Friday, March 30, 2018

Anonymous accuser asserts copying in doctoral thesis of Gregory J. Vincent

On 21 March 2018, an anonymous person emailed to people at Hobart and William Smith University and University of Pennsylvania accusations that the president of Hobart, Gregory J. Vincent, had plagiarized portions of his doctoral thesis at UPenn. The title of Vincent's thesis at UPenn is: Community -university partnerships in action: A case study of the Louisiana State University-Old South Baton Rouge partnership

InsideHigherEd has a discussion of some of this in its post President Investigated After Anonymous Tip Alleges Plagiarism .
The example highlighted by InsideHigherEd reveals exact copying of one paragraph without quotation marks from a work published about ten years before the thesis publication. However, there is a citation to this work, given within parentheses: (Massy and Denton, 1993).

Thus, the issue is that, although the reader knows the idea came from Massy and Denton, the reader does not know that the exact words of Massy and Denton were copied in the thesis. InsideHigherEd presented the thesis text in this highlighted example:

… combination of government and private action (Massy and Denton, 1993). Hyper segregation may be conceptualized in terms of five distinct dimensions of geographic variation. Blacks may be distributed so that they are overrepresented in some areas and underrepresented in others, leading to different degrees of unevenness; they may also be distributed so that their racial isolation is ensured by virtue of rarely sharing a neighborhood with whites. In addition, however, black neighborhoods may be tightly clustered to form one large contiguous enclave or scattered about in checkerboard fashion; they may be concentrated within a very small area or settled sparsely throughout the urban environment. Finally, they may be spatially centralized around the urban core or spread out along the periphery (Massy, and Denton, 1993).

Apart from the --exact copying-- issue, one might question how profound the idea itself is, and how the idea relates to the "case study" of the thesis itself.

IPBiz previously discussed the Poshard thesis plagiarism matter. One of the issues therein was the copying of a literature review. Not greatly discussed was that the copied literature review was temporally irrelevant to the thesis.

See the 2007 post on IPBiz:
Page 54 of the Poshard Ph.D. thesis: a real problem as to plagiarism

[Coincidentally, the "copied" material in both the Vincent and Poshard matters was about ten years old, not exactly "hot off the press."]

A win for Teva in D. Delaware in carvedilol case

A post at highlighted some good news for Teva from a decision by Judge Stark in D. Delaware related to the generic drug carvedilol. Of note was text about an expert witness for plaintiff GSK:

GSK even provided an expert, a physician named Peter McCullough, to show Teva induced at least one doctor to prescribe generic carvedilol.

But one big problem, as Stark noted, was that McCullough didn't read the generic's label.

"As Dr. McCullough concedes that he did not read Teva's label, he cannot state, for instance, that he noticed or otherwise knew what (if anything) that label said about using carvedilol to treat CHF."

Toward the end of the post was a reference to Teva's MS drug Copaxone:

Yet Stark's ruling is surely a welcome reprieve for Teva, which is facing serious problems, including an enormous debt load and looming competition to its blockbuster multiple sclerosis drug Copaxone (glatiramer acetate).

To be clear, there is more than "looming" competition. A generic version of Teva's 40 mg Copaxone formulation was launched in October 2017. [The famous Supreme Court case related to the 20 mg formulation.]

Link to biopharmadive post:

See also the May 2017 post on IPBiz:
The future of generic Copaxone?


Thursday, March 29, 2018

CAFC critiques PTAB Arista decision for lack of explanation of reasoning

Lack of reasoning by PTAB (as to why certain prior art was inadequate
to teach a claim element) produced a vacating in the Arista case:

Arista Networks, Inc. challenged various claims of
Cisco Systems, Inc.’s U.S. Patent No. 8,051,211 in an
inter partes review. The Patent Trial and Appeal Board
of the Patent and Trademark Office determined that
Arista failed to show that certain claims are unpatentable
for obviousness. Because the Board did not adequately
explain its reasoning on a point that was central to its
analysis, we vacate the Board’s determination as to the
appealed claims and remand for further proceedings.

Of the problem

We agree with Arista that the Board has not adequately
explained its finding that Kunzinger does not
disclose the tunneling limitation of claims 2, 6–9, 13, and
17–20 of the ’211 patent.


Arista’s contention on appeal is that the Board improperly
overlooked that complication of the “without
examination” portion of the “tunneling” construction when
considering Kunzinger.


Consequently, Arista concludes, Kunzinger
teaches the “tunneling” limitation, contrary to the Board’s
finding. At the least, Arista contends, the Board did not
adequately explain why Kunzinger’s examining activities,
involving the outer header, are relevantly different from
actions permitted to be part of “tunneling” by the ’211
patent, a crucial premise of the Board’s finding that
Kunzinger does not teach that limitation.

As to legal standards:

We review the Board’s final written decisions “to ensure
that they are not ‘arbitrary, capricious, an abuse of
discretion, . . . otherwise not in accordance with law . . .
[or] unsupported by substantial evidence.’” Pers. Web
Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir.
2017) (quoting 5 U.S.C. § 706(2)(A), (E)). “[I]n order to
allow effective judicial review, . . . the agency is obligated
to provide an administrative record showing the evidence
on which the findings are based, accompanied by the
agency’s reasoning in reaching its conclusions.” Id. (quoting
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
1309, 1322 (Fed. Cir. 2016), overruled in another respect
by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
2017), and In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002))
(internal quotation marks omitted). “For judicial review
to be meaningfully achieved within these strictures, the
agency tribunal must present a full and reasoned explanation
of its decision.” Lee, 277 F.3d at 1342.

We agree with Arista to the following extent (and we
go no further here): the Board did not adequately explain
why “transmission of the IPSec packet” in Kunzinger
includes an “examination” excluded from the “tunneling”
claimed in the ’211 patent, even while the described use of
fields and tags in the ’211 patent is not such an excluded
“examination.” Final Written Decision, at 25. The ’211
patent’s tunneling process “internally routes data . . .
depending on, for example, information associated with
the data (e.g., an encapsulation tag . . . ).” ’211 patent,
col. 7, lines 38–42. At one level of generality, in that
situation, as in Kunzinger, a portion of a frame is transmitted
through the tunnel without examination, while
another portion is examined to route the data to its proper
destination. That general description of what is similar
may well omit critical differences. The Board implicitly
must have so found in determining that Kunzinger shows
a forbidden “examination.” But the Board’s decision is
lacking in explanation on this key element of its analysis.
The decision “does not address, or at least does not clearly
address,” the difference between the examination of
tunneled packets in Kunzinger and the type of examination
that is permissible in the tunneling process of the
’211 patent. See Pers. Web, 848 F.3d at 993.

The CAFC attempted to lay out a boundary:

Some Board explanations can suffice even if brief, as
when the patent and the art are both clear and readily
understandable. Id. at 994. In addition, “we will uphold
a decision of less than ideal clarity if the agency’s path
may reasonably be discerned.” Bowman Transp., Inc. v.
Ark.–Best Freight Sys., Inc., 419 U.S. 281, 286 (1974); see
In re NuVasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir.
2016). But, understood in light of our scrutiny of the
patent and the prior art, the Board’s “own explanation
must suffice for us to see that the agency has done its job
and must be capable of being ‘reasonably . . . discerned’
from a relatively concise [Board] discussion.”
In re NuVasive,
842 F.3d at 1383. In this case, Cisco’s attempt to
explain the distinction at issue has not sufficiently enabled
us to see an adequate explanation in the Board’s

Wednesday, March 28, 2018

CAFC in Brandt discusses the prima facie case of obviousness

The issues in the Brandt case:

Appellants make two arguments on appeal. First,
Appellants challenge the Board’s finding of a prima facie
case of obviousness based on Griffin’s disclosed coverboard
density range because that range does not facially
overlap with the ’858 application’s claimed coverboard
density range. Second, assuming the Board properly
found a prima facie case, Appellants contend that the
Board erred in finding that the prior art does not teach
away from the claimed invention.

There is discussion of the prima facie case of obviousness:

Given the back-and-forth nature of examination, it is
important for the examiner to have a few procedural tools
to aid her efforts to issue as patents only those claims
that meet the requirements of the Patent Act—the fundamental
obligation of the Patent Office. 35 U.S.C. § 2
(“The United States Patent and Trademark Office
. . . shall be responsible for the granting and issuing of
patents.”); id. § 131 (“The Director shall cause an examination
to be made of the application and the alleged new
invention; and if on such examination it appears that the
applicant is entitled to a patent under the law, the Director
shall issue a patent therefor.”). One of these procedural
tools is the prima facie case, an evidentiary burdenshifting
device available to the examiner in the initial
stage of examination. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471–72
(Fed. Cir. 1984). An examiner can find a prima facie case
of unpatentability upon initial review of the prior art or
on any other statutory condition of patentability. In re
Oetiker, 977 F.2d at 1445. If the examiner establishes a
prima facie case, the burden shifts to the applicant to
come forward with rebuttal evidence or argument. Id.; see
Mouttet, 686 F.3d at 1330. The examiner then considers
the evidence as a whole before reaching a conclusion on
the claims’ patentability under 35 U.S.C. § 103(a). Leo
Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir.

How close must the prior art be?

Appellants argue that the Board erred by applying a
per se rule that whenever the differences between a prior
art reference’s disclosed range and the application’s
claimed range are close, a prima facie case of obviousness
is established. Appellants’ Br. 11. We find no such error.
The Board did not apply a per se rule. Rather, it grounded
a prima facie obviousness conclusion on the facts
before it. The Board specifically agreed with the examiner’s
factual finding that the difference between the
claimed range and prior art range was “virtually negligible.”
J.A. 5. This finding accounted for manufacturing
tolerance levels because “precise results are not always
achieved and tolerance levels are usually taken into
account.” J.A. 143. The Griffin reference recognizes that
the composition and compressive strength of the coverboard
may vary through the addition of fillers during
manufacturing. J.A. 208. This is a simple case in the
predictable arts that does not require expertise to find
that the claimed range of “less than 6 pounds per cubic
feet” and the prior art range of “between 6lbs/ft3 and
25lbs/ft3” are so mathematically close that the examiner
properly rejected the claims as prima facie obvious. See
In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(recognizing “that a prima facie case of obviousness exists
when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the
art would have expected them to have the same properties”
(citing Titanium Metals, 778 F.2d at 783));


Appellants posit that an examiner can only find a
prima facie case of obviousness if there is an overlap
between the claimed range and prior art range, relying on
our nonprecedential decision in In re Patel, 566 F. App’x
1005 (Fed. Cir. 2014). Appellants’ Br. 16. We disagree.
In Patel, the claims at issue were directed to a nonwoven
fabric comprised of polymer blends. 566 F. App’x at 1007.
The claims recited a first polymer blend to make up “from
26 weight percent to 80 weight percent” of the nonwoven
material, and the prior art disclosed a range for the first
polymer blend of 0.5 to 25 weight percent. Id. We vacated
the Board’s finding of a prima facie case based solely
on the closeness of the prior art reference’s disclosed
range because “the ranges d[id] not overlap and the prior
art d[id] not teach that a broader range would be appropriate.”
Id. at 1009. Patel recognized, however, that
prima facie rejections may be appropriate “where there is
a teaching in the prior art that the end points of the prior
art range are approximate, or can be flexibly applied.”


Patel thus highlights what may be required to
find a sufficiently minor difference between a facially nonoverlapping
claimed range and a prior art range such that
an examiner could prima facie reject claims. See Haynes,
8 F.3d at 1577 n.3. The nonbinding holding in Patel,
however, does not stand for the proposition advanced by
Appellants that a claimed range and prior art range must
overlap for an examiner to find a prima facie case.
Here, because the claimed range and the prior art
range abut one another, and Appellants conceded as fact
that there is no meaningful distinction between the two
ranges, substantial evidence supports the Board’s finding
that the difference in coverboard density ranges “could
not be smaller.” J.A. 5. And because Appellants did not
overcome the Board’s rejection based on the prima facie
case with persuasive argument and/or evidence, we therefore
conclude that in this case the Board did not err by
affirming the examiner’s obviousness rejection.

CAFC in SOPHOS LIMITED v. IANCU. PTAB's understanding of process found to be backwards.

The outcome of SOPHOS LIMITED v. IANCU:

In this inter partes review, Finjan Holdings, Inc. challenged
various claims of Sophos Limited’s U.S. Patent
No. 8,776,218, which describes and claims computer
programs that perform runtime behavior-based detection
of malicious software. The Patent Trial and Appeal Board
of the Patent and Trademark Office (PTO) determined
that certain claims are unpatentable for obviousness.
Sophos appeals from the Board’s decision. With Finjan no
longer participating, the PTO’s Director has intervened.
Because the Board’s claim construction, as the Board
understood its scope, is incorrect, we vacate the Board’s
decision and remand for further proceedings.

This began as an inter partes review:

Finjan petitioned for an inter partes review of claims
1 through 20 under 35 U.S.C. §§ 311–19. The Board,
acting as the delegate of the PTO’s Director under 37
C.F.R. § 42.4(a), instituted a review of claims 1, 11, and
12 on multiple grounds, all under 35 U.S.C. § 103. Finjan
Holdings, Inc. v. Sophos Ltd., IPR2015-01405, Paper No.
9, at 27 (P.T.A.B. Dec. 15, 2015) (Institution Decision).


In its Final Written Decision, the Board construed the
claim phrase requiring that phenotypes “are ranked.”
Finjan Holdings, Inc. v. Sophos Ltd., IPR2015-01405,
2016 WL 7987957, at *4–6 (P.T.A.B. Nov. 30, 2016) (Final
Written Decision). The Board first construed the term
“ranked” to mean simply “ordered,” id. at *4, meaning
that the phenotypes must be ordered vis-à-vis each other.
The Board then concluded that, in the phrase “are
ranked,” ranking “may occur as part of the comparing
step such that phenotypes are not ‘already ranked’” before
the comparing step begins. Id. at *6 (emphasis added).
The “may” in that conclusion, however, ultimately
does not accurately reflect the Board’s understanding of
“are ranked.” As the key substantive basis for its claim
construction, the Board explained its understanding of
the claimed ranking in a way that actually precludes precomparison
ranking. Specifically, the Board said that
“[a]s a result of the comparison, the phenotypes ‘are
ranked’”; “[i]t is only in the context of the comparison that
the ranking occurs”; and “[t]he reason for the comparison
between the ‘malicious behavior indications’ and the
‘phenotypes’ is to identify the most problematic phenotype,
which is ‘ranked’ according to how similar it is to the
‘executing computer program.’” Id. at *5 (emphases added).
In short, the Board’s understanding is that the
invention ranks phenotypes based on their similarity to a
particular runtime object being examined.


But neither the Board’s explanation nor the Director’s
defense of that explanation in this court indicates how the
claim can reasonably be understood to call for that ranking
to be based on how similar phenotypes in a database
are to a particular runtime object being scrutinized. The
“broadest reasonable interpretation . . . is an interpretation
that corresponds with what and how the inventor
describes his invention in the specification.” In re Smith
Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017); see
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
(Fed. Cir. 2015) (prosecution history is relevant to this
inquiry as well), overruled in another respect by Aqua
Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); In re
NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (“While
the Board must give the terms their broadest reasonable
construction, the construction cannot be divorced from the
specification and the record evidence.”); In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (“The
broadest-construction rubric . . . does not give the PTO an
unfettered license to interpret claims to embrace anything
remotely related to the claimed invention. Rather, claims
should always be read in light of the specification and
teachings in the underlying patent.”). Here, the Board’s
central understanding is unreasonable in light of the
specification and, indeed, of the claim’s own statement of
its objective.
We have been pointed to nothing in the ’218 patent
that discloses ranking the predetermined phenotypes
according to their degree of similarity to a particular set
of malicious behaviors observed in a particular runtime
object. To the contrary, the patent speaks consistently of
seeking a “match” of a phenotype for the runtime object’s
set of malicious-behavior indications, never of examining
degrees of similarity. ’218 patent, Abstract; col. 17, lines
41–48, 64. In addition, the Board’s notion would call for
re-ranking the group of phenotypes with every new
runtime object that is evaluated. The patent says nothing
to that effect.
More fundamentally, the Board’s notion of ranking
the phenotypes by how similar each is to a particular
runtime object is detached from the essential function of
the invention. As claim 1 itself makes clear, the function
of the comparison of a runtime object to phenotypes is to
develop information about the threat presented by a
runtime object, whose risk of being any type of malware is
not known before the comparison.

As to PTAB's understanding:

The Board fundamentally misread the patent when it
said, in its crucial paragraph, that “[t]he reason for the
comparison . . . is to identify the most problematic phenotype.”
Final Written Decision, 2016 WL 7987957, at *5
(emphasis added). That statement gets the direction of
inference in the patented process backwards. The point of
the comparison is not to start with a known danger presented
by the runtime object and infer how problematic a
phenotype is by the degree of similarity to the runtime
object. The danger of the runtime object is not yet known.
The point of the comparison is to infer something about
precisely that danger, by using independent information
(through ranking) about how problematic a particular
matched phenotype is. Ranking of phenotypes independently
of similarity to the runtime object is an essential
component of that process.
In short, nothing in the claims, the specification, or
the prosecution history supports the Board’s understanding
that the predetermined phenotypes are ranked based
on their similarity to the observed malicious behavior
indications. We conclude that the Board’s understanding
is “divorced from the specification” and is “legally incorrect.”
Smith, 871 F.3d at 1382 (quoting Microsoft, 789
F.3d at 1298).

Tuesday, March 27, 2018

CAFC in Oracle/Google case: we conclude that Google’s use of the declaring code and SSO of the 37 API packages was not fair as a matter of law.

The outcome of Oracle v. Google was a win for Oracle:

Because we conclude that Google’s use of the Java
API packages was not fair as a matter of law, we reverse
the district court’s decisions denying Oracle’s motions for
JMOL and remand for a trial on damages. We also dismiss
Google’s cross-appeal.

The CAFC noted:

It is undisputed that Google copied Oracle’s declaring
code and SSO for the 37 API packages verbatim. The
question is whether that copying was fair. “From the
infancy of copyright protection, some opportunity for fair
use of copyrighted materials has been thought necessary
to fulfill copyright’s very purpose, ‘to promote the Progress
of Science and useful Arts.’” Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const.,
art. I, § 8, cl. 8). As the Supreme Court noted in Campbell,
“[i]n truth, in literature, in science and in art, there
are, and can be, few, if any, things, which in an abstract
sense, are strictly new and original throughout. Every
book in literature, science and art, borrows, and

must necessarily borrow, and use much which was well known
and used before.

Id. (quoting Emerson v. Davies, 8 F.
Cas. 615, 619 (C.C.D. Mass. 1845)).
The fair use defense began as a judge-made doctrine
and was codified in Section 107 of the 1976 Copyright Act.
Id. at 576. It operates as a limited exception to the copyright
holder’s exclusive rights and permits use of copyrighted
work if it is “for purposes such as criticism,
comment, news reporting, teaching . . ., scholarship, or
research.” 17 U.S.C. § 107.

As to fair use:

While some courts once treated the entire question of
fair use as factual, and, thus, a question to be sent to the
jury, that is not the modern view.3 Since Harper & Row,
the Ninth Circuit has described fair use as an “equitable
defense.” Fisher v. Dees, 794 F.2d 432, 435 (9th Cir. 1986)


Harper & Row involved an appeal
from a bench trial where the district court concluded that
the use of the copyrighted material was not a fair use.
Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d
195, 199 (2d Cir. 1983). The Court, thus, had no reason
to discuss a jury determination of fair use and has not
since taken an opportunity to do so.
Perhaps because of this silence, even after Harper &
Row, several courts—including the Ninth Circuit—have
continued to accept the fact that the question of fair use
may go to a jury, albeit without analysis of why it may.
Compaq Comput. Corp. v. Ergonome Inc., 387 F.3d 403,
411 (5th Cir. 2004) (“The evidence presented at trial and
the reasonable inferences therefrom, when viewed
through the lens of the statutory fair use factors, support
the jury’s fair use finding.”);


Despite this case law, all aspects of Google’s fair use
defense went to the jury with neither party arguing that
it should not. Thus, the jury was asked not just what the
historical facts were, but what the implications of those
facts were for the fair use defense. During the first appeal,
Google argued to this court that there were disputed
issues of material historical fact relevant to its fair use
defense. As discussed below, the parties stipulated—or at
least ceased to dispute—some of those facts, and presented
the remaining disputed historical facts to the jury on
remand. The jury returned a verdict in favor of Google on
its fair use defense. Because the verdict form—though
captioned as a “special verdict”—did not ask the jury to
articulate its fact findings in any detail, we must assume
that the jury resolved all factual issues relating to the
historical facts in favor of the verdict

The Napster case appeared:

Giving customers “for free something they
would ordinarily have to buy” can constitute commercial
use. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,
1015 (9th Cir. 2001) (finding that “repeated and exploitative
copying of copyrighted works, even if the copies are
not offered for sale, may constitute a commercial use”).


Accordingly, Google’s commercial use of the API packages
weighs against a finding of fair use.

As to transformative use:

A use is “transformative” if it “adds something new,
with a further purpose or different character, altering the
first with new expression, meaning or message.”


As explained
below, Google’s use of the API packages is not transformative
as a matter of law because: (1) it does not fit within
the uses listed in the preamble to § 107; (2) the purpose of
the API packages in Android is the same as the purpose of
the packages in the Java platform; (3) Google made no
alteration to the expressive content or message of the
copyrighted material; and (4) smartphones were not a
new context.

Thursday, March 22, 2018

CAFC discusses claim construction, claim differentiation in Cave Consulting

The Cardinal Chemical case is cited in Cave Consulting :

We conclude that the district court erred in its construction
of “weighted episode of care statistics,” which
resulted in an erroneous finding of infringement based on
undisputed facts. As such, we need not evaluate Optum’s
challenge to the damages determination, which is now
moot. Moreover, because the issue of invalidity under
§ 102(b) and (g) were raised only as affirmative defenses
and because neither party is seeking an adjudication on
those issues in case of a finding of noninfringement, we do
not reach the invalidity issues under § 102(b) or (g). See
Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 99–
102 (1993). As the Supreme Court noted in Cardinal
Chemical, “[a]n unnecessary ruling on an affirmative
defense is not the same as the necessary resolution of a
counterclaim for a declaratory judgment.” Id. at 93–94.
Invalidity was not raised here as a counterclaim.

Furthermore, because our construction of the
“weighted episode of care statistics” limitation is dispositive
of the infringement issue based on undisputed facts,
we need not discuss the proper construction of the “determining
eligible physicians and episode of care assignments”
limitation, or whether Optum has waived its claim
construction argument for that limitation, as Cave has

Of the claim construction matter

Optum argues that the district court erred in its claim
construction because this limitation when read in light of
the specification excludes direct standardization. Optum
contends that the patentee distinguished his invention
from, and disparaged the prior art methods that use,
direct standardization, and repeatedly referred to his
invention as using indirect standardization. Optum notes
that at the time of filing, the specification, including the
original claims, did not purport to claim direct standardization
as part of the invention, and that only after five
years following the filing date, did the patentee add
dependent claims reciting “direct standardization.”
According to Optum, the district court erred in relying on
these later-added dependent claims in construing the
independent claims. Optum further argues that the
district court’s construction cannot stand because, if the
claim limitation is interpreted to include direct standardization,
it would lack adequate written description.

The CAFC noted:

In reaching the conclusion that the claim
limitation should include direct standardization, however,
the district court’s only support was from the dependent
claims, based on the reasoning that the court should
Claim language is not read in isolation. Phillips, 415
F.3d at 1315. Here, the claim limitation when read in
light of the specification elucidates the meaning of the
claim language as used by the patentee. As both parties
agree, the ’126 patent describes its method as one that
employs indirect standardization. Cave characterizes this
undisputed fact as the patent’s description of merely one
embodiment, presumably one out of many. However, this
contention is unpersuasive. The patent in its specification
affirmatively limits its method to one that uses one particular
technique, namely, indirect standardization, as
opposed to another used in prior art methods.
Cave does not identify, nor do we find, any indication
in the ’126 patent’s description that its invention employs
direct standardization, and, other than the dependent
claims, Cave’s support for including direct standardization
comes exclusively from the description of the prior art
methods in the background section. See Appellee’s Br.
31–32. Indeed, the ’126 patent repeatedly and consistently
describes that the calculation of “weighted episode
statistics” according to its method uses indirect standardization.
’126 patent col. 92 ll. 39–41, col. 93 ll. 12–14, 31–
35. Moreover, the patent’s distinguishing its method that
uses indirect standardization from the purportedly errorgenerating
prior art methods that use direct standardization
further demonstrates that the scope of this
“weighted” feature of the invention is affirmatively limited
to indirect standardization.

Of disavowal:

Cave’s argument that finding a disclaimer through a
“clear and unmistakable” disavowal is required for Optum’s
argument to prevail is also unpersuasive. Contrary
to Cave’s contention, although “[i]n general, statements
about the difficulties and failures in the prior art, without
more, do not act to disclaim claim scope,” Retractable
Techs., 653 F.3d at 1306 (emphasis added), “[o]ur case law
does not require explicit redefinition or disavowal” when
the description itself is affirmatively limiting, Trs. of
Columbia Univ. in City of N.Y. v. Symantec Corp., 811
F.3d 1359, 1363 (Fed. Cir. 2016). Here, the specification
does more than discuss certain disadvantages of the prior
art methods. It distinguishes its invention from them,
particularly pointing out what the invention does not use.
Thus, we conclude that a finding of a disclaimer is not
correct when, as here, the description of the invention
itself is affirmatively limiting, and is without any indication
that direct standardization is within the scope of the

Of canons:

Canons of claim construction, such as
the doctrine of claim differentiation and the canon of
interpreting claims to preserve their validity, are not
absolute. See, e.g., Howmedica Osteonics Corp. v. Zimmer,
Inc., 822 F.3d 1312, 1323 (Fed. Cir. 2016) (noting
that the doctrine of claim differentiation merely creates “a
rebuttable presumption that may be overcome by a contrary
construction dictated by the written description or
prosecution history”) (citation omitted). Although generally
not dispositive, the fact that the dependent claims
relied upon by Cave were added after the filing of the
original application is significant here. It is true that the
written description and the originally filed claims are part
of the specification. In re Koller, 613 F.2d 819, 823 (CCPA
1980). And, had the originally filed application, including
the original claims, in any way indicated that its invention
included direct standardization, the later-added
dependent claims specifically claiming “direct standardization”
could have lent support to Cave’s contention that
the independent claims cover direct standardization.
However, in view of the specification’s consistently limiting
description, we conclude that these interpretive
canons, despite the later-added dependent claims, cannot
overcome the claim scope that is unambiguously prescribed
by the specification.

Sharing resources vs. passing off

Of the recent plagiarism in Ridgefield, CT matter, the Hartford Courant wrote:

Schools have a hard enough time fighting plagiarism in student writing. It's critical for the adults in the system to practice what's being preached in the classroom.

Those who think they can borrow freely forget that there are sharp-eyed readers, and listeners with good memories, in their audience. Good for Ridgefield High senior Paul Kim for bringing Ms. Baldwin's plagiarism to the attention of the school board.

A Ridgefield Press story has quoted Ms. Baldwin as saying in a follow-up letter to parents that “there is a community of practice among school leaders to share resources.” Sharing resources is one thing. Passing off another person's carefully crafted words as one's own is cheating. If educators do it, what's to stop students?


Cross-reference -->

It has been about ten years since the Palo Alto plagiarism incident. One suspects TechDirt would be a proponent
of the "sharing resources" thinking.

See the 2008 post on IPBiz,

TechDirt: plagiarism as re-imagination and collaboration

CAFC on NPE in Sarif case: "Importantly, Sarif did not delay in its litigation tactics"

The outcome was affirmance of Judge Stark of D. Delaware:

Appellee Sarif Biomedical LLC (“Sarif”) sued Appellants
Brainlab, Inc., Brainlab AG, and Brainlab
Medizinische Computersysteme GmbH (collectively,
“Brainlab”) in the U.S. District Court for the District of
Delaware (“District Court”), alleging infringement of,
inter alia, claims 1–9 of U.S. Patent No. 5,755,725 (“the
’725 patent”). Following an order on claim construction
adverse to Sarif, see Sarif Biomed. LLC v. Brainlab, Inc.
(Sarif I), No. 13-846-LPS, 2015 WL 5072085, at *10 (D.
Del. Aug. 26, 2015), the parties jointly stipulated to final
judgment of invalidity and noninfringement, and Brainlab
filed a motion for attorney fees pursuant to 35 U.S.C.
§ 285 (2012). The District Court denied Brainlab’s Motion
for Attorney Fees. Sarif Biomed. LLC v. Brainlab, Inc.
(Sarif II), No. 13-846-LPS, 2016 WL 5422479, at *1 (D.
Del. Sept. 27, 2016) (Order on Attorney Fees).
Brainlab appeals the denial of attorney fees. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We


Substantive strength

The District Court properly evaluated the substantive
strength of Sarif’s case. The District Court found that
Sarif acted in “good faith” in part because, “[a]t each stage
of the litigation, [Sarif] provided detailed arguments,
grounded in the intrinsic evidence, in support of its proposed
constructions” and “obtained expert opinion which
supported its constructions.” Sarif II, 2016 WL 5422479,
at *2 (footnote omitted).2 Supporting its constructions
with citations to the specification and expert testimony,
Sarif identified two supporting structures for limitation
(e)—“a computer . . . using algorithms,”
Brainlab’s counterarguments are ultimately unpersuasive
under our standard of review. First, Brainlab
avers that the PTAB’s decision not to institute an inter
partes review for claims 1–9, after stating these claims
“cannot be construed” based on a likelihood that they are
indefinite, Brainlab, 2014 WL 5788571, at *5, demonstrates
the weakness of Sarif’s position, as it is an important
“objective indicator[] of the invalidity of the ’725
patent,” Appellants’ Br. 42. Brainlab places too much
significance on the PTAB’s determination. The PTAB
does not have authority to institute an inter partes review
under § 112. See 35 U.S.C. § 311(b). Therefore, as Brainlab
admitted, any conclusion regarding indefiniteness is
Second, Brainlab argues Sarif’s proposed construction
is weak because portions of Sarif’s expert testimony
appear to undermine its ultimate construction.
Third, throughout its brief, Brainlab argues the District
Court “fail[e]d to make findings of fact in support of
its conclusion that Sarif’s case was not unusually weak”
and “ignored . . . overwhelming evidence.” Appellants’
Br. 37; see id. at 37–42. However, we have recognized
that “[t]he trial judge [i]s in the best position to understand
and weigh the[] issues,” and the District Court
“ha[d] no obligation to write an opinion that reveals [his]
assessment of every consideration.” Univ. of Utah v. MaxPlanck-Gesellschaft
zur Foerderung der Wissenschaften
e.V., 851 F.3d 1317, 1323 (Fed. Cir. 2017). Upon our
review of the record, we find the District Court adequately
considered the facts, and we are not left with a “definite
and firm conviction that a mistake has been made.”
Unreasonable manner
Unreasonable Manner and Other Considerations
The District Court also did not clearly err in considering
the reasonableness of the manner in which Sarif
litigated this case or any other circumstances of this case.
Although Sarif modified its claim construction position
from the PTAB to the District Court, the District Court
correctly explained that
[i]t can . . . be reasonable for a party to propose
different constructions in PTAB and District
Court proceedings, as the PTAB must give claims
terms their “broadest reasonable construction,”
whereas District Courts give them the meaning
they would have to a “person of ordinary skill in
the art at the time of the invention.”
Sarif II, 2016 WL 5422479, at *2 (citing Cuozzo Speed
Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)). Brainlab
claims the District Court committed legal error because
it did not consider whether this stated standard
applies to a means-plus-function clause such as limitation
(e). See Appellants’ Br. 45–46 (citing In re Donaldson Co.,
16 F.3d 1189, 1194–95 (Fed. Cir. 1994)
Brainlab also has failed to demonstrate that Sarif’s
motivations and actions as a whole were improper. See
Appellants’ Br. 53–56. Although we have stated “that a
pattern of litigation abuses characterized by the repeated
filing of patent infringement actions for the sole purpose
of forcing settlements, with no intention of testing the
merits of one’s claims, is relevant to a district court’s
exceptional[-]case determination under § 285,” SFA Sys.,
793 F.3d at 1350, the District Court considered Brainlab’s
evidence and concluded Brainlab “ha[d] not demonstrated
that this is a ‘nuisance suit’” because “[Sarif]’s status as a
non-practicing entity, the language of the press releases
directed toward its investors, its decision to allege infringement
against several other entities, and its decision
to settle other cases, do not combine to establish that this
case was always ‘meritless’ or ‘predatory,’” Sarif II, 2016
WL 5422479, at *2 (emphasis added). Importantly, Sarif
did not delay in its litigation tactics. For instance, the
District Court acknowledged that Sarif disclaimed claims
10–11, soon after the PTAB instituted an inter partes
review of those claims, and Sarif decided not to pursue
those claims in the District Court litigation. See id. at *1.
Moreover, Sarif stipulated to judgment of invalidity and
noninfringement a mere six days after the District Court
found claims 1–9 indefinite. See J.A. 983. In sum, the
District Court did not abuse its discretion. See SFA Sys.,
793 F.3d at 1352 (finding no abuse of discretion where
“[appellant] failed to proffer sufficient evidence of a pattern
of litigation misconduct by [appellee]”).

Of interest


Brainlab claims the District Court erred “[b]y limiting
itself to comparing Sarif’s conduct only to the cases ‘with
which [the District Court] has been involved.’” Appellants’
Br. 49 (emphasis added) (quoting Sarif II, 2016 WL
5422479, at *3). As we have explained above, the District
Court properly determined that this case is not exceptional,
grounding its reasoning in the correct legal standards
and a proper assessment of the facts. Therefore, we
decline Brainlab’s invitation to find legal error “based
upon [this] isolated statement stripped from its context.”
Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350, 1361
(Fed. Cir. 2017) (internal quotation marks and citation


As background, some text from the district court opinion [ 2016 U.S. Dist. LEXIS 132127 ] -->

6. The Court is also unpersuaded that Plaintiffs conduct following the PTAB proceeding constituted an unreasonable approach to litigation or demonstrates that Plaintiffs case was extraordinarily weak. It is not unusual for a party to refine and revise its claim construction positions over the course of litigation. It can also be reasonable for a party to propose different constructions in PTAB and District Court proceedings, as the PTAB must give claim terms their "broadest reasonable construction," whereas District Courts give them the meaning they would have to a "person of ordinary skill in the art at the time of the invention." Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 195 L. Ed. 2d 423, 2016 WL 3369425, at *10 (U.S. 2016). It can also be reasonable for a patentee which believes in the validity of its claims to revise, clarify, or refine its claim construction strategy in light of a PTAB opinion that the claims are indefinite.

7. The subject matter at issue in the patent claims involved here is complex, and the proceedings before this Court involved construction of several terms in the asserted claims. Because Defendants have not shown that, as a whole, Plaintiffs claim construction arguments before this Court are inconsistent with those Plaintiff took before the PTAB, Plaintiffs modifications to its positions, while substantial, do not strike the Court as evidence that Plaintiffs case was extraordinarily weak. The Court does not conclude that it was unreasonable for Plaintiff to continue litigating this case in light of the need to revise its positions.

8. Defendants' additional '"evidence" does not persuade the Court of the substantive weakness of Plaintiffs case. First, the fact that a prior owner of the '725 patent declined to assert the patent in litigation does not indicate that either the prior owner or Plaintiff believed the patent to be invalid. Second, Defendants have not demonstrated that this is a "nuisance suit." Plaintiffs status as a non-practicing entity, the language of press releases directed toward its investors, its decision to allege infringement against several other entities, and its decision to settle other cases, do not combine to establish that [*8] this case was always "meritless" or "predatory."

9. As long as the test for awarding attorney fees turns on whether the case is "exceptional," the Court is obligated to consider the instant case in comparison to the full panoply of patent cases with which it has been involved, and needs to assess if the instant case is in some meaningful sense "uncommon," "rare; or "not ordinary." Octane Fitness, 134 S. Ct. at 1756. Having undertaken this analysis, the Court concludes that nothing about the instant case stands out as "exceptional'. in any respect, including the substantive strength of Plaintiffs unsuccessful positions or the manner in which Plaintiff litigated the case. Accordingly, the Court exercises its discretion to deny Defendants' request for attorney fees.

Wednesday, March 21, 2018

Gaye family survives appeal of "Blurred Lines" copyright case

From Reuters:

A federal appeals court on Wednesday upheld a $5.3 million judgment against Robin Thicke and Pharrell Williams for copying a Marvin Gaye song to create their 2013 smash “Blurred Lines.”


Patent negotiations in the 1980s

The episode of "Murder, She Wrote" that first aired on 23 Nov. 1986, titled " Magnum on Ice, " was a cross-over involving characters from both Murder and Magnum, PI.

The decade of the 1980's was the greed decade, and the plot line of the episode reflected this, in its handling of patent transfer/licensing.

The character "Joan Fulton" (played by Jessica Walters) had inherited an electronics company (through the death of her husband), the most valuable asset of which was a patent portfolio. A competitor tried to obtain the patents but a deal could not be made. Rather than negotiate further, the competitor contracted a hit man to do in Fulton, figuring he could easily deal with the estate. Fulton became aware of the actions, killed the hit man, and framed Magnum. Later, the competitor was also killed by Fulton, with Magnum being framed again.

The view of patent negotiations in the 1980s was a bit extreme.

See also:

Kafka's The Trial infiltrates patent law blog

In a post on IPBiz in the year 2005, LBE quoted from a law review article on judicial citations to the work of

Parker B. Potter, Jr., Ordeal by Trial: Judicial References to the Nightmare World of Franz Kafka, 3 Pierce L. Rev. 195 (2005)["Since the mid 1970s, however, Kafka's name has appeared in more than 400 opinions written by American state and federal judges."]


Judge Schiller explained his reference to Joseph K. by quoting from
The Trial: "'You can't go out, you are arrested.' 'So it seems,' said K. 'But what for?' he added. 'We are not authorized to tell you that. Go to your room and wait there. Proceedings have been instituted against you and you will be informed of everything in due course.' "
In The Trial, Franz Kafka depicts the plight of Joseph K., a young
man entangled in the arcane and inscrutable webs of the law. Unable to navigate "the system" 's labrinthine sic ways on his own, Joseph K. implores the aid of a distinguished yet equally cryptic attorney. Instead of illuminating his client's situation, however, the attorney only compounds the darkness. Thus the legal
system, which should mediate between an individual and society, itself became a vehicle of alienation used by the attorney against his own client.

link: Overzealous patent attorneys lead to client disenchantment

In the year 2018, a patent law blog has likened the world of the Alice decision to Kafka's The Trial

In Franz Kafka's novel The Trial, a man is accused of a non-specified crime by a shadowy governmental agency. The man repeatedly attempts to understand the nature of his alleged wrongdoing and his accusers. Ultimately, he is executed without these questions being answered.

Under current Supreme Court and Federal Circuit rulings (Alice Corp. v. CLS Bank Int'l and its progeny), a patent can be invalidated or an application can be rejected simply by (i) making a high-level analogy between the claimed invention and one that has been previously found to be directed to a patent-ineligible law of nature, natural phenomena, or abstract idea, and (ii) stating in a purely conclusory fashion that the additional elements of the claim are well-understood, conventional, and routine. Kafka might crack a sardonic smile at this situation.

link: Whether Facts Matter in the Patent Eligibility Analysis: HP Files Petition for En Banc Rehearing

Discussing Berkheimer v. HP, the Patent Docs post stated:

This line of cases, all but one involving Judge Moore in the majority opinion, has sent patentees, practitioners, and commentators into a minor tizzy. And certainly it has opened the door for a number of interesting questions: What does it take for a patentee to establish that there is a material issue of fact? Will § 101 disputes become a battle of experts? Will § 101 issues now need to be explained to a jury? How "understood" does a claim element need to be in order to qualify as "well understood?"

In a move that surprised absolutely nobody, HP filed for en banc rehearing of the appeal.

CEPN report mentions "an almost dysfunctional research environment" in lab in Sweden

An article in The Scientist notes that Sweden’s Central Ethical Review Board (CEPN) has concluded that eight papers coauthored by Suchitra Sumitran-Holgersson, a professor of tissue engineering at the University of Gothenburg, may show
evidence of research misconduct.

The article in The Scientist includes the text:

CEPN’s report, which was published last week (March 15), states that the articles contained problematic images and notes that there were issues with the researcher’s laboratory environment. “A large number of images have been reused, enlarged, faded, or rotated incorrectly, and there are . . . manipulations of images,” the report notes (translated from Swedish with Google Translate). “The expert group concludes that the case shows systematic shortcomings in the composition and function of the research group and an almost dysfunctional research environment . . . This circumstance is probably one of the main reasons for the shortcomings [the] research shows.


Does Facebook function like Cambridge Analytica?

From a CBS news report quoting Jennifer Grygiel, a social media expert and assistant professor of communications at Syracuse University, on the Cambridge Analytica matter:

Grygiel said Facebook functions "in similar ways" to Cambridge Analytica but has access to vastly more data than the likes of Cambridge Analytica. "We saw from reports from around the last election that they were embedding staff from Facebook into the campaigns."

"In a lot of ways Facebook is functioning as a way to help campaigns target audiences -- and they have the most data, so I would say Facebook itself is another company working in similar ways," she added.


GAO on covered business method program

From September 2012 through September 2017, entities facing patent infringement lawsuits filed 524 petitions challenging the validity of 359 patents under the U.S. Patent and Trademark Office's (USPTO) covered business method (CBM) program, resulting in decisions against about one-third of these patents. The CBM program provides entities facing infringement lawsuits an opportunity to challenge the validity of a business method patent by demonstrating that it did not meet requirements for patentability. Business method patents focus on ways of doing business in areas such as banking or e-commerce. The rate of filing petitions over this period has fluctuated but has generally declined since 2015, and none were filed in August or September 2017.


Stakeholders GAO interviewed generally agreed that the CBM program has reduced lawsuits involving business method patents in the federal courts. While many stakeholders favored maintaining aspects of the program, there was not strong consensus among stakeholders for how future trials should be designed.


Tuesday, March 20, 2018

Printer cartridge case in Australia

From a post by Michelle Blythe at Lexology on the Australian case Seiko Epson Corporation v Calidad Pty Ltd [2017] FCA1403. :

Seiko is a Japanese company that manufactures and sells Epson branded printer cartridges, the features of which are protected by Australian Patent Nos. 2009233643 and 2013219239. Ninestar Image (Malaysia) SDN BHD, a third party to the proceedings, acquires used or discarded Epson cartridges and refills them with ink overseas for subsequent sale to Calidad,who imports and sells them into Australia. In the course of refurbishment, Ninestar makes modifications to the cartridges that enable use with Epson branded printers.

In this case, the court found an implied license. One unsuccessful argument was that an implied license terminated when a product was discarded.


Stem cell transplant approach for treating multiple sclerosis shows promise

Newsweek reported:

The study built on work by Dr. Richard Burt, a stem cell specialist at Northwestern University’s Feinberg School of Medicine, from 2015, the investigation focused on immune cells as a treatment for the illness. The new, highly anticipated data (which have not yet been published or reviewed by experts in the field) were presented on Sunday at the European Society for Bone and Marrow Transplantation in Portugal.


From the BBC:

[The approach] involves wiping out a patient's immune system using cancer drugs and then rebooting it with a stem cell transplant.

The patients received either haematopoietic stem cell transplantation (HSCT) or drug treatment.

After one year, only one relapse occurred among the stem cell group compared with 39 in the drug group.

After an average follow-up of three years, the transplants had failed in three out of 52 patients (6%), compared with 30 of 50 (60%) in the control group.

Those in the transplant group experienced a reduction in disability, whereas symptoms worsened in the drug group.

Prof Richard Burt, lead investigator, Northwestern University Chicago, told me: "The data is stunningly in favour of transplant against the best available drugs - the neurological community has been sceptical about this treatment, but these results will change that."


Some current MS drugs deplete white cells (either B or B/T) and allow natural re-population.

Separately, there was some criticism at Futurism:

The results reported in the BBC piece are just the preliminary findings. And that leaves a number of questions still unanswered — are these results permanent? What are the risks? Who isn’t suited to have their immune system wiped out through aggressive chemo?

The U.S. Food and Drug Administration (FDA) has also flagged some serious issues in the study’s protocol.If that sounds boring and bureaucratic, think of it this way: for a few months, the lead investigator somehow forgot to report a number of nasty side effects of the treatment, including chest infection and the worsening of conditions as diverse as vertigo, narcolepsy, stuttering, and hyperglycemia, among others.

One thing we know for sure? It’s real expensive. The BBC noted it cost patients £30,000 ($42,000) to receive the experimental treatment, but biomedical scientist and science writer Paul Knoepfler, who has been following the trial since last year, says it ran some patients between $100,000 and $200,000.

Clinical trials are expensive, so it’s not totally uncommon for some of the cost to be passed on to patients that want to enroll, as long as they are clear about what they are getting.

But it’s patients’ expectations where things get a little murky. In his article, Knoepfler notes how the trial’s homepage, now password-protected but still visible through Wayback Machine, seems to overpromise: the homepage indirectly references the word “cure” in several places, showcasing headlines that mention it (though in an interview Burt said he wouldn’t use that word). Overall the page makes some awfully big claims for an experimental treatment, Knoepfler notes.


Background on stem cell approach from wikipedia:

Hematopoietic stem cell transplantation (HSCT) is the transplantation of multipotent hematopoietic stem cells, usually derived from bone marrow, peripheral blood, or umbilical cord blood.[1][2] It may be autologous (the patient's own stem cells are used), allogeneic (the stem cells come from a donor) or syngeneic (from an identical twin)

Bumble to Match/Tinder

A post by Bumble directed to Match/Tinder in regard to patent action:

We'll never be yours. No matter the price tag, we'll never compromise our values.

We swipe left on your attempted scare tactics, and on these endless games. We swipe left on your assumption that a baseless lawsuit would intimidate us. Given your enduring interest in our company, we expected you to know us a bit better by now.

We — a woman-founded, women-led company — aren't scared of aggressive corporate culture. That's what we call bullying, and we swipe left on bullies. Ask the thousands of users we've blocked from our platform for bad behavior.

In fact, that behavior? It only fuels us. It motivates us to push our mission further — to work harder each day to build a platform, community, and brand that promotes kindness, respect, and equality. That's the thing about us. We're more than a feature where women make the first move. Empowerment is in our DNA. You can't copy that.

So when you announced recently, in another attempt to intimidate us, that you were going to try to replicate our core, women-first offering and plug it in to Tinder, we applauded you for the attempt to make that subsidiary safer.

Separately, on Blawgsearch on 20 March 2018:

Monday, March 19, 2018

CAFC addresses "broadest reasonable interpretation" in Power Integrations; PTAB reversed

PTAB was reversed by the CAFC in Power Integrations:

Because the board’s anticipation rejections
were based on an unreasonably broad claim construction,
we reverse.

Of specifics:

We acknowledged that “the board is not generally
bound by a prior judicial construction of a claim term” and
that “in reexamination [the board] applies a different
claim construction standard than that applied by a district
court.” Id. at 1326. We concluded, however, that
since “Power Integrations’ principal argument to the
board about the proper interpretation of the term ‘coupled’
was expressly tied to the district court’s claim construction,
. . . the board had an obligation . . . to evaluate
that construction and to determine whether it was consistent
with the broadest reasonable construction of the
term.” Id. at 1327.
On remand, the board acknowledged that this court
had expressed “concern” that its original decision had
failed to assess whether the district court’s interpretation
of the term “coupled” was consistent with the broadest
reasonable construction of the term. Remand Decision,
2016 Pat. App. LEXIS 11870, at *9. It concluded, however,
that a comparison of its claim construction with that of
the district court was “unwarranted.” Id. In the board’s
view, a district court’s claim construction is “typically”
narrower than the broadest reasonable construction of a
term. Id. at *16.
In again affirming the examiner’s rejection of claims
1, 17, 18, and 19 as anticipated, the board continued to
adhere to a generalist dictionary definition of the term
“coupled.” Id. at *8. The board stated that it could
“glean[] no substantial guidance from either the context of
the claim itself or the Specification” regarding the meaning
of the term. Id. The board determined, moreover,
that “even if claim 1 requires the counter to drive the
digital to analog converter,” this “does not preclude the
counter and a memory functioning together” to cause the
converter to adjust the control input. Id. at *14.
Power Integrations then appealed to this court. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. § 141(b).


“While the broadest reasonable interpretation standard
is broad, it does not give the [b]oard an unfettered
license to interpret the words in a claim without regard
for the full claim language and the written description.”
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed.
Cir. 2016). The board’s claim construction here was
unreasonably broad and improperly omitted any consideration
of the disclosure in the specification. See Novartis
Pharm. Corp. v. Abbott Labs., 375 F.3d 1328, 1334 (Fed.
Cir. 2004) (“Even when guidance is not provided in explicit
definitional format, the specification may define claim
terms by implication such that the meaning may be found
in or ascertained by a reading of the patent documents.”
(citations and internal quotation marks omitted)); Slimfold
Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116
(Fed. Cir. 1987) (“Claims are not interpreted in a vacuum,
but are part of and are read in light of the specification.”).
Under the board’s overly expansive view of the term
“coupled,” every element anywhere in the same circuit is
potentially “coupled” to every other element in that circuit,
no matter how far apart they are, how many intervening
components are between them, or whether they
are connected in series or in parallel. See In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (“The
broadest-construction rubric coupled with the term ‘comprising’
does not give the PTO an unfettered license to
interpret claims to embrace anything remotely related to
the claimed invention.”). On appeal, the Director
acknowledges that claim 1 requires some type of “functional
relationship between the counter and the digital-toanalog
converter.” The problem is that the board’s claim
construction does not define what type of functional
relationship is required. The board suggests that the
counter will “cause” the digital to analog converter to
adjust the control input and to vary the switching frequency
regardless of how insignificantly or indirectly the
counter’s output affects the converter’s behavior. See
Remand Decision, 2016 Pat. App. LEXIS 11870, at *14
(concluding that the counter “causes” the digital to analog
converter to adjust the control input and to vary the
switching frequency even if the switching frequency
varies according to data contained in a memory).
“[C]laim construction must begin with the words of
the claims themselves.” Amgen Inc. v. Hoechst Marion
Roussel, Inc., 457 F.3d 1293, 1301 (Fed. Cir. 2006). By its
plain terms, claim 1 requires the counter to “caus[e]” the
converter to adjust the control input and to vary the
switching frequency. J.A. 817. Nothing in the claim
language suggests that this requirement will be met if, as
in the prior art, the digital to analog converter’s output
varies based on data stored in a memory rather than
according to signals relayed from the counter itself. See
Power Integrations V, 843 F.3d at 1329 (explaining that in
Martin and Wang the frequency of the oscillator is varied
“through the use of a pseudo-random code stored in readonly
memory (ROM)”).
Another problem with the board’s claim construction
is that it renders claim language meaningless. As discussed
above, claim 1 begins by reciting a “circuit” that
includes both a counter and a digital to analog converter.
J.A. 817. The phrase “the digital to analog converter [is]
coupled to the counter,” J.A. 817, would be superfluous if,
as the board said, it means only that the two components
are in the same circuit. See, e.g., Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 950–51 (Fed. Cir. 2006) (refusing
to construe claim terms in a way that made other claim
limitations meaningless);

Dell loses appeal in Acceleron case

There was a procedural issue:

Dell Inc. appeals from a remand determination of the
Patent Trial and Appeal Board. In the underlying inter
partes review proceeding, the Board relied on new argument
and evidence presented by Dell for the first time at
oral argument, without providing Acceleron, LLC, an
opportunity to respond. Both Dell and Acceleron appealed,
and this court remanded, among other reasons, on
grounds that the Board erred when it failed to give Acceleron
an opportunity to respond. On remand, the Board
declined to consider both Dell’s new argument and Acceleron’s
proposed response. Dell appeals and argues that
the Board was required under our remand order and this
court’s precedent to consider both Dell’s new argument
and Acceleron’s response. We affirm.

The CAFC observed:

We disagree that NuVasive and SAS compelled the
Board to consider the new evidence in this instance. We
note the PTO guidelines provide that “[n]o new evidence
or arguments may be presented at the oral argument.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,768 (Aug. 14, 2012). Further, in Dell I we relied upon
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359
(Fed. Cir. 2015), which explicitly held:
We do not direct the Board to take new evidence,
or, even, to accept new briefing. The Board may
control its own proceedings, consistent with its
governing statues, regulations, and practice. 37
C.F.R. § 42.5(a). Those statutes, regulations, and
practices embody expedition-and efficiency-based
policies that the Board must consider in determining
the scope of the remand proceedings.
Id. at 1367. The Board was obligated to dismiss Dell’s
untimely argument given that the untimely argument in
this case was raised for the first time during oral argument.
See, e.g., Wagner v. United States, 365 F.3d 1358,
1361 (Fed. Cir. 2004) (citing Service v. Dulles, 354 U.S.
363, 388 (1957)) (“[A]n agency is bound by its regulations.”);
Crediford v. Shulkin, 877 F.3d 1040, 1047 (Fed.
Cir. 2017) (same).
Dell contends that ignoring evidence of unpatentability
is against public policy because it will not improve
patent quality. We find that under these circumstances,
due process and preserving the Board’s discretion outweigh
any negative effects of not invalidating a patent
claim, especially since our decision does not preclude
another party from challenging the validity of claim 3 on
the same basis.

National Corn Dog day fell on 17 March 2018, related to a US patent which issued March 26, 1929

Wikipedia notes:

National Corndog Day is a celebration concerning basketball, the corn dog (A corn dog is usually a hot dog sausage coated in a thick layer of cornmeal batter), Tater Tots, and American beer that occurs in March of every year on the first Saturday of the NCAA Men's Division I Basketball Championship.

As to patents, note Combined dipping, cooking, and article-holding apparatus , US 1706491, to Stanley S. Jenkins in 1929 which included:

I have discovered that articles of food such, for instance, as wieners, boiled ham, hard boiled eggs, cheese, sliced peaches, pineapples, bananas and like fruit, and cherries, dates, figs, strawberries, etc., when impaled on sticks and dipped in a batter, which includes in its ingredients a self rising flour, and then deep fried in a vegetable oil at a temperature of about 390 F., the resultant food product ona stick fora handle is a clean, wholesome and tasty refreshment; and to provide a simple, inexpensively constructed and sanitary apparatus for cooking such food products in quantities is a further object of the invention.

Thursday, March 15, 2018

CAFC reverses ED Pa in DOMINION ENERGY case; expert witness skewered

The appellant Alstom prevailed.

This is an appeal from a final judgment following a
jury trial in a patent infringement case. Alstom Grid LLC
(“Alstom Grid”) appeals the district court’s (1) denial of
judgment as a matter of law (“JMOL”) of noninfringement,
(2) denial of its motion to vacate or remit the jury’s
reasonable royalty damages award, (3) denial of JMOL of
no willful infringement and grant of enhanced damages,
and (4) grant of a permanent injunction. For the reasons
explained below, we reverse the district court’s denial of
JMOL of noninfringement based on an absence of substantial
evidence to support the jury verdict
. For that
reason, we vacate the damages award, judgment of willful
infringement, enhanced damages award, and permanent
injunction. We remand for further proceedings consistent
with this opinion.

At issue

The question before us is whether substantial evidence
supports the jury’s finding that the accused system
includes every limitation of the asserted claims. We
conclude that it does not. As discussed above, the asserted
claims require “generat[ing] an energy delivery parameter
based on a comparison of the measurement data
received from the subset to a controller target voltage
band.” See ’883 patent claims 1, 15. The claims require a
comparison of two specific things. Evidence of a comparison
of something other than those two things does not
support a finding of literal infringement.
We conclude that no reasonable juror could find that
the accused product compares the measured data to a
controller target voltage band. The evidence presented to
the jury shows that the accused system compares the
measured data to a single calculated voltage, as opposed
to a voltage band as required by the claims.

The expert witness did not fare well:

Dominion relies heavily on the testimony of
Dr. Brown, its technical expert. Dr. Brown’s testimony,
however, does not provide substantial evidence to support
the jury’s verdict because his testimony was conclusory,
unsupported, contrary to the evidence in the case, or not
directed to the claim limitation at issue. We address the
problems with his testimony below.


Beyond his conclusory testimony, Dr. Brown made
several critical admissions. First, Dr. Brown agreed that
the accused system compares the calculated voltage—not
the measured voltage—to a target band:
[Alstom Grid] compare[s] the calculated voltage to
the measured voltage to determine the error. And
then they use that error to adjust the limits. And
then they compare the calculated voltage to the
adjusted limits in their software.
J.A. 10562–63. Dr. Brown also admitted that the limitadjustment
algorithm code, which is the key algorithm in
the accused system, does not compare the measured
voltage and a target voltage band. Dr. Brown further
admitted that the accused function “operates on calculated
voltages” and “never uses measured voltage to generate
an energy delivery plan.” J.A. 10489–90, 10493. These
admissions further support our conclusion that a reasonable
jury would not have a legally sufficient evidentiary
basis to find for Dominion on the issue of direct infringement.

Intellectual Ventures [IV] loses at CAFC in appeal of decision by Judge Stark in SYMANTEC CORP case

From the case at D. Delaware, IV v. SYMANTEC CORP :

We have considered IV’s other arguments and find
them without merit. For the foregoing reasons, and for
those expressed in more detail in the district court’s
thorough and carefully considered orders, we affirm the
district court’s judgment.

Appeals from the United States District Court for the
District of Delaware in No. 1:13-cv-00440-LPS, Chief
Judge Leonard P. Stark.

***Separately, on blawgsearch on 15 March 2018:

Wednesday, March 14, 2018

The significance of the finding "patents with higher reverse citation counts are less likely to survive review "?

Within s post titled Which Patents Get Instituted During Inter Partes Review ? , Michael Risch discusses a paper on SSRN titled Determinants of Patent Quality: Evidence from Inter Partes Review Proceedings, with a reference to an observation:

•Patents with more backward citations are more likely to be instituted (this is counterintuitive, but consistent with my own study of the patent litigation)

The abstract of the SSRN paper actually states:

patents with higher reverse citation counts are less likely to survive review

and from the body of the SSRN paper

Patents with more reverse citations and patents with more reverse citations added by the examiner are both more likely to be instituted, with an additional 10 reverse citations associated with a 0.15 percent increase in the chance of institution, and an additional 10 reverse citations added by the examiner associated with an impressive 1.8 percent increase in the chance of institution


We next identified all prior art references that were cited during the patent’s prosecution (often referred to as “reverse citations”). In addition to determining the overall count of such citations, we also determined the number of reverse citations to foreign patents, as well as the number and type of reverse citations to “non-patent literature” (NPL) such as academic articles, books, and websites. Finally, for all patents issued in 2001 or thereafter, we were additionally able to determine whether reverse citations to patents and applications were disclosed by the applicant or, instead, were identified and cited by the examiner in an office action.185

As to terminology, a "reverse" citation is a reference in the patent to a document in existence BEFORE patent issue. A "forward" citation is a reference TO the issued patent by a document coming later in time.

As to expectations, the SSRN article wrote:

Moving next to data that proxies the scrutiny each application received from the USPTO, we again find a number of significant correlations with institution. First, as shown below in Table 10, we find a significant correlation between institution and various categories of “reverse citations.” While one might expect institution to be negatively correlated with counts of such citations—e.g., on the theory that more diligent applicants and examiners will tend to find and review more prior art224—we actually find the opposite. We observe that never-instituted patents cited fewer pieces of prior art overall, had fewer prior art citations added by the examiner, and cited to fewer pieces of nonpatent prior.

In the end

To the contrary, as our findings with respect to reverse citations also attest, it may be the case that more unique inventions have less prior art and thus face a speedier path to issuance


All in all, our findings suggest that reverse citations and the frequency of examination events are, at best, noisy proxies for quality.

The SSRN paper did not seem to address the issue that a relatively weak application might flood the examiner with many references in an attempt to "bury" the most relevant references. In some art areas, an applicant might include many prior art references to avoid any possibility of inequitable conduct for withholding references. This might be more likely when the prosecuting attorney is not familiar with the art in question, and has difficulty in assessing relevance.

Hologic loses appeal at CAFC on Pi Day 2018

The outcome

Appellant Hologic, Inc. initiated an inter partes reexamination of U.S. Patent No. 8,061,359, which is owned by Appellees Smith & Nephew, Inc. and Covidien LP (together, “S&N”). S&N’s ’359 patent claims priority to an earlier-filed PCT application by the same inventor with a nearly identical specification. The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board found that S&N’s earlier-filed PCT application has sufficient written description to make it a priority document instead of an invalidating obviousness reference. Hologic, Inc. v. Smith & Nephew, Inc., No. 2016-006894, 2016 WL 6216657 (P.T.A.B. Oct. 21, 2016) (“Board Decision”). Hologic appeals. We affirm.


The issue before the Board—and before us on appeal—is whether Emanuel PCT, which discloses a “connection to a fibre optics bundle which provides for lighting at the end of lens 13,” provides sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the ’359 patent’s claims. See Emanuel PCT at 4:34–36. If it does, then the ’359 patent properly claims priority based on Emanuel PCT. If it does not, then Emanuel PCT is prior art to the ’359 patent and invalidates it as obvious. The Board, after briefing and review of expert testimony, found that the disclosure in Emanuel PCT provides sufficient written description support for the claimed “light guide,” entitling the ’359 patent to the priority date of Emanuel PCT. Accordingly, the Board reversed the examiner’s rejections of the ’359 patent’s claims.

Of some note, the CAFC brought up extrinsic evidence:

In addition to the intrinsic evidence discussed above, prior patents reflecting the state of the art at the time of the invention and expert testimony regarding that evidence further support the Board’s findings. The ’359 patent on its face lists several pieces of prior art, including U.S. Patent No. 4,606,330 (“Bonnet”) and U.S. Patent No. 4,706,656 (“Kuboto”). Bonnet and Kuboto both describe endoscopes with permanently affixed light guides. S&N’s experts, Dr. Keith B. Isaacson and Mr. Richard J. Apley, each testified that the figures in Emanuel PCT look more like the figures in Bonnet and Kuboto than figures in several prior art patents directed to removable light guides. Specifically, Dr. Isaacson testified that, as of at least September 1998, a person of ordinary skill in the art would have known that there were two types of endoscopic systems generally available for use in surgical procedures: a removable “telescope,” or a unitary integrated device—like Bonnet and Kuboto.


Hologic argues that the Board improperly relied on prior art to supply missing claim elements. We do not agree. The Board simply considered what the specification reasonably conveys to the skilled artisan who has knowledge of the prior art. See Ariad, 598 F.3d at 1351. The Board did not err in this regard.

Thursday, March 08, 2018

Harvard University announces settlement of dispute with Micron over Gordon technology

From a press release by Harvard on 2 March 2018:

Harvard and Micron have settled the litigation regarding the asserted Harvard-owned patents, on confidential terms. The patented technology, which was invented by Professor Roy G. Gordon and members of his Harvard laboratory, relates to the deposition of thin films of metals and other materials onto surfaces.

The case was President and Fellows of Harvard College v. Micron Tech., Inc., Civil Action No. 16-11249-WGY, initially filed in United States District Court for the District of Massachusetts. It was subsequently transferred to the U.S. District Court in Delaware, as Civil Action No. 17-01729-LPS-SRF. Further details regarding the resolution of the case are confidential.

If it's not on the internet, does it not exist?

In a recent post titled "But nothing can ever truly be deleted on the Internet" , IPBiz questioned whether it was true that "nothing" can be deleted from the internet.

On the flip side, a certain travel site recently denied that there was a park called "The Island" located near Santos, Florida, on the basis that it could NOT be found on the internet.

Just to rectify this issue, IPBiz posts the following pictures of the very real park, located south of the Marion County Sheriff sub-station on US 441, between Belleview and Ocala.



In the 1930s, there were plans for a cross-Florida canal, and a bridge was proposed to cross the canal near Santos, Florida. A schematic of the bridge appears at "The Island."


The park "The Island" encloses trestles from the never completed bridge




The CAFC discusses 101 in Exergen v. Kaz

Although Exergen v. Kaz is non-precedential, it tackles a variety of issues, including 101, right to jury trial,
and damages.

Of 101,

What the parties
dispute, however, is whether the additional claimed steps
beyond calculating the temperature present a novel
technique in this computation or add an inventive concept
sufficient to transform the claims into a patent-eligible
The district court reasoned that “while the asserted
claims are based in natural phenomena,” the claims recite
additional steps which, like the claims in Diamond v.
Diehr, 450 U.S. 175 (1981), “transformed the underlying
natural laws into inventive methods and useful devices
that noninvasively and accurately detect human body
temperature.” J.A. 110, 113–14. The court noted that the
asserted claims each recite a subset of three steps: (1)
moving while laterally scanning (’685 patent claims 7, 14,
and 17; ’938 patent claims 17, 24, 33, 60, and 66); (2)
obtaining a peak temperature reading (’685 patent claim
7; ’938 patent claims 60 and 66); and (3) obtaining at least
three readings per second (’938 patent claims 17, 24, 39,
40, 46, and 49). Kaz argued both below and on appeal
that these additional elements were known in the prior
art. The district court held simply being known in the art
did not suffice to establish that the subject matter was not
eligible for patenting. The district court recognized that a
“new combination of steps in a process may be patentable
even though all the constituents of the combination were
well known and in common use before the combination
was made.” J.A. 112 (quoting Diehr, 450 U.S. at 188).


The district court’s conclusion that these claim elements
were not well-understood, routine, and conventional
is a question of fact to which we must give clear error
deference. Like indefiniteness, enablement, or obviousness,
whether a claim is directed to patentable subject
matter is a question of law based on underlying facts.
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
1334, 1343 (Fed. Cir. 2016)

Wednesday, March 07, 2018

Joe Newman reprised at the writtendescription blog

Michael Risch has a post on the Newman saga titled The Quest to Patent Perpetual Motion .

I tried to write a comment, but because I had logged on from a machine (not my own) I got bounced quickly as an imposter performing
"suspicious activity."

For now, I include a link to an earlier 2007 post on IPBiz, which contains an interesting comment.


LBE actually saw the 1984 CBS Evening News broadcast with Dan Rather, which left viewers with the impression that Newman could be right.

As writes

There was no one on the CBS Evening News to challenge Newman's claim. On the contrary, the report included endorsements from two "experts" who had examined Newman's Energy Machine. Roger Hastings, a boyish-looking Ph.D. physicist with the Sperry Corporation, declared, "It's possible his theory could be correct and that this could revolutionize society." Milton Everett, identified as an engineer with the Mississippi Department of Transportation, told viewers, "Joe's an original thinker. He's gone beyond what you can read in textbooks." Watching the CBS broadcast that evening, most viewers must have been left wondering how the Patent Office could be so certain Joe Newman was wrong.

In 1986, the Orlando Sentinel had an article which included text:

Physicist Roger Hastings, highly respected manager of the Sperry Corp.'s Superconductive Electronics Technology Center was an original skeptic. Not now:

''On Sept. 19, 1985,'' he said in an affidavit, ''the motor was operated at 1,000 and 2,000 volts battery input, with output powers of 50 and 200 watts respectively. Input power in these tests were 7 and 17 watts, yielding efficiencies of 700 percent and 1,400 percent.

''Every experiment that I have performed shows that the energy output of the device is indeed larger than the energy input. The future of the human race may be dramatically uplifted by the large-scale commercial development of this invention.''

Hastings said he thinks Newman's auto engine prototype will succeed. The original power source would be a dry cell battery pack.

''I firmly believe . . . that Mr. Newman's car will consume at least 15 times less energy from the batteries than present commercial electric cars,'' Hastings said. ''This energy savings could be used for any combination of longer running time, higher speed, or larger vehicle compared with present designs. Newman's car motor will operate on high voltage, will have high torque at low current, and will probably consume a fraction of one horsepower.''


An article in the 1985 Los Angeles Times contained the text: "This is not a perpetual motion machine and Joe has never said it was," said Hastings, who agreed that with "intensive development" Newman's machine could "run a home or a car."

Judge Newman on stare decisis in Ottah v. Fiat

In Ottah v. Fiat, Judge Newman had an opportunity to discuss claim construction.

This court had previously reviewed claim construction
of the ’840 Patent, and ruled that several claim limitations
require that the claimed book holder has a “removable
mounting.” VeriFone, 524 F. App’x at 629 (construing
the “removably attached” term). The VeriFone court held
that mounts that cannot be removed without tools do not
literally infringe claim 1, stating that claim 1 “is clear on
its face” and that “nothing in the specification suggests
that the claim language should be interpreted in a way at
variance with its ordinary meaning.” Id.

The ruling on claim scope is a matter of “claim construction,”
which is ultimately a question of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
836–38, 841–42 (2015). The issue was finally decided and
is not subject to collateral review. See Markman v.
Westview Indus., Inc., 517 U.S. 370, 390–91 (1996) (recognizing
the need for “uniformity in the treatment of a given
patent” and noting that “treating interpretive issues as
purely legal will promote (though it will not guarantee)
intrajurisdictional certainty through the application of
stare decisis on those questions not yet subject to interjurisdictional
uniformity under the authority of the single
appeals court”); see also Restatement (First) of Judgments
§ 70, cmt. a (Am. Law Inst. 1942), (“Under the doctrine of
stare decisis, where a court has in one case decided a
question of law it will in subsequent cases in which the
same question of law arises ordinarily decide it in the
same way. The doctrine is not rigidly applied, and a court
will sometimes overrule its prior decisions. The doctrine
of stare decisis is applicable although the parties in the
later action are different from those in the prior actions.”);
Stare Decisis, Black’s Law Dictionary (10th ed. 2014).
No error has been shown in this claim construction,
and no reason for departing from the rules of collateral
estoppel or stare decisis as to this claim term. Miken
Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d
1331, 1338 n.1 (Fed. Cir. 2008) (“[F]or us not to adopt the
same claim construction in a case such as this, in which
the construction of the claim term in question was a
necessary predicate to the determination of a prior litigation
before this court and is evident from the face of the
intrinsic record without resort to expert testimony, would
run counter to the Supreme Court’s guidance on stare
decisis in Markman . . . .”); Key Pharm. v. Hercon Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (“We do not take
our task lightly in this regard, as we recognize the national
stare decisis effect that this court’s decisions on
claim construction have.”); see also Brady Const. Innovations,
Inc. v. Perfect Wall, Inc., 290 F. A’ppx 358, 363 (Fed.
Cir. 2008) (“Under the principles of stare decisis and the
Supreme Court’s guidance in Markman, this court follows
the claim construction of prior panels absent exceptional
circumstances.”). Here, it was shown that the MSJ Defendants’
accused cameras utilize fixed mounts that
require tools for removal. As such, the accused devices
are outside the literal scope of claim 1.

One suspects a relation to Judge Newman's recent
See Knowles loses appeal at CAFC; Judge Newman in dissent: "never before has a final claim construction by this court been held not to be preclusive".