Saturday, June 30, 2018

Proportionality and FRCP 26(b) in patent cases

From the New York Law Journal:

But the burden of ensuring proportionality does not lie solely with the party requesting discovery. Rather, as stated in the advisory committee notes to the 2015 amendments, “[t]he parties and the court have a collective responsibility to consider the proportionality of all discovery and consider it in resolving discovery disputes.” Fed. R. Civ. P. 26(b)(1) advisory committee’s note to 2015 amendment (emphasis added).

Citing the advisory committee note, the court in Polaris Innovations Ltd. v. Kingston Technologies Co., No. 16-cv-00300, 2017 WL 3275615 (C.D. Cal. Feb. 14, 2017), rejected the premise that (i) the requesting party “alone had to establish proportionality,” and (ii) that its motion to compel failed “simply because [the requesting party] did not fully and explicitly address proportionality.” Id. at *6


Did Sheeran copy from Gaye's 'Let's Get It On'?

The Independent writes of the "plagiarism" charge against singer Ed Sheeran:

Ed Sheeran is being sued for $100m (€85.6m) for allegedly plagiarising parts of Marvin Gaye's classic 'Let's Get It On' for his hit 'Thinking Out Loud'.

According to legal documents lodged in New York, the British star's 2014 track copies the "melody, rhythms, harmonies, drums, bass line, backing chorus, tempo, syncopation and looping" of Gaye's 1973 song.

The claim has been brought by a company called Structured Asset Sales (SAS), which owns part of the copyright of Gaye's song.

Gaye co-wrote the track alongside Edward Townsend in 1973. Townsend died in 2003 but SAS bought one-third of the copyright.


Friday, June 29, 2018

Lannett Holdings loses appeal in zolmitriptan case

Appellant Lannett Holdings lost at the CAFC:

Lannett Holdings Inc. and Lannett Co. Inc. (together,
“Lannett”) appeal from the decision of the United States
District Court for the District of Delaware concluding,
after a bench trial, that claims 4, 11, 12, and 14 of U.S.
Patent 6,760,237 (“the ’237 patent”) and claims 6 and 14–
16 of U.S. Patent 7,220,767 (“the ’767 patent”) were not
shown to be invalid, see Impax Labs., Inc. v. Lannett
Holdings Inc., 246 F. Supp. 3d 1024 (D. Del. 2017) (“Opinion”),
entering judgment in favor of Impax Laboratories
Inc. (“Impax”), AstraZeneca AB, and AstraZeneca UK
Limited (together, “AstraZeneca”), and entering an injunction
against Lannett pursuant to 35 U.S.C.
§ 271(e)(4), see Impax Labs. Inc. v. Lannett Holdings Inc.,
No. 1:14-cv-00984-RGA (D. Del. Apr. 17, 2017), ECF No.
174; J.A. 1–4. For the reasons that follow, we affirm.

The issue was obviousness:

We proceed to the obviousness issue, the sole issue on
appeal, based on the prior art references and arguments
properly before us. On appeal from a bench trial, we
review a district court’s conclusions of law de novo and its
findings of fact for clear error. Golden Blount, Inc. v.
Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed. Cir.
2004). A factual finding is only clearly erroneous if,
despite some supporting evidence, we are left with the
definite and firm conviction that a mistake has been
made. United States v. U.S. Gypsum Co., 333 U.S. 364,
395 (1948); see also Polaroid Corp. v. Eastman Kodak Co.,
789 F.2d 1556, 1559 (Fed. Cir. 1986) (“The burden of
overcoming the district court’s factual findings is, as it
should be, a heavy one.”).

A party challenging the validity of a patent must establish
invalidity by clear and convincing evidence. See
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
Clear and convincing evidence should “place[] in the fact
finder ‘an abiding conviction that the truth of [the] factual
contentions are highly probable.’” Procter & Gamble Co.
v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed. Cir.
2009) (quoting Colorado v. New Mexico, 467 U.S. 310, 316
(1984)) (second alteration in original).

Of note:

Contrary to Lannett’s contentions, the district court
found that zolmitriptan’s more potent, active metabolite
was actually thought to be significant for its efficacy by a
person of skill in the art at the time. Specifically, the
court credited Appellees’ evidence of expert testimony and
studies and found that a skilled artisan would have
expected delayed or lower therapeutic effectiveness from
zolmitriptan if administered nasally because it would
have been “absolutely counterintuitive to make a nasal
spray when you have an active metabolite which is more
potent . . . than the drug itself.” Opinion, 246 F. Supp. 3d
at 1037 (quoting Dr. Rapoport); J.A. 667. As such, the
court found that “because of zolmitriptan’s reliance on its
active metabolite, the prior art failed to teach that
zolmitriptan by itself would be effective.” Id. The court
thus found zolmitriptan’s acting through its metabolite
not only relevant, which was substantially undisputed,
but also significant for a skilled artisan to consider regarding
whether to make intranasally administered


Based on the record before us, we do not find that the
court clearly erred in concluding that at the time,
zolmitriptan’s known significant reliance on its active
metabolite would have, on balance, dissuaded a person of
skill in the art from making nasal formulations of
zolmitriptan. See, e.g., Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349–50 (Fed. Cir. 2000) (no clear
error in the district court’s finding that a person of skill in
the art, on balance, would not have made the claimed
invention); Intendis GmbH v. Glenmark Pharm. Inc., 822
F.3d 1355, 1366–67 (Fed. Cir. 2016) (no clear error when
the district court found that a person of skill in the art
would have pursued other formulations).

Tuesday, June 26, 2018

Karolinska Institute recommends retraction of two papers of Macchiarini from The Lancet

In a post on 25 June 2018 titled Seven Researchers Guilty of Misconduct in Macchiarini Case , the Scientist reported that The Karolinska Institute has found stem cell-related work of Paolo Macchiarini to involve inaccuracies and data fabrication:

Macchiarini’s research centered on a radical approach to tracheal transplantation that involved seeding bioengineered windpipes with a patient’s own stem cells. His work became the subject of multiple investigations following the deaths of several patients, along with allegations of ethical oversights and data fabrication.


the Institute announced that an analysis of six articles published across four journals had discovered inaccuracies, misleading information, data fabrication, unjustified treatments, and a lack of appropriate ethical approvals


A spokesperson for The Lancet, where two of the papers were published, tells Retraction Watch, “We welcome the report from the Karolinska Institute. We will study their findings and conclusions carefully and respond as soon as possible.

Being "dead wrong" on points of law?

Back in January 2018, in a post titled Harvard Law Grad Scaramucci Botches Law Discussing Trump-McGahn Discussion of Mueller , Ronn Blitzer (apparently a graduate of Cornell Law) wrote:

Enter Walter Shaub. Now, Shaub may not have gone to Harvard,
but he is an attorney and he was the Director of the
U.S. Office of Government Ethics, so he knows a thing
or two about legal matters in Washington
. Shaub called
out The Mooch on Twitter, saying that he’s dead wrong
about Trump’s conversation with McGahn being privileged.

In June 2018, Walter Shaub invoked 5 CFR 2635.702(a) to say
Huckabee Sanders violated federal rules in tweeting about the "Red Hen"
incident from her official twitter account.

Rule 2635.702 is titled --Use of public office for private gain --
with part (a) stating in total:

(a) Inducement or coercion of benefits. An employee shall not use or permit the use of his Government position or title or any authority associated with his public office in a manner that is intended to coerce or induce another person, including a subordinate, to provide any benefit, financial or otherwise, to himself or to friends, relatives, or persons with whom the employee is affiliated in a nongovernmental capacity.
Example 1: Offering to pursue a relative's consumer complaint over a household appliance, an employee of the Securities and Exchange Commission called the general counsel of the manufacturer and, in the course of discussing the problem, stated that he worked at the SEC and was responsible for reviewing the company's filings. The employee violated the prohibition against use of public office for private gain by invoking his official authority in an attempt to influence action to benefit his relative.

Example 2: An employee of the Department of Commerce was asked by a friend to determine why his firm's export license had not yet been granted by another office within the Department of Commerce. At a department-level staff meeting, the employee raised as a matter for official inquiry the delay in approval of the particular license and asked that the particular license be expedited. The official used her public office in an attempt to benefit her friend and, in acting as her friend's agent for the purpose of pursuing the export license with the Department of Commerce, may also have violated 18 U.S.C. 205.

Mr. Shaub has yet to identify "what benefit" Huckabee Sanders obtained from Red Hen, or from anyone else,
by tweeting about the incident the next day. If Huckabee Sanders obtained no benefit, there is no violation of the regulation and Shaub is "dead wrong."

One notes that part (b) of 2635.702 (NOT invoked by Shaub) states

(b) Appearance of governmental sanction. Except as otherwise provided in this part, an employee shall not use or permit the use of his Government position or title or any authority associated with his public office in a manner that could reasonably be construed to imply that his agency or the Government sanctions or endorses his personal activities or those of another. When teaching, speaking, or writing in a personal capacity, he may refer to his official title or position only as permitted by § 2635.807(b). He may sign a letter of recommendation using his official title only in response to a request for an employment recommendation or character reference based upon personal knowledge of the ability or character of an individual with whom he has dealt in the course of Federal employment or whom he is recommending for Federal employment.

As to the text -- construed to imply that his agency or the Government sanctions or endorses his personal activities or those of another -- would any reasonable person construe that any governmental entity endorsed what Huckabee Sanders was talking about? Further, here, Huckabee Sanders was responding to a public disclosure of the event by a third party, which third party disclosure related to Huckabee Sanders' status as a governmental employee.

***Entirely separately,

Supreme Court Upholds Trump’s Travel Ban

Monday, June 25, 2018

Phonetic symbol system fails under 35 USC 101

The outcome of In re Wang:

The invention claimed in the ’680 application relates
to “[a] phonetic symbol system formed by phonetic symbols
using letters of [the] English alphabet.” ’680 application,
Abstract, Appx. 18. The specification distinguishes
the claimed invention from existing phonetic symbol
systems that use diacritic marks and symbols that are not
letters. Id., Appx. 19. Embodiments described in the ’680
application map letters to sounds. Id., Appx. 21–30. For
example, “a” represents the “a” sound in “about,” while “e”
represents the “e” sound in “bed” and “aa” the “a” sound in
“father.” Id., Appx. 21. Claim 1 is illustrative of the
claimed invention.


Because, as explained below, we
agree with the Board that the application claims on
appeal are directed to non-statutory subject matter, we
affirm the Board’s decision. We do not reach the remaining
issues decided by the Board.

No additional inventive concept was found:

Finally, where, as here, claims of a patent application
recite an abstract idea, the question becomes whether
they contain “additional features” that embody an “inventive
concept,” so as to nevertheless make them patenteligible.
Alice Corp. Pty. Ltd v. CLS Bank Int’l, 134 S. Ct.
2347, 2357 (2014) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297
(2012)). The application claims on appeal, however,
contain no “additional features” of any kind embodying an
inventive concept. The claims merely encompass strings
of English letters representing sounds. In short, there is
no inventive concept that rescues them from patent

Sunday, June 24, 2018

Why the "Red Hen" restaurant episode shows need for distinctive trademarks; is Walter Shaub dead wrong about 5 CFR 2635.702(a)?

The Red Hen restaurant in Swedesboro, New Jersey has been getting some nasty blowback because of the incident at the Red Hen restaurant in Lexington, Virginia.

Related to an earlier IPBiz on the movie "The Other End of the Line," [ YouTube videos and comments to blogs as prior art used by the USPTO? ] note the text in the post
N.J. restaurant harassed after Va. eatery with same name boots Sarah Huckabee Sanders

Operating Manager Elizabeth Pope noticed something strange on the restaurant's Facebook page: tons of angry comments and reviews.

"It was off the chart," she said. "Then the hostess comes to me and says, 'people are calling and yelling and swearing.'"

**Various posts have discussed a tweet by Walter Shaub [@waltshaub], directed to Sarah Huckabee Sanders, concerning the event at the Red Hen in Lexington, Virginia:

Sarah, I know you don’t care even a tiny little bit about the ethics rules, but using your official account for this is a clear violation of 5 CFR 2635.702(a). It’s the same as if an ATF agent pulled out his badge when a restaurant tried to throw him/her out.

concerning Sarah's tweet from @PressSec:

Last night I was told by the owner of Red Hen in Lexington, VA to leave because I work for @POTUS and I politely left. Her actions say far more about her than about me. I always do my best to treat people, including those I disagree with, respectfully and will continue to do so

For the record, 5 CFR § 2635.702(a) reads in total

a) Inducement or coercion of benefits. An employee shall not use or permit the use of his Government position or title or any authority associated with his public office in a manner that is intended to coerce or induce another person, including a subordinate, to provide any benefit, financial or otherwise, to himself or to friends, relatives, or persons with whom the employee is affiliated in a nongovernmental capacity.

Example 1: Offering to pursue a relative's consumer complaint over a household appliance, an employee of the Securities and Exchange Commission called the general counsel of the manufacturer and, in the course of discussing the problem, stated that he worked at the SEC and was responsible for reviewing the company's filings. The employee violated the prohibition against use of public office for private gain by invoking his official authority in an attempt to influence action to benefit his relative.

Example 2: An employee of the Department of Commerce was asked by a friend to determine why his firm's export license had not yet been granted by another office within the Department of Commerce. At a department-level staff meeting, the employee raised as a matter for official inquiry the delay in approval of the particular license and asked that the particular license be expedited. The official used her public office in an attempt to benefit her friend and, in acting as her friend's agent for the purpose of pursuing the export license with the Department of Commerce, may also have violated 18 U.S.C. 205.

Sanders tweeted after the event had been disclosed (by someone else) in public media, and after Sanders had left the Red Hen, as directed by the owner.

Shaub, who merely invoked the regulation, did not marshal any evidence to support the idea that Sanders, through her tweet intended to coerce or induce another person, including a subordinate, to provide any benefit, financial or otherwise, to himself or to friends, relatives, or persons with whom the employee is affiliated in a nongovernmental capacity

Posts discussing Shaub's tweet:

Former Ethics Chief Calls Sarah Sanders Tweet About Getting Booted from Red Hen ‘Clear Violation’ of Ethics Rules

Valerie Richardson in the Washington Times: Obama administration official accuses Sarah Huckabee Sanders of ethics violation for Red Hen tweet

****TripAdvisor on Red Hen Lexington on June 25, 2018

Message from TripAdvisor: Due to a recent event that has attracted media attention and has caused an influx of review submissions that do not describe a first-hand experience, we have temporarily suspended publishing new reviews for this listing. If you’ve had a firsthand experience at this property, please check back soon - we’re looking forward to receiving your review!

Saturday, June 23, 2018

Comey, Trump, and Andrew Johnson

In a post titled James Comey Says Donald Trump Is Not the Worst U.S. President Ever , Newsweek includes text:

Comey said: “I would rate him [Trump]… one or two, probably one. We have had worse presidents. Andrew Johnson was the president after Abraham Lincoln and Andrew Johnson was a raving racist and drunk and terrible person, so I think he was worse.”

As to Andrew Johnson being a "raving racist," see the 2013 post in the New York Times titled
When Andrew Johnson Freed His Slaves . Note also that the last U.S. President to have held a slave in his lifetime was U.S. Grant, not Andrew Johnson.

As to a patent connection, note "who" defended Andrew Johnson during the impeachment trial: Benjamin R. Curtis, one of two Supreme Court Justices who dissented in the Dred Scott decision and an expert in patent law. His brother George Ticknor Curtis wrote one of the leading patent law treatises of the time [ A treatise on the law of patents for useful inventions in the United States of America, published by Little Brown in 1849]. Among other distinctions, Benjamin Curtis was the first Supreme Court justice to have graduated from a "law school."

The Newsweek text suggests that Comey thinks Andrew Johnson was a worse president than Trump.

In the post Historical rankings of presidents of the United States , one notes that Franklin Pierce and James Buchanan both are rated lower than Andrew Johnson. Prior to becoming president, Johnson was a firm backer of the 13th Amendment. Arguably, Johnson's major problem, as president, was that he had the wrong personality to deal with the situation confronting him, rather than being a "raving racist."

James Comey grew up in Allendale, New Jersey and attended Northern Highlands Regional High School in Allendale.

Recall that slavery existed in New Jersey at the beginning of the Civil War (see for example
New Jersey and the 13th Amendment
); Yale University "expels" John C. Calhoun name [IPBiz, 12 Feb 2017] citing to History of Slavery in New Jersey: "It was not until the Thirteenth Amendment to the United States Constitution was passed in 1865 that the last 16 slaves in the state were freed."

Note also the wikipedia entry for Commonwealth v. Aves , which states

By the start of the Civil War, every Northern state other than Indiana, Illinois, and New Jersey granted freedom automatically to any slave brought within its borders.

In a post by the National Park Service [NPS] titled
Andrew Johnson and Emancipation in Tennessee
, one has the text

According to tradition, Military Governor Andrew Johnson freed his personal slaves on August 8, 1863. By September 8, 1863, even the New York Times stated that "Gov. JOHNSON thus plants himself on the extreme Anti-Slavery ground --"

On October 24, 1864, Johnson freed all the slaves in the state of Tennessee.

As one footnote to some of Johnson's vetoes in his time as president, the NPS states

While President, Andrew Johnson struggled with Congress over the elements of Reconstruction. Many of his vetoes appear to have been made in direct defiance of assistance for the freedmen, but had their basis in his interpretation of Constitutional principles. In his veto of the Civil Rights Bill, for example, he stated that the act "...contains provisions which I can not approve consistently with my sense of duty to the whole people and my obligations to the Constitution of the United States."

One should observe that in the Aves case, Benjamin Curtis (who later dissented in Dred Scott) represented the slave owner.

Friday, June 22, 2018

CAFC vacates TTAB decision in Royal Crown/ "zero" case

The issue was the dismissal of Royal Crown's opposition to proposed marks of Coca-Cola:

Royal Crown Company, Inc. and Dr Pepper/Seven Up,
Inc. (together, “Royal Crown”) appeal a decision of the
Trademark Trial and Appeal Board (“the Board”) dismissing
Royal Crown’s opposition to the registration of The
Coca Cola Company’s (“TCCC”) trademarks for various
soft drinks and sports drinks including the term ZERO.
Royal Crown Co. v. Coca-Cola Co. (TTAB Decision),
Opposition No. 91178927 (Parent Case), 2016 TTAB
LEXIS 234 (T.T.A.B. May 23, 2016).1 Because we conclude
that the Board erred in its legal framing of the
question of the claimed genericness of TCCC’s marks, and
failed to determine whether, if not generic, the marks
were at least highly descriptive,


Whether the Board applied the correct legal standard
to the facts is a question of law. Princeton Vanguard,
LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 964 (Fed.
Cir. 2015) (citing In re Dial–A–Mattress Operating Corp.,
240 F.3d 1341, 1345 (Fed. Cir. 2001)). We review the
Board’s legal determinations de novo and without deference.
Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1265 (Fed. Cir. 2002).
Whether an asserted mark is generic or descriptive is
a question of fact. Princeton Vanguard, 786 F.3d at 964
(citing In re, LP, 573 F.3d 1300, 1301 (Fed.
Cir. 2009)); In re Bayer Aktiengesellschaft, 488 F.3d 960,
964 (Fed. Cir. 2007). “On appellate review of the Board’s
factual finding of genericness, we determine whether, on
the entirety of the record, there was substantial evidence
to support the determination.”, 573 F.3d at
We review the Board’s factual findings for substantial
evidence, which requires “such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. of N.Y. v. N.L.R.B, 305
U.S. 197, 229 (1938). The Board’s analysis must encompass
the entire evidentiary record. See Princeton Vanguard,
786 F.3d at 970.
At the outset, because TCCC seeks registration of its
ZERO-containing marks under Section 2(f) of the Lanham
Act, TCCC has conceded that ZERO is not inherently
distinctive in association with the genus of goods at
issue—soft drinks, energy drinks, and sports drinks. And,
TCCC thus concedes that ZERO is, to some extent, descriptive.
The only relief Royal Crown seeks in its oppositions
to TCCC’s applications is that TCCC be required to
disclaim the term ZERO.


If the Board concludes that Royal Crown has not met
its burden to demonstrate the genericness of TCCC’s
ZERO-bearing marks, TCCC will need to demonstrate the
acquired distinctiveness of its marks—that, “in the minds
of the public, the primary significance of a product feature
or term is to identify the source of the product rather than
the product itself.” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1379 (Fed. Cir. 2012) (quoting
Dial-A-Mattress, 240 F.3d at 1347). Only then can marks
such as the marks TCCC claims, which TCCC has conceded
are not inherently distinctive based on its Section 2(f)
filings, qualify for registration on the principal register.
See 15 U.S.C. § 1052(f); Two Pesos, Inc. v. Taco Cabana,
Inc., 505 U.S. 763, 769 (1992).

The outcome:

We conclude the Board erred in its legal framing of
the genericness inquiry in two ways—it failed to examine
whether ZERO identified a key aspect of the genus at
issue, and it failed to examine how the relevant public
understood the brand name at issue when used with the
descriptive term ZERO. We also find that the Board
should have first assessed the level of the marks’ descriptiveness
before determining whether TCCC satisfied its
burden of establishing acquired distinctiveness. Absent
such a finding, it is not possible for us to review on appeal
whether the evidentiary record can support the Board’s
finding of acquired distinctiveness. We vacate and remand
for the Board to apply the proper legal standard for
genericness an

As to genericness:

“The critical issue in
genericness cases is whether members of the relevant
public primarily use or understand the term sought to be
protected to refer to the genus of goods or services in


The Board’s approach was erroneous. The Board
asked the wrong question in assessing the alleged genericness
of the ZERO term. Specifically, the Board failed to
consider that “a term can be generic for a genus of goods
or services if the relevant public . . . understands the term
to refer to a key aspect of that genus.” In re Cordua
Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (emphasis
added). We explained in In re Cordua that “the test is not
only whether the relevant public would itself use the term
to describe the genus, but also whether the relevant
public would understand the term to be generic
. Any
term that the relevant public understands to refer to the
genus . . . is generic.”

Tuesday, June 19, 2018

CAFC addresses "contingent motions to amend" in Sirona Dental

There was a mixed decision in Sirona Dental. The CAFC affirmed the Board's patentability conclusions. Of relevance, however, the CAFC found PTAB erred on Sirona's contingent motion to amend.

Aqua Products and SAS Institute are cited in the CAFC opinion.

US Patent 10,000,000 issues on 19 June 2018: COHERENT LADAR USING INTRA-PIXEL QUADRATURE DETECTION to Joseph Marron of Raytheon

The underlying application was filed March 10, 2015 and the invention is directed to a frequency modulated (coherent)
laser detection and ranging system.

A story line within the June 18, 2018 episode of Elementary (titled "Sand Trap") is of interest, for a kind of man bites dog twist. Within, the CEO of a company decides to dedicate the company's inventions on an oil-spill oil recovery skimmer to the public. The leader of the project rebels, steals the company's plans (as well as stealing from other inventors across the globe), but is murdered. Curiously, however, not by the intellectual property theft victims, nor by the sand pirates. Rather, by a seemingly mild-mannered county government employee living by kick-backs from contractors. The actions of the fictional CEO in "Sand Trap" might evoke Elon Musk in 2014 [From Forbes: Elon Musk’s announcement that Tesla Motors (TSLA) is treating its patents as open source is a truly daring move]. As to the county employee, he killed two people, the second by drilling his subordinate county worker through the head with a power drill.

A story line within the June 17, 2017 episode of Instinct (titled "Blast from the Past") has an interesting story line on plagiarism.

Sunday, June 17, 2018

CBS Sunday Morning on June 17, 2018 forecasts US Patent 10,000,000

The CALENDAR feature of "CBS Sunday Morning" on 17 June 2018 stated that the USPTO will issue US Patent Number
10,000,000 on Tuesday, 19 June 2018.

Although there was no ALMANAC feature, artist M.C. Escher was featured on the anniversary of his birth
(17 June 1898). There is an exhibition of Escher's work at Brooklyn's Industry City. His drawings are used to illustrate group theory.

There were various features related to Father's Day, including ones related to fathers who had connection to CBS (Gavin Boyle, Senior Producer; Lane Venardos, former CBS News executive).

There was a "history lesson" by Steve Hartman, who discussed work by Sarah Haycox on Edwin T. Pratt. Although the viewer might have come away with the impression that Pratt had been a forgotten man, there is both a park and a cultural center in Seattle named in his honor. Further, at the time in January 1969, when Pratt was murdered at age 38, there was significant news coverage, and the FBI was involved in the investigation of his death.

There was a piece by David Martin on Seymour Hersh, who has a new book "Reporter: A Memoir" (Knopf). Hersh has a history degree from the University of Chicago, and was admitted to the Law School at the University of Chicago, but did not graduate. There has been some discussion of his work, including the book on Kennedy, The Dark Side of Camelot.

The moment of nature was at Komodo National Park in Indonesia, which video featured a sharp shift from dragons to turtles and fish. The photography was more dramatic than the usual moment of nature.

One reference to Chicago Law in Hersh's new book, relating to his "break-through" story on Calley:

Latimer, speaking very deliberately, as he always did, acknowledged that yes, Calley was his client and it was a miscarriage of justice. Touchdown. I told the judge I was flying to the West Coast soon and asked if he would mind if I arranged a stopover in Salt Lake City. We settled on a day in early November. I had no need to go to the West Coast but thought it best to hide my eagerness. I also spent half a day in the Pentagon library reading a number of the judge’s decisions, and even briefing a few of them; it was a reminder of what I did not do enough of during my underachieving year at the University of Chicago Law School.

Friday, June 15, 2018

Judge Newman's dissent on en banc in XITRONIX CORPORATION

Judge Newman's dissent:

I write because of the importance of this decision to
the judicial structure of patent adjudication, and the
future of a nationally consistent United States patent law.
In this case, the complaint states that the asserted violation
of patent law may support violation of antitrust
law—a Walker Process pleading based on charges of fraud
or inequitable conduct in prosecution of the patent appli-
cation in the Patent and Trademark Office.1 The threejudge
panel assigned to this appeal held that the Federal
Circuit does not have jurisdiction, did not reach the
merits, and transferred the appeal to the Fifth Circuit.2
This jurisdictional ruling is contrary to the statute governing
the Federal Circuit, and contrary to decades of
precedent and experience. Nonetheless, the en banc court
now declines to review this panel ruling.
I write in concern for the conflicts and uncertainties
created by this unprecedented change in jurisdiction of
the Federal Circuit and of the regional courts of appeal.
With the panel’s unsupported ruling that the Supreme
Court now places patent appeals within the exclusive
jurisdiction of the regional circuits when the pleading
alleges that the patent issue may lead to a non-patent law
violation, we should consider this change en banc.


As applied to the case at bar, it is not disputed that
patent law is a “necessary element” of the antitrust claim,
for without determination that a patent was obtained by
fraud or inequitable conduct, there can be no antitrust
violation. While “a claim supported by alternative theories
in the complaint may not form the basis for § 1338(a)
jurisdiction unless patent law is essential to each of those
theories,” id. at 810, Xitronix alleged a theory of antitrust
violation based solely on patent law. And, as Xitronix
states, its purpose is to invalidate the patent or render it
unenforceable. However, the panel rules that in Gunn v.
Minton, 568 U.S. 251 (2013), the Supreme Court changed
Federal Circuit jurisdiction such that only the regional
circuits now have jurisdiction over Walker Process appeals.
Gunn did not make the jurisdictional change ascribed
to it. In Gunn the Court held that the appeal of a state
law attorney malpractice case was properly in the state
court, although the malpractice charge related to a patent
issue. The Court observed that the patent had been
invalidated ten years earlier, and described the patent
aspect as “hypothetical” because whatever the attorney’s
malfeasance, there could be no rights in this long-dead
patent. Id. at 261 (“No matter how the state courts
resolve that hypothetical ‘case within a case,’ it will not
change the real-world result of the prior federal patent
litigation. Minton’s patent will remain invalid.”).


The panel’s ruling directly contradicts the court’s prior
holdings. A contradictory ruling by the panel is improper,
for “[t]his court has adopted the rule that prior
decisions of a panel of the court are binding precedent on
subsequent panels unless and until overturned in banc.”
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed.
Cir. 1988). In the vast number of cases that have raised
non-patent issues along with patent issues, no precedent
of the Supreme Court or the Federal Circuit supports the
panel’s ruling on the panel’s facts.


Until today, there has been stability in the jurisdictional
path of Walker Process appeals. No precedent
deprives the Federal Circuit of jurisdiction of appeals that
turn on issues of fraud or inequitable conduct in patent
prosecution. These issues are not only substantial, but
because they determine patent enforceability and validity,
they are fundamental.

Wednesday, June 13, 2018

Cutting and pasting to create legal briefs?

Years ago, in defending Laurence Tribe from charges of plagiarism, Alan Dershowitz spoke of cultural differences between law and
other disciplines. See, for example, Lawyers copying other lawyers: plus ça change, plus c'est la même chose , which contains the text:

. As recounted on Dean Velvel's blog in September 2004:


According to The Crimson, Dershowitz said that there is a "‘cultural difference’" between sourcing in the legal profession and in other academic disciplines. With the rest of the sentence being The Crimson’s words, albeit reflecting Dershowitz’s ideas, The Crimson wrote that "He said that judges frequently rely on lawyers’ briefs and clerks’ memoranda in drafting opinions. This results in a ‘cultural difference’ between sourcing in the legal profession and other academic disciplines, Dershowitz said."

Flash forward to the year 2018, and note a post in the Northwest Herald

The $400-an-hour attorney representing Algonquin Township Highway Commissioner Andrew Gasser has had accusations of plagiarism leveled against him.

The charges stem from an April 25 brief Woodstock attorney Robert Hanlon filed in a lawsuit against Clerk Karen Lukasik, former Highway Commissioner Bob Miller and his wife, Anna May Miller.

Lawyers on the other side of the case flipped to page 4 and – under the title "INJUNCTIVE RELIEF" – notice some irregularities in Hanlon's writing. A Google search revealed it actually wasn't Hanlon's writing at all.

It was an uncited word-for-word copy of an April 2011 Chicago Daily Law Bulletin article.

Later in Hanlon's document – on page 7 and spanning paragraph 7 until the conclusion of the brief – the lawyers discover more language lifted from another source without an attribution or citation. This time, the words came from page 4 of a “Practice Series” primer on temporary restraining orders from Chicago-based firm Jenner & Block.


And yes there is a 2018 story linking Harvard and plagiarism

Princeton Graduate wins Harvard Thesis Prize, kind of. Plagiarism hits the Ivy Leagues.

Different points of view are reflected in the comments. One that interested IPBiz:

the GSD dude is citing last semesters mike hayes and andrew holder talk 'architecture before speech', which tells you something about the academic rigor by which his thesis work was produced: in that talk both KMH and Andrew Holder admit that they 'dont have to be correct' in citing a text--they simply have to use it in a way that supports their argument. by their own admission they barely rise to the level of cultural criticism--which is fine, btw, we need more intelligent cultural discussion of architecture. but to cite that for a masters thesis? it barely rises to minimum academic standards we learn in childhood.

Halo Leather, appealing from TTAB to CAFC, loses

As to basically identical trademarks used to mark related products, the decision in
In re Halo Leather, Limited is instructive:

In this trademark case, Halo Leather Limited seeks to
register the mark “AQUAPEL” and an associated design
for leather or imitation leather home goods, including
beds, curtain rails, curtain hooks, curtain rings, mattresses,
and tables. The examining attorney in the Patent and
Trademark Office rejected Halo’s application on the
ground that the mark is likely to be confused with a
registered mark “AQUAPEL” for home goods including
bed blankets, comforters, curtain fabric, curtains of textile,
mattress covers and pads, table linen, textile fabrics,
and textile place mats. The Trademark Trial and Appeal
Board upheld the examining attorney’s rejection based on
its findings that the two marks are similar in terms of
their appearance, sound, connotation, and commercial
impression, and that consumers would likely identify
goods covered under the marks to emanate from a single
source. We affirm.
In finding of likelihood of
confusion, there is no requirement that the goods be
identical so long as one of the goods in the application is
sufficiently related to one of the goods in the registration
such that consumers would be likely to think they were
offered by the same source. See, e.g., Hewlett-Packard
Co., 281 F.3d at 1267 (“Even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin.”). Here, the likelihood of confusion is
caused by the high degree of relatedness of the parties’
goods, not by their being identical.

This is not a case like In re Coors Brewing Co., 343
F.3d 1340, 1346–47 (Fed. Cir. 2003), in which the court
found that the Board’s evidence was insufficient to support
the finding that two marks sharing the term “BLUE
MOON” are related. In Coors, one mark was for restaurant
services, and the other mark was for beer. Id.
Although the court found that the two marks were similar,
their applications were different: one was for services
and the other for goods. See id. (holding that it is not true
that “any time a brand of [food or beverage] has a trademark
that is similar to the registered trademark of some
restaurant, consumers are likely to assume that the [food
or beverage] is associated with that restaurant”). Unlike
Coors, both Halo’s application and Nanotex’s mark concern
similar goods, and substantial evidence supports the
Board’s finding that a consumer would likely view the
goods under Halo’s mark and Nanotex’s mark emanating
from a single source.

Tuesday, June 12, 2018

Mobileeye loses appeal at CAFC of PTAB decision. Velocity vs. displacement.

MobileEye lost:

Mobileye Vision Technologies Ltd. (“Mobileye”) appeals
from the final written decision of the United States
Patent and Trademark Office Patent Trial and Appeal
Board (“the Board”) in an inter partes reexamination
affirming the examiner’s rejection of claims 1–7 of U.S.
Patent 7,113,867 (“the ’867 patent”) as obvious. See
iOnRoad, Ltd. v. Mobileye Techs. Ltd., No. 2015-7925,
2016 WL 949027, at *8 (P.T.A.B. Mar. 11, 2016) (“Decision”).
On appeal, Mobileye only challenges the Board’s
decision with respect to claim 6. Because the Board did
not err in its decision, we affirm.

The scope of the appeal was narrow:

Only claim 6 is before us. Mobileye argues that the
Board’s claim construction of the “substantially uniformly
approaches zero” limitation to “merely mean[] that the
obstacle is closing in on the vehicle, and that they will
intersect,” see Decision, 2016 WL 949027, at *7 (internal
quotation marks omitted), reads out the “substantially
uniformly” part of the limitation. It further contends that
the “substantially uniformly” language in the claim
describes how the lateral displacement approaches zero,
not just whether it approaches zero. Goodrich, as Mobileye
characterizes it, does not base its collision determination
on how the lateral displacement changes, because
it assumes a constant velocity. Mobileye argues that it
therefore does not teach the “substantially uniformly”
limitation in claim 6. Mobileye does not challenge the
Board’s findings with respect to the other prior art references.

Note the reasoning:

We agree with iOnRoad that the Board’s finding that
Goodrich teaches the “substantially uniformly approaches
zero” limitation is supported by substantial evidence.
Mobileye’s arguments depend on distinguishing claim 6 of
the ’867 patent, which teaches estimating a time to collision
using a lateral displacement, from Goodrich, which
teaches collision avoidance based on a lateral velocity.
Compare ’867 patent col. 8 ll. 12–21, col. 10 ll. 36–39, with
Goodrich col. 5 ll. 4–9. However, that is a distinction
without a difference


At oral argument, Mobileye argued that a key feature
of the ’867 patent is that it exclusively relies on the lateral
displacement to estimate the time of contact, which is
not directly related to the velocity of the obstacle. See
Oral Arg. at 11:55–12:33. This feature makes a difference,
Mobileye contended, because an object could be
moving at a constant velocity, but the changes in its
lateral displacement with respect to the vehicle could still
decrease or increase in a non-constant manner. See id.;
see also ’867 patent fig. 2B. But Goodrich’s collision
avoidance system does not depend on a constant velocity;
it depends on a constant “lateral velocity.” Goodrich col. 5
l. 6 (emphasis added). Therefore, the record does not
support Mobileye’s attempt to distinguish the prior art.

Monday, June 11, 2018

CAFC fine-tunes SAS Institute Inc. v. Iancu in Nestle Purina PetCare?

The CAFC noted: We agree with the parties that remand is necessary
and appropriate in light of SAS and Polaris.

CAFC examines 285/exceptional case in Stone Basket Innovations

The case concerned attorneys fees under 285, which were denied in this case:

Appellee Stone Basket Innovations, LLC (“Stone”)
sued Appellant Cook Medical LLC (“Cook”) in the U.S.
District Court for the Southern District of Indiana (“District
Court”), alleging infringement of U.S. Patent
No. 6,551,327 (“the ’327 patent”). Following a dismissal
with prejudice, see Stone Basket Innovations, LLC v. Cook
Med. LLC (Stone Basket I), No. 1:16-cv-00858-LJM-TAB
(S.D. Ind. Jan. 11, 2017) (J.A. 1157), Cook filed, inter
alia, a motion for attorney fees pursuant to 35 U.S.C.
§ 285 (2012) (“the § 285 Motion”). The District Court
issued an order denying the § 285 Motion. Stone Basket
Innovations, LLC v. Cook Med. LLC (Stone Basket II), No.
1:16-cv-00858-LJM-TAB, 2017 WL 2655612, at *1 (S.D.
Ind. June 20, 2017).

Cook appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012). We affirm.


This appeal involves two main issues, namely, whether
the District Court erred in its assessment of: (1) the
substantive strength of Stone’s litigating position, and
(2) the alleged pattern of vexatious litigation by Stone.
We address these issues in turn

Deference to the examiner is mentioned:

Moreover, Leslie is listed on the face of the ’327 patent,
see ’327 patent, References Cited, and when prior art
“is listed on the face” of a patent, “the examiner is presumed
to have considered it,” Shire LLC v. Amneal
Pharm., LLC, 802 F.3d 1301, 1307 (Fed. Cir. 2015). We
have explained that, where a party only relies on prior art
considered by an examiner in its invalidity contentions,
that party has the burden to “overcome[e] the deference
that is due to a qualified government agency presumed to
have properly done its job, which includes one or more
examiners who are assumed to have some expertise in
interpreting the references and . . . whose duty it is to
issue only valid patents.” PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (internal
quotation marks and citation omitted). Having been
issued a valid patent, Stone was entitled to a presumption
of good faith in asserting its patent rights against Cook in
the form of a suit for infringement. See Checkpoint Sys.,
Inc. v. All-Tag Sec. S.A., 858 F.3d 1371, 1376 (Fed. Cir.
2017) (stating there is a “presumption that an assertion of
infringement of a duly granted patent is made in good
faith” (internal quotation marks and citation omitted)).
Cook’s invalidity contentions, based on prior art already
considered by the Examiner and with no further explanation,
do not make the substantive strength of Stone’s
position exceptional.

As to inventor testimony:

Moreover, contrary to Cook’s argument, an inventor’s
testimony that “there is nothing novel about [the sheath
movement],” J.A. 1510, taken alone, neither “establishe[s]
the invalidity of the patent on obviousness grounds” nor
constitutes a “material false statement[] to the [US]PTO,”
Appellant’s Br. 27, 28. A post-issuance statement regarding
a single element of a claimed invention does not
establish invalidity because “[w]e must consider the
subject matter sought to be patented taken as a whole.”
Graham v. John Deere Co., 383 U.S. 1, 32 (1966). During
prosecution, the USPTO found that the inventor’s
amendment adding the “handle portion comprising a
sheath movement element, . . . as proposed, would overcome
the rejection.” J.A. 1446. Indeed, duly issued
patents are presumed valid. See 35 U.S.C. § 282(a);
Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011).
It was not necessarily unreasonable for Stone to continue
to rely on the ’327 patent’s presumption of validity despite
the ’327 patent’s inventor testimony. See Q-Pharma, Inc.
v. Andrew Jergens Co., 360 F.3d 1295, 1303 (Fed. Cir.
2004) (concluding, in an appeal from a denial of a fee
award, that a party’s decision to proceed with a lawsuit
was not frivolous “in light of the statutory presumption of

As to litigation conduct:

The District Court was well within its discretion to
factor in Cook’s litigation conduct, because “the conduct of
the parties is a relevant factor under Octane’s totality-ofthe-circumstances
inquiry, including the conduct of the
movant.” Gaymar Indus., Inc. v. Cincinnati Sub-Zero
Prods., Inc., 790 F.3d 1369, 1373 (Fed. Cir. 2015) (footnote
omitted) (considering conduct of the movant in assessing
exceptionality). Such conduct includes Cook’s failure to
send any communication to Stone that highlighted and
set out with precision the specific invalidity argument on
which Cook now relies for its assertion that Stone should
have known its conduct was “clearly unreasonable,”
Appellant’s Br. 17, or “objectively baseless,” id. at 25, so
as to merit an award of attorney fees.

Further, Cook’s failure to provide early, focused, and
supported notice of its belief that it was being subjected to
exceptional litigation behavior further supports the
District Court’s determination that Stone’s litigating
position did not “stand[] out” from others. Octane, 134 S.
Ct. at 1756. Absent any evidence that Stone’s litigating
position was frivolous when filed or at any point before it
filed for dismissal, we are not persuaded the District
Court abused its discretion in determining Stone’s case
did not meet the standard for an award of attorney fees.
Cf. Nat’l Oilwell Varco, L.P. v. Omron Oilfield & Marine,
Inc., 676 F. App’x 967, 973 (Fed. Cir. 2017) (affirming
award of attorney fees where a party was “on notice” of its
potentially frivolous litigating position based on information
provided by the opposing party, yet took no action
to remedy its position).


Moreover, a “party cannot simply hide under a rock,
quietly documenting all the ways it’s been wronged, so
that it can march out its ‘parade of horribles’ after all is
said and done.” Aten Int’l Co. v. Uniclass Tech., No. CV
15-04424-AG (AJWx), slip op. at 5 (C.D. Cal. Mar. 30,
2018). We find this reasoning both persuasive and appli-
cable to this case. Cook waited until October 2016, nearly
a year after service of its invalidity contentions, and nine
months after the inventor’s statements regarding the
sheath’s novelty, before informing Stone that, if Stone
refused to drop its case, “Cook intend[ed] to file . . . a
motion for attorneys’ fees against [Stone], its principals
and its attorneys.” J.A. 1717. During oral argument,
counsel for Cook could not explain why it did not make its
assertion of frivolousness of the claims known to Stone
sooner. See Oral Arg. at 11:37–12:19, http://
2330.mp3 (Q: “That [October 2016] email is . . . the kind
of communication I am talking about, that is, it
says . . . that if you don’t accept our settlement, then [we
will file for attorney fees].” A: “I recognize that . . . .”
Q: “It’s just that [the September 2016 letter] came very
late, . . . and the proceedings ended . . . six weeks later.”
A: “Yes . . . .” Q: “Why didn’t you send something like
that [September 2016 settlement email] before?” A: “I
didn’t think it would produce the result we were likely to
see . . . .” (emphasis added)).


We are further unpersuaded by Cook’s counterargument
that this case is similar to Rothschild, see Appellant’s
Br. 27 (citing 858 F.3d at 1388), in which we
reversed a district court’s denial of a § 285 motion because
the district court failed to consider plaintiff’s “willful
ignorance of the prior art” given counsel for plaintiff
admitted that counsel had “not conducted an analysis of
any of the prior art asserted in [the cross-motion] to form
a belief as to whether that prior art would invalidate” the
patent. Rothschild, 858 F.3d at 1388. In Rothschild, the
defendant also provided notice that the patent was invalid
under 35 U.S.C. §§ 101 and 102, and filed a motion for
judgment on the pleadings. See id. at 1385–86. The
defendant further served plaintiff with a Rule 11 letter
and appended both a draft Rule 11(b) motion and copies of
anticipatory prior art. Id. at 1386. Here, by contrast,
Cook failed to file any Rule 11 motion or motions for
summary judgment, and has not set forth any concrete
evidence that the District Court failed to consider Stone’s
evaluation of its case in light of the evidence of record.

Note footnote 2:

While we affirm the District Court’s ultimate exceptionality
determination, which considered evidence
that Messrs. Mitry and Salmon are in the business of
forming shell entities to extract nuisance settlements, see
Stone Basket II, 2017 WL 2655612, at *6 & n.3, we note
that Messrs. Mitry and Salmon appear to be patent
attorneys who have been authorized to practice law, see
J.A. 60; see also Oral Arg. at 19:05–11 (confirming the
same by Stone’s counsel). Alternative means exist for
punishing activities by licensed attorneys that might
demonstrate unethical conduct. See Oral Arg. at 33:01–18
(agreeing, by counsel, that “there are plenty of remedies
that are available” if a party has been subject to improper

CAFC addresses "videos as prior art" in the precedential Medtronic v. Barry

From the beginning of the decision:

This is a consolidated appeal from two related decisions
of the U.S. Patent and Trademark Office’s Patent
Trial and Appeals Board (Board) in inter partes review
(IPR) proceedings. The Board concluded that the petitioner,
Medtronic, Inc., had not proven that the challenged
patent claims are unpatentable.
We affirm-in-part and vacate-in-part. Substantial evidence
supports the Board’s determination that the challenged
claims would not have been obvious over two
references: 1) U.S. Patent Application No. 2005/0245928
(the ’928 Application); and (2) a book chapter which
appears in Masters Techniques in Orthopaedic Surgery:
The Spine (2d ed.) (MTOS). However, we vacate the
Board’s conclusion that certain other references, i.e., a
video entitled “Thoracic Pedicle Screws for Idiopathic
Scoliosis” and slides entitled “Free Hand Thoracic Screw
Placement and Clinical Use in Scoliosis and Kyphosis
Surgery” (Video and Slides), were not prior art because
the Board did not fully consider all the factors for determining
whether the Video and Slides were publicly accessible.
We thus remand for further proceedings.

The art in question:

Medtronic distributed a video demonstration and a related
slide presentation to spinal surgeons at various
industry meetings and conferences in 2003. J.A. 1719–57.
These video and slide sets depict derotation surgeries that
use pedicle screws and other instrumentation to correct
scoliosis. J.A. 1467–72. The Video consists of a narrated
derotation surgery performed in 2001 by Dr. Lenke, who
testified as Medtronic’s expert in this case. J.A. 1467–70.
The Slides include information about the use of pedicle
screws in derotation surgeries, including numerous pictures
from surgeries performed and x-rays of preoperative
and post-operative spines. J.A. 1735–49. The
Board found that the Video and Slides, although presented
at three different meetings in 2003, were not publicly
accessible and therefore were not “printed publications,”
in accordance with 35 U.S.C. § 102.2 As a result, the
Board, in its final decisions, refused to consider these
materials as prior art in its evaluation of the ’358 and ’072


A CD containing the Video was distributed at three
separate programs in 2003: (1) a meeting of the “Spinal
Deformity Study Group” (SDSG) in Scottsdale, Arizona,
on April 10–13, 2003 (the Scottsdale program); (2) the
Advanced Concepts in Spinal Deformity Surgery meeting
in Colorado Springs, Colorado, on May 18–19, 2003 (the
Colorado Springs program); and (3) the Spinal Deformity
Study Symposium meeting in St. Louis, Missouri, on
November 13–15, 2003 (the St. Louis program). J.A.
2651–52, 2667–67. Binders containing relevant portions
of the Slides were also distributed at the Colorado Springs
and St. Louis programs. J.A. 2667, 4633.
The earliest of the three 2003 programs, the Scottsdale
program, was limited to SDSG members. J.A. 5904–
09. Medtronic’s witness, David Poley, described SDSG as
“a gathering of experts within the field of spinal deformity.”
J.A. 5904. About 20 SDSG members attended the
Scottsdale program. J.A. 2651. The other two programs
were open to other surgeons. J.A. 2668. Medtronic sponsored
these programs as medical education courses. J.A.
2666. Approximately 20 and 55 surgeons attended the
Colorado Springs and St. Louis programs, respectively.
J.A. 2667–68, 4633.

Medtronic argues that the Board committed legal error
in concluding that the Video and Slides were not
sufficiently accessible to the public. According to Medtronic,
the Board’s sole basis for this conclusion rested on
its faulty assumption that the materials were distributed
only to members of the SDSG. See J.A. 12–13. Medtronic
points out two problems with this assumption. First, it
argues that the Board improperly ignored evidence that
the Video and Slides were distributed at programs that
were not limited to SDSG members. Second, Medtronic
contends that, even if the assumption were correct, a
reference need only be accessible to the “interested public”
to satisfy the public accessibility requirement, and that,
members of the SDSG fall squarely within that category.
According to Barry, the Board correctly found that
“members of the Spinal Deformity Study Group, who
received the Video and Slides, were experts voted into
membership by an executive board based on their qualifications
and ability to conduct research.” J.A. 12. Because
the slides were only available to experts who are part of a
group limited to members only, and not those of ordinary
skill, Barry argues that the Video and Slides were not
publicly accessible to ordinarily skilled artisans.
Whether a reference qualifies as a “printed publication”
is a legal conclusion based on underlying factual
determinations. Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014) (citation omitted).

Note footnote 2:

Because the claims at issue in this case have effective
filing dates before March 16, 2013, we apply the
pre-AIA § 102

The CAFC observed:

The determination of whether a document is a “printed
publication” under 35 U.S.C. § 102(b) “involves a caseby-case
inquiry into the facts and circumstances surrounding
the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004). “Because there are many ways in which a reference
may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’
bar under 35 U.S.C. § 102(b).” Blue Calypso, 815 F.3d at
1348 (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
1986)). “A reference will be considered publicly accessible
if it was ‘disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence[]
can locate it.’” Id. (quoting Kyocera Wireless Corp. v. Int’l
Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

The issue of a reference’s public accessibility often
arises in the context of references stored in libraries. In
such cases, we generally inquire whether the reference
was sufficiently indexed or cataloged. Id. Here, we
encounter a different question: whether the distribution of
certain materials to groups of people at one or more
meetings renders such materials printed publications
under § 102(b). We have stated that a printed publication
“need not be easily searchable after publication if it was
sufficiently disseminated at the time of its publication.”
Suffolk Techs., 752 F.3d at 1365 (concluding that an
electronic newsgroup post was sufficiently disseminated
where the newsgroup was populated by those of ordinary
skill in the art and “dialogue with the intended audience
was the entire purpose of the newsgroup postings,” even
though the post was non-indexed and non-searchable).
The parties here do not allege that the Video and Slides
were stored somewhere for public access after the conferences.
Thus, the question becomes whether such materials
were sufficiently disseminated at the time of their
distribution at the conferences. A survey of previous
cases involving distribution of materials at meetings
provides factors relevant to this case.
For example, in Massachusetts Institute of Technology
v. AB Fortia (MIT), a paper that was orally presented at a
conference to a group of cell culturists interested in the
subject matter was considered a “printed publication.”
774 F.2d 1104, 1109 (Fed. Cir. 1985). In that case, between
50 and 500 persons having ordinary skill in the art
were told of the existence of the paper and informed of its
contents by the oral presentation. Id. at 1109. We took
note that the document itself was disseminated without
restriction to at least six persons. Id. at 1108–09. Thus,
whether the copies were freely distributed to interested
members of the public was a key consideration in our

The CAFC found the Board's analysis incomplete:

The record does not show that the Board fully considered
all of the relevant factors. As a threshold matter, the
Board did not address the potentially-critical difference
between the SDSG meeting in Arizona and the programs
in Colorado Springs and St. Louis, which were not limited
to members of the SDSG but instead were attended by at
least 75 other surgeons, collectively. J.A. 2668. Also,
Medtronic’s expert, Dr. Lenke, testified that the materials
were distributed without restrictions at the Colorado
Springs and St. Louis programs. J.A. 1467–68, 3002.
Although the Board found that disclosure to a small group
of experts in the members-only SDSG meeting was insufficient
to compel a finding that the Video and Slides were
publicly available, its analysis was silent on the distribution
that occurred in the two non-SDSG programs.

Further, even if the Board were correct in its assumption
that Medtronic only gave the Video and Slides to the
SDSG members, it did not address whether the disclosures
would remain confidential. The Board found that
SDSG members were experts voted into membership by
an executive board based on their qualifications and
research, but the relatively exclusive nature of the SDSG
membership is only one factor in the public accessibility
analysis. It may be relevant, for example, to consider the
purpose of the meetings and to determine whether the
SDSG members were expected to maintain the confidentiality
of received materials or would be permitted to
share or even publicize the insights gained and materials
collected at the meetings. See, e.g., J.A. 4153 (stating that
the materials were distributed at the SDSG meeting
without restriction or obligation of confidentiality).

Accordingly, whether dissemination of the Video and
Slides to a set of supremely-skilled experts in a technical
field precludes finding such materials to be printed publications
warrants further development in the record. The
expertise of the target audience can be a factor in determining
public accessibility. See In re Klopfenstein, 380
F.3d at 1350–51 (“The expertise of the intended audience
can help determine how easily those who viewed it could
retain the displayed material.”). But this factor alone is
not dispositive of the inquiry. Distributing materials to a
group of experts, does not, without further basis, render
those materials publicly accessible or inaccessible, simply
by virtue of the relative expertise of the recipients. The
nature of those meetings, as well as any restrictions on
public disclosures, expectations of confidentiality, or,
alternatively, expectations of sharing the information
gained, can bear important weight in the overall inquiry.
For these reasons, we vacate the Board’s finding that
the Video and Slides are not printed publications and
remand for further proceedings consistent with this

Saturday, June 09, 2018

YouTube videos and comments to blogs as prior art used by the USPTO?

There is a 8 June 2018 post on the Duets Blog titled Can a YouTube Video Invalidate a Patent? It’s Certainly Possible which contains the text

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public
Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more

As to the USPTO position on YouTube videos as prior art, Patricia E. Campbell wrote in 18 N.C. J.L. & Tech. 187 (2016):

Similarly, in the training materials it distributes to its examiners, the
USPTO states that "otherwise available to the public" is a new catch-all
provision that has no counterpart in pre-AIA law. n122 The types of things that
may qualify as prior art under the AIA include "an oral presentation at a
scientific meeting," "a demonstration at a trade show," "a lecture or speech,"
"a statement made on a radio talk show," and "a YouTube video, Web site, or
other on-line material." n123 Thus, the USPTO apparently believes that, while
these types of disclosures may have been close calls at best under pre-AIA law,
they now constitute prior art if the subject matter is available to the public
in some way.

Note BRADLEY v. Applied Marine, 2014 U.S. Dist. LEXIS 56701 (April 23, 2014) with text

[Applied Marine] contends that Bradley or his attorneys knowingly
and intentionally failed to disclose to the PTO material prior art while applying for the '520 Patent. (Id. ¶ 26.) This
material prior art is a video posted to YouTube (the "Video") showing a sonar mount that includes a mechanism
for preventing and allowing the cross beam to rotate. (Id. ¶ 24.)


For purposes of Bradley's motion, the Court assumes that the YouTube Video constitutes a public use of the claimed invention, that is,
claims 1 through 5 of the '520 Patent. Thus, if the "effective filing date" of the claimed invention is more than a year
after September 9, 2009--the date the Video was posted--the Video is potentially invalidating prior art that should have
been disclosed to the PTO.

As background for the court in Bradley:

In general, a person is not entitled to a patent for a new invention if
the claimed invention was in public use before the effective filing date
of the claimed invention. 35 U.S.C. § 102(a)(1). Section 102(b) provides an
exception for public use by the inventor not more than one year prior to the
applicable filing date. 35 U.S.C. § 102(b)(1).

Of the use of YouTube (and blog comments) as prior art, see DODOCASE VR, INC. v. MERCHSOURCE, LLC, 2018 U.S. Dist. LEXIS 48654 (March 23, 2018):

Defendants then filed three separate PTAB Petitions, challenging each of the three Dodocase Patents, on January 15,
2018. Dkt. No. 23, Am. Compl., ¶ 52. The PTAB Petitions rely on the same three "primary references": (1) U.S. Patent
Publication No. 2013/0141360, which issued as [*8] U.S. Patent 9,423,827 ("Compton"); (2) a comment posted on a
blog entitled, "Why Google Cardboard is Actually a Huge Boost for Virtual Reality" ("Gigaom"); and (3) a YouTube
video entitled, "Use Google Cardboard without Magentometer (Enabling Magnetic Ring Support to Every Device)"
("Tech#"). Id., ¶ 52.
Plaintiff alleges that none of these alleged prior art references invalidate the Dodocase Patents. Id.,
¶¶ 54-62.

On February 2, 2018, Defendants answered the complaint and filed a counterclaim against Plaintiff. Dkt. No. 22. The
counterclaim sought declaratory judgment that each of the three Dodocase Patents is invalid for at least the reasons set
forth in the PTAB Petitions. Id., Counterclaim, ¶¶ 6-26

Of the HVLPO2, LLC controversy, see

2017 U.S. Dist. LEXIS 213978

187 F. Supp. 3d 1097; 2016 U.S. Dist. LEXIS 66758

***An issue to contemplate is the enablement of "prior art" such as YouTube videos. The Antor court holding applied to non-patent printed publications cited by the examiner [689 F.3d 1282; 2012 U.S. App. LEXIS 15637; 103 U.S.P.Q.2D 1555]:

We first address Antor's argument that the Board erred by holding that prior art publications cited by an examiner are
presumptively enabling during prosecution. A prior art reference cannot anticipate a claimed invention "if the allegedly
anticipatory disclosures cited as prior art are not enabled." Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1354 (Fed. Cir. 2003). As we stated in Amgen, both claimed and unclaimed materials disclosed in a patent are
presumptively enabling:

In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an
inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed
disclosures) in that [**9] patent that are at issue. In re [page 1288] Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A. 1980)
("[W]hen the PTO cited a disclosure which expressly anticipated the present invention . . . the burden was shifted to the applicant.
He had to rebut the presumption of the operability of [the prior art patent] by a preponderance of the evidence." (citation omitted)).
The applicant, however, can then overcome that rejection by proving that the relevant disclosures of the prior art patent are not
enabled. Id.

Id. at 1355 (footnote omitted). We then indicated that that presumption applies in the district court as well as the PTO,
placing the burden on the patentee to show that unclaimed disclosures in a prior art patent are not enabling. Id. That
case, however, did not decide whether a prior art printed publication, as distinguished from a patent, is presumptively
enabling during patent prosecution. Id. at 1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we need not and do not so decide today."). As
the issue regarding non-patent publications is squarely before the court today, we now hold that a prior
art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent
applicant or patentee.

As to unusual evidence, recall the story of Ányos István Jedlik , who did not disclose his work on the dynamo until 1861 when he mentioned it in writing in a list of inventory of the university.

Separately, one wonders if posts on Facebook, as prior art, will "cut into" the "first inventor to file" rule.
Recall, way back in the aluminum patent interference, that personal letters were used as evidence:

The same day and the day after, he [ Hall]wrote two letters to his brother George, explaining the theoretical and experimental conditions of his invention, and already putting some questions about filing a patent and then getting up a company.  In July 1886, he and George made the trip to Washington and filed an application at the Patent Office. But he was astounded to learn that the French Paul Héroult had already applied for a US patent for the electrolysis of aluminium in April 1886. This was the beginning of a three years long litigation between the two young inventors. Thanks to the letters to his brother and the testimonies of Julia and Professor Jewett, Hall was finally able to establish that his invention predated Paul Héroult’s application. On April 2, 1889, he was granted the patent he had filed in July 1886, as well as three other patents he had applied for in the meantime

Separately, as IPBiz noted as to the "Sikahema effect," posts on the internet can come and go. Will screenshots become prior art, even when the original has vanished?

"But nothing can ever truly be deleted on the Internet"

Separately, things on the internet can be quite malleable, with changes made after the "posting date."

In a case involving contact to a website, New Jersey, and copyright, note from a post about -- The Adventures of Buckaroo Banzai Across the 8th Dimension --

MGM contends that the services of Rauch and Richter were provided on a "work-made-for-hire" basis," or alternatively, that it was assigned "all exclusive rights under copyright to the screenplay and motion picture, and the characters, plots, themes, dialogue, mood, settings, pace, sequence of events, and other protected elements therein."

The lawsuit adds that MGM and its predecessors had creative control over the Buckaroo Banzai project and contributed copyrightable elements.

MGM also is asserting that Richter violated a publicity provision of his contract by talking to one film website about MGM's lack of rights to the property. Additionally, Richter and Rauch are said to be in breach of this provision via statements made on Facebook.


Sort of reminds one of a line in The Other End of the Line between an Indian call center worker working New Jersey calls and her supervisor:

Worker: "May I please move out of New Jersey? Everyone keeps swearing at me."

"You know the rules. Everyone starts in New Jersey and works their way out."

***UPDATE. June 10, 2018

A further issue is accuracy of items posted on the internet.

CBS Sunday Morning reported:

And now a page from our "Sunday Morning" Almanac: June 10, 1905, 113 years ago today – the day America's first forest fire lookout tower went into operation on top of Squaw Mountain in Maine, with 19-year-old William Hilton as its watchman.



The first fire lookout strictly for protection of American forests was built in 1902 at Bertha Hill near Headquarters, Idaho.



Originally named Thunder Mountain, Bertha Hill has the distinction of being the first forest fire lookout in the Western U.S., in 1902.


Thursday, June 07, 2018

Brain atrophy in multiple sclerosis

Rebecca Spain has been studying lipoic acid as an agent to reduce the rate of brain shrinkage in MS patients. From a report to the
US Dept of Veterans Affairs:

Despite all the breakthroughs in MS research, treatments for secondary progressive MS (SPMS) are still lacking. With the help of many colleagues, I (Dr. Rebecca Spain) conducted a pilot trial at the VA Portland Health Care System to see if the over-the counter supplement, lipoic acid, would help people with SPMS. Lipoic acid is a substance naturally made by our bodies. It has a number of useful actions such as boosting energy production of cells, keeping the immune system from over-reacting, and fighting damaging and aging forces (free radicals) in the body. Although we don’t fully understand what happens to cause SPMS, we do know that a loss of energy, altered immune system, and free radicals may all make SPMS worse. Therefore, it made sense to see if lipoic acid could help slow the worsening of disability in SPMS.


Why is brain atrophy important? Brain atrophy is a normal part of aging that happens to all of us, starting in our mid-20’s. However, in MS this atrophy can happen faster than the normal pace. The increased brain atrophy goes hand in hand with greater MS disability. Therefore, we believe that by slowing the rate of atrophy, we may slow the rate of worsening disability from MS.


MutlipleSclerosisNewsToday discusses the significance of a specific atrophy measure, the shrinkage of previously existent lesions:

However, researchers now suggest that the disappearance of lesions may indicate pathological change, such as atrophy, as well as beneficial alterations, including resolution or repair of myelin (the protective layer of nerve fibers which is typically damaged in MS patients).

Focusing on pathological changes in brain lesions, the scientists examined lesions observed in prior scans, but later replaced by cerebrospinal fluid (the liquid filling the brain and spinal cord). This opposed the traditional approach of examining new lesions, they noted.

“The big news here is that we did the opposite of what has been done in the last 40 years,” Michael G. Dwyer, PhD, first author of the five-year study, said in a press release. “Instead of looking at new brain lesions, we looked at the phenomenon of brain lesions disappearing into the cerebrospinal fluid.

Specifically, investigators compared the rate of lesion loss due to atrophy to the appearance or enlargement of lesions both at the start of the study and at five or 10 years of follow-up.

Conducted at the University at Buffalo (UB) in New York, the five-year study included 192 patients with either the most common form of MS, relapsing-remitting MS (126 patients), progressive MS (48), or clinically isolated syndrome — the first episode of inflammation and loss of myelin, but not yet meeting the criteria for MS.


“We didn’t find a correlation between people who developed more or larger lesions and developed increased disability,” Dwyer said, “but we did find that atrophy of lesion volume predicted the development of more physical disability.”

When dividing the analysis by MS types, the scientists found that patients with relapsing-remitting MS had the highest number of new lesions, while those with progressive MS (the most severe subtype of the disease) had the most pronounced atrophy of brain lesions.

“Atrophied lesion volume is a unique and clinically relevant imaging marker in MS, with particular promise in progressive MS,” the researchers wrote.

“Paradoxically, we see that lesion volume goes up in the initial phases of the disease and then plateaus in the later stages,” said Robert Zivadinov, MD, PhD. Zivadinov is senior author of the five-year study and first author of the 10-year research. “When the lesions decrease over time, it’s not because the patients’ lesions are healing but because many of these lesions are disappearing, turning into cerebrospinal fluid.”


The Buffalo work is not inconsistent with that of Rebecca Spain, and tends to support Spain's strategy.

See also
Lipoic acid and secondary progressive multiple sclerosis

Is Gabibbo a knock-off of "Big Red" of Western Kentucky University?

See the post
Italian court affirms merits of plagiarism suit filed by creator of Western Kentucky's Big Red

Gabibbo is a symbol of a satirical news show Mediaset airs in Italy. Big Red is a red, furry blob created by WKU student Ralph Carey in 1979 [the school sports teams are named Hilltoppers.] For a likeness of Big Red, see SBNation:

As to trademark issues, an animal likeness can be claimed in different use areas (e.g. Tony the Tiger for cereals vs. the Exxon tiger). Can one copy a non-real animal likeness? Must the copying be exact?

As to copyright issues, how exact must the copying be of an otherwise not-preexisting "creature"?


See also

Secondary meaning issue in the Converse case

On 7 June 2018, the CAFC ordered briefing in the Converse v. ITC case:

No later than June 27, 2018, the parties shall file
simultaneous letter briefs, not to exceed 15 double-spaced
pages, addressing the following. Under Aromatique, Inc.
v. Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir. 1994), and
related cases, the presumption of secondary meaning
applies only from the date of registration forward.


1. Was Converse required to show priority in the
mark (i.e., secondary meaning at the time of first
infringement) without regard to the presumption of
validity that would exist if its trademark registration
is valid?
2. What significance does the registration of the mark
or its validity have in these proceedings?
3. Was it necessary or appropriate for the ITC to address
the validity of the registered mark?

CAFC addresses "SAS Institute" issues in PGS Geophysical

PGS Geophysical AS owns U.S. Patent No. 6,906,981, which describes and claims methods and systems for performing “marine seismic surveying” to determine the structure of earth formations below the seabed. WesternGeco, L.L.C., a competitor of PGS’s, filed three petitions requesting inter partes reviews (IPRs) of claims 1– 38 of the ’981 patent. The Patent Trial and Appeal Board of the Patent and Trademark Office (PTO), acting as the PTO Director’s delegate, instituted three IPRs, but it specified for review only some of the claims WesternGeco challenged and only some of the grounds for WesternGeco’s challenges, not all claims or all grounds. In its final written decisions in the IPRs, the Board ruled partly for PGS and partly for WesternGeco on the reviewed claims and grounds. Both PGS and WesternGeco appealed, but WesternGeco then settled with PGS and withdrew, leaving only PGS’s appeals as to certain claims of the ’981 patent that the Board ruled unpatentable for obviousness. The Director intervened to defend the Board’s decisions. 35 U.S.C. § 143.

We affirm. We first conclude that, although SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, we have jurisdiction to address the merits of the Board’s final written decisions and that we need not, and will not, sua sponte revive the “non-instituted” claims and grounds.

We first consider whether we have jurisdiction to address PGS’s appeals and whether, if so, we may and should decide those appeals and do so without sua sponte remanding for the Board to address the claims and grounds that WesternGeco included in its petitions but
that the Board excluded from the IPRs. Both PGS and the Director answer yes to those questions. So do we. The issue arises because of the Supreme Court’s recent decision in SAS, which held that the IPR statute does not permit a partial institution on an IPR petition of the sort presented here. 138 S. Ct. at 1352–54. Neither PGS nor the Director asks for any SAS-based action— whether to block our deciding the appeal on the instituted claims and grounds or to revive the “non-instituted” claims or grounds. Nor has a request for SAS-based relief been filed by WesternGeco, which settled with PGS and withdrew from the appeals long ago.

We will treat claims and grounds the same in considering the SAS issues currently before us. In light of SAS, the PTO issued a “Guidance” declaring that the Board will now institute on all claims and all grounds included in a petition if it institutes at all. PTO, Guidance on the impact of SAS on AIA trial proceedings (Apr. 26, 2018).2 The cases currently in this court, which emerged from the Board under pre-SAS practice, raise certain transition issues. We will address those issues without distinguishing non-instituted claims from non-instituted grounds. Equal treatment of claims and grounds for institution purposes has pervasive support in SAS. Although 35 U.S.C. § 318(a), the primary statutory ground of decision, speaks only of deciding all challenged and added “claim[s],” the Supreme Court spoke more broadly when considering other aspects of the statutory regime, and it did so repeatedly.


We read those and other similar portions of the SAS opinion as interpreting the statute to require a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition, and we have seen no basis for a contrary understanding of the statute in light of SAS. We note that it is a distinct question (not presented here) whether, after instituting on the entire petition, the Board, in a final written decision, may decide the merits of certain challenges and then find others moot, the latter subject to revival if appellate review of the decided challenges renders the undecided ones no longer moot.


Finality is also seen by drawing on the analogy to civil litigation the Court invoked in SAS. What the Board did here is analogous to a situation in which a district court, upon receipt of a two-count complaint, incorrectly dismisses one count early in the case (without prejudice to refiling in that forum or elsewhere) and proceeds to a merits judgment on the second count. Once the second count is finally resolved, there would be a final judgment in that situation, with both counts subject to appeal. The early dismissal would be final as to that claim, see United States v. Wallace & Tiernan Co., 336 U.S. 793, 794 n.1 (1949) (involuntary dismissal without prejudice is reviewable final judgment if it stands alone); H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1383 (Fed. Cir. 2002) (same); Cyprus Amax Coal Co. v. United States, 205 F.3d 1369, 1372 (Fed. Cir. 2000) (same), though not immediately reviewable. Under broadly recognized principles addressing review of partial dispositions once the rest of the case is resolved, see 15A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure §§ 3914.7, 3914.9 (2d ed. 2018), the early dismissal would become reviewable upon “the entry of a judgment adjudicating all the claims,” Fed. R. Civ. P. 54(b).


Having found jurisdiction, we readily conclude that we may decide PGS’s appeals of the Board decisions and that we need not reopen the non-instituted claims and grounds. In this case, no party seeks SAS-based relief. We do not rule on whether a different conclusion might be warranted in a case in which a party has sought SASbased relief from us. We have uncovered no legal authority that requires us sua sponte to treat the Board’s incorrect denial of institution as to some claims and grounds either as a basis for disturbing or declining to review the Board’s rulings on the instituted claims and grounds or as a basis for reopening the IPRs to embrace the non-instituted claims and grounds. Even if the Board could be said to have acted “ultra vires” in refusing to institute reviews of some claims and grounds—and then proceeding to merits decisions concerning the claims and grounds included in the instituted reviews—the Board’s error is waivable, not one we are required to notice and act on in the absence of an appropriate request for relief on that basis. See CBS Broad., Inc. v. EchoStar Commc’ns Corp., 450 F.3d 505, 520 n.27 (11th Cir. 2006) (finding challenge to FCC action as ultra vires waived). S

**As to the obviousness issue-->

As relevant here, “[t]he obviousness inquiry entails consideration of whether a person of ordinary skill in the art would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and . . . would have had a reasonable expectation of success in doing so.” Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 859 (Fed. Cir. 2015) (internal quotation marks and citation omitted). Such a motivation and reasonable expectation may be present where the claimed invention is the “combination of familiar elements according to known methods” that “does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415–16 (2007). Whether there would have been such a motivation on the relevant priority date is an issue of fact, and we review the Board’s finding on the issue for substantial-evidence support. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1021 (Fed. Cir. 2017), cert. denied, 2018 WL 1994802 (U.S. Apr. 30, 2018) (No. 17-349). “Substantial evidence . . . means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938); Skky, Inc., 859 F.3d at 1021.
PGS contends that the Board did not really make the needed motivation finding. It cites decisions in which we have explained that the finder of fact in a case like this must go beyond the question of whether one of ordinary skill in the art could have combined the references at issue (in the way claimed) to answer the question of whether such an artisan would have been motivated to do so. See, e.g., Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). Although the questions are related, clarity in distinguishing them is important, and its absence has sometimes justified a remand. E.g., Personal Web, 848 F.3d at 994. Nevertheless, while “we may not supply a reasoned basis for the agency’s action that the agency itself has not given, we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.” Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281, 286 (1974) (citing SEC v. Chenery Corp., 332 U.S. 194, 196–97 (1947)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016). And in this case, we think that, in the end, the Board did not fail to address the motivation question. We understand the Board to have answered that question. Immediately after stating that PGS “does not dispute Petitioner’s assertion that the combination of Beasley and Edington describes each element of independent claim 1, but merely asserts that an ordinarily skilled artisan would not have combined Beasley and Edington,” it concluded: “Accordingly, upon reviewing the record developed during trial, we are persuaded by Petitioner’s position regarding the relevant teachings of Beasley and Edington and address in detail only the disputed issues relating to the combinability of Beasley and Edington.” 309 Final Decision, 2016 WL 3193820, at *11. The Board also affirmatively focused on the “other types of encoding” language of Beasley as an affirmative suggestion to look elsewhere, especially to a time-delay reference, in light of Beasley’s contemplation of small time delays between firing seismic sources, as we have discussed.

“[T]he motivation to modify a reference can come from the knowledge of those skilled in the art, from the prior art reference itself, or from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). We are left with no meaningful doubt about the Board’s motivation finding and its basis.