Tuesday, July 31, 2018

IBM wins jury verdict against GroupOn

On June 29, 2018, a jury awarded IBM an $82.5 million verdict against GroupOn.

From the Chicago Tribune:

Two of the patents came out of the Prodigy online service, which started in the late 1980s and predated the web. Another is related to preserving information in a continuing conversation between clients and servers. The fourth is related to authentication and expires in 2025.

IBM argued during the two-week trial that companies have paid from $20 million to $50 million for licenses to use its thousands of patents, including tech giants such as Amazon.com, Alphabet Inc.'s Google, Facebook, Twitter and LinkedIn Corp. Groupon didn't seek IBM's permission.

The trial marked the first time in at least 20 years that a patent lawsuit filed by IBM has made it to the start of a jury trial, Shelton said.

The case was closely watched in the online advertising and marketing sector. At least 10 companies -- including Go Daddy Operating Co., LinkedIn and Twitter -- asked that information related to their prior IBM patent deals not be made public.

Recent reforms designed to fight abuses in the patent system have made it harder for companies to protect their intellectual property, John Desmarais, an IBM lawyer, said in an interview after the verdict. That's encouraged firms to resist IBM's demand for a licensing fee.

link: http://www.chicagotribune.com/business/ct-biz-ibm-groupon-ecommerce-patent-suit-20180730-story.html

Monday, July 30, 2018

Issue of plagiarizing a Facebook post

Boston-based Sonya Larson wrote a story “The Kindest” about kidney donation. Los Angeles writer Dawn Dorland, who lived in Boston until 2011, made a kidney donation, and posted on Facebook about it. Larson was a member of a private Facebook group to which Dorland posted updates for friends and family about her donation process. Dorland believes some of "The Kindest" is copied from Dorland's Facebook posts.

From the Boston Globe:

Dorland said that some lawyers told her that the story might constitute an infringement of intellectual property law.

But lawyers consulted by the Globe say that while there appear to be strong similarities between the Facebook post and the note in the story, Dorland’s case could be a difficult one to win.

According to Joseph Liu, a professor at Boston College Law School, Larson could mount two defenses: de minimis, or the idea that the extent of the copying is minimal so not worthy of punishment; and fair use, a doctrine of copyright law that allows for materials to be copied on a limited basis without permission from the original owner for certain educational or artistic purposes.

link: https://www.bostonglobe.com/arts/2018/07/26/inspiration-plagiarism-writing-hackles-raised-boston-dispute/YxzQNqAj6SY7jWElr8MxuL/story.html

Filing challenge to PTAB outcome in district court under § 145 will not incur attorneys' fees

The en banc CAFC court in NANTKWEST, INC. v. IANCU determined that 35 U.S.C. § 145 does not authorize an award of attorneys' fees, in accord with the district court, but not in accord with the decision of the three judge panel, which had supported the position of the PTO:

Our court voted sua sponte to hear the appeal en banc and vacated the panel’s judgment. NantKwest, Inc. v. Matal, 869 F.3d 1327 (Fed. Cir. 2017). We requested briefing on a single question: whether the panel “correctly determine[d] that 35 U.S.C. § 145’s ‘[a]ll the expenses of the proceedings’ provision authorizes an award of the [PTO’s] attorneys’ fees.” Id. at 1327. In addition to the parties’ briefs and argument, we received seven amicus briefs, none of which support the PTO’s position. We now affirm the judgment of the district court.


When the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“Board”) affirms an examiner’s rejection of a patent application, § 145 of the Patent Act permits the disappointed applicant to challenge the Board’s decision in district court. Applicants who invoke § 145 are required by statute to pay “[a]ll the expenses of the proceedings” incurred by the U.S. Patent and Trademark Office (“PTO”) in defending the Board’s decision, regardless of the outcome. Historically, the agency relied on this provision to recover sums it spent on travel and printing and, more recently, expert witnesses. Now, 170 years after Congress introduced § 145’s predecessor, the agency argues that § 145 also compels applicants to pay its attorneys’ fees. We hold that it does not, for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a “specific and explicit” directive from Congress. The phrase “[a]ll the expenses of the proceedings” falls short of this stringent standard. Accordingly, we affirm the district court’s judgment.

Of part of the PTO argument, the CAFC noted a conspicuous omission:

In a similar vein, the PTO relies on a single sentence from Arlington Central School District Board of Education v. Murphy, 548 U.S. 291 (2006). See Appellant Br. 39. There, the Individuals with Disabilities Education Act (“IDEA”) permitted courts, in their discretion, to award “reasonable attorneys’ fees as part of the costs” to the prevailing party. Arlington Central, 548 U.S. at 297 (quoting 20 U.S.C. § 1415(i)(3)(B)). Respondents asserted that “costs” should be interpreted to cover all the costs of an IDEA proceeding, including expert fees. The Court rejected respondents’ argument, noting that the statute’s “use of this term of art [‘costs’], rather than a term such as ‘expenses,’ strongly suggests that § 1415(i)(3)(B) was not meant to be an open-ended provision that makes participating States liable for all expenses incurred.” Id. The PTO seizes on this language, but it omits the end of the sentence, which provides examples of the “open-ended . . . expenses” envisioned by the Court: “travel and lodging expenses or lost wages due to time taken off from work.” Id. Absent from the list is a reference to attorneys’ fees. Thus, Arlington Central does not address the interpretation of a statute containing the word “expenses” in light of the American Rule. Nor does it stand for the proposition that the ordinary meaning of “expenses” is broad enough to include “attorneys’ fees.”

Of the use of legislative history:

The dissent next invokes “legislative history and the purpose of § 145” for displacing the American Rule. Dissent Op. 10–13. At the outset, we question the role of legislative history in this context where the very point of the “specific and explicit” standard is to demand clarity in the statute’s text. See Baker Botts, 135 S. Ct. at 2164 (“We have recognized departures from the American Rule only in ‘specific and explicit provisions for the allowance of attorneys’ fees under selected statutes.’” (quoting Alyeska Pipeline, 421 U.S. at 260)); cf. Conroy v. Aniskoff, 507 U.S. 511, 519 (1993) (Scalia, J., concurring) (“The law as it passed is the will of the majority of both houses, and the only mode in which that will is spoken is in the act itself . . . .” (emphasis in original) (quoting Aldridge v. Williams, 44 U.S. (3 How.) 9, 24 (1844))). Where the textual indications are unclear, we are skeptical of what legislative history and policy could add to satisfy this standard. But even if we set these concerns aside, the dissent’s legislative history fails to advance its interpretation of § 145. The dissent points to an expense reimbursement provision in the 1870 amendments to the patent laws, which it notes is similar to the language employed by Congress in § 145’s predecessor. Dissent Op. 11.

Saturday, July 28, 2018

Linear gadolinum imaging agents and clear and convincing evidence

In this post, we look at how different medical bodies, specifically those in Europe (the European Medicines Agency (EMA) ) and in the United States (the FDA) look at evidence that might be considered "clear and convincing." Specifically, in the context of linear gadolinium imaging agents, they have reached different conclusions. But first, a quick trip to the law of "clear and convincing" evidence.

In Halo v. Zimmer, 136 S. Ct. 1923; 195 L. Ed. 2d 278; 2016 U.S. LEXIS 3776; 84 U.S.L.W. 4386; 118 U.S.P.Q.2D (BNA) 1761 , the U.S. Supreme Court delved into the evidentiary standard of clear and convincing evidence:

The Seagate test is also inconsistent with §284 because it requires clear and convincing evidence to prove recklessness. On this point Octane Fitnessis again instructive. There too the Federal Circuit had adopted a clear and convincing standard of [***20] proof, for awards of attorney's fees under §285 of the Patent Act. Because that provision supplied no basis for imposing such a heightened standard of proof, we rejected it. See Octane Fitness, 572 U.S., at ___, 134 S. Ct. 1749, 188 L. Ed. 2d 816. We do so here as well. Like §285, §284 "imposes no specific evidentiary burden, much less such a high one." Ibid. And the fact that Congress expressly erected a higher standard of proof elsewhere in the Patent Act, see 35 U.S.C. §273(b), but not in §284, is telling. Furthermore, nothing in historical practice supports a heightened standard. As we explained in Octane Fitness, "patent-infringement litigation has always been governed by a preponderance of the evidence standard." 572 U.S., at ___, 134 S. Ct. 1749, 188 L. Ed. 2d 816. Enhanced damages are no exception.

The Supreme Court did not get into definitions. Earlier, in 1983, the CAFC in SSIH, 718 F.2d 365 , gave some explanatory text:

A particular quantum or burden of proof at the trial level (standard of proof) is generally a judge-made requirement shaped in accordance with considerations of due process and/or the importance of certain facts. Herman & MacLean v. Huddleston, 459 U.S. 375, 103 S. Ct. 683, 691, 74 L. Ed. 2d 548 (1983). As explicated in Addington v. Texas, 441 U.S. 418, 423-25, 60 L. Ed. 2d 323, 99 S. Ct. 1804 (1979), three levels of proof are generally recognized: preponderance (or weight) of the evidence, clear and convincing proof, and beyond a reasonable doubt.


We probably can assume no more than that the difference between a preponderance of the evidence and proof beyond a reasonable doubt probably is better understood than either of them in relation to the intermediate standard of clear and convincing evidence. Nonetheless, even if the particular standard-of-proof catchwords do not always make a great difference in a particular case, adopting a "standard of proof is more than an empty semantic exercise. " Tippett v. Mar-yland, 436 F.2d 1153, 1166 (CA4 1971) (Sobeloff, J., concurring in part and dissenting in part), cert. dismissed sub nom. Murel v. Baltimore City Criminal Court, 407 U.S. 355, 32 L. Ed. 2d 791, 92 S. Ct. 2091 (1972). [Footnote omit-ted.]

Within Pfizer v. Apotex, 480 F.3d 1348; 2007 U.S. App. LEXIS 6623; 82 U.S.P.Q.2D (BNA) 1321 , one has the text:

Although an exact definition is elusive, "clear and convincing evidence" has been described as evidence that "place[s] in the ultimate factfinder an abiding conviction that the truth of its factual contentions are highly probable." Colorado v. New Mexico, 467 U.S. 310, 316, 104 S. Ct. 2433, 81 L. Ed. 2d 247 (1984) (internal quotations omitted).

In New Jersey, the Supreme Court of New Jersey has supplied a useful definition of clear and convincing evidence as that which

produce[s] in the mind of the trier of fact a firm belief or conviction as to the truth of the allegations sought to be established, evidence so clear, direct and weighty and convincing as to enable [the factfinder] to come to a clear conviction, without hesitancy, of the truth of the precise facts in issue.

In re Jobes, 108 N.J. 394, 529 A.2d 434, 441 (N.J. 1987)

With these definitions in mind, one has some questions about the safety of linear gadolinium contrast agents.

From ITNonline:

August 29, 2017 — The European Medicines Agency (EMA) issued a final opinion that recommended restricting the use of some linear gadolinium-based contrast agents (GBCAs) and suspending the marketing authorizations of others, while supporting the continued use of macrocyclic GBCAs.

Importantly, the EMA confirmed that “there is currently no evidence that gadolinium deposition in the brain has caused any harm to patients; however EMA has recommended restrictions for some intravenous linear agents in order to prevent any risk that could potentially be associated with gadolinium brain deposition.”

From Eur Radiol. 2018 Apr;28(4):1579-1584. doi: 10.1007/s00330-017-5065-8. Epub 2017 Oct 23:

The Pharmacovigilance Risk Assessment Committee (PRAC) of the European Medicines Agency (EMA) earlier this year recommended to suspend some marketing authorisations for Gadolinium Containing Contrast Agents (GCCAs) based on linear chelators due to the potential risk of gadolinium retention in the human body. These recommendations have recently been re-evaluated by EMA's Committee for Medicinal Products for Human Use (CHMP), and confirmed the final opinion of the European Medicines Agency. This editorial provides an overview of the available GCCAs and summarises the recent evidence of gadolinium retention. Moreover, a critical appraisal of the strengths and limitations of the scientific evidence currently available on gadolinium retention is given.

• EMA recommended suspension of some EU marketing authorisations of four linear GCCAs. • Brain MRI findings indicating gadolinium retention have been confirmed by mass spectrometry. • Current scientific evidence for gadolinium retention has several methodological limitations. • No clear clinical evidence exists indicating that gadolinium retention causes neurotoxicity. • Long-term safety of GCCAs, however, remains unclear.

See also Gadolinium should go: Risk experts want MRI contrast agent pulled off market,

The first committee, the PRAC, found convincing evidence of accumulation of gadolinium in brain tissue many months after the last contrast MRI was performed. (...) It noted deposits had been found in other organs and tissues and non-clinical studies had shown it to be harmful in tissues.

See also Neeley et al., Br J Radiol. July 2016; 89(1063): 20160027. Acute side effects of three commonly used gadolinium contrast agents in the paediatric population

***As to the impact of gadolinium being retained in the brain on LATER brain MRIs, note

Recent papers have demonstrated that gadolinium accumulation with concomitant T1 shortening
can be seen in the brains of patients who have received multiple doses of gadolinium contrast.
The effect is most noticeable in the globus pallidi, thalami, pons, and dentate nuclei.
The magnitude of the effect is proportional to the cumulative lifetime dose administered
and occurs without renal or hepatic dysfunction.

link: http://mriquestions.com/gd-accumulation.html

See also: http://mriquestions.com/paramagnetic-relaxation.html

Thursday, July 26, 2018

Judge Newman's dissent in Zup v. Nash: how do secondary considerations fit into obviousness analysis?

The outcome was affirmance of invalidity:

Appellant ZUP, LLC (“ZUP”) appeals the decision of
the United States District Court for the Eastern District
of Virginia, which granted summary judgment in favor of
Appellee Nash Manufacturing, Inc. (“Nash”). The district
court invalidated claims 1 and 9 of U.S. Patent
No. 8,292,681 (“the ’681 patent”) as obvious and, in the
alternative, held that Nash does not infringe claim 9. We
affirm the district court’s holding that claims 1 and 9 are
invalid as obvious and do not reach the infringement

Judge Newman began her dissent:

A wakeboard is not a complicated device, but its enjoyment
in water sports has long challenged weak and
inexperienced riders attempting to stand up on a fastmoving
board while bouncing on wake.1 Sportsman Glen
Duff knew the problem and, after four years of experimentation,
he devised a wakeboard that facilitated usage
regardless of a rider’s strength or athleticism. He obtained
U.S. Patent No. 8,292,681 (“the ’681 Patent”),
assigned to ZUP, LLC. Mr. Duff exhibited his “ZUP
Board” at the Surf Expo, a trade show for the water sports
industry. Thereafter ZUP and Keith Parten, President
and CEO of Nash Manufacturing, Inc. (“Nash”), a leading
producer of water sports equipment including wakeboards,
discussed a possible commercial arrangement.
Parten told Duff: “You have a great product by the way!”
Maj. Op. at 14. However, commercial discussions broke
down, and soon thereafter Nash introduced a similar
wakeboard, the “Versa Board,” the product that is
charged with infringement.

The district court granted summary judgment of patent
invalidity, and alternatively summary judgment of
non-infringement. There was no trial. My colleagues
affirm the judgment of invalidity, and do not reach infringement.
These rulings, however, were rendered on
incorrect application of the law of obviousness and without
regard to the principles of summary judgment.

Judge Newman noted:

Summary judgment of patent invalidity requires that
all reasonable factual allegations are resolved in favor of
the non-movant, Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1323 (Fed. Cir. 2002) (citing Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)), and that
when so resolved, there is clear and convincing evidence
that the patented invention would have been obvious to a
person of ordinary skill. Microsoft Corp. v. i4i Ltd. P’ship,
564 U.S. 91, 95 (2011). The district court strayed from
these long-recognized rules.
Although the prior art is close, the novelty of the ’681
Patent’s wakeboard is not disputed. On the issue of
obviousness, my colleagues apply an incorrect analysis of
the standard factual considerations, as set forth in Graham
v. John Deere Co., 383 U.S. 1 (1966). The four Graham
factors are: (1) the scope and content of the prior art;
(2) the differences between the claims and the prior art;
(3) the level of ordinary skill in the field of the invention;
and (4) objective considerations of obviousness. Id. at 17–
18; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
399 (2007) (reaffirming the four Graham factors).
My colleagues hold that only three of the four Graham
factors are considered in order to establish a prima facie
case of obviousness, and that the fourth Graham factor is
applied only in rebuttal, whereby the fourth factor must
be of sufficient weight to outweigh and thereby rebut the
first three factors. Maj. Op. at 15. However, as stated in
Apple Inc. v. Samsung Electronics Co., 839 F.3d 1034,
1048 (Fed. Cir. 2016) (en banc), “determination of whether
a patent claim is invalid as obvious under § 103 requires
consideration of all four Graham factors, and it is error to
reach a conclusion of obviousness until all those factors
are considered.”


The requirement that the secondary considerations
“overcome” the conclusion based on the first three factors
is incorrect, for the obviousness determination must be
based on the invention as a whole including the evidence
of all four Graham factors. It is incorrect to convert the
fourth Graham factor into “rebuttal,” requiring it to
outweigh the other three factors. Consideration of the
objective indicia “is not just a cumulative or confirmatory
part of the obviousness calculus, but constitutes independent
evidence of nonobviousness.” Ortho-McNeil
Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365
(Fed. Cir. 2008). This evidence must be considered together
with the other evidence, and not separated out and
required to outweigh or rebut the other factors. All of the
factors must be considered in connection with proving
invalidity by clear and convincing evidence. Apple Inc. v.
Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016)
(en banc).

On the proper analysis, summary judgment of obviousness
was improperly granted. See Surowitz v. Hilton
Hotels Corp., 383 U.S. 363, 373 (1966) (“The basic purpose
of the Federal Rules is to administer justice through fair
trials, not through summary dismissals as necessary as
they may be on occasion.”).

Boston University loses LED case to Everlight at CAFC for lack of enablement

In finding against Boston University ["BU"], the CAFC included a "be careful what you wish for" admonition:

We note finally that, to some extent, BU created its
own enablement problem
. BU sought a construction of “a
non-single crystalline buffer layer” that included a purely
amorphous layer. See J.A. 253–54 (reciting BU’s proposed
construction as “a layer of material that is not monocrystalline,
located between the first substrate and the first
growth layer” (emphasis added)). Having obtained a
claim construction that included a purely amorphous
layer within the scope of the claim, BU then needed to
successfully defend against an enablement challenge as to
the claim’s full scope. See Liebel-Flarsheim, 481 F.3d at
1380. Put differently: if BU wanted to exclude others
from what it regarded as its invention, its patent needed
to teach the public how to make and use that invention.
That is “part of the quid pro quo of the patent bargain.”
Sitrick, 516 F.3d at 999 (quoting AK Steel, 344 F.3d at

The discussion of enablement by the CAFC is lengthy, and interesting:

A patent’s specification must “contain a written description
of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to
which it pertains . . . to make and use the same.” 35
U.S.C. § 112 para. 1 (2006).3 Whether a claim satisfies
§ 112’s enablement requirement is a question of law we
review de novo; however, in the context of a jury trial, we
review the factual underpinnings of enablement for
substantial evidence. See Koito Mfg. Co. v. Turn–Key–
Tech, LLC, 381 F.3d 1142, 1149 (Fed. Cir. 2004). Facts
supporting an invalidity conclusion must be shown by
clear and convincing evidence. AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1238–39 (Fed. Cir. 2003).

“[T]o be enabling, the specification of a patent must
teach those skilled in the art how to make and use the full
scope of the claimed invention without ‘undue experimentation.’”
Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997) (alteration in original) (quoting
In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)).
Enablement is determined as of the patent’s effective
filing date. E.g., Plant Genetic Sys., N.V. v. DeKalb
Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).4

Defendants contend that claim 19 is not enabled because
the ’738 patent’s specification does not teach one of
skill in the art how to make the claimed semiconductor
device with a monocrystalline growth layer grown directly
on an amorphous buffer layer.

In fact, Defendants’ expert testified that it is impossible
to epitaxially grow a monocrystalline film directly on
an amorphous structure. See J.A. 2311–12. BU’s expert
agreed. J.A. 2274; see J.A. 17–18 (district court acknowledging
the experts’ agreement on this issue). We can
safely conclude that the specification does not enable
what the experts agree is physically impossible.

Defendants also argue that the specification teaches
only epitaxy. BU disagrees and contends that the ’738
patent does not teach epitaxy. Initially, BU’s contention
is difficult to credit.
The ’738 patent’s specification is
concise—just over four columns of text—and focuses on
epitaxy. Indeed, it is saturated with the word “epitaxy” or
variants thereof. ’738 patent Abstract (“This invention
relates to a method of preparing highly insulating GaN
single crystal films in a molecular beam epitaxial growth
chamber.”), col. 1 ll. 12–15 (“This invention relates to a
method of preparing monocrystalline gallium nitride thin
films by electron cyclotron resonance microwave plasma
assisted molecular beam epitaxy (ECR-assisted MBE).”),
col. 2 ll. 9–11 (“The method accorrding [sic] to this invention
for preparing highly insulating near-intrinsic monocrystalline
GaN films uses ECR-assisted MBE.”), col. 2 ll.
14–17 (“A film is epitaxially grown in a two step process
. . . .”), col. 3 ll. 38–39 (“The ECR-MBE system used in this
invention is shown in FIG. 1.”).
BU nonetheless explains that the ’738 patent does not
teach epitaxy because epitaxy involves a crystalline layer
on top of another crystalline layer. Therefore, according
to BU, a crystalline layer on top of an amorphous structure
is not “epitaxy.” See Cross-Appellant’s Br. 58 (citing
its expert’s testimony at J.A. 2382–83). The district court
relied on this argument and related testimony in denying
JMOL. J.A. 18–19 (recounting BU’s expert’s testimony
that the ’738 patent does not teach epitaxy—“strictly
speaking”). But this semantic argument does not help us
determine where the specification teaches growing a
monocrystalline layer directly on an amorphous layer—if
not by “epitaxy,” by any other name. See Sitrick v.
Dreamworks, LLC, 516 F.3d 993, 1000 (Fed. Cir. 2008)
(“An enablement analysis begins with the disclosure in
the specification.”).

Nor does BU direct us to any specific passage of the
specification that purportedly teaches how to grow a
monocrystalline layer directly on an amorphous layer. It
instead relies on its expert’s testimony concerning the
specification. For example, BU cites testimony that by
following the “boundaries within the teachings of the ’738
patent, you could realize with not much experimentation
. . . the amorphous buffer layer, or some sublayer of the
amorphous buffer layer, and then a monocrystalline

gallium nitride [layer] on top.” Cross-Appellant’s Br. 59
(alterations in original) (quoting J.A. 2269). This testimony
is entirely conclusory and therefore insufficient.
See, e.g., MobileMedia Ideas LLC v. Apple Inc., 780 F.3d
1159, 1172 (Fed. Cir. 2015) (“Conclusory statements by an
expert . . . are insufficient to sustain a jury’s verdict.”).
The same goes for BU’s expert’s testimony that the “elements
of the claim itself teach[] how to do that accurately.”
Cross-Appellant’s Br. 59 (quoting J.A. 2265).
BU also relies on testimony of the ’738 patent’s inventor
concerning “lateral epitaxial growth.”5 Id. (citing
J.A. 4063–64, 4066–67). BU characterizes this testimony
and this phenomenon as demonstrating that the ’738
patent’s buffer layer can be purely amorphous with a
monocrystalline GaN growth layer on top. BU glosses
over key details in this testimony. The inventor described
“lateral epitaxial overgrowth” as a phenomenon whereby
a crystal grows faster in the lateral direction than in the
vertical direction. J.A. 4062. But he described this phenomenon
in the context of a monocrystalline layer growing
on a buffer layer that had at least partially
crystallized. J.A. 4063–64. In BU’s relied-upon testimony,
the inventor never described a monocrystalline growth
layer on an amorphous buffer layer without also mentioning
some level of crystallinity in the buffer layer. See J.A.
4063–64, 4066–67.

**Separately, from Blawgsearch on 26 July 2018:

Tuesday, July 24, 2018

Sears prevails in "bionic wrench" case

In Loggerhead v. Sears, 2018 U.S. Dist. LEXIS 121457 (decided 20 July 2018), Sears won on summary judgment in a procedurally unusual case.

Some text from the case:

Nothing in the prosecution history casts doubt on the meaning of LoggerHead's attempts to distinguish its proposed claims from the prior art. The company's disclaimer was not a mere "isolated assertion," as it now suggests. Unlike the patentee in Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1343 (Fed. Cir. 2009), who "never repeated the allegedly disclaiming statements and instead offered alternative reasons to overcome the . . . prior art," LoggerHead repeated its disclaiming statements to the patent examiner two years later, with only minor changes in wording.11 Nor would a competitor reading the prosecution history doubt the meaning or significance of LoggerHead's disclaiming statements merely because the company also presented other arguments in response to the patent examiner's rejections. Under well-established Federal Circuit law, "an applicant's argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well." Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed. Cir. 2013) (quoting Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007)). See also Southwall Techs., 54 F.3d at 1583 ("Clear assertions made during prosecution in support of patentability, whether or not actually required to secure allowance of the claim, may . . . create an estoppel."). Even if this were not the law, a competitor reading the prosecution history in this case would note that the patent examiner did cite Buchanan's lack of an arm portion as a reason for allowing LoggerHead's claims. (See PSAMF ¶ 36.)

Finally, LoggerHead suggests that Judge Darrah's conclusion that prosecution history estoppel did not apply at the claim-construction stage necessarily precludes this court from reaching the opposite conclusion now. According to LoggerHead, this court's disagreement with Judge Darrah would prove that LoggerHead's statements are susceptible to multiple meanings—and thus are not clear and unmistakable. But Judge Darrah does not appear to have considered the language from the prosecution history that this court finds to be clear and unmistakable. Rather, the only language he discussed was LoggerHead's statement pointing out that the examiner failed to identify Buchanan's arm portion. See LoggerHead, 2015 U.S. Dist. LEXIS 114144, 2015 WL 5118063, at *4. Nor did Judge Darrah consider, as this court does now, whether LoggerHead disclaimed a gripping element without any arm portion at all. Rather, he considered whether LoggerHead disclaimed a "nonprojecting" arm portion. Id. His conclusion—that LoggerHead's statement about the examiner's failure to identify Buchanan's arm portion did not clearly and unmistakably disclaim a gripping element with a "nonprojecting" arm portion (whatever that may be)—is not necessarily inconsistent with this court's conclusion that LoggerHead did clearly and unmistakably disclaim a gripping element without any arm portion at all.

A competitor would reasonably conclude from the prosecution history of the '470 patent that LoggerHead clearly and unmistakably disclaimed gripping elements without arm portions. LoggerHead is estopped from reclaiming that subject matter under the doctrine of equivalents.

From the Chicago Tribune:

Apex had designed the Craftsman wrench to avoid infringing on the LoggerHead patent, said Mark Sernel, an attorney for Apex and Sears.

A federal judge who took over the case after the prior judge died last year agreed with Sears and Apex and ordered a new trial. Both sides asked the court to reconsider and decide the case without a new trial.

U.S. District Judge Rebecca Pallmeyer sided Friday with Sears and Apex “because no reasonable jury could conclude” that the Craftsman wrench infringed on LoggerHead’s patents, she wrote in a court order.

“Sears is pleased with the court’s decision and looks forward to putting this case behind us,” spokesman Howard Riefs said in an email.

LoggerHead’s attorney could not be reached immediately Tuesday for comment.

link: http://www.chicagotribune.com/business/ct-biz-sears-bionic-wrench-patent-lawsuit-20180724-story.html

Monday, July 23, 2018

DIRTT wins at CAFC on SAS issue

DIRTT Environmental Solutions, Ltd. appeals from a
final written decision of the Patent Trial and Appeal
Board (“Board”) in an inter-partes review proceeding,
finding that Allsteel Inc. (“Allsteel”) had shown by a
preponderance of the evidence that claims 1, 4–7, 9, 10,
14–20, and 25 of U.S. Patent No. 8,024,901 are unpatentable
under 35 U.S.C. § 103. Allsteel Inc. v. DIRTT Envtl.
Sols. Ltd., No. IPR2015-01691, 2017 WL 379367 (P.T.A.B.
Jan. 19, 2017). Because the Board’s final written decision
addresses fewer than all claims challenged in Allsteel’s
petition to institute inter-partes review, and the parties
have not waived their objections to the Board’s failure to
address the non-instituted claims, we vacate and remand
to allow the Board to issue a final written decision consistent
with SAS Institute Inc. v. Iancu, 138 S. Ct. 1348

Topic of patent trolls arises in IBM/GroupOn case

From CNBC story At patent trial, Groupon casts IBM as shaking down other tech companies :

Hadden also questioned McBride about IBM sales to so-called "patent trolls," who hold intellectual property solely for the purpose of filing lawsuits and have been widely criticized in the tech industry.

A lawyer for IBM objected to the questioning, saying it was irrelevant, but the judge instructed McBride to answer.

McBride said IBM was "selective" about who it sells patents to and strikes such deals in part to protect itself from trolls.

"If a patent troll wants to buy a patent from us then we insist on a covenant not to sue IBM," McBride said. "We achieve some level of protection from being sued ourselves."

Dudas, IBM's toilet queue patent, and patent quality

IBM's 7,407,089 "paper or plastic" patent

North Carolina reporter dismissed over allegations of plagiarism

US News picked up an AP story on the dismissal of reporter Anne Blythe from the News & Observer over allegations of plagiarism.

A post at the News & Observer on the matter included the text

We are appending a note to each of these online stories (listed below) explaining that information was improperly taken from sources without attribution. We will add disclosures to any other stories that surface and are shown to have similar flaws.


While we rely on other writers and publications to inform our research and reporting process, we have an obligation to attribute facts and information that we glean from those sources and to ensure that the words we write and publish are our own.

We take violations of our core values seriously, and I apologize to both our readers and to the writers and publications from whose work passages were taken.

Robyn Tomlin

Executive Editor

Link: https://www.newsobserver.com/latest-news/article215128000.html#storylink=cpy

As an example, a story initially published in June 2018 now includes the text:

Editor’s Note: Since publication, the N&O has learned that passages from this story were taken in large part or in whole from ”Two Fyre Festival attendees just won $5 million for their trauma” by Vice News without attribution. This is a violation of our standards. We apologize to our readers.

link: https://www.newsobserver.com/news/local/article214130679.html

Sunday, July 22, 2018

CBS Sunday Morning cover story on 22 July 2018 is "How Rude!"

Martha Teicher did the cover story on Sunday Morning on July 22, 2018 titled "How Rude!," with a heavy dose of recent
political commentary.

In the following "Face the Nation" show, former secretary of state John Kerry was asked to respond to comments made by
President Trump about former Vice President Biden during an interview with CBS anchor Jeff Glor:

In an exclusive interview with "CBS Evening News" anchor Jeff Glor, the president said he would hold Vladimir Putin accountable because he's Russia's leader. Glor also asked him about the 2020 presidential election.

Here is a part of their exchange:

JEFF GLOR Let me ask you about 2020.


GLOR: Who do you think your Democratic opponent will be? Joe Biden says he'll make a decision by January.

TRUMP: Well, I dream, I dream about Biden. That's a dream. Look, Joe Biden ran three times. He never got more than 1 percent and President Obama took him out of the garbage heap, and everybody was shocked that he did. I'd love to have it be Biden. I think I'd like to have any one of those people that we're talking about…You know, there's probably – the group of seven or eight right now. I'd really like to – I'd like to run against any one of them, but Biden never by himself could never do anything. President Obama took him, made him vice president and he was fine. But you go back and look at how he succeeded in running, when he ran two or three times, I don't think he ever break -- broke one. He was at the one or less level, 1 percent or less level.

link: https://www.cbsnews.com/news/trump-says-joe-biden-dream-opponent-2020-election-jeff-glor-interview/

Kerry declined to respond to the question asked, but did indicate Trump needed to address more significant issues.

David Pogue did a story on the birth of Intel, which was incorporated on July 18, 1968. Noyce and Moore were mentioned, but there was no discussion of the story of the traitorous eight. Noyce was credited with inventing the integrated circuit, with no discussion of the debate about "who invented" the IC, or the patent wars thereon. There was mention of the quotes "don't be encumbered by the past" and "only the paranoid survive."

The choice for Almanac was unusual, July 22, 1933, which marked the date of landing of Wiley Post at Roosevelt Field, following his round the world flight. Post had previously done a round the world flight, but in 1933 he completed the first SOLO flight.

The moment of nature was at J.N. "Ding" Darling National Wildlife Refuge at Sanibel Island, Florida. Both an alligator and a snake were shown.
Of the history:

Jay Norwood Darling was instrumental in the effort to block the sale of a parcel of environmentally valuable land to developers on Sanibel Island. At Darling's urging, President Harry S. Truman signed an Executive Order creating the Sanibel National Wildlife Refuge in 1945.

The refuge was renamed in 1967 in honor of the pioneer conservationist. The refuge consists of over 6,400 acres of mangrove forest, submerged seagrass beds, cordgrass marshes, and West Indian hardwood hammocks. Approximately 2,800 acres of the refuge are designated by Congress as a Federal Wilderness Area.

The refuge was created to safeguard and enhance the pristine wildlife habitat of Sanibel Island, to protect endangered and threatened species, and to provide feeding, nesting, and roosting areas for migratory birds. Today, the refuge provides important habitat to over 245 species of birds.


Friday, July 20, 2018

CAFC backs PTAB in Mohawk case; tribe and Allergan lose; superior sovereign

The outcome:

Mylan Pharmaceuticals, Inc., petitioned for inter
partes review (“IPR”) of various patents owned by Allergan,
Inc., relating to its dry eye treatment Restasis. Teva
Pharmaceuticals USA, Inc., and Akorn, Inc. (together
with Mylan, “Appellees”) joined. While IPR was pending,
Allergan transferred title of the patents to the Saint Regis
Mohawk Tribe, which asserted sovereign immunity. The
Board denied the Tribe’s motion to terminate on the basis
of sovereign immunity and Allergan’s motion to withdraw
from the proceedings. Allergan and the Tribe appeal,
arguing the Board improperly denied these motions. We


Ultimately, several factors convince us that IPR is
more like an agency enforcement action than a civil suit
brought by a private party, and we conclude that tribal
immunity is not implicated. First, although the Director’s
discretion in how he conducts IPR is significantly constrained,
he possesses broad discretion in deciding whether
to institute review. Oil States, 138 S. Ct. at 1371.
Although this is only one decision, it embraces the entirety
of the proceeding. If the Director decides to institute,
review occurs. If the Director decides not to institute, for
whatever reason, there is no review. In making this
decision, the Director has complete discretion to decide
not to institute review. Oil States, 138 S. Ct. at 1371
(“The decision whether to institute inter partes review is
committed to the Director’s discretion.”). The Director
bears the political responsibility of determining which
cases should proceed. While he has the authority not to
institute review on the merits of the petition, he could
deny review for other reasons such as administrative
efficiency or based on a party’s status as a sovereign.


The Director’s important role as a gatekeeper and the
Board’s authority to proceed in the absence of the parties
convinces us that the USPTO is acting as the United
States in its role as a superior sovereign to reconsider a
prior administrative grant and protect the public interest
in keeping patent monopolies “within their legitimate
scope.” See Cuozzo, 136 S. Ct. at 2144. The United
States, through the Director, does “exercise . . . political
responsibility” over the decision to proceed with IPR.
FMC, 535 U.S. at 764 (quoting Alden, 527 U.S. at 756).
The Tribe may not rely on its immunity to bar such an
action. See Miccosukee Tribe of Indians of Fla. v. United
States, 698 F.3d 1326, 1331 (11th Cir. 2012) (“Indian
tribes may not rely on tribal sovereign immunity to bar a
suit by a superior sovereign.”). Because we conclude that
tribal sovereign immunity cannot be asserted in IPR, we
need not reach the parties’ other arguments.

Walmart's US Patent 10,020,004 and the 1963 Outer Limits episode "O.B.I.T."

About fifty-five years ago, when Kennedy was president, the Outer Limits had an episode titled O.B.I.T., starring Peter Breck (as Senator Orville), which delved into the consequences of surveillance and invasion of privacy.

In the storyline, aliens introduced a machine (named O.B.I.T.) into a government center named Cypress Hills which enabled the viewing of any individual within 500 miles. The machine had disastrous consequences on both the observers and the observed. As the exposed alien (Lomax) told the horrified humans before vanishing, the machine was designed to create rips and tensions in your society, producing a demoralized flotsam.

By the end of the episode, it was apparent that many OBIT machines existed. No one knew "who" the inventor was, and no one knew who authorized their spread. The machine was termed the most hideous creation ever conceived. Among other things, it was observed that no one could laugh anymore.

With Walmart's US Patent 10,020,004, it might seem that aliens are not the only ones of concern.
See Walmart's US Patent 10,020,004, "Listening to the Frontend": "A need exists for ways to capture the sounds resulting from people in the shopping facility"

On the 50th anniversary of the Outer Limits O.B.I.T. episode, in 2013, newsmax wrote

The fictional U.S. Sen. Jeremiah Orville arrives at the center to conduct a hearing on the device. It is soon discovered that the device had authorization from the Pentagon and was manufactured by a private contractor no longer in business.

"Nobody at the center is unaware of its existence," Byron Lomax, deputy director of Cypress Hills, assures Sen. Orville, and then offers the standard defense heard today to justify widespread surveillance: "People who have nothing to hide have nothing to fear from O.B.I.T."

"I'd hate to have that machine trained on me when I'm cussing out a fellow senator," replies Orville, "or the president, or my former law partner, or my wife."

The senator's questioning unearths some startling discoveries about the extent of O.B.I.T.'s eavesdropping. One civilian employee at the center calls it a "Peeping Tom machine. It follows you anywhere, anytime." Colonel Grover of the center’s military staff says on the witness stand that O.B.I.T.'s regular monitoring "is like a debilitating disease" and "the worst thing of all is I can't not look. It's like a drug or a horrible addiction."

As it turns out, there are O.B.I.T. devices doing monitoring on 18 military bases and they are also employed in civilian life: industry, education, and the communications business.


"One of the purposes of science fiction is to predict and prevent forces of evil. It's a shame more people were not exposed to the O.B.I.T. story and took the threat it foretold more seriously," [Carla] Howell said.

link: https://www.newsmax.com/newsfront/snowden-libertarians-outer-limits-obit/2013/12/25/id/543772/

"O.B.I.T." is an acronym for "Outer Band Individuated Teletracer,” with the science of the episode assuming that
each individual exudes unique frequencies of radiation, which can be individuated.

Of nuances in the show, there is first a reference to the "war department" (which did not exist at the time) AND a reference to the "defense department." Scientists are characterized in a not flattering fashion.

About six years after "OBIT," the tv show "Family Affair" did an interesting show on privacy ("A Matter of Privacy," (3 Feb. 1969)) which touched on both industrial espionage AND personal matters.

link: https://m.imdb.com/title/tt0576810/

Thursday, July 19, 2018

BASF loses on jurisdictional argument in NOx case

The issue in BASF was jurisdictional:

BASF now asks this court to vacate and remand the
two ’662 Patent IPR appeals on jurisdictional SAS
grounds.5 Specifically, BASF argues that “the Board’s
decisions with respect to at least the 662 patent are
improper, i.e., ultra vires, as they are not final decisions
as required by § 318(a)” and as such, “appellate review by
this Court of those decisions pursuant to § 319 is no
longer available.” Appellant’s Supp. Br. at 8. Therefore,
BASF asks this Court to “dismiss the [’662 IPR appeals]
as moot” and “direct the Board to vacate those decisions
on remand” on the sole ground that “reviewable, final
written decisions by the Board do not exist” in the two
’662 IPR proceedings. Appellant’s Supp. Br. at 9, 11.
Importantly, BASF does not seek the Board’s evaluation
of the non-instituted claims.


In short, BASF provides no substantive
reason to warrant remand.6 It argues only jurisdictional
For this important reason, BASF’s request is controlled
by PGS Geophysical AS v. Iancu, where this court
rejected the jurisdictional challenge and proceeded to
review the merits of the Board’s decision. This case—like
PGS Geophysical—is a straight challenge to this court’s
authority to hear the appeal. In PGS Geophysical, we
specifically held that “the combination of the noninstitution
decisions and the final written decisions on the
instituted claims and grounds ‘terminated the IPR proceeding[s]’”
such that those decisions were final and
reviewable for purposes of this court’s jurisdiction. 891
F.3d at 1361 (citing Arthrex, Inc. v. Smith & Nephew, Inc.,
880 F.3d 1345, 1348 (Fed. Cir. 2018)). The same reasoning
applies here.
This court further held in PGS Geophysical that a
partial institution error is not one we are required to “act
on in the absence of an appropriate request for relief on
that basis.” Id. at 1362 (emphasis added). Such a request
should include a substantive claim of harmful error,
which is absent here. Id. (“Moreover, the Supreme Court
in SAS characterized the error at issue here as an error
under 5 U.S.C. § 706, but errors under that provision are
generally subject to a traditional harmless-error analysis,
with challengers of the agency action having the burden
of showing prejudice”) (citing Shinseki v. Sanders, 556
U.S. 396, 406, 409 (2009) and Suntec Indus. Co. v. United
States, 857 F.3d 1363, 1368 (Fed. Cir. 2017)). BASF has
not argued prejudice at all; it does not request to have the
Board address the non-instituted claims. Thus, we see no
reason to vacate and remand on the ’662 Patent IPR

Of some text about NO reduction:

Zones discloses using a copper-based CHA zeolite for
the “reduction of oxides of nitrogen contained in a gas
stream in the presence of oxygen.” Zones, col. 1 ll. 55–56,
col. 8 ll. 16–17. Zones Inventor Dr. Stacey Zones stated
that this phrase “refers to and teaches a number of different
reactions, including . . . the selective catalytic reduction
of NO in the presence of an ammonia reducing agent
and oxygen.” Appx3033. Umicore expert Dr. Lercher
testified to the same. Appx3389 (36:16–37:25). BASF
agreed in its Patent Owner’s Preliminary Response that
“reduction of oxides of nitrogen” in Zones “encompasses a
number of reactions,” including ammonia SCR, and again
agreed in oral argument before the Board that the ammonia
SCR reaction is “encompassed within that phrase.”
Appx541, n.5; Appx202 (46:6–23).

Maeshima explains that zeolite catalysts can be used
with either hydrocarbons or ammonia as the reducing
agent. Maeshima, col. 1 ll. 15–21, col. 2 ll. 4–8. Maeshima
teaches that ammonia SCR is preferred because less
of the reducing agent can be used and “nitrogen oxides
can be removed at a high ratio.” Id. at col. 1 ll. 21–24.

Wednesday, July 18, 2018

US Patent 9,790,490 challenged by Benson Hill Biosystems

In another skirmish in the CRISPR wars, Benson Hill Biosystems has filed a petition for
post grant review of US 9,790,490.

CAFC in In re SWARTZ: cold fusion and collateral estoppel

Within the decision:

Similarly, in In re Swartz, 232 F.3d 862, 864 (Fed.
Cir. 2000) (“Swartz I”), this court held that the claims of
Swartz’s U.S. Patent Application No. 07/760,970 were
unpatentable for failure of utility and enablement. The
at-issue ’765 application is a continuation of the ’970
application, and the representative claims in the two are
nearly identical.

The core requirements for collateral estoppel are that:
the issue in question is identical to an issue previously
decided, the issue was actually litigated in the prior
proceeding, the resolution of the issue was necessary to
the prior judgment, and the party challenging the issue
must have been given a full and fair opportunity to litigate
the issue in the prior proceeding. Jet, Inc. v. Sewage
Aeration Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000).
Swartz argues that the district court wrongly applied
estoppel here because he submitted new references not
present in the previous appeals to show utility, and
because the applications here no longer include explicit
references to cold fusion.

Neither the new references nor the elimination of explicit
reference to cold fusion avoids the application of
collateral estoppel. Swartz has not shown that these
differences “materially alter the question of invalidity.”
See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
1342 (Fed. Cir. 2013). Substantially identical claims were
previously found to be invalid as lacking utility and not
enabled. That holding is binding on Swartz.


As discussed above, applications that suggest inherently
unbelievable inventions satisfy the Board’s initial burden
to show lack of utility, and we have previously held that
Dr. Swartz’s LENR-related inventions here properly fall
within that realm.

The decision was per curiam, Before PROST, Chief Judge, NEWMAN and LINN, Circuit

Walmart's US Patent 10,020,004, "Listening to the Frontend": "A need exists for ways to capture the sounds resulting from people in the shopping facility"

The background section of US 10,020,004 states

Many different types of sounds result from people in a shopping facility. For example, guests of the shopping facility may talk amongst each other or with employees of the shopping facility. Additionally, guests and employee movements and activities can generate additional sounds. A need exists for ways to capture the sounds resulting from people in the shopping facility and determine performance of employees based on those sounds.

The first claim states

A system in a shopping facility for determining a performance metric for an employee, the system comprising: one or more sound sensors distributed throughout at least a portion of the shopping facility and configured to receive at least sounds resulting from activity in the shopping facility; and a control circuit communicatively coupled to the one or more sound sensors, the control circuit being configured to: receive, from at least one of the one or more sound sensors, audio data, wherein the audio data includes sounds associated with items being scanned and sounds associated with bags; determine, based on the sounds associated with bags, a number of bags used; determine, based on the audio data associated with items being scanned, a number of items scanned; calculate, based on the number of bags used and the number of items scanned, a number of items per bag; receive an indication of an employee; correlate the audio data and the indication of the employee; and determine, based at least in part on the audio data and the indication of the employee, the performance metric for the employee, wherein the performance metric for the employee is based on the number of items per bag.

There is no expectation of privacy when shopping at WalMart.

The assignee is WALMART APOLLO, LLC (Bentonville, AR) .

PCT; App. No. PCT/US2017/028823; International Search Report and Written Opinion dated Jul. 13, 2017.

**Recall the "Outer Limits" episode O.B.I.T." which first aired November 4, 1963.

Lawsuits related to Facebook

Here are two related to pictures on Facebook:


Dennis v Napoli, 2015 N.Y. Misc. LEXIS 3020, 2015 NY Slip Op 31540(U) (N.Y. Sup. Ct. August 12, 2015) (Links to an external site.)Links to an external site.
The complaint alleges that since discovering the affair Marie has launched a campaign to ruin plaintiff's personal and professional life. Specifically, the complaint alleges that Marie has sent numerous letters, emails, texts and Facebook messages to plaintiffs family, friends, employers and future employers defaming plaintiff as well as posting vicious and insulting comments on plaintiff's Facebook (Links to an external site.)Links to an external site.pictures. For instance, the complaint alleges that within a month of plaintiff arriving at her new job in Houston, Marie sent several identical letters to the wives and family members of the partners at her current employer, wherein she, among other (Links to an external site.)Links to an external site.things, referred to plaintiff as a "sexual predator" and "sex addict,"
These pictures depict plaintiff with her classmates at the Trial Lawyers College and three of her professors. Several of these people are also tagged in the photos and, thus, Marie's comments can be seen by these classmates and professors and anyone they are "friends" with on Facebook. In her comments, Marie again refers to plaintiff as a "slut" and claims that plaintiff was fired from the Firm for being a "slut." As these communications are specifically (Links to an external site.)Links to an external site.directed at plaintiff's colleagues, it is clear that if they are continued they are capable of injuring plaintiff's standing and reputation in her professional life.
Separately, from
Chesney v. State, 165 So. 3d 498, 2015 Miss. App. LEXIS 277 (Miss. Ct. App. May 19, 2015) (Links to an external site.)Links to an external site.
On 08-23-11[,] Mrs. Stewart came to the [police department] to file a complaint on identity theft. Mrs. Stewart stated that someone had stole[n] a picture of her off her Facebook page and created another Facebook on her. This person has since defrauded, slander[ed], used her identity in such a way[,] which [**12] (Links to an external site.)Links to an external site. became harmful to the job . . . which Mrs. Stewart held. I sent Facebook a subpeona and received back information on a[n] Amanda Warren. I have since received information from John Paul Dove from Meridian[,] M[ississippi,] stating that it was in fact a Stan Chesney who was using the name of Sherri Stewart. Mr. Dove stated it started back in 2010 with different users and then Sherri Stewart's name with the same messages and pattern as before.

Tuesday, July 17, 2018

Pro se Appellant Burnett loses in a 12(b)(6)/101 case

The outcome was that pro se appellant Burnett lost:

Carl M. Burnett (“Burnett”) appeals an order of the
United States District Court for the District of Maryland
dismissing Burnett’s amended complaint for failure to
state a claim upon which relief can be granted. Burnett v.
Panasonic Corp., No. 17-cv-0236 (D. Md. Nov. 1, 2017)
(“District Court Decision”). Specifically, because the
district court held that claims 1 and 9 of U.S. Patent No.
7,107,286 (“the ’286 patent”) are invalid as directed to
ineligible subject matter under 35 U.S.C. § 101, it concluded
that dismissal pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure was appropriate. Burnett
argues that the asserted claims are patent-eligible,
that the district court erred procedurally when it failed to
construe five allegedly disputed claim terms, and that the
district court violated Burnett’s due process rights when it
failed to hold Rule 12(b)(6) and claim construction hearings.
We affirm.

As to 12(b)(6), the CAFC noted:

The Fourth Circuit reviews de novo a dismissal under
Rule 12(b)(6). Monroe v. City of Charlottesville, Va., 579
F.3d 380, 385 (4th Cir. 2009). “We have held that patent
eligibility can be determined at the Rule 12(b)(6) stage,”
but “only when there are no factual allegations that,
taken as true, prevent resolving the eligibility question as
a matter of law.”
Aatrix Software, Inc. v. Green Shades
Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
Here, the district court appropriately assessed eligibility
at the pleading stage because the asserted claims are
patent-ineligible even when accepting as true all factual
allegations pled in Burnett’s amended complaint

Of abstract idea:

Like the concept of using a formula to convert binarycoded
decimals into pure binary numerals, which the
Supreme Court found to be an abstract idea in Gottschalk,
409 U.S. at 72, the concept of using a formula to convert
geospatial coordinates into natural numbers, if found
eligible, “would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm
itself.” Claims 1 and 9 are both directed to a
similarly abstract idea.

Of Alice:

The remainder of Burnett’s arguments related to his
proposed claim constructions stand for the proposition
that “the claims recite significantly more than the purported
idea of a ‘mathematical methodology.’” Appellant
Br. at 46. But that a claim allegedly contains more than
an abstract idea does not mean the claim survives step
one, because, under that inquiry, it is enough that the
claims are directed to a mathematical methodology at all;
rather, Burnett’s argument is more appropriately assessed
under our inquiry in step two. Alice, 134 S. Ct. at
2355 (assessing under step two whether additional features
in a claim transform an otherwise a patentineligible
concept into a patent-eligible concept).


As the district noted, these additional features effectively
do no “more than simply state the [abstract idea]
while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
The preambles of both claims, as construed by Burnett,
instruct a user to implement the mathematical methodology
or instruct using a “geospatial media recorder” to do
the same. Such “wholly generic computer implementation
is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract
idea] itself.’” Alice, 134 S. Ct. at 2358 (quoting Mayo, U.S.
at 77); accord Gottschalk, 409 U.S at 70–72.

CAFC finds D. Del. erred in claim construction in Blackbird v. ELB; Judge Reyna dissents

The outcome was that the D. Delaware decision of Judge Andrews of noninfringement was vacated:

Blackbird Tech LLC (“Blackbird”) appeals the U.S.
District Court for the District of Delaware’s entry of
judgment of noninfringement of claim 12 of U.S. Patent
No. 7,086,747 (“’747 patent”) based on its construction of
“attachment surface.” Because the court erred in construing
“attachment surface,” we vacate and remand.

This was an appeal by the patentee Blackbird, owner of the ’747 patent, which is directed to
energy efficient lighting apparatuses.

This case went to the CAFC so that a claim construction issue could
be resolved:

The parties disputed the meaning of “attachment surface,”
specifically whether the attachment surface must be
secured to the ballast cover. Blackbird proposed construing
“attachment surface” as “layer of the housing to which
the illumination surface is secured,” and Defendants
proposed “layer of the housing that is secured to the
ballast cover and to which the illumination surface is
secured.” J.A. 7. The district court construed “attachment
surface” as “layer of the housing that is secured to
the ballast cover.” J.A. 7–9.

Following claim construction, Blackbird stipulated to
, and the district court entered judgment
in favor of Defendants. Blackbird timely appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).

By a vote of 2-1, the CAFC found D. Delaware erred:

We conclude that the district court erred in construing
“attachment surface” to be secured to the ballast cover.
By its plain language, claim 12 does not require the
attachment surface to be secured to the ballast cover.

Judge Reyna dissented:

Claim 12 does not expressly require that the attachment
surface be attached to anything other than to the
illumination surface. However, claim 12 does expressly
describe a lighting apparatus “for retrofit with an existing
light fixture having a ballast cover.” ’747 patent col. 11 ll.
26–27 (emphases added). The majority fails to give
meaning to these claim terms by holding that “attachment
surface” means “layer of the housing to which the
illumination surface is secured,” and concludes that the
patent owner is entitled to patent scope that is neither
described in nor supported by the specification.
The plain language of claim 12, read in the context of
the specification, implicitly requires that the attachment
surface be secured to the ballast cover to achieve the
retrofit function. Apart from the preamble, which the
parties agree is limiting, claim 12 contains no reference to
the ballast cover, the existing light fixture, or where or
how the apparatus is retrofit with the existing light
fixture. Because the only feature of the existing light
fixture described in claim 12 is the ballast cover, a person
of ordinary skill would necessarily conclude that the
attachment surface is secured to the ballast cover of the
existing light fixture. This would not be a big leap.


Taken collectively, these disclosures in the claims
and the specification—and the lack of any reference in the
intrinsic record showing the attachment surface being
secured to anything other than the ballast cover—teach a
skilled artisan that the attachment surface described in
claim 12 is secured to the ballast cover of the existing
light fixture. See MBO Labs., Inc. v. Becton, Dickinson &
Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007) (“The words of
patent claims have the meaning and scope with which
they are used in the specification and the prosecution

Judge Reyna also noted:

The majority’s construction thus opens the door for
the ’747 patent to be subsequently invalidated for failure
to satisfy the written description requirement. Stated
differently, the majority’s construction is a route towards
rendering the patent invalid. See Carman Indus., Inc. v.
Wahl, 724 F.2d 932, 937 (Fed. Cir. 1983) (“Claims should
be so construed, if possible, as to sustain their validity. If
such a construction would result in invalidity of the
claims, the appropriate legal conclusion is one of noninfringement,
not invalidity.”). The majority likewise
invites an enablement challenge; under the majority’s
approach, the retrofit aspect of the invention is merely an
afterthought, one for which a skilled artisan must figure
out for themselves the means by which the retrofit function
of the invention shall be achieved, without any guidance
from the patent. See Maj. Op. at 9. This result is
absurd, given that when the patent is read as a whole,
such guidance is clearly provided.
Worse still, because the majority’s construction “does
not recite how the lighting apparatus is installed into an
existing light fixture,” id., the majority effectively reads
the retrofit function out of claim 12 and claim 29, the
retrofitting method claim. Claim 29, while not at issue in
this case, is instructive. See Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“Because claim
terms are normally used consistently throughout the
patent, the usage of a term in one claim can often illuminate
the meaning of the same term in other claims.”).
Claim 29 contains the same “attachment surface” limitation
at issue in claim 12:

Sunday, July 15, 2018

Steve Hartman does "CBS Sunday Morning" on 15 July 2018

Steve Hartman both hosted the 15 July 2018 "Sunday Morning" and had a story therein about Robert Moore of Ponca City, OK.

The choice for Almanac was unusual, recalling the murder on 15 July 1997 of Giovanni Maria "Gianni" Versace. Implicitly, there are intellectual property themes here, both as to the mark Versace and as to inventions. Of the latter, from wikipedia

Among Versace's most famous innovations was his 1982 invention of a type of super-light chainmail called 'Oroton', which became a signature material in his outfits. His suits were inspired more by his experience in female tailoring, departing from masculine Savile Row models by crafting suits which accentuated the male form and "insisted on men as sex objects.

Sunday Morning also noted the deaths of Tab Hunter and Nancy Sinatra, Senior.

The Milepost recalled the death of Emmett Till in 1955, and noted the case had been re-opened.

Sunday Morning recycled an October 2017 story on Peter Bellerby and globe making.

Of Jennifer Garner, CBS noted she attended Denison University in Granville, Ohio, where she changed her major from chemistry to theater, CBS did not note that, while growing up, she attended a local United Methodist Church every Sunday and went to Vacation Bible School. (see wikipedia)

The moment of nature feature was elephants in Tanzania.

The cover story was on iGen, and discussed the impact of the prevalence of smart phones on middle schoolers, including 8th graders.

There was an upbeat report on soccer (Axelrod) which did not mention the low tv ratings. From the LA Times:

The 48 group stage telecasts on Fox and FS1 averaged 2.069 million viewers, according to Nielsen Media Research. That is down 42% from the 3.54 million average on ESPN, ESPN2 and ABC four years ago and down 15% from the 2.429 million average on ESPN, ESPN2 and ABC eight years ago.

Sunday Morning included a plug for an interview of President Trump by Jeff Glor, to appear later in the morning on "Face the Nation." [EU as a "foe".]

Saturday, July 14, 2018

"The Happenings," then and now

Of the concept of a "happening," the website artsy.net observes:

In October 1959, artist and Rutgers professor Allan Kaprow presented 18 Happenings in 6 Parts at the Reuben Gallery in New York’s East Village. Although he had experimented with the form earlier, this marked the first use of the term “Happening.”
The Happenings burned bright and fast, tapering off in 1963 when Kaprow moved on. Grooms and Oldenburg had already left to pursue other projects. News of the novel art form had started to travel—there were “thrill clubs” that came from Long Island to experience the Happenings and, for Oldenburg, the “audience became less and less interesting to me. I couldn’t really reach them.” The term “Happening” became such an accepted part of 1960s vernacular that it was used as a title for a song by girl group The Supremes.

link: https://www.artsy.net/article/artsy-editorial-what-were-1960s-happenings-and-why-do-they-matter

The song referenced by artsy.net, "The Happening," was the theme song for the 1967 movie "The Happening," which starred, among others, Faye Dunaway, Anthony Quinn, and George Maharis. Oscar Homolka, frequently cast as a heavy (by Hitchcock in Sabotage, Reward to Finder), also appeared.

Artsy.net did not mention the musical group The Happenings, comprised of graduates from a high school in Paterson, New Jersey, most notably Bob Miranda. The Happenings were big around 1966-1967. Of relevance to intellectual property, their big hits were cover songs, of previously recorded songs. From wikipedia:

The band's original concept and much of its commercial success came as a cover band playing classic songs in a unique style. Said Miranda, the group's concept was to "take a song that's already proven it could be a hit and put our spin on it."


The group's major hits were "See You In September" (1966), which was originally recorded by The Tempos in 1959, and a cover version of the George Gershwin/Ira Gershwin song, "I Got Rhythm" (1967), updated for the group's sunshine pop musical style. "See You In September" and "I Got Rhythm" were on the Billboard Hot 100 Singles charts for 14 weeks in 1966 and 13 weeks in 1967, respectively, forming musical bookends for the 1966-1967 school year, based on their Hot 100 #3 peak dates.

As an update, Bob Miranda & The Happenings appeared at Duke Island Park in Bridgewater, New Jersey on July 8, 2018.

Friday, July 13, 2018

CAFC affirms PTAB in Jazz Pharmaceuticals

The outcome:

Jazz Pharmaceuticals, Inc. (“Jazz”) appeals from six
inter partes review (“IPR”) decisions of the United States
Patent and Trademark Office Patent Trial and Appeal
Board (the “Board”).1 Collectively, the decisions held
certain claims of Jazz’s U.S. Patents 7,668,730 (“’730
patent”), 7,765,106, 7,765,107, 7,895,059, 8,589,182,
8,457,988 (“’988 patent”), and 8,731,963 (“’963 patent”)
(together, the “patents in suit”) invalid as obvious. Because
the Board did not err in its conclusions of obviousness,
we affirm.

TSM arises at the end of the opinion

We also agree with Amneal that Jazz misinterprets
both the Supreme Court’s decision in KSR and this court’s
obviousness precedent. KSR did not impose a rigid requirement
to identify both a problem to be solved in the
art and a finite universe of potential options. Rather, the
Supreme Court rejected the teaching, suggestion, or
motivation test, because the Court considered that the
test was a “[r]igid, preventative rule[] that den[ies] factfinders
recourse to common sense.” KSR, 550 U.S. at 421.

Furthermore, the Supreme Court also rejected the “assumption
that a person of ordinary skill attempting to
solve a problem will be led only to those elements of prior
art designed to solve the same problem.” Id. at 420. We
have similarly recognized that persons of ordinary skill
have diverse motivations, including “[t]he normal desire
. . . to improve upon what is already generally known.” In
re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017); see
also Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280,
1291 (Fed. Cir. 2012) (“New compounds may be created
from theoretical considerations rather than from attempts
to improve on prior art compounds.”).
KSR did state that “[w]hen there is a design need or
market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options
within his or her technical grasp.” KSR, 550 U.S. at
421. But it did not set forth such factors as part of a
mandatory formula. To treat them as such would be
inconsistent with KSR’s holding and our own case law.
Thus, the Board did not err in concluding that implementing
the ACA materials’ centralized database system on
multiple computers “would have been a predictable use of
a known distributed data system according to its established
function.” ’730/’988 Decision, 2016 WL 7985458, at
*25 (citing KSR, 550 U.S. at 417). As Jazz has presented
no other arguments challenging the Board’s finding of a
motivation to modify, we affirm its holdings with respect
to claims 2 and 10 of the ’988 patent and claims 24, 26,
and 27 of the ’963 patent

CUSTOPHARM INC. loses its appeal against Endo

The CAFC affirmed the "not invalid" determination of Judge Robinson of D. Delaware:

After a four-day bench trial on invalidity, the
district court concluded that Custopharm had not proven
that the claims were invalid under 35 U.S.C. § 103.
Custopharm appealed. For the reasons below, we find no
reversible errors in the district court’s conclusion and
accordingly, we affirm

Of review standards:

“Obviousness is a question of law based on underlying
findings of fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed.
Cir. 2009). We review the district court’s conclusions of
law de novo. Eli Lilly & Co. v. Teva Parenteral Meds.,
Inc., 845 F.3d 1357, 1372 (Fed. Cir. 2017). And we review
the district court’s factual findings for clear error. Par
Pharm., 773 F.3d at 1194.

There was an issue of "which guidelines":

First, Custopharm’s overdose argument is predicated
on the assumption that a skilled artisan would have
applied the AACE Guidelines to the exclusion of other
guidelines that existed at the time, including the FDA
Guidelines. Under the FDA Guidelines, the range of
normal testosterone is 300 to 1000 ng/dl or 10 to
35 nmol/l. The record evidence sufficiently demonstrates
that the most prevalently applied guidelines in clinical
practice were the FDA Guidelines, not the AACE Guidelines.
The studies underlying the Articles all employed
the FDA Guidelines.

Of motivation

Second, Custopharm argues that the obviousness of
an invention does not require using the “best” motivation8;
only a “suitable” motivation is required. Par
Pharm., 773 F.3d at 1197–98. But this is a misunderstanding
of Custopharm’s burden. While the FDA Guidelines
do not teach away from using the AACE Guidelines,
the district court found that Custopharm had not shown,
by clear and convincing evidence, that a skilled artisan
would have recognized that patients injected with
1000 mg TU were being overdosed. To meet its burden,
Custopharm needed to do more than merely show that the
prior art does not preclude lowering the dose of TU.
Custopharm needed to affirmatively demonstrate that a
skilled artisan would have been motivated to lower the
dose of TU despite no clear evidence of overdosing under
the FDA Guidelines. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007) (“[T]he burden falls on
the challenger of the patent to show by clear and convincing
evidence that a skilled artisan would have been
motivated to combine the teachings of the prior art references
to achieve the claimed invention . . . .”).

Of inherency:

To establish that a prior art reference inherently—
rather than expressly—discloses a claim limitation, “the
limitation at issue necessarily must be present, or [is] the
natural result of the combination of elements explicitly
disclosed by the prior art.” Par Pharm., 773 F.3d at 1196.
Here, Custopharm argues that the vehicle formulation
was “necessarily present” in the Articles because it was
later revealed to be the actual formulation the authors of
the Articles used in their reported clinical studies. We
An inherent characteristic of a formulation can be
part of the prior art in an obviousness analysis even if the
inherent characteristic was unrecognized or unappreciated
by a skilled artisan. See In re Kao, 639 F.3d 1057,
1070 (Fed. Cir. 2011). But, inherency “may not be established
by probabilities or possibilities.” Par Pharm., 773
F.3d at 1195 (quoting In re Oelrich, 666 F.2d 578, 581
(CCPA 1981)). “The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. (citing In re Rijckaert, 9 F.3d 1531, 1533–34 (Fed. Cir.
1993); Oelrich, 666 F.2d at 581 (“[M]ere recitation of a
newly discovered function or property, inherently possessed
by things in the prior art, does not distinguish a
claim drawn to those things from the prior art.”); In re
Shetty, 566 F.2d 81, 86 (CCPA 1977) (“[T]he inherency of
an advantage and its obviousness are entirely different
questions. . . . Obviousness cannot be predicated on what
is unknown.” (quoting In re Spormann, 363 F.2d 444, 448
(CCPA 1966))).

Footnote 9 delves into waiver:

Custopharm, however, did not respond to Endo’s contention
that Custopharm waived this argument by failing to
raise it before the district court. We agree with Endo. In
its reply brief, Custopharm argued that Helsinn
Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., is a
pertinent intervening case, but did not explain how it is
an intervening change in law to the inherency doctrine,
especially given that it is an on-sale bar case. 855 F.3d
1356 (Fed. Cir. 2017).

Wednesday, July 11, 2018

Czech politician Mala resigns over accusations of plagiarism

Tatana Mala, who briefly served as justice minister in the Czech Republic, resigned over possible
plagiarism issues in two theses (of widely divergent subject matter).

One: Microclimatic conditions of rabbit breeding at the Mendel University (allegation of copying 11 pages of text from a thesis of another student, who wrote about a similar topic two years before she did; recall the Martin Luther King issue at Boston University.)

The other: before Faculty of Law at the Pan-European University in Bratislava. The Prague Daily Monitor noted:

The university declared on Friday that her thesis was pass the system for uncovering plagiarism and was classified as original. According to available information, the Slovak university's system did not work with Czech sources, however.

link: http://praguemonitor.com/2018/07/02/justice-minister-mal%C3%A1-inaugurated-dismisses-plagiarism-challenge

See also: http://www.praguemonitor.com/2018/07/09/new-justice-minister-facing-problem-over-plagiarism


**As to King's thesis at Boston University:

Worse, in the view of most academic standards, was King's appropriation of works by other writers about Tillich, including a 1952 doctoral dissertation by another Boston University student. In the general bibliography of his thesis, King referred to the other student's dissertation but did not cite particular passages.

--the 1952 thesis was that of Jack Stewart Boozer

link: http://ipbiz.blogspot.com/2015/04/phd-thesis-plagiarism-flap-brews-in.html

See also:


Of Boozer:


CAFC finds Board applied wrong legal standard in Apple v. ContentGuard

Apple Inc. and Google LLC appeal from the Patent
Trial and Appeal Board’s decision to grant ContentGuard
Holdings, Inc.’s motion to amend in a covered business
method review of U.S. Patent 7,774,280. Because the
Board applied the wrong legal standard to determine
whether the ’280 patent qualified as a covered business
method, we vacate and remand for further proceedings.

As we explained in Unwired Planet, the mere possibility
that a patent can be used in financial transactions is
not enough to make it a CBM patent. 841 F.3d at 1382.
Although the ’280 patent describes embodiments where
the claimed DRM system is used to monetize digital
works, it also explains how the claimed invention can be
used in ways that do not involve financial transactions.
For instance, the specification describes how the claimed
invention can manage healthcare records.


Instead, we hold only that it is not enough for the specification to describe
how the invention could, in some instances, be used to
facilitate financial transactions.
Petitioners and the Patent and Trademark Office, as
intervenors, argue that the Board also determined the
claims are “financial in nature” in its final written decision.
Accordingly, petitioners and the Patent and Trademark
Office maintain that we can sustain the Board’s
determination on that alternative ground. However,
references to the “incidental to” or “complementary to”
standard appear throughout the Board’s final written
decision. See, e.g., J.A. 7–8, 11, 12. On the record before
us, we are unable to discern whether the Board would
have concluded that the ’280 patent qualifies as a CBM
patent had it not applied this standard. On remand, the
Board must determine whether the ’280 patent qualifies
as a CBM patent in the first instance without relying on
the “incidental to” or “complementary to” standard.

Thus, the conclusory "alternative ground" argument was rejected
because the decision seemed to rest on the non-alternative ground.

The CAFC second guesses CD Cal on relative strength of invalidity theories; remand asks for a more complete explanation

In Polara Engineering v. Campbell, invalidity theories
of defendant Campbell were rejected, but enhanced damage
analysis by CD Cal was rejected.

Campbell Company (“Campbell”) appeals from the final
judgment of the United States District Court for the
Central District of California entering judgment in favor
of Polara Engineering Inc. (“Polara”) on its claim for
infringement of claims 1–4 (“the asserted claims”) of U.S.
Patent 7,145,476 (“the ’476 patent”) and its decision,
following a jury trial, denying Campbell’s post-trial motions
for judgment as a matter of law of invalidity and no
willfulness, and granting Polara’s motion to enhance the
damages award. See Polara Eng’g, Inc. v. Campbell Co.,
237 F. Supp. 3d 956 (C.D. Cal. 2017) (“Post-trial Motions
Opinion”); Judgment, Polara Eng’g, Inc. v. Campbell Co.,
No. SACV-13-00007 (C.D. Cal. Mar. 31, 2017), ECF No.
499 (J.A. 83–84). For the following reasons, we affirm in
part, vacate in part, and remand.1

An argument of invalidity through public use by Campbell
was rejected:

We agree with Polara that substantial evidence supports
the jury’s finding of experimental use that negates
application of the public use bar.
The jury could have properly based its finding of
experimental use on the need for testing to ensure the
durability and safety of the claimed APS. In City of
Elizabeth v. American Nicholson Pavement Co., the Supreme
Court held that testing an inventive pavement for
“usefulness and durability” for six years on a public
roadway constituted experimental use. 97 U.S. 126, 133–
34 (1877). We have similarly recognized as sufficient to
negate the statutory bar experimental use testing performed
“to perfect features inherent to the claimed invention,”
such as “durability.” Electromotive Div. of Gen.
Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417
F.3d 1203, 1211–12 (Fed. Cir. 2005) (collecting cases);
accord Manville Sales Corp. v. Paramount Sys., Inc., 917
F.2d 544, 551 (Fed. Cir. 1990) (“When durability in an
outdoor environment is inherent to the purpose of an
invention, then further testing to determine the invention’s
ability to serve that purpose will not subject the
invention to a section 102(b) bar.”).
The factual situation here bears a striking similarity
to the situation in City of Elizabeth.

The relative strength of the public use defense was a factor used
by the CAFC to vacate enhanced damages:

The district court referred to Campbell’s invalidity
theories generally in the closeness of the case Read factor.
In determining that this factor was “neutral,” the district
court merely observed that “obviousness was a close call”
and that the “other invalidity theories were weaker.”
Post-trial Motions Opinion, 237 F. Supp. 3d at 993. This
explanation is insufficient for us to determine why the
court viewed this factor as “neutral.” The court’s use of
the relative term “weaker” provides little insight because
it did not explain its reasons for viewing the other defenses,
especially public use, as comparatively “weaker.” We
view the public use defense, which the court did not
explicitly address, as a closer call than obviousness.
Thus, to the extent the district court determined that the
public use defense was weak in this case, the court clearly

Accordingly, we vacate the award of enhanced damages
and remand. See, e.g., Whitserve, LLC v. Comput.
Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) (remanding
“for a determination of whether enhanced damages
are warranted and an explanation of the grounds for that
determination”); S.C. Johnson & Son, Inc. v. CarterWallace,
Inc., 781 F.2d 198, 202 (Fed. Cir. 1986) (“vacat[ing]
the decision refusing [enhanced] damages under
35 U.S.C. § 284, and remand[ing] for clarification by the
district court”). On remand, we instruct the district court
to provide a more complete explanation, including a
discussion of the public use defense, in exercising its
discretion. We express no view on whether damages
should be enhanced or, if so, by what amount

Note also footnote 1:

Although Polara noticed a cross-appeal from certain
determinations of the district court, it has not pursued
those issues in its briefing before this court.
Accordingly, Polara has not properly raised any issue on
cross-appeal, and we need not address the cross-appeal.

Tuesday, July 10, 2018

Intersil wins at the CAFC on damages issue

This case initially did involve patent infringement, but a large
part of this CAFC opinion relates to trade secrets:

TAOS then
sued Intersil in federal district court for infringement of
U.S. Patent No. 6,596,981, as well as for trade secret
misappropriation, breach of contract, and tortious interference
with prospective business relations under Texas
state law. After a trial held in early 2015, a jury returned
a verdict for TAOS and awarded damages on all four
claims. The court ruled on the parties’ post-trial motions
and entered final judgment, and both parties appealed

Although the CAFC found one ground of liability for trade secret misappropriation,
the damages award was vacated because
there was no evidence of "how much" the award should be on this one ground:

The monetary award for trade secret misappropriation
must be vacated because we have determined that
misappropriation liability here can properly rest on only
one of the three grounds that TAOS presented to the jury.
TAOS’s calculation of monetary relief did not distinguish
among those grounds. TAOS’s expert testified that the
“trade secrets [were] the – the drivers of sales.”
J.A. 21137–38. But he did not explain which of the trade
secrets contributed to what amount of profit to be disgorged;
he assigned all profits to the misappropriation of
all trade secrets. On this record, we have no basis to
conclude that the remaining ground for liability—the
photodiode structure trade secret—supports the entire
award. This is one reason for vacating the award.

There is a second, independent reason. As to the loss
of trade secret status, the unrebutted evidence at trial
showed that TAOS’s 1:1 interleaved photodiode array was
accessible to Intersil by proper means long before the time
of many of the sales included in TAOS’s request for mone-
tary relief. Such accessibility existed no later than January
2006, when Intersil successfully reverse-engineered
the TSL2560, and perhaps as early as February 2005,
when TAOS “released” the TSL2560.8 We need not pinpoint
the date to know that it predated many of the sales
included in the calculation of monetary relief put before
the jury by TAOS’s expert.

Accessibility by proper means rendered the photodiode
array structure no longer a protected secret. See E.I.
duPont deNemours & Co. v. Christopher, 431 F.2d 1012,
1015 (5th Cir. 1970) (“[T]he Texas rule is clear” that
“[o]ne may use his competitor’s secret process if he discovers
the process by reverse engineering applied to the
finished product.”). Secrecy protection terminated at the
end of the period of time it would have taken Intersil,
after Intersil’s permissible discovery of the photodiode
structure, to recreate that structure in its own products.
See Research Equip. Co. v. C. H. Galloway & Sci. Cages,
Inc., 485 S.W.2d 953, 956 (Tex. Civ. App. 1972) (explaining
that “the trial court was called upon to determine that
period of time which would have been required for one
having no background in the cage manufacturing business
to launch such an enterprise”); see also Injunction Order,
2016 WL 1615741, at *3 (in denying TAOS’s motion for an
injunction based on the misappropriation, the trial court
acknowledged that “[w]hatever potential ‘head start’
[Intersil] may have gained from its misappropriation of
[TAOS]’s trade secrets occurred years ago and has no
bearing on any future harm”).

For those reasons, we vacate the jury’s monetary
award for misappropriation of trade secrets. On remand,
any determination of sales-based monetary relief for trade
secret misappropriation requires evidence and a determination
of the time at which the trade secret became
properly accessible to Intersil and the duration of any
head-start period.

Of 7th Amendment/equity issues:

TAOS does not dispute Intersil’s premise that Intersil
had a right to a non-jury decision on disgorgement unless
TAOS had a Seventh Amendment right to a jury decision
on disgorgement. We therefore proceed on that premise.
The parties debate whether TAOS has a Seventh
Amendment right to a jury decision on its request for
disgorgement of Intersil’s profits. We conclude that TAOS
does not have such a right, and we therefore vacate the
disgorgement award on this ground as well. Intersil is
entitled to a decision on disgorgement by the trial court,
with findings of fact and conclusions of law duly entered
in accordance with Rule 52.

Sunday, July 08, 2018

Difficulties with Parthasarathy's "U.S. patent system out of step"

An article titled U.S. patent system out of step with today’s citizens appears in Finance & Commerce, but pointing to an earlier post at The Conversation , which in turn states of the article -- This is an updated version of an article originally published on July 31, 2015. --, thus, about three years old.

The Finance-Commerce post includes the text:

It is worth observing that while the U.S. system was initially conceived as a democratic improvement upon the European systems of the time, today’s pan-European patent system is far ahead of its U.S. counterpart in terms of both its public engagement and its attention to the implications that citizens care about.

If the U.S. patent system wants to maintain public trust, it has to realize that the 21st-century citizen is quite different from her 18th-century forebears. Today’s citizen cares about the ethical and socioeconomic implications of patents and the technologies they cover and is not content to assume that the system’s benefits eventually trickle down. And she seeks to have an active role in decision-making.

Taking this citizen seriously will require serious patent system reforms. Possible reforms include increasing opportunities for the public to participate in patent decision-making, allowing more legal and bureaucratic challenges on behalf of the public interest, and incorporating more emphasis on ethical and socioeconomic implications into our patent and innovation policies.

There is a lot which can be questioned about the analysis by Shobita Parthasarathy, a professor at the University of Michigan.

**As to opportunities for the "public" to challenge, and to participate, recall the patent wars over stem cells, which took place more than ten years before Parthasarathy's 2018 article. The journal Science had reported:

WARF's patents were first challenged in October 2006 by two citizens' groups, who claimed that the approach for getting primate ES cells was "obvious" and could have been successfully applied by anyone with the necessary resources. Last April, the U.S. Patent and Trademark Office (PTO) accorded the patents a preliminary rejection and agreed to reexamine them.

link: http://www.sciencemag.org/news/2008/03/warf-goes-3-3-patents

The consumer group was beaten so badly that it changed its name. See the 2008 post on IPBiz FTCR changes its name after stem cell defeat The group, renamed as Consumer Watchdog, did make later legal history, in defeat, as to a standing issue. Consumer Watchdog / PubPat seek Supreme Court review of standing issue in stem call case concerning WARF's US 7,029,913

Disregarding the unfavorable outcome for the consumer group, the point, apparently not recognized by Parthasarathy, is that the "public" has been participating in the patent process for a long time. [And, of course, sometimes the "public" involvement can involve a hedge fund guy; see for example Kyle Bass IPR petition against Lialda granted for review of U.S. Patent No. 6,773,720

**in a comment to The Conversation post, Parthasarathy wrote:

Especially in recent decades, there has been a slowdown in health care innovation (e.g., as defined by new drug compounds available to substantially improve health) while patent rates have increased. There's also an argument that patents actually hurt innovation in some cases, especially in the US, because they are too broad in scope and make it difficult for other innovators to "invent around" them (this is a particular concern in the area of biomedicine).

Parthasarathy apparently is unfamiliar with drug development in the area of multiple sclerosis. The first drug to modulate the effect of the disease appeared in 1993. Now there are over 15 drugs. Sufferers of MS now face an incredibly more favorable expectation of lifestyle than in 1993.

In this, one has to appreciate that the bigger cost in bringing a drug to market is testing, rather than simply identifying a drug candidate. The patent system, which can protect rights in the drug and/or method of use, allows a drug innovator to re-coup the significant expense of drug testing.

**Maybe it is Parthasarathy who is out of step?