C.
§ 1406(a), which provides that “[t]he district court of a
district in which is filed a case laying venue in the wrong
division or district shall dismiss, or if it be in the interest
of justice, transfer such case to any district or division in
which it could have been brought.” Cray argued that it
does not “reside” in the Eastern District of Texas in light
of the Supreme Court’s decision in TC Heartland LLC v.
Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).
The district court agreed that Cray does not reside in the
district. Transfer Order, 2017 WL 2813896, at *4.

Cray further argued that venue was improper in the
Eastern District of Texas because Cray had neither
committed acts of infringement, nor maintained a regular
and established place of business within that district.
The district court, however, rejected that argument. The
court found that Mr. Harless’s activities were factually
similar to the activities performed by the representatives
in In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985), in
which this court rejected a mandamus request to reverse
an order denying transfer for improper venue. See Transfer
Order, 2017 WL 2813896, at *8–10. The court did not
rely on Mr. Testa’s activities in determining that venue
was proper.

The CAFC noted:

We recognize that the world has changed since 1985
when the Cordis decision issued. In this new era, not all
corporations operate under a brick-and-mortar model.
Business can be conducted virtually. Employees increasingly
telecommute. Products may not as a rule be warehoused
by retailers, and the just-in-time delivery
paradigm has eliminated the need for storing some inventory.
But, notwithstanding these changes, in the wake of
the Supreme Court’s holding in TC Heartland, effectively
reviving Section 1400(b) as the focus of venue in patent
cases, we must focus on the full and unchanged language
of the statute, as Cordis did not consider itself obliged to
Moreover, district courts, including the trial court in
this case, have noted the uncertainty surrounding and the
need for greater uniformity on this issue, see, e.g., Transfer
Order, 2017 WL 2813896, at *10 (explaining there is
“uncertainty among the litigants regarding the scope of
the phrase ‘regular and established place of business’”
and “the appropriate scope of such venue discovery”);
Regenlab, 2017 WL 3601304, at *2 (S.D.N.Y. Aug. 17,
2017) (“Substantial confusion exists regarding the circumstances
in which an entity will be found to have a
‘regular and established place of business’ in the dis-

trict.”); Johnston v. IVAC Corp., 681 F. Supp. 959, 962–63
(D. Mass. 1987) (collecting cases with a more “restrictive
reading” of the statute and those with a more “‘liberal’
construction” (citation omitted)); Brunswick Corp. v.
Suzuki Motor Co., 575 F. Supp. 1412, 1424 n.5 (E.D. Wis.
1983) (noting that § 1400(b) “demonstrates . . . a need for
nationwide uniformity” offered by the Federal Circuit),
and this court “has a mandate to achieve uniformity in
patent matters,” Panduit Corp. v. All States Plastic Mfg.
Co., 744 F.2d 1564, 1574 (Fed. Cir. 1984). We conclude
that mandamus here will further “supervisory or instructional
goals” on an “unsettled and important” issue, an
appropriate basis upon which to grant the mandamus
petition. In re Queen’s Univ. at Kingston, 820 F.3d 1287,
1291 (Fed. Cir. 2016) (quoting In re Nintendo Co., Ltd.,
544 F. App’x 934, 936 (Fed. Cir. 2013)); see also BP Lubricants,
637 F.3d at 1313. Although the law was unclear
and the error understandable, the district court abused its
discretion by applying an incorrect legal standard, which
we now clarify in this opinion.


As discussed in greater detail below, our analysis of
the case law and statute reveal three general requirements
relevant to the inquiry: (1) there must be a physical
place in the district; (2) it must be a regular and
established place of business; and (3) it must be the place
of the defendant. If any statutory requirement is not
satisfied, venue is improper under § 1400(b).

The issue in this case:

The parties’ primary dispute concerns
whether Mr. Harless’s home, located in the Eastern
District of Texas, constitutes “a regular and established
place of business” of Cray.

Wednesday, September 20, 2017

CAFC discusses inurement in NFC case

The CAFC noted in NFC v. Matal, 2017 U.S. App. LEXIS 18164

We note that the foregoing analysis assumes that conception is relevant under the present circumstances. Our cases that the Board read as establishing that proof of conception is relevant to inurement involved third-party recognition during testing that the invention would work for its intended purpose. See Cooper II, 240 F.3d at 1380-86; Genentech, 220 F.3d 1352-54; Cooper I, 154 F.3d at 1331-33. Here, there is no evidence that CE did anything other than fabricate the prototype. Although NFC appears to recognize this distinction, see NFC Br. 40-42, NFC only uses it to argue that interference law should not be applied to this case. As NFC has not challenged whether and to what extent conception must be shown to establish inurement under interference law in the present circumstances, we leave that question for another day.

The determination that fabrication of the prototype inures to Charrat's benefit does not resolve this case. As explained previously, the Board assumed, but did not decide, that the prototype embodied the claimed invention. That issue must be decided in order to determine whether Sears can be antedated. Thus, we remand the case for that determination in the first instance. Fortunately, whether the prototype embodied the claimed invention was a disputed issue between HTC and NFC during the initial IPR. See J.A. 455-66. Accordingly, the Board may decide the case on the briefing previously submitted.

Monday, September 18, 2017

PhishMe loses to Wombat in D. Del. on discovery issue

The court noted:

In assessing whether a proposed modification of a Protective Order would present an
unacceptable risk of inadvertent disclosure or competitive misuse of confidential information, it
would be error to deny access solely because of an in-house counsel's "general position"; instead,
"the factual circumstances surrounding each individual counsel's activities, association, and
relationship with a party ... must govern any concern for inadvertent or accidental disclosure."
US. Steel Corp. v. United States, 730 F.2d 1465, 1467-68 (Fed. Cir. 1984);see also Boehringer
Ingelheim Pharm., Inc. v. Hereon Labs. Corp., Civ.A.No. 89-484-CMW, 1990 WL 160666, at
*1 (D. Del. Oct. 12, 1990). This decision will tum, then, on a fact-intensive inquiry into whether
affected counsel (here, Mr. McGee) participates in "competitive decisionmaking" at PhishMe.
US. Steel Corp., 730 F.2d at 1467-68;In re Deutsche Bank, 605 F.3d at 1378. The Federal
Circuit has defined "competitive decisionmaking" as "counsel's activities, [*9] association, and
relationship with a client that are such as to involve counsel's advice and participation in any or
all of the client's decisions (pricing, product design, etc.) made in light of similar or
corresponding information about a competitor." US. Steel Corp., 730 F.2d at 1468 n.3; see also
In re Deutsche Bank, 605 F.3d at 1378-79.


courts have assessed the extent to which counsel--even if he or she does not
make competitive decisions-nevertheless directly advises other high level executives at the
company, who are themselves competitive decisionmakers in the subject matter areas relating to
the suit in question. See Intel Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 530-31 (N.D. Cal. 2000)
(finding that concerns about the risk of harm from competitive decisionmaking were exacerbated
where a Senior Counsel for plaintiff regularly advised the general managers of the plaintiffs
business unit that were most affected by potential licensing agreements, and advised a Vice-
President involved in competitive decisionmaking who had been denied access to confidential
information by other courts in similar cases, and finding that it would be difficult for the Senior
7 See Blackbird Tech LLC, 2016 WL 2904592, at *4


Here, it is clear that while Mr. McGee may not be the "final decisionmaker" as to issues
regarding pricing, product design or those otherwise made in light of similar information about a
competitor (like Wombat), he plays a very important role in the process that leads to those
decisions. He provides legal advice to the final decisionmakers (including the company's CEO
and its Board) on these issues. (Tr. at 8-9) Moreover, Mr. McGee is not only the sole in-house
attorney who provides that kind of advice, but in most instances, he is really the only attorney
who ever does so (since outside counsel has not traditionally played any role in that process).
This all militates in favor of denial of the Motion. 9
A third factor, one particular to the patent context,

Press releases can come back to haunt people:

The Court also notes the apparent disconnect between the way PhishMe described
Mr. McGee's role in the November 2016 press release that was issued just after he was hired, and the way it has described Mr. McGee's role since this legal issue arose. In the press release, Mr. McGee is referred to as a "strategic business partner[,]" (D.I. 99, ex. 1 at 1), but now, PhishMe seems to shy away from that kind of description, (Tr. at 10). In the press release, PhishMe also describes Mr. McGee'.s prior work at Mandiant as including "negotiat[ion] and finali[zation]" of Mandiant's sale, (D.I. 99, ex. 1 at 1); but now, PhishMe states that this description is incorrect (or perhaps, at least a bit misleading), (D.I. 103, [*19] ex. 1 at~ 5 (Mr. McGee averring that "I did not negotiate the business terms in connection with the sale ofMandiant")). At a minimum, it seems like PhishMe wanted the reader of that press release to conclude that Mr. McGee had real experience with the kinds of issues and decisions that play an important role in setting a company's future "strategic" course.

Citation: 2017 U.S. Dist. LEXIS 150862

The EZEKIEL ELLIOTT case in ED Texas

The decision observes that a PATENT trial held back the district court from a rapid response:

Because the Court was presiding over a patent trial, the Court was unable to reach the NFL's Emergency Motion within the NFL's requested time constraints which, the Court notes, was less than twenty-four hours after the briefing on the Emergency Motion was complete.

Because the Court did not issue an order on the NFL's Emergency Motion within the NFL's requested period of time, the NFL did, in fact, file an "Emergency Motion for Stay Pending Appeal" with the Fifth Circuit on September 15, 2017. In its Emergency Motion in front of the Court, the NFL is complaining that the Court essentially issued a premature order by failing to wait for the arbitrator to issue his ruling and therefore, lacked subject matter jurisdiction. Oddly, the NFL is now seeking expedited relief from the Fifth Circuit without first waiting for the Court to rule on the identical issue. The irony is not lost on the Court.

Of interest in the case:

Briefly summarized, Kia Roberts ("Roberts"), Director of Investigations, and Lisa Friel ("Friel"), Senior Vice President and Special Counsel for Investigations, investigated allegations of domestic violence made by Thompson against Elliott. After investigating the allegations and interviewing Thompson, Roberts found insufficient evidence existed to proceed with punishment. On the other hand, Friel, determined, without having interviewed Thompson, sufficient evidence existed to proceed with punishment. Roberts's views were kept from the NFLPA, Elliott, Commissioner Goodell's team of outside advisors, and possibly Commissioner Goodell himself. Conversely, Friel's views were shared with Commissioner Goodell and the outside advisors. In light of the background, the Court found that the denial of Commissioner Goodell and Thompson's testimony were gross evidentiary errors that so affected the rights of the NFLPA and Elliott, such that they were deprived of a fair hearing and it constituted misconduct by Henderson.
The Court also agrees with the NFLPA that the balance of the equitable factors weigh against granting a stay. When determining whether to grant a stay, a court must also weigh equitable factors such as the following: (1) whether the movant will suffer irreparable harm absent a stay; (2) whether the non-movant will suffer injury if the stay is granted; and (3) whether a stay serves the public interest. See In re First S. Sav. Ass'n, 820 F.2d at 704.

The outcome: It is therefore ORDERED that Respondents' Emergency Motion to Stay Injunction
Pending Appeal (Dkt. #30) is hereby DENIED

Note 3: The NFL changed the language of the standard from presenting a substantial case on the merits to "serious and substantial questions on the merits." The Court does not automatically [*12] penalize the NFL for the use of substantial questions rather than substantial case, and continues to analyze whether the NFL presented a substantial case on the merits, which is the standard imposed by the Fifth Circuit. The serious question standard applies to the legal questions presented; however if a serious legal question is presented the NFL must show a substantial case on the merits with respect to those serious legal questions. Ruiz, 650 F.2d at 565.

Note 5: The Court additionally notes that the petition to vacate will not be able to be resolved before November 5, 2017 (this would be the sixth game of Elliott's suspension if it started Week 3 of the NFL season). If the Court were to find in the NFLPA's favor and grant the petition to vacate, Elliott would have already served the entirety of the six-game suspension. The Preliminary Injunction Order preserves the status quo while the Court resolves the NFLPA's Petition.

Citation: 2017 U.S. Dist. LEXIS 150758

Saturday, September 16, 2017

US Court of Claims on "epiphany"

The suggestion that defendant's epiphany occurred only after "obtaining" discovery is less than ingenuous. The government was not obtaining discovery, it was responding to plaintiff's requests with its own information. The assertion that the government's investigation of its own records in response to plaintiff's interrogatory constitutes due diligence makes no sense; it certainly does not constitute good cause, particularly when the court has made substantive rulings which, if revisited, would penalize plaintiff, cf. RCFC 24(b)(3), or if not revisited, could potentially prejudice the third party.

from MORPHOTRUST USA, LLC et al., Plaintiffs, v. Patent infringement ice to THE UNITED STATES, 2017 U.S. Claims LEXIS 1112

Sausage war in ED Wisc gets into inequitable conduct

Defendant Klement Sausage argued that when Johnsonville Sausage withheld information about its utility patent application from Sipos, it breached its duty of candor and good faith in dealing with the PTO.

ED Wisc noted:

Klement fails to prove materiality. For the most part, it applies the wrong materiality standard, arguing that Johnsonville withheld information "material to patentability" as the PTO defines it. The PTO's definition of materiality does not apply in patent cases where inequitable conduct is raised, as it is "overly broad," "encompass[ing] anything that could be considered marginally relevant to patentability."

Id. [Therasense] at 1293-95. "[S]uch a low bar for materiality" does not reflect the seriousness and

"far-reaching consequences" of a finding of inequitable conduct. See id. at 1289, 1294. Rather, "the materiality required to establish inequitable conduct is but-for materiality," meaning that the accused infringer must show that "the PTO would not have allowed a claim" but for some nondisclosure by the applicant. Id. at 1291.
To the limited extent that Klement applies the right materiality standard, its arguments still fail. It first argues that Johnsonville's utility patent application is material because it would have shown Sipos that the curved walls of Johnsonville's tray are functional, not ornamental. This argument assumes that ornamentality [*4] and functionality are mutually exclusive. To the contrary, "[a]rticles of manufacture may possess both."

U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 1502.01 (9th ed. rev. Nov. 2015). In fact, "the design embodied in or applied to an article of manufacture (or portion thereof)" is distinct from "the article itself" and "cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional." Id. §§ 1502, 1504.01(c)(I).

Klement also argues that Gehman's rejection of Johnsonville's utility claims as anticipated and obvious and the prior art he cited are material because they would have shown Sipos that the curved walls of Johnsonville's sausage tray lack novelty and nonobviousness. But, Gehman only assessed the functional novelty and nonobviousness of Johnsonville's tray, not the ornamental novelty and nonobviousness of the design embodied in it. A design does not lack novelty or nonobviousness merely because the article in which it is embodied does. See generally id. § 1504. Further, Klement does not explain how the prior art that Gehman cited adds to the prior art that Johnsonville disclosed to Sipos. Compare U.S. Patent No. 5,820,904, and European Patent Application [*5] No. EP1997618, with '249 Patent, and '539 Patent. Prior art that

"teaches no more than . . . the prior art already before" the examiner is cumulative.

Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed. Cir. 1997)

Case cite: 2017 U.S. Dist. LEXIS 150011

WD Wisc discusses meaning of "ambiguity"

From 2017 U.S. Dist. LEXIS 149885 :

An ambiguity is "something that makes it possible to interpret a document reasonably in more than one way." Rossetto, 217 F.3d at 542. The Seventh Circuit has recognized two types of ambiguities: (1) a "patent ambiguity" is "apparent just from reading the contract without knowing anything about how it interacts with the world"; and (2) a "latent ambiguity" is "recognized as such only when a contract clear on its face -- clear that is, to the uninformed reader -- is applied to a particular dispute." Id. at 542-43.

Third, in determining whether an ambiguity exists, this court is to look at the entire contract to see if either type of ambiguity can be "disambiguated." Rossetto, 217 F.3d at 545. This search goes beyond the CBAs to include accompanying plan documents. See Barnett, 436 F.3d at 832 ("The second portion of relevant contractual language was contained in a CIPS medical plan."); Murphy, 61 F.3d at 564

Friday, September 15, 2017

CAFC affirms PTAB in IDEMITSU KOSAN CO., LTD. case: no obligation to rebut attorney argument with expert witness testimony

The technology relates to organic LEDs [ “Organic
Electroluminescence Device and Organic Light
Emitting Medium.” ]

The issue:

On appeal, Idemitsu does not appear to challenge the
Board’s factual findings with respect to the correspondence
between the ’648 patent’s components and some of
the compounds disclosed by Arakane. Rather, Idemitsu
argues that the Board erred in finding that Arakane
taught combining those particular compounds for the
purpose of creating a light emitting layer in an electroluminescent

The CAFC referenced PTAB:

(“This teaching regarding the energy gap relationship, however,
does not diminish Arakane’s disclosure of the fundamental
concept of forming a light emitting layer containing a
mixture of at least two components, (A) a hole transporting
compound and (B) an electron transporting compound.”).
In other words, the Board found that Arakane
teaches that combining any of the listed HT compounds
with any of the ET compounds would produce a light
emitting layer, and that—if the combination additionally
satisfies the energy gap relationship—then it will feature
improved durability and efficiency as well. Id. at *27-29.

The CAFC noted

This back-and-forth shows that what Idemitsu characterizes
as an argument raised “too late” is simply the
by-product of one party necessarily getting the last word.
If anything, Idemitsu is the party that first raised this
issue, by arguing—at least implicitly—that Arakane
teaches away from non-energy-gap combinations. SFC
simply countered, as it was entitled to do. To the extent
Idemitsu suggests that the Board could not reach a counterargument
because it was not preemptively addressed
by the petition or institution decision, Idemitsu is plainly
mistaken. See Genzyme Therapeutic Prod. Ltd. P’ship v.
Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir.
2016) (“There is no requirement, either in the Board’s
regulations, in the APA, or as a matter of due process, for
the institution decision to anticipate and set forth every
legal or factual issue that might arise in the course of the
Idemitsu’s only substantive argument on appeal appears
to be that the Board should not have engaged in
fact-finding on this issue without the benefit of additional
extrinsic evidence, such as expert testimony. See, e.g.,
Appellant Br. 43–44. In some cases, that method of factfinding
could indeed be problematic. See, e.g., Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed.
Cir. 2009) (“If the relevant technology were complex, the
court might require expert opinions.”); Proveris Sci. Corp.
v. Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir.
2008) (affirming the district court’s requirement of expert
testimony to prove invalidity where “th[e] subject matter
[wa]s sufficiently complex to fall beyond the grasp of an
ordinary layperson”); Brand v. Miller, 487 F.3d 862, 869-
70 (Fed. Cir. 2007) (reversing the Board’s decision to
“reject[] as unconvincing the only relevant testimony” and
independently reach the opposite conclusion).
But here, Idemitsu provided no such supporting evidence
for its own position—that Arakane teaches away
from any non-energy-gap HT/ET combinations. SFC, of
course, bears the ultimate burden of establishing unpatentability,
but it is not required as a matter of law to
rebut mere attorney argument with expert testimony in
order to satisfy that burden. The Board weighed the
parties’ competing arguments—each relying solely on the
text of Arakane itself—and found SFC’s reading to be the
more plausible one. That is precisely what the Board is
supposed to do.

Comment: in the text

First, SFC argued in its petition that "Arakane teaches (i) that the [HT] compound can be an arylamine compound corresponding to Formula (V) of claims 1 and 13, (ii) that the [ET] compound can be anthracene derivatives corresponding to Formulas (I) and (II) of claims 1 and 13, and (iii) that the [HT] compound and [ET] compound are mixed in the organic light emit-ting medium." J.A. 15-16; see also J.A. 189-91. Second, Idemitsu argued in its response that SFC failed to "explain why a skilled artisan would have been led to use" that combination, given that "[t]he energy gap relation-ship limits the combinations of the compounds . . . encompassed by Arakane to combinations satisfying the relationship." J.A. 328. Third, SFC countered in its reply that Arakane does not teach away from "the claimed combination," despite "the absence of demonstrating that the combination would possess the preferred energy gap relationship," distinguishing certain comparative exam-ples. J.A. 382-83; see also Idemitsu, 2016 Pat. App. LEXIS 13340, at *24 -25.

we seem to have a generic disclosure within Arakane rendering obvious a claimed sub-genus. An issue would be "why" one of ordinary skill would have been motivated to select the sub-genus.

Citation to case on LEXIS: 2017 U.S. App. LEXIS 17856

No jurisdiction when claim under patent law is secondary to resolving assignment issue

The outcome

First Data Corporation (“First Data”) and Frank Bisignano
(“Bisignano”) appeal from the district court’s dismissal
of their counterclaims and their declaratory
judgment action under Federal Rule of Civil Procedure
12(b)(1). See Bisignano v. Inselberg, Nos. 15-8301 (KM)
(JBC), 16-317 (KM) (JBC), 2016 U.S. Dist. LEXIS 113563
(D.N.J. Aug. 25, 2016) (District Court Opinion). They also
object to the district court’s order remanding their state
law claims to state court. Because the district court
correctly dismissed the federal claims for lack of subject
matter jurisdiction and we cannot review the remand
order, we affirm.

Of the jurisdiction issue

This court reviews de novo a district court’s order
dismissing claims for lack of subject matter jurisdiction.
Powertech Tech. Inc. v. Tessera, Inc., 660 F.3d 1301, 1306
(Fed. Cir. 2011). The party claiming declaratory judgment
jurisdiction has the burden to establish that jurisdiction
existed at the time the claim was filed. Id.

Citing Bell v. Hood, the CAFC noted:

There, the Court explained
that the failure to state a proper cause of action requires a
judgment on the merits rather than a dismissal for jurisdiction,
but that “previously carved out exceptions are
that a suit may sometimes be dismissed for want of
jurisdiction where the alleged claim under the Constitution
or federal statutes clearly appears to be immaterial
and made solely for the purpose of obtaining jurisdiction
or where such a claim is wholly insubstantial and frivolous.”
Id. at 682–83; see also The Fair v. Kohler Die &
Specialty Co., 228 U.S. 22, 25 (1913) (“No doubt if it
should appear that the plaintiff was not really relying
upon the patent law for his alleged rights, or if the claim
of right were frivolous, the case might be dismissed.”).

The CAFC discussed Jim Arnold:

First Data’s and Bisignano’s argument ignores the actual
context we addressed in Jim Arnold. The assignor in
Jim Arnold stated in its complaint that the assignment
was “null and void” and that the assignee was infringing
the patent. But we did not include this allegation as an
example by which an assignment would be declared null
and void “by operation of law.” See id. at 1576–77. To the
contrary, we explained that the gravamen of the complaint
was founded in state contract law. Similarly, here,
the claims focus on state law contract remedies, and
Inselberg and Interactive admit that they cannot pursue a
patent claim unless a state court grants rescission of the
assignment agreement. See, e.g., Appellees’ Br. 2 (“Eric
Inselberg and Inselberg Interactive, LLC do not own any
patents. They used to own 21 patents, and they have filed
state-law claims to try to get those patents back. But at
the time the cases below were filed, they owned zero (0)
patents.”); id. at 3 (“Inselberg and his company lack title
to the patents, and thus lack standing to bring a patent
claim.”); Oral Arg. at 13:59–14:05, http://oralarguments. (explaining
that there is no threat of an infringement claim by
Inselberg against First Data because Inselberg has “no
present ownership of any patents”).

First Data case, D. N.J. 2016-2677, 2016-2696

Thursday, September 14, 2017

Pro se plaintiff fails to establish personal jurisdiction in otherwise interesting case

Of interest is text in the decision [ 2017 U.S. Dist. LEXIS 148859 (ED Ky]:

Mike Ellig was a former owner of Montana Black Gold Inc. and is the current owner of Sight Inc. Ellig responded to Afshari's lawsuit by sending Afshari a letter via e-mail on May 11, 2016. It is that letter that is the root of this action. (DE 1-1, Ellig Letter.) Afshari asserts that, with the letter, Ellig committed various wrongs against him, including defamation, extortion, and blackmail.
In the letter, Ellig asserted that Afshari's fiber-optic bow sight patent was invalid because Afshari's design was actually nothing new; other bow sights employing the same design had been patented before Afshari's. Ellig then went on to address what he believed to be inconsistencies between Afshari's lawsuit against Bear Archery for infringement and Afshari's previous representations to the bankruptcy court that his patents had no value.
"We are also aware that you were currently suing Bear Archery for infringement of your '321 patent at the time your bankruptcy case was filed. However, you disclosed to the bankruptcy trustee that the '321 patent did not have any value." Ellig continued by explaining what he believed to be the significance of the inconsistencies. "Because you were currently suing Bear Archery for infringement, and you were planning on suing Montana Black and/or other archery equipment companies for infringement of the '321 patent, it is clear that you did not believe the '321 patent did not have any value." In Ellig's view, Afshari's actions in the bankruptcy court constituted "misrepresentation and withholding of information" and "could constitute fraud."

He then warned Afshari:
If we were to notify the [bankruptcy] trustee and she agreed to re-open the [bankruptcy] proceedings, she would most likely take control of your infringement claim and the '321 patent as well as all of your other patents. Ben, I really don't want to have to do this but you will force me to re-open your bankruptcy if you disregard all of the above evidence.

The outcome:

As to Black Gold Archery LLC, Afshari does not make any allegations explaining why Ellig's actions should be attributed to it. Afshari does not allege any relationship between Black Gold Archery LLC and Ellig at all. Ellig is a Montana resident. Afshari has submitted evidence that Black Gold Archery LLC is located in Oregon. (DE 15-4, Oregon Sec. of State Filings.) Nor does Afshari allege that any other Black Gold Archery LLC representative took any actions on its behalf. Accordingly, Afshari has not alleged any activity on behalf of Black Gold Archery LLC and the Court cannot find that it has personal jurisdiction over the company. Its motion to dismiss must, therefore, also be granted.
Because the Court has found that it cannot exercise personal jurisdiction over any of the four defendants, Afshari's claims will be dismissed without prejudice. This ruling does not address the merits of any of Afshari's claims. It simply finds that Afshari cannot bring his claims against these defendants in Kentucky

No case/controversy in US for threats of infringement made outside US on non-US patents

In Allied Mineral, 2017 U.S. App. LEXIS 17667, the CAFC addressed DJs in view of a threat of litigation from a foreign patent,

From the decision:

All of Stellar's conduct has been directed towards Allied's customers Ferro and Pyrotek, unrelated Mexican entities, and that contact was limited to Stellar's Mexican Patent and potentially infringing acts in Mexico. Stellar sent notice letters to the customers alone, and although Allied responded on behalf of its customers, Stellar never responded to Allied's letter. [*5] Stellar then sued only the customers, not the manufacturer. Stellar also limited its actions to Mexico. Stellar filed suit in Mexico, suing for infringement of a Mexican patent under Mexican laws. It has not threatened or alleged infringement of the '974 patent in the United States, much less filed suit. Stellar took no actions directed at Allied, no actions with regard to its '974 patent, and no actions under U.S. patent laws.


Considering the totality of the circumstances, we agree with the district court that there is not a substantial controversy of sufficient immediacy and reality to confer declaratory judgment jurisdiction. Stellar sent notice letters to Ferro and Pyrotek in Mexico, and it sued Ferro and Pyrotek in Mexico. Stellar did not even respond to Allied's letter about the Mexican Patent on behalf of Ferro and Pyrotek. Nor has Stellar taken any action in the United States or any action on the '974 patent. Allied has failed to establish a case or controversy regarding Stellar's U.S. patent in the United States under Article III.

In Intellectual Ventures v. Motorola, Judge Newman challenges nonobviousness finding

The outcome of the Intellectual Ventures case [ 2017 U.S. App. LEXIS 17666 ]:

We hold that substantial evidence supports the jury's verdict regarding the validity of claim 41 of the '144 patent and claims 1, 10, 11, and 13 of the '462 patent, but conclude that substantial evidence does not support the jury's verdict of direct infringement of claim 41 of the '144 patent. Since a finding of direct infringement is a predicate to any finding of indirect infringement, we reverse all of the infringement findings with respect to the '144 patent. We therefore affirm the district court's judgment in part, reverse in part, and remand for further proceedings on the asserted claims of the '462 patent.

Judge Newman dissented in part:

I agree with the holding of non-infringement of the '144 patent, and join the judgment of reversal of the district court's judgment of liability with respect to that patent.1 I respectfully dissent from my colleagues' sustaining the validity of the '144 and '462 patents, for I believe that the claims in suit would have been obvious to a person of ordinary skill in the field of the invention.


Although my colleagues state that "the jury was free to disbelieve [Motorola's] expert and credit [IV's] expert," Maj. Op. at 12 (alterations in original), the court's obligation is to assure that questions of law are correctly decided, and that for factual disputes, substantial evidence on the record as a whole supports the legal conclusion. The question of law is whether a person of ordinary skill in this art would deem it obvious to combine an authenticating step as in Micali, with the process of Overend. See 35 U.S.C. § 103 (whether "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.").


Applying law and precedent, the combination of Overend and Micali renders claim 41 obvious. First, "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007). And second, "[w]hen a patent simply arranges old elements [*37] with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (internal quotation marks and citation omitted). The Court explained that "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." Id.

In light of the evidence, no reasonable jury could have found claim 41 to be nonobvious. There is not substantial evidence that a receipt confirming delivery is not a delivery confirmation message as in the prior art, especially given the express teachings of Micali's authenticating device. A "patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men." Id. at 415-16 (quoting Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152-153, 71 S. Ct. 127, 95 L. Ed. 162, 1951 Dec. Comm'r Pat. 572 (1950)).

Wednesday, September 13, 2017


Defendants had prevailed on a JNOV [ After trial, the court granted defendants' motion for judgment as a matter of law that the '398 patent is invalid as obvious. ] and sought a fee award.

From the decision:

The question is not governed by clear-cut rules, but the court's discretion is guided by the purpose of fee-shifting under § 285, which is to dissuade unreasonable lawsuits and litigation tactics by compensating the prevailing party for enduring them. See, e.g., Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1930-31 (2015). The court should not award fees to punish a patent holder simply for failing to prove infringement. Gaymar Indus., Inc. v. Cincinnati Sub-Zero Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (citing Octane, 134 S. Ct. at 1753). A litigation position that seems obviously wrong after a decision on the merits might have seemed reasonable when judged without the benefit of hindsight. And fee-shifting in routine cases would deter legitimate efforts to enforce patent rights. So the court will award fees only if there has been some [*3] conduct that warrants imposing on the losing party the additional burden of paying the other side's attorney fees. The court need not find that the losing case was frivolous, or that it was brought in bad faith for an illegitimate purpose (although that would clearly warrant fee-shifting). See Lumen View Tech., LLC v., Inc., 24 F. Supp. 3d 329, 335 (S.D.N.Y. 2014), aff'd, 811 F.3d 479 (Fed. Cir. 2016). Such clearly inappropriate cases and tactics would be sanctionable pursuant to Rule 11 or the court's inherent powers even without § 285.

Because the purpose of § 285 is to compensate parties forced to defend against unreasonable litigation and to deter improper conduct, a good way to think of the question is this: was the losing party's case so unusually weak on the merits that it suggests an improper purpose or demonstrates irresponsible conduct that should be deterred? Or, is there other evidence, besides substantive weakness on the merits, that suggests an improper purpose? With these questions in mind, the court turns to the parties' arguments.
Defendants argue that plaintiffs knew their patent was invalid as obvious over their own prior art, the CapTel trials combined with U.S. Patent Publication No. 2002/0085685 (the
'685 publication), yet argued during litigation that the CapTel trials weren't [*4] prior art, but rather were an experimental use. They complain that plaintiffs mischaracterized the evidence concerning the trials and made "objectively baseless arguments that contradicted well-settled legal principles" concerning the experimental-use exception. Dkt. 735, at 13.


So although plaintiffs' position concerning the CapTel trials was not ultimately successful, it was far from unreasonable. Whether the trials were an experimental use was a close call, especially in the uncharted territory of applying the experimental use exception within the context of prior art.

citation: 2017 U.S. Dist. LEXIS 148132 (WD Wisc 2017)

Domain name case in ED Va

Before the Court are Proposed Findings of Fact and Recommendations ("Report") issued by a magistrate judge on August 24, 2017 [Dkt. No. 19]. The Report recommends that plaintiff's Motion for Entry of Default Judgment [Dkt. No. 15] be granted, that VeriSign, Inc., the registry of domain name, (the "Infringing Domain Name"), be ordered to require the current registrar to transfer the registrations for the Infringing Domain Name to plaintiff,, LLC, and that Defendant John Doe be dismissed without prejudice. The Report advised the parties that any objection to the Report had to be filed within fourteen days of service of the Report and that failure to file a timely objection barred appeal of "any finding or conclusion accepted or adopted by the District Judge except upon grounds of plain error." Report at 19. As of September 11, 2017, no objections have been filed by any party.
Plaintiff brings an in rem action under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d). Accordingly, [*2] the Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§1331 and 1338(a). Venue is proper under the ACPA because VeriSign, Inc., the domain name registry is located in this district. 15 U.S.C. §§ 1125(d)(2)(A) and (C).
The Court has in rem jurisdiction over the Infringing Domain Name pursuant to 15 U.S.C. § 1125(d)(2)(A). Under this provision, a court in the judicial district in which the domain name registry is located has in rem jurisdiction if "the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office" and the owner of the mark "is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action" under the ACPA or "through due diligence was not able to find a person who would have been a defendant" after sending notice of the claimed violation and the owner's intent to file suit to the registrant. 15 U.S.C. § 1125(d)(2)(A).

from 411 MANIA.COM, LLC, Plaintiff, 2017 U.S. Dist. LEXIS 147547

ED Texas on Daubert/Kumho issue

Plaintiff Network-1 moved to exclude certain opinions of expert Ambreen Salters, as unreliable.

However, to the extent Plaintiff disagrees with the accuracy of Salters's decision to treat the fluctuating numbers in the spreadsheet as variable costs, or her decision to be conservative by treating only 50% of the operating costs as variable based on Thompson's deposition testimony, these concerns are best addressed through vigorous cross examination at trial, not wholesale exclusion. These concerns, as well as the other concerns Plaintiff has raised in the briefing, go to the weight, not admissibility of Salters's testimony.


Tuesday, September 12, 2017

The unintended consequences of eBay

A law review article shows that the impact post-eBay on the granting of injunctions varies by industry type.
From Table 1:

Table 1. Industry classification and injunction grant rate by industry
Industry Sector Grant Rate
Other 90.6%
Chemistry /Chemical 88.9%
Pharmaceutical 84.2%
Biotech 83.3%
Consumer Goods 81.0%
Transportation 76.4%
Computers/Electronics 63.0%
Software 50.0%
Medical Devices 46.2%

from The Unintended Consequences of the Injunction Law after eBay v. MercExchange: An Empirical Study of the Effects on Injunctions in Patent Law
99 J. Pat. & Trademark Off. Soc'y 249 (2017)

One recalls in 2006 LBE wrote an article titled "Will there be Unintended Consequences from the Supreme Court Decision in eBay v. MercExchange?"

In 27 Rev. Litig. 1 (2007), Douglas Laycock wrote:

in eBay Inc. v. MercExchange, L.L.C., n6 where the Court substantially rearranged the standards for granting permanent injunctions without appearing to realize it had changed anything. Recognizing that there can be sound reasons for limiting or refusing injunctive relief, Professor Rendleman would treat those reasons as in the nature of affirmative defenses to plaintiff's prima facie entitlement to an injunction ordering defendant to obey the law. My own view is that his proposal states what the law has been in practice for a long time, n7 and that the Court's opinion has now moved formal doctrine further from reality than it was before. Litigators and trial judges would be much better off if the eBay opinion could have been assigned to Professor Rendleman.

In Modern American Remedies: Cases and Materials at 426 (4th ed. 2010) Douglas Laycock argued that there was "no traditional four-part test" and that the Supreme Court majority's citations supporting this test are misplaced in cases related to preliminary injunctions.

One notes also the text in 27 Rev. Litig. 161 (2008) :

in a very different context, the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. n13 is a spectacular example of the confusion that can result from litigating a remedies issue without a remedies specialist. But the reality is that except for consulting opportunities for law professors, the practice of law does not support remedies specialists. It is only teachers and students who have the freedom to consider remedies apart from underlying questions about liability, and thus only law professors who can specialize in remedies.

Copyright defendant wins motion for reconsideration in SD Miss

As to the law:

"A Rule 59(e) motion calls into question the correctness of a judgment." Templet
v. Hydrochem Inc., 367 F.3d 473, 478 (5th Cir. 2004). There are three grounds for
altering or amending a judgment under Rule 59(e): "(1) an intervening change in
controlling law, (2) the availability of new evidence not previously available, or (3) the
need to correct a clear error of law or prevent manifest injustice." Williamson Pounders
Architects, P.C., 681 F. Supp. 2d 766, 767 (N.D. Miss. 2008).

There was a correction of a factual error:

First, Defendant argues that the Court erred in holding that the record contains
no evidence that she paid the filing fee to accompany her application for copyright
registration. Defendant is correct. The record contains an e-mail receipt from
demonstrating that Defendant's attorney remitted the $35.00 filing fee. See Exhibit I
at 4, Dennis Pierce, Inc. v. Pierce, No. 2:16-CV-102-KS-MTP (S.D. Miss. July 3, 2017),
ECF No. 52-9.

Summary judgment was inappropriate:

As for the other arguments raised in Plaintiffs' Motion for Summary Judgment
- that Defendant created the mark as a "work for hire," that Dennis Pierce was a "joint
author" of the work, that the mark lacks the requisite creativity and originality to
receive copyright protection, and that Defendant granted Dennis Pierce an irrevocable
license to use the mark - the Court finds that there are genuine disputes of material
fact that preclude summary judgment on these bases. Moreover, Plaintiffs cited no
legal support for their "misuse of copyright" argument.
The Court grants Defendant's Motion for Reconsideration as to her copyright
infringement counterclaim.

See Pierce v. Pierce, 2017 U.S. Dist. LEXIS 147075

UNIFRAX I, LLC loses on JNOV at D. Delaware

There is both an issue of "argument not made" AND improper referencing in the brief:

Defendant makes the new claim construction argument that if a material serves more than
one function, such as, as both a dispersant and a carrier, then that material would count towards
the "l 00% by weight" limitation because it qualifies as a carrier. Defendant did not argue this
specific issue in its claim construction briefing. (See generally D.I. 74). Defendant had
numerous opportunities to raise this specific issue prior to trial, but Defendant did not do so.
Indeed during summary judgment arguments, Defendant represented that "the [*5] correct claim
construction is the one the Court gave which is there cannot be resin or adhesive in the vermiculite." (D.I. 282, 26: 10-17).

I do not understand Defendant's citations at D.I. 370, page 34, footnote 17 to amount to an adequate request for additional claim construction of this issue. Defendant did not preserve this specific argument as a basis for JMOL at trial either. Thus, this argument is waived. See, e.g., LG Elecs. US.A., Inc. v. Whirlpool Corp., 798 F. Supp. 2d 541, 551 (D. Del. 2011) ("A party dissatisfied with a jury verdict may not prevail on a post-verdict motion for JMOL based on grounds not raised in the pre-verdict motion for JMOL."); Dura-Last, Inc. v. Custom Seal, Inc., 321F.3d1098, 1107 (Fed. Cir. 2003) ("[I]t would be constitutionally impermissible for the district court to re-examine the jury's verdict and to enter JMOL on grounds not raised in the pre-verdict JMOL."). Even if it were not waived, I think Defendant's new construction is an overly broad interpretation of what counts towards the 100% by weight limitation. Defendant's new construction seems to contemplate that even residual dispersants could count towards this limitation. See Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) ("A claim construction that excludes a preferred embodiment is 'rarely, if ever, correct."'). [*6] For the reasons given in my Markman opinion, that cannot be the correct reading. (See, e.g., D.I. 86 at p. 14 (noting that the specification provides that "[t]he refractory layer may comprise some residual dispersant arising from incomplete drying of the platelet dispersion during manufacture")).

Of the issue of juror confusion:

During the cross-examination of Dr. Nosker, Defendant objected, "Mr. Levine is suggesting to the jury that the construction of the claim is that only resins can be carriers when, in fact, it is the carrier such as a resin or adhesive. I'm just concerned that ifhe continues to suggest that, they're [*8] going to be confused." (Tr. 1208:2-9). I overruled that objection, stating that Mr. Levine "hasn't explicitly suggested that. You know, it seems like something you could bring up on redirect." (Tr. 1208:10-13).
Before I excused the jury to begin deliberations, Defendant further requested "a corrective instruction that carriers are not limited to the examples of resins, adhesives paper or cloth. I think that Mr. Levine implied strongly that it is a limiting construction and it's not." (Tr. 1848:10-15). I overruled that objection, stating, "I think the instruction that I've given that's in the book as to what it is is sufficient, so I'm not going to give that." (Tr. 1849:2-5).
There is no miscarriage of justice here. I do not think a jury was misled to believe that a carrier can only be resins or adhesives. Mr. Levine never argued that a carrier can only be resins
or adhesives. Indeed, Mr. Levine made clear that resin and adhesives are merely examples of
carriers. (Tr. 1839: 10-19). My construction, which was provided to the jury, further served to mitigate juror confusion.

Case: DuPont v. Unifrax, 2017 U.S. Dist. LEXIS 146950

Cablz loses at CAFC. Matters of waiver and motivation to combine.

Following institution of inter partes review, the United
States Patent Trial and Appeal Board found every
claim of U.S. Patent No. 8,366,268 (“’268 patent”) unpatentable
as obvious. Cablz, Inc., the owner of the ’268
patent, appeals from this decision, arguing that substantial
evidence fails to support the Board’s obviousness
determination and that the Board failed to adequately
explain a motivation to combine the prior art. Finding no
error in the Board’s decision, we affirm

The technology relates to holding eyeglasses on:

The ’268 patent is entitled “Eye Wear Retention Device.”
As the patent explains, people have long been using
devices like chains, strings, and ropes to retain their
glasses around their necks. A significant problem is that
such devices rest directly against the wearer’s back or
neck, which can cause the device to become entangled
with clothing or coated with sweat or suntan lotion. The
’268 patent purports to solve the problem and discloses an
eyewear retainer that “extends rearward from the head of
the wearer and is suspended off the neck of the wearer.”
J.A. 40 at Abstract.

The cited prior art in this case is of interest.

The topic of waiver arose:

As an initial matter, we conclude that Cablz waived
its argument that Monroe fails to disclose a “resilient”
cable or member because it failed to raise this argument
in its briefing before the IPR oral hearing. The court
retains case-by-case discretion over whether to apply
waiver. In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed.
Cir. 2016)


As a result, we do not have the
benefit of the Board’s informed judgment on the specific
reading of Monroe that Cablz advances on appeal. The
argument is thus waived. See Watts, 354 F.3d at 1368.

Query: when the Board, or other trial court, ignores
an argument actually presented, the reviewing court is also deprived of
the benefit. Does the reviewing court then vacate?

Of motivation to combine:

We may affirm the Board’s ruling if we reasonably
discern that it followed a proper path, even if that path is
less than perfectly clear. Nuvasive, 842 F.3d at 1383
(citing Bowman Transp., Inc. v. Ark.-Best Freight Sys.,
Inc., 419 U.S. 281, 285–86 (1974)); Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
The Board’s decision provides a reasonably discernable
path for articulating a motivation to combine the prior
“one of skilled in the art would have ‘immediately recognized
that a simple substitution of the eyewear retainers
of Mackay for the attachment method employed in Monroe
would have had various advantages.’” Chums, 2016
WL 763054 at *5. The Board similarly summarized
Appellee’s arguments regarding a motivation to combine
the other prior art references. Id. at *5–6. After analyzing
the arguments, the Board concluded that achieving
the ’268 patent’s configuration required only “simple
substitution.” Id. at *11.
The Board also addressed and rejected each of Cablz’s
arguments that there was no motivation to combine the
prior art. First, the Board found no persuasive reason
why the cited combinations “taught away” from the ’268
patent’s invention. Id. at *8. Second, the Board rejected
Cablz’s argument that Mr. Sosin failed to recognize and
solve the “being in the way problem.” Id. at *8–9. Third,
the Board found the age of the references and the fact
that Appellees did not combine the references to create
their own product did not preclude a motivation to combine
the prior art. Id. at *9–10. Ultimately, the Board
concluded that Appellees provided “strong evidence of
obviousness.” Id. at *15. Taken together, we may reasonably
discern that the Board found a motivation to
combine the references because doing so would have been
a matter of simple substitution that would result in an
eyeglass retainer with certain advantages.

Monday, September 11, 2017

D. Delaware addresses Heartland venue issue in case involving BMS' Eliquis®

The Dustrict Court of Delaware noted:

On July 25, 2017, MPI moved to dismiss for improper venue under Federal Rule of Civil
Procedure 12(b)(3), contending that venue is not proper under either the residency or place of
business prongs of§ 1400(b).


Venue in a patent infringement action is governed solely and exclusively by the patent venue statute, 28 U.S.C. § 1400(b). See TC Heartland, 137 S. Ct. at 1516. The general venue statute, 28 U.S.C.
§ 1391(c), does not have any application in a patent case. See id. at 1521.
If the Court grants a Rule 12(b)(3) motion based on improper venue, the Court "shall
dismiss, or if it be in the interest of justice, transfer such case to any district or division in which
it could have been brought." 28 U.S.C. § 1406(a).

Generally, "it is not necessary for the plaintiff to include allegations in his complaint
showing that venue is proper." Great W Mining & Mineral Co. v. ADR Options, Inc., 434 F.
App'x 83, 86-87 (3d Cir. 2011). Hence, when confronted with a motion to dismiss for improper
venue, the Court may consider both the complaint and evidence outside the complaint. See 14D
Wright & Miller, Federal Practice & Procedure§ 3826 (4th ed. 2017). The Court will accept any
venue-related allegations in the complaint as true, unless those allegations are contradicted by the
defendant's [*8] affidavits. See Bockman v. First Am. Mktg. Corp., 459 F. App'x 157, 158 n.l (3d
4While § 1406(a) authorizes the Court to either dismiss or transfer a suit brought in an improper venue, for simplicity this Opinion will refer to the improper venue motion as a "motion to dismiss."


Courts are not uniform in their views as to which party bears the burden of proof with
respect to venue. Some hold that a plaintiff must prove that venue is proper in its chosen district,
while others hold instead that a defendant must prove that such district is an improper venue. See
14D Wright & Miller, Federal Practice & Procedure§ 3826 (4th ed. 2017) ("There are many
cases -predominantly, but not exclusively, from the Third and Fifth Circuits-:-- holding that the
burden is on the objecting defendant to establish that venue is improper, because venue rules are
for the convenience and benefit of the defendant.").

BRISTOL~MYERS SQUIBB COMPANY and PFIZER INC v, Mylan ["MPI"], 2017 U.S. Dist. LEXIS 146372 (11 Sept 2017)

See also Boston Scientific v. Cook, 2017 U.S. Dist. LEXIS 146126, also involving Heartland LLC v. Kraft Food Group Brands LLC, 137 S. Ct. 1514 (2017).

There was a post on 13 Sept 17 Frequent ANDA Filer May Have Regular and Established Place of Business in Delaware​

IPBiz notes additional text in the decision, which relied on Acorda, 817 F3d. 755:

In the Court's view, the best, most reasonable conclusion after Acorda is that an ANDA filer's future, intended acts must be included as part of the "acts of infringement" analysis for purposes of determining if venue is proper under the patent venue statute. In Acorda, the Federal Circuit plainly held that intended, planned, future acts that will occur in a district in the future (after FDA approval) are acts that must be considered now in determining whether an ANDA filer has sufficient contacts with that district right now to make Hatch-Waxman litigation in such a district appropriate from a jurisdictional perspective. See, e.g., id. at 760 ("[T]he minimum-contacts standard is satisfied by the particular actions Mylan has already taken — its ANDA filings — for the purpose of engaging in that injury-causing and allegedly wrongful marketing conduct in Delaware."). It follows, in the Court's view, that the same approach must apply in the context of a venue analysis: planned, future acts that the ANDA filer will take in this District must be considered now in determining whether venue is proper here. In the context of Hatch-Waxman, therefore, such future acts are properly considered part of the "acts of infringement" that "the defendant has committed" within the meaning of § 1400(b).

The conclusion of the case:

For the reasons stated above, the Court will deny without prejudice MPI's motion to dismiss for improper venue. MPI has committed acts of infringement in Delaware based on its submission of an ANDA to the FDA, with the intention and for the purpose of selling products in Delaware that would allegedly infringe BMS' patents. The Court is not yet able to determine whether MPI lacks a regular and established place of business in Delaware. Hence, the Court will permit venue-related discovery and allow MPI to renew its venue challenge after such discovery is completed.

Sunday, September 10, 2017

CBS Sunday Morning on 10 Sept 2017: interview with Hillary Clinton

The anticipated interview of Hillary Clinton by Jane Pauley on CBS Sunday Morning got into the matter of "deplorable":

There were some memorable verbal gaffes, including when she said at a campaign appearance: "You could put half of Trump's supporters into what I call the basket of deplorables."

"Why do you think that word deplorable had been circulating in your mind?" Pauley asked.

"Well, I thought Trump was behaving in a deplorable manner," Clinton said. "I thought a lot of his appeals to voters were deplorable. I thought his behavior, as we saw on the 'Access Hollywood' tape, was deplorable. And there were a large number of people who didn't care. It did not matter to them. And he turned out to be a very effective reality TV star."

Clinton says she thinks her rival's opponents were "already energized" before her "deplorable" comment but conceded: "I'm sorry I gave him a political gift of any kind."

"It was a gift," Pauley said.

"I don't think that was determinative," Clinton said.

Notice that Pauley asked "why" the word "deplorable" was on Clinton's mind, rather than "why" Clinton lumped half of Trump supporters into a "basket of deplorables."

**One year ago [Saturday, Sept. 10, 2016], the NY Daily News wrote:

Clinton ripped 50% of Trump supporters during a LGBT fund-raiser in lower Manhattan Friday evening, grouping them into a "basket of deplorables."

"You know, to just be grossly generalistic, you could put half of Trump's supporters into what I call the basket of deplorables," Clinton said to laughter from the "LGBT for Hillary" crowd. "The racist, sexist, homophobic, xenophobic, Islamaphobic - you name it."

On the same day, the Christian Scientist Monitor wrote:

Presidential candidate Hillary Clinton told the country what she really thinks about many Donald Trump supporters when she lumped "half" of them into a xenophobic, homophobic, racist, and sexist "basket of deplorables" on Friday.

Although she cautioned her comments were "grossly generalistic," the blunt commentary at a New York City fund-raiser specifically targeted the nebulous alt-right movement that Mr. Trump has courted, whose philosophical leaders in a press conference this week outlined their plans for an ethno-state where Jews might or might not be welcome.

Mrs. Clinton has never painted Trump as holding such views. But she has used the word "deplorable" to describe some of Trump's rhetoric and last month said the Republican candidate is "taking hate groups mainstream" by turning alt-right websites with 11,000 views to ones with 11 million hits, a notion she repeated Friday night.

But using the quantifier "half" to describe some of his supporters crossed a new line, say critics. It was likened to the 2008 comment by Barack Obama claiming some Americans bitterly "cling" to guns and religion, and Mitt Romney's 2012 statement that "47 percent" of Americans can be written off as unapologetic welfare moochers.

**The Guardian on 10 Sept 2017 noted:

On Sunday, Clinton was unapologetic for the context of her remarks and said Trump's base was "already energized" by his divisive rhetoric before her words became public.

"I thought Trump was behaving in a deplorable manner," she said. "I thought a lot of his appeals to voters were deplorable.

**There may be something odd about the transcript. The first mention of the Clinton home on television referred to a suburb (not explicitly Chappaqua) but the transcript reads:

And then, on what she thought would be her first day as president-elect, Hillary and Bill Clinton headed to their home in Chappaqua, New York.


Saturday, September 09, 2017

Southwire wins a legal point on inherency but otherwise loses at the CAFC

Southwire lost at the CAFC on an appeal of an inter partes re-exam decision:

Southwire Co. (“Southwire”) appeals from the decision of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) in an inter partes reexamination concluding that claims 1–42 of U.S. Patent 7,557,301 (“the ’301 patent”) are unpatentable under 35 U.S.C. § 103. See Cerro Wire, Inc. v. Southwire Co., No. 2015-004351, 2015 Pat. App. LEXIS 10285 (P.T.A.B. Sept. 29, 2015) (“Final Decision”); Cerro Wire, Inc. v. Southwire Co., No. 2015-004351, 2016 Pat. App. LEXIS 1942 (P.T.A.B. May 2, 2016) (decision on request for rehearing). For the reasons that follow, we affirm.

Of inherency in obviousness:

Southwire argues that, as an initial matter, the Board erred in relying on “inherency” in making its obviousness determination. Second, Southwire argues that Summers does not inherently teach the “at least about a 30% reduction” in pulling force limitation because a limitation is not inherent in a reference unless it is necessarily, i.e., always, present. Thus, Southwire argues, the Board’s finding that a “skilled artisan would have had reason to select [lubricant] concentrations that did” achieve the 30% reduction in pulling force is the antithesis of inherency, which requires certainty, not experimentation. Final Decision, 2015 Pat. App. LEXIS 10285, at *21

The CAFC noted:

First, we agree with Southwire that the Board erred in relying on inherency in making its obviousness determination. We have held that “the use of inherency in the context of obviousness must be carefully circumscribed because ‘[t]hat which may be inherent is not necessarily known’ and that which is unknown cannot be obvious.” Honeywell Int’l v. Mexichem Amanco Holding S.A., No. 2016-1996, —F.3d—, 2017 WL 3254943, at *10 (Fed. Cir. Aug. 1, 2017) (quoting In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)). While “[w]e have recognized that inherency may supply a missing claim limitation in an obviousness analysis,” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014) (collecting cases), we have emphasized that “the limitation at issue necessarily must be present” in order to be inherently disclosed by the reference, id. (emphasis added). The Board cited no evidence that a reduction of 30% in the pulling force would necessarily result from the claimed process, which contains no steps that ensure such reduction.


However, we also conclude that the Board’s error was harmless because, although it improperly invoked inherency, it need not have. It made the necessary underlying factual findings to support an obviousness determination. It found that the claimed method simply applies the same process for the same purpose as disclosed in Summers— i.e., to reduce the pulling force on a cable for ease of installation. See, e.g., J.A. 169

YES, In re Best arose:

... except for the functionally expressed [limitation at issue],” the PTO can require an applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (emphases added) (internal quotation marks omitted). The court noted that
“[w]hether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, [or] on ‘prima facie obviousness’ under 35 U.S.C. § 103, . . . the burden of proof is the same.” Id.


In the absence of any evidence that the claimed 30% reduction would have been unexpected in light of the Summers disclosure, there is no indication that the limitation is anything other than mere quantification of the results of a known process.

Of In re Best, the CAFC had cited it previously [ 2012 U.S. App. LEXIS 7897 ] for the proposition:

The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Therasense, 593 F.3d at 1332 (citing Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)). The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254-55 (C.C.P.A. 1977)

The Best case itself was about zeolites. Claim 3 contained a "functional" limitation:

cooling the steamed zeolite to a temperature below 350 degree C. at a rate sufficiently rapid that the cooled zeolite exhibits an X-ray powder diffraction pattern having the d-spacing corresponding to the Miller Indices, hkl, of 331 at least as strong in intensity as that corresponding to the Miller Indices 533, prior to any post-steaming ion exchange treatment.

The CCPA wrote:

Also with respect to Hansford, the examiner believed the cooling rate of the zeolite after stabilization to be within the [page 1254] terms of the appealed process claims. The claimed product being the unique result of the claimed process, the examiner, therefore, rejected both process and product claims as anticipated by Hansford, or, in any case, as obvious in view of Hansford.

In sustaining the rejection, the board added its view of Hansford.
All the positive process limitations are expressly disclosed except for the functionally expressed rate of cooling. However, there is nothing to indicate that this rate of cooling in any way differs from the normal rate resulting from removal of the heat source. Thus, the examiner's conclusion that those parameters of the resultant product which are recited in the appealed claims but are not expressly disclosed in the reference would be inherent is a reasonable one, absent convincing evidence to the contrary. Appellants have presented no such convincing evidence. No comparison has been made between appellants' process and product and the process and product disclosed in the Hansford patent. The comparative data contained in appellants' specification and in an affidavit under 37 CFR 1.132 do not relate to the reference but merely illustrate the result of deviating from appellants' process. Such deviations appear to be also outside the scope of the Hansford teaching.

But the "rub" in Best (and in Southwire) is how to compare when the reference is silent:

The appellants urge that, because Hansford is silent on appellants' crucial cool-down step and on his apparatus, a direct comparison between the claimed process and that of Hansford is impossible. Appellants correctly state that indirect comparisons, based on established scientific principles, can validly be applied to distinguish a claimed chemical process or product from that disclosed in the prior art. In re Blondel, 499 F.2d 1311, 182 USPQ 294 (CCPA 1974). However, our analysis of the comparative data offered by appellants convinces us that the burden of rebutting the PTO's reasonable assertion of inherency under 35 USC 102, or of prima facie obviousness under 35 USC 103, has not been met.
Our reading of Hansford leads us to conclude, as did the board, that all process limitations of claim 3 are expressly disclosed by Hansford, except for the functionally expressed rate of cooling. Because any sample of Hansford's calcined zeolitic catalyst would necessarily be cooled to facilitate subsequent handling, the conclusion of the examiner that such cooling is encompassed by the terms of the appealed claims was reasonable.

The CCPA further noted:

Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be [page 1255] an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. [58 CCPA at 1031, 439 F.2d at 212-13, 169 USPQ at 229.]


In view of Hansford's silence on cool-down rate and on his apparatus, appellants need only have shown that the cool-down rate, for a typical laboratory-scale sample when employed in Hansford's process, would not yield a cooled zeolite with the X-ray diffraction pattern of claim 3. Appellants failed to do even that.


Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, supra. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, 4 the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972

562 F.2d 1252; 195 U.S.P.Q. 430 (CCPA 1977)

***Of the Best case, one notes that the functional limitation ("cooling rate") was defined in terms of x-ray diffraction parameters (" exhibits an X-ray powder diffraction pattern having the d-spacing corresponding to the Miller Indices, hkl, of 331 at least as strong in intensity as that corresponding to the Miller Indices 533 " ). The Hansford reference has no x-ray diffraction information, and defines the invention in the following way:

Briefly stated, the novel stabilizing treatment of the invention comprises a calcining step carried out preferably at above about 800 F. during which the partial pressure of water vapor is maintained at a level above about 0.4 p.s.-i.a. Following this hydrothermal stabilization treatment, the resulting zeolite can be contacted with water or Water vapor at substantially any temperature below about 1,200 F.-, without undergoing appreciable losses in surface area or crystallinity.

The first claim of Hansford:

A method for stabilizing the crystal structure of a hydrogen zeolite of the Y crystal type against hydrothermal degradation without substantial reduction in surface area thereof, said hydrogen zeolite being initially unstable and subject to loss of at least about 10% of its surface area and crystallinity when heated in its hydrated state at temperatures between 300 and 500 F. and containing less than about 3% by weight of Na O, at least about 40% of the ion-exchange capacity thereof being satisfied by hydrogen ions, which comprises subjecting said hydrogen zeolite to a hydrothermal stabilization treatment by heating the same at temperatures between about 700 and 1,200 F. in contact with a vapor phase comprising at least about 0.4, but not more than about 10, p.s.i.a. partial pressure of water vapor, there having been substantially no previous contacting of said hydrogen zeolite with water vapor of greater than about 2 p.s.i. partial pressure within the temperature range of about 300-500 F.