Friday, August 31, 2018

Stuart, East Cavalry Field, and Berkheimer

More than ten years ago, IPBiz was discussing a book by Tom Carhart about the significance of J.E.B. Stuart's actions
on July 3, 1863 at East Cavalry Field at Gettysburg in evaluating the wisdom of Robert E. Lee's ordering of Pickett's Charge.
See Was Tom Carhart's book on Gettysburg pre-empted?

One commenter to that IPBiz blog post agreed that Carhart's theory had been pre-empted (i.e., already discussed in previous published work), although citing to an alternative history book on the Civil War, by one Winston Churchill (later to be British Prime Minister, as distinct from the Winston Churchill who wrote the Civil War book "The Crisis.") To avoid confusion, the alternate history is titled “If Lee Had Not Won the Battle of Gettysburg” , First published in Scribner’s Magazine, December 1930, pp. 587-97, In a post on 8/3/2011 titled Churchill Imagines How the South Won the Civil War , ERNEST B. FURGURSON wrote:

Given Churchill’s dissection of Gettysburg’s actual events, it’s no surprise that he made Stuart a crucial figure in his imaginary account for If. Returning to England after his jaunt through America, he began to work out in his mind just how Lee lost at Gettysburg—and how he might have won. “It always amuses historians and philosophers to pick out the tiny things, the sharp agate points, on which the ponderous balance of destiny turns,” he writes in the essay.

Churchill goes on to attribute the Rebel victory to many small factors that aligned in their favor. “Anything…might have prevented Lee’s magnificent combination from synchronizing,” he writes. Like most historians, he points to the Confederate July 2 assault on Little Round Top as a pivotal moment; in his fictionalized version of events, the Rebels took the hill, depriving Meade of the high ground for his guns.

But ultimately, Churchill concludes that Stuart was the key. His narrative has the cavalry arrive at the Union rear precisely as Major General George Pickett led his infantry charge on Meade’s position on Cemetery Ridge. This helped produce a panic that swept through the whole left of Meade’s army. There could be “no conceivable doubt,” he writes, “that Pickett’s charge would have been defeated if Stuart with his encircling cavalry had not arrived in the rear of the Union position at the supreme moment.”

Carhart's book was published in 2005, some seventy-five years after Churchill had isolated on the significance of Stuart's attack (which in the real world failed, contrary to the alternate world of Churchill).

Of interest here is an essay by Gompert and Kugler, published in 2006 in Defense Horizons, which analyzes "Lee's Mistake," allocating little significance to Stuart's failure at East Cavalry Field. Of special interest is a quote on page 2 of the Defense Horizons article by James McPherson, which might be measured against McPherson's earlier review of Carhart's book.

In terms of patent issues, such as those created by Berkheimer, it gives meaning to how difficult it is to evaluate how something can be "well understood."

In passing, "East Cavalry Field" has been somewhat revived in importance over the last ten or so years. One concurrent event that remains to be more fully evaluated is the action of the Union Army's IV Corps in and around Richmond in June and July 1863.


Thursday, August 30, 2018

Appellant Barkan loses at CAFC on case from ED Texas

The appellant lost, but did make a point:

Barkan Wireless Access Technologies, L.P. appeals
the district court’s construction of the term “Access Point,”
under which Appellee Cellco Partnership d/b/a Verizon
Wireless concededly does not infringe the asserted

We determine that the district court erred by concluding
that the patents expressly define “ Access
Point,” but we nevertheless affirm the district court’s ultimate decision.

Wednesday, August 29, 2018

CAFC vacates PTAB decision in Emerson v. Sipco. An inconsistency issue.

Of the outcome:

Emerson Electric Co. challenged various claims of
SIPCO, LLC’s U.S. Patent No.
8,013,732 in an inter partes review. The
U.S. Patent and Trademark Office’s
Patent Trial and Appeal Board
determined that Emerson
failed to show that certain claims would have
been unpatentable as obvious. Because the Board did not ade-
quately explain its reasoning on a point that was central
to its analysis
and its conclusion on that point was contrary to another Board opinion
on nearly identical facts
we vacate the Board’s determination as to the appealed
claims and remand for further proceedings.

Of note:

The Board came to opposite conclusions on patentability
of these nearly identical claims despite considering
nearly identical evidence in both cases. As discussed
above, the Board found that the differences between the
two patents’ claims and specifications were nonsubstantive.
Both inter partes reviews considered the
same Kahn reference in searching for a motivation to
combine, although we acknowledge that the Greeves
reference was properly raised and considered by the
Board in IPR2016-00984. Dr. Heppe’s declarations were
identical in relevant part regarding motivation to combine.
Compare Decl. of Dr. Heppe, Ex. 1004, Emerson
Elec. Co. v. SIPCO, LLC, IPR2015-01973, J.A. 435–39,
¶¶ 29–32 (P.T.A.B. Sept. 25, 2015), with Decl. of
Dr. Heppe, Ex. 1018, Emerson Elec. Co. v. SIPCO, LLC,
IPR2016-00984, ¶¶ 40–43 (P.T.A.B. Apr. 29, 2016). And,
in IPR2016-00984, the Board found “credible Petitioner’s
arguments and Dr. Heppe’s opinion” that “an advantage
of using wireless . . . networks was to avoid the need for
wires” and that a skilled artisan “would have been motivated
to use a wireless . . . network . . . to enhance flexibility
in rapid deployment and reconfiguration.” IPR2016-
00984 Final Written Decision, 2017 WL 4862106, at *16.
Here, in contrast, the Board considered the same testimony
and came to the opposite conclusion.
Under these circumstances, we conclude that the
Board’s decision in this case does not adequately explain a
key element of its analysis. The decision “does not address,
or at least does not clearly address,” why the
statement in Kahn—that deployment of the packet radio
net should be rapid and convenient—does not provide a
rationale that would have motivated a skilled artisan to
combine the teachings of Kahn and the Admitted Prior
Art. Pers. Web, 848 F.3d at 993. Further, as we have
held, “where a panel simultaneously issues opinions on
the same technical issue between the same parties on the
same record, and reaches opposite results without explanation,
we think the best course is to vacate and remand
these findings for further consideration.” Vicor Corp. v.
SynQor, Inc., 869 F.3d 1309, 1322 (Fed. Cir. 2017).

Of length of PTAB decisions:

Some Board explanations can suffice even if brief, as
when the patent and the art are both clear and readily
understandable. Pers. Web, 848 F.3d at 994. In addition,
“we will uphold a decision of less than ideal clarity if the
agency’s path may reasonably be discerned.” Bowman
Transp., Inc. v. Ark.–Best Freight Sys., Inc., 419 U.S. 281,
286 (1974); see In re NuVasive, Inc., 842 F.3d 1376, 1382–
83 (Fed. Cir. 2016). But, understood in light of our scrutiny
of the patent and the prior art, the Board’s “own
explanation must suffice for us to see that the agency has
done its job and must be capable of being ‘reasonably . . .
discerned’ from a relatively concise [Board] discussion.”
In re NuVasive, 842 F.3d at 1383 (quoting In re Huston,
308 F.3d 1267, 1281 (Fed. Cir. 2002)). Here, the Board
did not explain why an explicit statement in Kahn regarding
a potential motivation to combine was not enough, nor
did it explain how it determined that impermissible
hindsight would be required to conclude that Kahn provided
the requisite motivation to combine, particularly
given its seemingly opposite conclusions in IPR2016-

Monday, August 27, 2018

Jonathan Moskin prevailing attorney in ZHENG CAI v. DIAMOND HONG, INC.

The outcome:

Appellant Zheng Cai DBA Tai Chi Green Tea Inc.
(“Mr. Cai”) appeals an opinion of the U.S. Patent and
Trademark Office’s (“USPTO”) Trademark Trial and
Appeal Board (“TTAB”) cancelling registration of his
mark “WU DANG TAI CHI GREEN TEA” due to a likelihood
of confusion with Appellee Diamond Hong, Inc.’s
(“Diamond Hong”) registered mark, “TAI CHI,” pursuant
to 15 U.S.C. § 1052(d) (2012). See Diamond Hong, Inc. v.
Zheng Cai, Cancellation No. 92062714, 2018 WL 916315,
at *5–8 (T.T.A.B. Feb. 14, 2018); see also 15 U.S.C.
§ 1052(d) (providing a mark may not be placed on the
principal register if it so resembles a mark already registered
“as to be likely . . . to cause confusion”). We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B) (2012).
We affirm.

CAFC finds PTAB applied "too fine of a filter"; vacates PTAB decision in ERICSSON INC. v. Intellectual Ventures

The CAFC vacated a PTAB decision because of failure to consider items in a reply:

Ericsson Inc. and Telefonaktiebolaget LM Ericsson
appeal the final written decision of the U.S. Patent and
Trademark Office’s Patent Trial and Appeal Board,
finding that claims 1–3, 6–9, and 12–14 of U.S. Patent No.
5,602,831 are not unpatentable under 35 U.S.C. § 103.
Because we conclude that the Board improperly did not
consider portions of Ericsson’s Reply, we vacate and

Of relevance

Ericsson’s Reply discussed how interleaving is known
in the prior art, that Reed alone teaches interleaving
packets together, and that Reed and Mahany together
teach the “interleaving packets together” limitation.
In the Final Written Decision, the Board found that
Ericsson had not proven the challenged claims obvious in
light of Reed and Mahany. The Board’s decision relied
entirely on its conclusion that Reed taught only one type
of interleaving, interleaving of R-blocks within an S-block
(or a “packet,” in the nomenclature of the ’831 patent), as
opposed to the interleaving of packets with other packets
within a packet block (i.e., S-blocks with S-blocks) as
required in the ’831 patent. In characterizing the issue,
the Board conceded that “the issue is not whether the
general concept of interleaving was known in the prior
art—it was.” J.A. 15. “Rather, the issue is whether the
prior art teaches interleaving packets together to form
packet blocks in a way that results in varying the number
of packets encoded in the packet blocks.” Id. In concluding
that Reed did not teach this limitation, the Board
rejected the portions of Ericsson’s Reply that argued that
to a person of ordinary skill, given that interleaving
packets together was known in the art, “[t]he difference
between interleaving R-blocks together and interleaving
S-blocks together is insubstantial at best,” holding that
this was a new theory beyond the scope of a proper reply
as defined in 37 C.F.R. § 42.23(b).


The Board’s error was parsing Ericsson’s arguments
on reply with too fine of a filter. Given the acknowledgment
in the patent that interleaving was known in the
art, Ericsson was entitled to argue on reply that the
distinction in the specific type of interleaving between
Reed and the ’831 would have been insubstantial to a
person of skill in the art. The error was exacerbated by
the fact that the significance of interleaving arose after
the Petition was filed, in that the Board adopted a different
construction of the “encoding” terms after the Petition
instituting inter partes review was granted.

"Water bears" and plagiarism

Back in 2016, we discussed the "water bear," -- Genome Of Organism Known As A Water Bear Shows Surprising Amount Of 'Stolen' DNA --

Now we have "water bears" and plagiarism. CBS Accused of Plagiarism Over ‘Star Trek: Discovery’ .

No, not because the bears are copying DNA.

From mediaplaynews:

Indie developer Anas Abdin cites several similarities between “Star Trek: Discovery” and his game Tardigrades, a point-and-click adventure game that featured a giant blue tardigrade that could instantaneously transport people across the galaxy. (Tardigrades, also referred to as water bears, are in reality microscopic organisms known for their durability in extreme conditions.)

Wednesday, August 22, 2018

In Align Technology, CAFC finds no substantial evidence from PTAB or appellee ClearCorrect

The outcome:

Align Technology, Inc., owns U.S. Patent No.
6,699,037. In an inter partes review requested by
ClearCorrect Operating, LLC, the Patent Trial and Appeal
Board determined that claims 1, 2, 9, and 10 are
unpatentable. The Board’s determination rested on its
findings regarding the key prior art, U.S. Patent No.
6,068,482 (Snow), as teaching certain claim elements and
the motivation of a skilled artisan to combine that reference
with others. Neither the Board’s decision nor
ClearCorrect’s brief on appeal reveals substantial evidence
in support of those findings. We vacate the Board’s
final written decision and remand the matter for further
proceedings consistent with this opinion. We affirm the
Board on the one issue of claim construction presented to

Of substantial evidence:

Whether ClearCorrect has demonstrated a motivation to combine
the identified prior art references is an underlying question
of fact that we review for substantial evidence support.
See Redline Detection, LLC v. Star Envirotech, Inc.,
811 F.3d 435, 449 (Fed. Cir. 2015). “Substantial evidence
review asks ‘whether a reasonable fact finder could have
arrived at the agency’s decision’ and requires examination
of the ‘record as a whole, taking into account evidence
that both justifies and detracts from an agency’s decision.’”
Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016).

The CAFC addresses both the PTAB decision and arguments
made in ClearCorrect's brief:

Neither the Board’s decision nor ClearCorrect’s brief
identifies how, contrary to Align’s arguments, Snow
teaches an individualized final tooth arrangement. They
do not provide answers to Align’s key contentions as to
Snow’s failure to teach the standard model (or some
modified version of the standard model) as a final tooth
arrangement for an individual patient. And they do not
show support for understanding Snow to teach that one of
the intermediate stages in Snow is a final tooth arrangement
for an individual patient.

Tuesday, August 21, 2018

Dartmouth plagiarism flap: copying as a natural progression?

In an article titled College investigation alleges plagiarism by health policy professor , The Dartmouth reveals
plagiarism issues associated with a highly-cited 2016 article in the New England Journal of Medicine. The activities in question concern H. Gilbert Welch.

Of note in the text:

Soneji [plagiarism victim] alleged that after a giving a presentation on his findings in May 2015, Welch asked to use one of the slides for a class. Later that year, Soneji and Beltran-Sanchez submitted their study to NEJM but were rejected; a year later, Welch published a similar article in NEJM. When Soneji and Beltran-Sanchez tried to publish their study again that year in a different journal, they were told by a peer reviewer that the article was too similar to the one just published by Welch.

The article, which found that mammograms are likely to cause unnecessary treatment by discovering tumors that will never becoming life-threatening, received significant press coverage and was ranked in the top one percent of all research articles that year in its subject. Soneji and Beltran-Sanchez have called on NEJM to retract the article, but upon receiving Dartmouth’s findings, the journal described the incident in an Aug. 10 letter to the College as an “authorship dispute” and declined to retract the article. In a statement to Retraction Watch, Welch denied the College’s findings, calling the article a “natural progression” of his research.

Apart from the issue with Welch, there are questions which might be asked of NEJM.

[This author had a similar experience; recall also plot elements in the 1995 Law&Order episode "Big Bang."]

Monday, August 20, 2018

CAFC in Large Audience: nothing in § 285 or our case law precludes award of fees for entire litigation

From the case:

The district court did not abuse its considerable discretion
in awarding fees for the entire litigation. To
begin, nothing in § 285 or our case law precludes such an
award. See Homeland Housewares, LLC v. Sorensen Res.,
581 F. App’x 877, 881 (Fed. Cir. 2014) (non-precedential)
(not requiring the “granularity” of limiting “the award to
the costs that Homeland incurred in responding to specific
acts of litigation misconduct”). The district court concluded
that the factual bases for the exceptionality finding—
from the venue fight, to the unreasonable claim constructoins,
to the use of the privileged email—“permeated” the
entire litigation. As we have recognized, full fees may be
awarded in such circumstances. See Monolithic Power
Sys., Inc. v. O2 Micro Int’l Ltd., 726 F.3d 1359, 1369 (Fed.
Cir. 2013) (affirming full fee award based on conduct “that
was ‘pervasive’ enough to infect the entire litigation”
(internal citation omitted)); see also In re Rembrandt
Techs. LP Patent Litig., No. 17-1784, 2018 WL 3862644
(Fed. Cir. Aug. 15, 2018) at *18–19 (rejecting a full fee
award because the district court made no finding that the
exceptional misconduct “so severely affected every stage of
the litigation that a full award of attorney fees was proper”
(quoting and distinguishing O2 Micro, 726 F.3d at
1369)). As discussed above, none of these findings were
clearly erroneous.

CAFC in Maatita : Because we find the Board misapplied § 112 in the design patent context, we reverse.

Of note:

So long as the scope of the invention is clear with reasonable
certainty to an ordinary observer, a design patent
can disclose multiple embodiments within its single claim
and can use multiple drawings to do so. See In re Rubinfeld,
270 F.2d 391, 396 (C.C.P.A. 1959); see also In re
Klein, 987 F.2d 1569, 1570 n.1 (Fed. Cir. 1993) (“[T]he
drawings depict three slight variations on a single basic
design . . . . No objection has been made to this not uncommon
practice.”). This principle is illustrated by Rubinfeld,
in which the disclosure included a first embodiment
(figures 1–4) showing a design of a floor waxer from
different angles, and a second embodiment (figures 5–8)
showing essentially the same floor waxer design, but with
the addition of side braces. 270 F.2d at 392, 394. It was
clear what the patent intended to cover since, as the court
noted, the braces in figures 5–8 could have simply been
shown with dotted lines as immaterial parts. Id. The
court therefore determined that the entire disclosure was
directed to the same “inventive concept” and could be
included within a single claim. Id. at 396.
On appeal, the government argues that we should assess
the indefiniteness of Maatita’s disclosure by employing
the same analysis used for obviousness-type double
patenting situations, in which multiple drawings are
submitted with a single application to illustrate multiple
embodiments and the examiner must compare the overall
visual impression of the submitted drawings to see
whether they are distinct. See MPEP 1504.05 (citing In re
Rubinfield, 270 F.2d 391 (CCPA 1959)). In the double
patenting context, differences between embodiments are
considered insufficient to patentably distinguish them if
the differences are de minimis or would be obvious to a
designer of ordinary skill in the art. Id. Such an analysis
is inappropriate here. Maatita did not provide multiple,
potentially conflicting drawings. Rather, he provided one
drawing, and the Board ruled that it is indefinite and
non-enabled under § 112.


In situations like this, where the sufficiency of a disclosure
for purposes of § 112 depends on whether a drawing
adequately discloses the design of an article, we
believe that the level of detail required should be a function
of whether the claimed design for the article is capable
of being defined by a two-dimensional, plan- or planarview
illustration. The design for an entire shoe or teapot,
for instance, is inherently three-dimensional and could
not be adequately disclosed with a single, plan- or planarview
drawing. Whether an article infringed would depend
on the perspective chosen to view the article, and a twodimensional
drawing provides no fixed perspective for
viewing an article. The article would be infringing from
one perspective but not from another. The design of a rug
or placemat, on the other hand, is capable of being viewed
and understood in two-dimensions through a plan- or
planar-view illustration, which clearly defines the proper
perspective. See Ex Parte Salsbury, 38 U.S.P.Q. 149, 1938
WL 28182, at *2 (Com’r Pat. & Trademarks May 5, 1938)
(“It is recognized that flat articles can generally be sufficiently
illustrated by a single view.”). Such a claim, with a
single drawing, would cover all similarly designed rugs or
mats, even if one might have a low pile and the other a
high pile (for a rug) or might be woven or textured fabric
(for a placemat).


Because a designer of ordinary skill in the art, judging
Maatita’s design as would an ordinary observer, could
make comparisons for infringement purposes based on the
provided, two-dimensional depiction, Maatita’s claim
meets the enablement and definiteness requirements of
§ 112. We therefore reverse the decision of the Board.

Thursday, August 16, 2018

CAFC expounds on "implied waiver" in Core Wireless

The outcome in Core Wireless v. Apple:

Following trial, the jury found that the defendant,
Apple Inc., infringed both asserted claims, and that
neither claim was invalid. Following a concurrent bench
trial, the district court rejected Apple’s argument that the
’151 patent was unenforceable due to implied waiver. We
affirm in part, reverse in part, vacate in part, and remand.

Of the magistrate judge:

The magistrate judge stated that “[n]either party’s
proposal is of much help.” Claim Construction Order,
2016 WL 3124614, at *11. According to the magistrate
judge, Core Wireless’s proposal was “circular” and only
defined the phrase in “terms of what ‘the receiver can
conclude.’” Id. In addition, the magistrate judge found,
Core Wireless’s proposal “makes no reference to the
inventor’s stated intent of relying on the preexisting
concept of a ‘bad frame.’” Id. As for Apple’s construction,
the magistrate judge found that it was “confusing and
unnecessarily limiting.” Id.

The magistrate judge chose a different approach.
Noting that the “specification uses the terms ‘good’ and
‘bad’ to refer to those concepts in the context of the underlying
wireless protocol,” the magistrate judge reasoned
that a “bad” frame “is one that does not contain error-free
user information” and that “it is something about the
frame itself” that indicates the frame’s status as “good” or
“bad.” Id. As a result, the magistrate judge construed
“good state” as a “state flagging that the frame contains
error-free user information,” and “bad state” as a “state
flagging that the frame does not contain error-free user
information.” Id.

The CAFC did not accept the district court's reasoning on

None of those stated reasons supports the district
court’s conclusion. The district court’s finding that Nokia
did not have a duty to disclose its patent application
because its proposal was rejected is unsupported by the
evidence. ETSI’s intellectual property rights policy states
that the disclosure requirement attaches to a member
“submitting a technical proposal” if that party has intellectual
property that “might” be essential “if that proposal
is adopted.” The district court’s interpretation of the
policy would undermine the very purpose of disclosure,
which Dr. Walker testified was to permit the standardssetting
decisionmakers to make an informed choice about
whether to adopt a particular proposal. Dr. Walker’s
unrebutted testimony made it clear that an ETSI member’s
duty to disclose a patent application on particular
technology attaches at the time of the proposal and is not
contingent on ETSI ultimately deciding to include that
technology in an ETSI standard.

As for the district court’s second ground for decision,
there was no testimony at trial that ETSI’s intellectual
property rights policy exempted patent applications that
had not yet matured into issued patents. Rather, Dr.
Walker’s unrebutted trial testimony made clear that the
ETSI policy included patent applications, which are, by
their nature, not yet final.
As for the court’s determination that there was no evidence
that the ETSI members understood Nokia to have
intended to waive its patent rights, there is no requirement
under the implied waiver doctrine that a third party
must interpret the patentee’s conduct as constituting a
waiver of its rights to enforce the patent; such analysis is
more relevant to equitable estoppel. See Hynix, 645 F.3d
at 1348 (equitable estoppel requires a duty of disclosure, a
breach of that duty, and misleading conduct that “led the
alleged infringer to reasonably infer that the patentee
does not intend to enforce its patent against the alleged
infringer” (quoting A.C. Aukerman Co. v. R.L. Chaides
Constr. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992) (en
banc), abrogated on other grounds by SCA Hygiene Prods.
Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct.
954 (2017)).


Nonetheless, we remand rather than reverse. It is
possible to interpret the district court’s ruling as being
based on the conclusion that, because Nokia’s proposal
was not adopted, no inequitable consequence flowed from
Nokia’s failure to disclose its patent application. Equitable
defenses seek to prevent a party from unfairly benefiting
from its wrongful actions, and in some circumstances
courts have held that an equitable defense will not be
recognized if the offending party did not gain a benefit
from its wrongdoing. See Therasense, Inc. v. Becton,
Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en
banc). Implied waiver is an equitable doctrine, and an
equitable doctrine “hinges on basic fairness.” Id.; see also
Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770,
776 (Fed. Cir. 1995) (discussing prejudice and egregious
conduct as factors in showing the equitable defenses of
laches and equitable estoppel). As the Supreme Court
has acknowledged, “the remedy imposed by a court of
equity should be commensurate with the violation.”
Columbus Bd. of Educ. v. Penick, 443 U.S. 449, 465
Because implied waiver, like the doctrine of inequitable
conduct discussed in Therasense, may render an entire
patent unenforceable, the doctrine “should only be applied
in instances where the patentee’s misconduct resulted in
[an] unfair benefit.” 649 F.3d at 1292; see also id.
(“[E]nforcement of an otherwise valid patent does not
injure the public merely because of misconduct, lurking
somewhere in [the past], that was immaterial to the
patent’s [enforcement].”). Therasense, however, recognized
an exception to the materiality requirement for
“cases of affirmative egregious misconduct.” Id. In the
analogous case of implied waiver, which like inequitable
conduct involves the breach of a disclosure duty, the same
equitable considerations require either a showing of
prejudice or egregious misconduct sufficient to justify the
sanction of unenforceability of the patent at issue.

Here, it may be that, despite breaching its duty to disclose
its application, Nokia (and Core Wireless, its successor-in-interest)
did not obtain any unjust advantage,
because Nokia’s proposal was not adopted. On the other
hand, given the similarities between Nokia’s and Ericsson’s
proposals, and given that Nokia participated in at
least some of the discussions in the ETSI working groups,
it is also possible that the standard that was adopted,
which made Nokia’s proposal “optional,” has still provided
Nokia (and Core Wireless) with an undeserved competitive
The district court did not make findings regarding
whether Nokia or Core Wireless inequitably benefited
from Nokia’s failure to disclose, or whether Nokia’s con-
duct was sufficiently egregious to justify finding implied
waiver without regard to any benefit that Nokia or Core
Wireless may have obtained as a result of that misconduct.
Those issues must be addressed in the first instance
by the district court on remand, as the task of applying an
equitable defense is committed to the district court’s
discretion. See Meredith v. Winter Haven, 320 U.S. 228,
235 (1943) (“An appeal to the equity jurisdiction conferred
on federal district courts is an appeal to the sound discretion
which guides the determinations of courts of equity.”);
Qualcomm, 548 F.3d at 1019; A.C. Aukerman, 960
F.2d at 1028. We therefore vacate the district court’s
finding of no unenforceability and remand for further
proceedings consistent with this opinion.

**A footnote from "My Back Pages" (Dylan):

Good and bad, I define these terms
Quite clear, no doubt, somehow

Power Integrations mandamus: really just the camel’s nose under the tent.

Power Integrations disputed PTAB's determinations as to printed publications, which
led to non-institution of an IPR, and filed a mandamus request. It failed.

The CAFC observed:

This is not to say that mandamus will never lie in
response to action by the agency relating to the noninstitution
of inter partes review. The circumstances
described by the Supreme Court in Cuozzo as illustrations
of issues for which an appeal might be justified (e.g.,
constitutional issues, issues involving questions outside
the scope of section 314(d), and actions by the agency
beyond its statutory limits) would be potential candidates
for mandamus review as well. See Cuozzo, 136 S. Ct. at
2141–42; SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359
(2018). But this case involves no issues extraneous to the
application of patent law principles of unpatentability
based on printed publications, nor does it involve any
“shenanigans” on the part of the Board that might justify
appellate review or review by mandamus. See id. at 2142;
see also SAS, 138 S. Ct. at 1359.

CAFC creates an "en banc footnote" in Click-to-Call; 315(b) time bar applies even if infringement action dismissed without prejudice

The need for en banc consideration appears in the dissent (Dyk, Lourie):

En banc consideration was
occasioned by the fact that two different panels reached
opposite conclusions on this issue in this case and in
Luminara Worldwide, LLC, v. Matal, No. 17-1629 (Fed.
Cir. filed Feb. 13, 2018). The en banc court now agrees
with the Click-to-Call panel and holds that section 315(b)
applies, even when the earlier complaint was dismissed
without prejudice.

Footnote 3, but not the rest of the opinion, is en banc. Footnote 3 recites:

The en banc court formed of PROST, Chief Judge,
Judges, considered whether 35 U.S.C. § 315(b)’s time bar
applies to bar institution when an IPR petitioner was
served with a complaint for patent infringement more
than one year before filing its petition, but the district
court action in which the petitioner was so served was
voluntarily dismissed without prejudice. The en banc
court holds that § 315(b)’s time bar applies in such a

The beginning of the case notes:

This long-marooned case returns to us after a voyage
alongside two others interpreting the scope of 35 U.S.C.
§ 314(d)’s “No Appeal” provision and its applicability to
time-bar determinations under 35 U.S.C. § 315(b): Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
and Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364
(Fed. Cir. 2018) (en banc). Because we have held en banc
“that the time-bar determinations under § 315(b) are
appealable,” Wi-Fi One, 878 F.3d at 1367, we address for
the first time the merits of Appellant Click-to-Call Technologies,
LP’s (“CTC”) contention that the Patent Trial
and Appeal Board (“Board”) erred in determining that an
inter partes review (“IPR”) petition challenging claims of
CTC’s patent was not time-barred under § 315(b).

We conclude that the Board committed legal error in
rendering its § 315(b) determination, and reject the
proposed, alternative grounds for affirmance. Because
the subject petition was time-barred, the Board lacked
jurisdiction to institute the IPR proceedings.
we vacate the Board’s Final Written Decision in Oracle
Corp. v. Click-to-Call Technologies LP, No. IPR2013-
00312 (P.T.A.B. Oct. 28, 2014), Paper No. 52 (Final Written
Decision), and remand with instructions to dismiss

The dissent noted:

Other circuits have likewise treated dismissals without
prejudice as restoring the parties to the exact situation
as if the original complaint had never been filed. See,
e.g., Norman v. Ark. Dep’t of Educ., 79 F.3d 748, 751 (8th
Cir. 1996) (“[T]he ‘effect of a voluntary dismissal without
prejudice is to render the proceedings a nullity and leave
the parties as if the action had never been brought.’”
(quoting In re Piper Aircraft Distrib. Sys. Antitrust Litig.,
551 F.2d 213, 219 (8th Cir. 1997))).


We ruled in Abbott Laboratories v. TorPharm, Inc.,
503 F.3d 1372, 1379 (Fed. Cir. 2007), that “[w]e assume
Congress’s familiarity with general principles of law when
enacting a statute.” In other words, “Congress is presumed
to legislate against the backdrop of existing law.”
Morgan v. Principi, 327 F.3d 1357, 1361 (Fed. Cir. 2003);
accord Cannon v. Univ. of Chi., 441 U.S. 677, 698–99
(1979). This widespread treatment of voluntary dismissals
without prejudice provided the background for the
enactment of section 315(b), and section 315(b) must be
read in light of that background legal principle, so that
the one year time-bar is not triggered if the underlying
infringement action is voluntarily dismissed without

**Note also the Luminara decision of 16 Aug 18:

Luminara Worldwide, LLC, (“Luminara”) appeals
from three inter partes review (“IPR”) decisions, in which
the Patent Trial and Appeal Board (“the Board”) held
unpatentable a total of 31 claims across Luminara’s three
patents. On appeal, Luminara challenges the Board’s
decisions as to one claim from each patent and asserts
that the Board’s application of the 35 U.S.C. § 315(b)
time-bar was improper as to the ’319 patent. We vacate
the decision as to the ’319 patent and remand for dismissal
of that IPR, holding that the section 315(b) time-bar
applies, and affirm the other IPRs.

Wednesday, August 15, 2018

New rules in India make it mandatory for institutions to use plagiarism-detection software on students’ theses and researchers’ manuscripts.

CAFC in BSG Tech gives a way around the fact inquiry of Berkheimer

The outcome

BSG Tech LLC sued BuySeasons, Inc. for infringement
of several patents related to systems and methods
for indexing information stored in wide access databases.
BuySeasons sought dismissal of the suit based on its
contention that none of the asserted patent claims were
patent-eligible under 35 U.S.C. § 101. The district court
ultimately agreed with BuySeasons and held all asserted
claims invalid as ineligible under § 101. We agree with
the district court that the asserted claims are ineligible
and, thus, affirm.

As to Alice

Section 101 provides that a patent may be obtained
for “any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement
thereof.” This provision contains an implicit exception
that “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012)). We determine whether
a claim covers ineligible subject matter under § 101
through a two-step test. Alice Corp. v. CLS Bank Int’l,
134 S. Ct. 2347, 2355 (2014). At step one, we “determine
whether the claims at issue are directed to one of those
patent-ineligible concepts.” Id. If so, we consider at step
two whether the elements of each claim, both individually
and as an ordered combination, “‘transform the nature of
the claim’ into a patent-eligible application.” Id. (quoting
Mayo, 566 U.S. at 78).

As to Berkheimer:

At step two, if claims are directed to a patentineligible
concept, “we consider the elements of each claim
both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78–
79). These transformative elements must supply an
“inventive concept” that ensures the patent amounts to
“significantly more than a patent upon the [ineligible
concept] itself.” Id. (quoting Mayo, 566 U.S. at 72–73)
(alteration in original). Claim limitations that recite
“conventional, routine and well understood applications in
the art” are insufficient to “supply an inventive concept.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1378 (Fed. Cir. 2015).
Whether a combination of claim limitations supplies
an inventive concept that renders a claim “significantly
more” than an abstract idea to which it is directed is a
question of law. Underlying factual determinations may
inform this legal determination. See Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). We have
recently held that whether a claim limitation or combination
of limitations is well-understood, routine, and conventional
is a factual question. Id. Accordingly, in cases
where the only issue at step two is whether claim limitations
are well-understood, routine, and conventional, a
genuine dispute over that issue will preclude summary
judgment that a claim is ineligible under § 101. This was
the case for some of the claims at issue in Berkheimer. In
that case, certain claims recited non-abstract features of a
digital asset management system that the specification
described as unconventional improvements over conventional
systems. Id. at 1370. While the Berkheimer defendant
argued those features were conventional, there
was a genuine issue of material fact in that case. Id.
Under those circumstances, summary judgment was
inappropriate. Id.

This case is different. BSG Tech points to the ’699,
’294, and ’652 patent specifications to argue that the
asserted claims recite unconventional features that provide
benefits over conventional prior art databases. But
the relevant inquiry is not whether the claimed invention
as a whole is unconventional or non-routine. At step two,
we “search for an ‘inventive concept’ . . . that is ‘sufficient
to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept]
itself.’” Alice, 134 S. Ct. at 2355 (internal quotation marks
omitted) (quoting Mayo, 566 U.S. at 72–73). After identifying
an ineligible concept at step one, we ask at step two
“[w]hat else is there in the claims before us?” Mayo, 566
U.S. at 78.

It has been clear since Alice that a claimed invention’s
use of the ineligible concept to which it is directed cannot
supply the inventive concept that renders the invention
“significantly more” than that ineligible concept. In Alice,
the Supreme Court held that claims directed to a computer-implemented
scheme for mitigating settlement risks
claimed a patent-ineligible abstract idea. 134 S. Ct. at
2352, 2355–56. Some of the claims at issue covered
computer systems configured to mitigate risks through
various financial transactions. Id. After determining
that those claims were directed to the abstract idea of
intermediated settlement, the Court considered whether
the recitation of a generic computer added “significantly
more” to the claims. Id. at 2357. Critically, the Court did
not consider whether it was well-understood, routine, and
conventional to execute the claimed intermediated settlement
method on a generic computer. Instead, the
Court only assessed whether the claim limitations other
than the invention’s use of the ineligible concept to which
it was directed were well-understood, routine and conventional.
Id. at 2359–60.
Our precedent has consistently employed this same
approach. If a claim’s only “inventive concept” is the
application of an abstract idea using conventional and
well-understood techniques, the claim has not been transformed
into a patent-eligible application of an abstract
idea. See, e.g., Berkheimer, 881 F.3d at 1370 (holding
claims lacked an inventive concept because they “amount
to no more than performing the abstract idea of parsing
and comparing data with conventional computer components”);
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1262 (Fed. Cir. 2016) (holding a claim lacked
an inventive concept because it “simply recites the use of
generic features . . . as well as routine functions . . . to
implement the underlying idea”); cf. Ariosa, 788 F.3d at
1379–80 (rejecting the argument that a newly discovered
natural phenomenon can supply an inventive concept).

Here, the only alleged unconventional feature of BSG
Tech’s claims is the requirement that users are guided by
summary comparison usage information or relative historical
usage information. But this simply restates what
we have already determined is an abstract idea. At Alice
step two, it is irrelevant whether considering historical
usage information while inputting data may have been
non-routine or unconventional as a factual matter. As a
matter of law, narrowing or reformulating an abstract
idea does not add “significantly more” to it. See SAP Am.,
Inc. v. InvestPic, LLC, No. 2017-2081, slip op. at 14 (Fed.
Cir. Aug. 2, 2018) (“What is needed is an inventive con-
cept in the non-abstract application realm. . . .
[L]imitation of the claims to a particular field of information
. . . does not move the claims out of the realm of
abstract ideas.”). BSG Tech does not argue that other,
non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly,
the district court did not err in determining that the
asserted claims lack an inventive concept.

CAFC reverses ITC in Diebold case. Analysis of 112 paragraph 6.

The outcome

We conclude that the term “cheque standby unit” in
the ’235 patent is a means-plus-function term subject to
35 U.S.C. § 112, para. 6, which lacks corresponding structure
disclosed in the specification. We therefore reverse
the Commission’s finding that Diebold violated § 337.

Diebold's argument:

Diebold argues on appeal that “cheque standby unit”
is a purely functional term that connotes no specific
structure and is therefore subject to § 112, para. 6.2
Specifically, it contends that the word “unit” is a “generic
nonce word” akin to “‘mechanism,’ ‘element,’ ‘device,’ and
other nonce words that reflect nothing more than verbal
constructs,” Appellant Br. 30 (quoting Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015)
(en banc)), and highlights that the ’235 patent recites
thirteen different “unit” elements in the claims, each of
which has a unique function. Diebold explains that the
specification includes no discussion of a specific structure
of the “cheque standby unit,” and instead defines the term
exclusively by its function and location. It then points out
that Hyosung’s expert did not testify that the term
“cheque standby unit” connotes sufficiently definite structure,
but instead testified that the term encompasses all
structures capable of fulfilling the function of temporarily
holding checks pending the customer confirming the
deposit, including a nonexhaustive list of structures as
varied as a “suction cup,” a “trap door,” and a “drum.”

Footnote 3 addresses incorporation by reference issues:

At oral argument, counsel for the Commission for
the first time mentioned a patent application incorporated
by reference in the ’235 patent’s specification, arguing
that element 114 of this incorporated patent application,
referred to as a “temporary standby unit,” shows a structure
corresponding to the “cheque standby unit.” Oral
Arg. at 18:14–19:33, available at
17-2553.mp3 (referencing J.A. 5585). Putting aside the
question of waiver, counsel admitted that the section of
the ’235 patent in which this application is incorporated is
directed only to the invention’s tripartite sensors. Id. at
21:15–26. The extent to which material has been incorporated
by reference into a host document is a question of
law, Advanced Display Systems, Inc. v. Kent State University,
212 F.3d 1272, 1283 (Fed. Cir. 2000), and we conclude
that the ’235 patent’s incorporation of this applicaapplication
expressly for its “detailed description” of two
sensors is insufficient to incorporate the application for its
“temporary standby unit,” ’235 patent, col. 5, ll. 3–6.
Counsel admitted, moreover, that the Commission did not
rely on this incorporated application, but relied instead on
the testimony of Dr. Howard. Oral Arg. at 20:00–07.

Both Teva and an 1859 case were cited:

Imposing such a
requirement would be inconsistent with the Supreme
Court’s guidance in Teva Pharmaceuticals, where the
Court held that, even in cases in which the district court
finds a need to look beyond the patent’s intrinsic evidence
and to consult extrinsic evidence, the district court must
still conduct a legal analysis: “whether a skilled artisan
would ascribe that same meaning to that term in the
context of the specific patent claim under review.” 135 S.
Ct. at 841. This is because “‘[e]xperts may be examined to
explain terms of art, and the state of the art, at any given
time,’ but they cannot be used to prove ‘the proper or legal
construction of any instrument of writing.’” Id. (alteration
in original) (quoting Winans v. N.Y. & Erie R. Co., 21
How. 88, 100–01 (1859)). In short, trial courts, after
deciding factual disputes, must interpret patent claims in
light of the facts that they found—“[t]his ultimate interpretation
is a legal conclusion,” and “appellate court[s]
can still review the [tribunal’s] ultimate construction of
the claim de novo.” Id. We specifically applied Teva’s
holding in the context of § 112, para. 6 in Skky, Inc. v.
MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir. 2017), explaining
that “[t]he task of determining whether the
relevant claim language contains a means-plus-function
limitation is . . . a question of law that we review de novo.”
Id. at 1019 (alteration in original) (quoting TriMed, Inc. v.
Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008)).

Raritan Computer was cited:

In Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364
(Fed. Cir. 2003), we considered whether claim limitations
reciting “circuits” were subject to § 112, ¶ 6. We began by
noting that the term “circuit,” which one dictionary defines
as “the combination of a number of electrical devices
and conductors that, when interconnected to form a
conducting path, fulfill some desired function,” “by itself
connotes some structure,” and explained that “the term
‘circuit’ with an appropriate identifier such as ‘interface,’
‘programming’ and ‘logic,’ certainly identifies some structural
meaning to one of ordinary skill in the art.” Id. at
1373. We then observed that nothing in the specification
or prosecution history was inconsistent with the ordinary
meaning of the term “circuit,” and pointed out that the
Raritan’s experts’ testimony “show[ed] only that the term
‘circuit’ is understood by one of ordinary skill in the art as
a very broad term and that one of the accused products
included several of the circuit elements.” Id. at 1373–74.
Here, however, the word “unit,” which the ’235 patent
uses to describe thirteen distinct components of the
invention, does not, standing alone, connote any particular
structure. Nor is sufficient structure imparted by
modifying the word “unit” with the words “cheque” and
“standby” or by specifying the location of the “cheque
standby unit.” The ’235 patent offers no guidance as to
what structure or class of structures “placed in the main
transfer path” might be capable of performing the function
of holding checks pending user instructions.

Of law

“Structure disclosed in the specification qualifies as
‘corresponding structure’ if the intrinsic evidence clearly
links or associates that structure to the function recited in
the claim.” Williamson, 792 F.3d at 1352 (citing Noah
Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir.
2012)). “Even if the specification discloses corresponding
structure, the disclosure must be of ‘adequate’ corresponding
structure to achieve the claimed function.” Id. (citation
omitted). Thus, under § 112, paras. 2 and 6, if a
person of ordinary skill in the art would be unable to
recognize the structure in the specification and associate
it with the corresponding function in the claim, a meansplus-function
clause is indefinite. Id. (citation omitted).

CAFC affirms exceptional case designation, but not fees awarded, in Rembrandt case

The outcome:

Rembrandt appeals both the district court’s exceptional-case
determination and its fee award. We conclude
that the district court did not abuse its discretion in
deeming this case exceptional, but that the court erred by
failing to analyze fully the connection between the fees
awarded and Rembrandt’s misconduct. We thus affirm
the district court’s exceptional-case determination, vacate
the district court’s fee award, and remand for further

As to fees:

Rembrandt also takes issue with the district court’s
award of $51 million in attorney fees. Rembrandt raises
no specific objections to Appellees’ tabulations of the
hours they expended; nor does Rembrandt contend that
Appellees should have calculated fees using a lower
hourly rate. Rembrandt instead argues that the fee
award is excessive and unreasonable because the district
court failed to establish a causal connection between the
claimed misconduct and the fees awarded. We agree.


But, critically, the amount of
the award must bear some relation to the extent of the
misconduct. Rambus, 318 F.3d at 1106. The district
court must explain that relationship, at least to the extent


The district court, by and large, did not even attempt
to assess which issues the claimed misconduct affected. It
specifically addressed the fees Appellees incurred relating
to the ’627 patent, which Appellees had listed separately
in their proposed orders. Second Fees Order, at 2 n.1.
But the district court did not establish a causal connection
between the misconduct and those fees, and it did not
offer any other reason for its fee award. Id. And, even
though the district court explained why it awarded the
attorney fees that Adelphia incurred defending against
Rembrandt in bankruptcy court, it again failed to connect
the misconduct with Adelphia’s fees. Nowhere did the
district court address the requisite “causal connection” it
was required to find between the misconduct and the fees
it awarded. Goodyear, 137 S. Ct. at 1187.


The most appropriate course, therefore, is to remand
for the district court to determine in the first instance
how much of the claimed fees Rembrandt should pay.
This does not require a tedious, line-by-line investigation
of the hours Appellees expended. As the Supreme Court
recently explained in Goodyear, “‘[t]he essential goal’ in
shifting fees’ is ‘to do rough justice, not to achieve auditing
perfection.’” Id. (quoting Fox v. Vice, 563 U.S. 826,
838 (2011)).
“The court may decide, for example, that all
(or a set percentage) of a particular category of expenses—
say, for expert discovery—were incurred solely because of
a litigant’s bad-faith conduct.” Id. “And such judgments,
in light of the trial court’s ‘superior understanding of the
litigation,’ are entitled to substantial deference on appeal.”
Id. (quoting Hensley, 461 U.S. at 437).

Berkheimer guidance: "It depends on what the meaning of the word 'new' is."

On August 17, 2018, President Clinton introduced one of the more interesting "word issues" of all time, concerning the meaning of the word "is."
In context, the relevant exchanges:

Q: Mr. President, I want to, before I go into a new subject area, briefly go over something you were talking about with Mr. Bittman. The statement of your attorney, Mr. Bennett, at Paula Jones deposition, "Counsel is fully aware" – it's page 54, line 5 – "Counsel is fully aware that Ms. Lewinsky has filed, has an affidavit which they are in possession of saying that there is absolutely no sex of any kind in any manner, shape or form, with President Clinton". That statement is made by your attorney in front Judge Susan Webber Wright, correct?

Clinton: That’s correct.

Q: That statement is a completely false statement. Whether or not Mr. Bennett knew of your relationship with Ms. Lewinsky, the statement that there was "no sex of any kind in any manner, shape or form, with President Clinton," was an utterly false statement. Is that correct?

Clinton: It depends on what the meaning of the word "is" is. If the – if he – if "is" means is and never has been that is not – that is one thing. If it means there is none, that was a completely true statement. But, as I have testified, and I'd like to testify again, this is – it is somewhat unusual for a client to be asked about his lawyer's statements, instead of the other way around. I was not paying a great deal of attention to this exchange. I was focusing on my own testimony…]

[See, for example,]

About twenty years later, related to 83 FR 17536 ( April 20, 2018 ), the U.S. Patent Office asks us, by August 20, 2018, to present comments concerning guidance on subject matter eligibility, specifically pertaining to Berkheimer v. HP, en banc rehearing denied, 890 F.3d 1369 (May 31, 2018).

The current patent issue might be stated by Clinton to be

"It depends on what the meaning of the word 'new' is."

One notes that 35 USC 101 (but not 35 USC 102) contains the word "new":

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.

The particular issue: how can a patent claim directed to otherwise ineligible matter, be transformed to a patent-eligible state by adding an inventive concept beyond “well-understood, routine, conventional activity previously engaged in by researchers in the field.”[Mayo v. Prometheus, 566 U.S. 66 (2012)]

Of some historical relation, contemplate the earlier Diehr case.

The priority date for what became the Diehr patent is May 23, 1974. At this point in time, mini-computers such as the PDP-8 were well-established in both academic and industrial laboratories. They could be fitted with analog to digital converters, which ultimately could read, and input, signals from thermocouples, so that temperature readings from external experiments could be made available for rapid calculations.

The first claim of Diehr involved making temperature measurements with a thermocouple, and using these measurements to make calculations via the Arrhenius equation to predict a cure time:

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
• providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,
• initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,
• constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,
• constantly providing the computer with the temperature (Z),
• repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is
where v is the total required cure time,
• repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
• opening the press automatically when a said comparison indicates equivalence


Diehr’s reply brief emphasized the importance of the rapid computer calculations: “Constant recalculations along with continuous determinations of the actual temperatures, is the key feature here, not the equation or the fact of calculation.”

The use of minicomputers to take inputs from thermocouples and to perform calculations thereon was well-understood, routine, and conventional to a skilled artisan at the time of the patent (May 1974). Assuming Diehr was the first person in the micro-world of the rubber-curing business to recognize the value of lab computers in performing calculations (which is not clear on the record), does the claim become eligible under 101 for performing a species of the type of work well-known in the larger area of materials science? As a general matter, can a worker in one field import well-understood, routine, and conventional techniques of measurement or computation from another field to make an abstract idea or law of nature otherwise not patentable, patentable?

In 2012, the Mayo court analyzed the Diehr decision in terms of all the steps. It "found the overall process patent eligible because of the way the additional steps of the process [besides the equation] integrated the equation into the process as a whole." Nothing "suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional."

Later, the Alice court gave a different explanation:

In Diehr, by contrast [with Flook], we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a "well-known" mathematical equation, but it used that equation in a process designed to solve a technological problem in "conventional industry practice." The invention in Diehr used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha[d] not been able to obtain." The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These additional steps, we recently explained, "transformed the process into an inventive application of the formula." Mayo...

Monday, August 13, 2018

“Plagiarism isn’t a mistake: it’s a choice.”

From kitgaru:

Needless to say, IGN staff aren’t taking the actions of Miucin too well, with Reviews Editor Dan Stapleton likening apology to Kevin Spacey’s flippant response to sexual assault allegations, stating that “Getting stabbed in the back and lied to doesn’t bring out my best qualities.” PC Editor Tom Marks added to this with his own post to make it clear that “plagiarism isn’t a mistake: it’s a choice.”

link: Ex-IGN editor removes response to plagiarism accusations after more examples come to light

CAFC addresses inventorship issues in Pappalardo case

There was an interesting fact pattern in the PAPPALARDO case:

As alleged in the Amended Complaint, Mr. Pappalardo
met Ms. Stevins at a pharmaceutical products trade
show and disclosed to her a concept for a new product.
See J.A. 55; see also Appellant’s Br. 13 (specifying product
was related to liquid and solid cannabis delivery systems).
The Amended Complaint alleges Ms. Stevins falsely
stated that she had access to funding from a network of
investors for the product, and entered into a business
relationship with Mr. Pappalardo to commercialize the
product. See J.A. 55−56. Ms. Stevins recommended filing
the ’597 application, which named Ms. Stevins as a joint
inventor. See J.A. 56. The ’597 application remains
pending. See J.A. 56.

According to Mr. Pappalardo, Ms. Stevins “attempted
to independently . . . exploit” his technology. J.A. 59. Mr.
Pappalardo then sued Ms. Stevins, asserting claims of
fraud and negligent representation (Counts I and II), and
seeking declaratory judgment of sole inventorship (Count
III).1 See J.A. 56−61. The District Court dismissed the
declaratory judgment claim on the grounds that it lacked
jurisdiction to hear claims for correction of inventorship
for a pending patent application, Pappalardo, 2017 WL
4553919, at *2 (citing 35 U.S.C. § 256 (2012) (“Whenever
through error a person is named in an issued patent as
the inventor . . . [, a] court . . . may order correction of the
patent . . . .” (emphasis added))), and the state law claims
for fraud and negligent representation on the grounds
that, inter alia, they were also “contingent on” the U.S.
Patent and Trademark Office’s (“USPTO”) determination
on the ’597 application, id. at *3. The District Court also
held that, “[e]ven setting aside this jurisdictional defect,”
it was “hard-pressed” to find that the state law claims
were pleaded with sufficiency pursuant to Federal Rule of
Civil Procedure 12(b)(6). Id.

The CAFC noted:

However, because the “true nature” of
Mr. Pappalardo’s inventorship claim is for relief pursuant
to federal law, specifically 35 U.S.C. § 256, “we will accept
that [Mr. Pappalardo] pleaded an action for correction of
inventorship.” Larson v. Correct Craft, Inc., 569 F.3d
1319, 1325 (Fed. Cir. 2009); see HIF Bio, 600 F.3d at
1352−53 (characterizing claims pleaded as state law
declaratory judgments more properly as correction of
inventorship claims pursuant to § 256). Accordingly, the
District Court had subject matter jurisdiction over this
claim “[b]ecause inventorship is a unique question of
patent law.” HIF Bio, 600 F.3d at 1353; see Bd. of Regents,
Univ. of Tex. Sys. v. Nippon Tel. & Tel., 414 F.3d
1358, 1363 (Fed. Cir. 2005) (“[I]ssues of inventorship
. . . present sufficiently substantial questions of
federal patent law to support jurisdiction under [28
U.S.C. §] 1338(a).”).

However, we agree with the District Court’s dismissal
of the declaratory judgment claim because the claim “fails
to allege a cause of action upon which relief can be granted.”
Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d
1353, 1361 (Fed. Cir. 2008); see Bell v. Hood, 327 U.S.
678, 682 (1946) (“Failure to state a proper cause of action
calls for a judgment on the merits and not for a dismissal
for want of jurisdiction.”). “A § 256 claim for correction of
inventorship does not accrue until the patent issues.” Hor
v. Chu, 699 F.3d 1331, 1335 (Fed. Cir. 2012). Moreover,
there are no other private causes of action available to a
litigant to challenge inventorship of a pending patent
application. See HIF Bio, 600 F.3d at 1353−54; see also
id. at 1353 (stating “Congress . . . has limited the avenues
by which such inventorship [of a pending patent application]
can be contested” to “the Director of the [USPTO]”).
Should a patent issue from the ’597 application, nothing
prevents Mr. Pappalardo from seeking declaratory judgment
relief on a correction of inventorship claim at that
time. See Hor, 699 F.3d at 1335−36. At this time, h

Sunday, August 12, 2018

CBS Sunday Morning on 12 August 2018 does cover story on exo-skeletons for humans

The cover story on August 12, done by Lee Cowan, was titled --Robotic exoskeletons: Helping paraplegics walk again --
The company ReWalk was mentioned; a patent to ReWalk:

Patent number: 9526668

Abstract: An exoskeleton bracing system includes: a trunk support for affixing to the trunk of a disabled person and leg braces for connecting to the legs of the person, each leg brace including limb segment braces. Motorized joints are adapted to provide relative angular movement between the limb segment braces of the leg braces and between the leg braces and the trunk support. One or more ground force sensors are designed to sense ground force exerted on each of the leg braces. The system also includes a controller for receiving sensed signals from said one or more ground force sensors, with an algorithm for identifying a stance from the sensed signals and, based on the identified stance, actuating the motorized joints to perform an action relating to a mode of locomotion selected from a set of predefined actions corresponding to the identified stance.

Filed: May 14, 2013
Date of Patent Issuance: December 27, 2016
Assignee: ReWalk Robotics Ltd.
Inventors: Amit Goffer, Chaya Zilberstein

The episode had an interview with Petula Clark.

The moment of nature was sandpipers in Wolfville, Nova Scotia.

Sunday, August 05, 2018

CBS "Sunday Morning" on 5 August 2018 does provocative story on maternal mortality

CBS Sunday Morning on August 5, 2018 was a study in contrasts. Erin Moriarity did "Maternal mortality: An American crisis", which could easily have been a hit on "60 Minutes." It preceded a puff piece by Jim Gaffigan on the need for a good nap, which joined other puff pieces on truffle-seeking dogs and sandboarding.

Some text from "maternal mortality:"

Moriarty asked, "And where do we compare to other developed countries, like Great Britain, Canada?"

"The United States is ranked 46th when it comes to maternal mortality. That's behind countries like Saudi Arabia and Kazakhstan."

In the U.S., that means at least two women are dying every day. And it's not just deaths on the rise. So are "near deaths" … 60,000 a year across the country.


Moriarty asked, "Why? You're not talking about access to healthcare, you're not talking about money or education."

"No, and this is gonna be hard to hear: we believe black women less when they express concerns about the symptoms they're having, particularly around pain. And that's the common thread in all of the stories we've been hearing in the media, including Serena Williams."

The cover story "Drowning in a Sea of Plastic" was of interest but not as scary or as timely as "Maternal mortality." Pogue made reference to the film "Plastic China," which led to a politically-based reversal of Chinese policy on accepting plastics, effective January 2018. In terms of great misunderstandings, a review for "Plastic China" had stated:

I learned a bit about plastic recycling some twenty years ago when for two months I walked the streets of the beach cities in the Los Angeles area collecting bottles and cans. I found out then that the plastic that was not deposit bottles was gathered into great shipping crates and sold to China. In turn many American companies bought the resulting pellets from China! This film shows why it was economic to ship the plastic waste to China and then effectively speaking buy back a value-added product. Quite simply the labor costs were and are so much less.

Curiously this is an uplifting doc with almost no political message. Because the people are shown going about their daily lives we come to feel we know them, and indeed their hopes and dreams and the way they live with one another is very much like people everywhere.

Pogue's take would be the opposite.

FoxNews reported on 21 June 2018:

China, which has imported 45 percent of the world’s plastic since 1992 for recycling, banned the import of non-industrial waste beginning this year. Therefore, tens of millions of yogurt cups, water bottles, containers and plastic bags now have nowhere to go.

As the Science Advances study notes, plastic packaging and single-use plastics tend to enter the waste stream, contributing to a total of 6.3 billion metric tons of plastic waste generated worldwide. Some of that waste is recycled, but the overwhelming majority ends up in landfills or polluting our oceans.

“We know from our previous studies that only 9 percent of all plastic ever produced has been recycled, and the majority of it ends up in landfills or the natural environment,” Jenna Jambeck, associate professor in UGA’s College of engineering and co-author of the study, told UGA News.

Almanac did "American Bandstand," which went national on ABC on August 5, 1957 and remained national for thirty years, until 1987. MTV launched on August 1, 1981. Just as "American Bandstand" died off, MTV is sagging; MTV's ratings had been said to be failing systematically, as younger viewers increasingly shift toward other media platforms, with yearly ratings drops as high as 29% (wikipedia).

Faith Salie did a piece on Dox Thrash, which obliquely touched on innovation. From the text:

Most printmakers start with a light surface and add dark layers. But Thrash did the opposite
– scraping away the dark to create lighter grays and whites. He named the technique
after his mother, calling it "the Opheliagraph."

"Sunday Morning" said this is also termed carborundum mezzotint. Note wikipedia states that this was invented in 1952 by Henri Goetz, an American abstract artist living in Paris. states: Originally, Thrash wanted to name this new technique the “Opheliagraph” for his mother, who died in 1936.

Of interest in the Thrash story:

"I want Dox Thrash now to be seen as one of our great American artists," said Hammond.

"Not African American?" asked Salie.

"No, American artist who tells wonderful, important, pivotal stories about American history, American life."

Thrash had connections to Chicago and Philadelphia.

The moment of nature was not particularly unusual: wild horses on Assoteague Island, Maryland.

***UPDATE on recycling (15 Aug 2018):

Garbage companies are refusing your recycling. The trade war with China will make it worse with text:

China had been a big buyer of reclaimed refuse but recently tightened its rules on the products it accepts, requiring the various materials to be rigorously separated and much cleaner than in the past. The country is also threatening to impose a tariff on trash amid a broadening trade war with the United States, which could ding recycling companies.

“They are shutting the door on a lot of materials,” said Kimberly Scheibly, director of compliance and customer relations at Marin Sanitary Service in San Rafael, where mixed paper has been accumulating for months as the firm looks for a buyer. Markets like Vietnam and Mexico have opened up, but due to their smaller size, they often get inundated with material and can’t take more, she said.


As part of the escalating trade war, China announced this month that it would impose a tariff of 25 percent on $16 billion worth of goods, including paper waste, Reuters reported. That has Abreu concerned, because that means recycling centers may have to pay more for materials sold to China.

“The tariff is another layer on top of the (rules) that they already adopted,” Abreu said. “It’s like getting two punches instead of one.”

Saturday, August 04, 2018


From the patent application:

[0015] The present disclosure relates to generating and/or rendering a user interface upon a display of a device that displays information related to various types of tasks. For example, a task can be related to the fulfillment process of electronic commerce orders by personnel or workers in a fulfillment center. Such a task can also be related to delivery of a parcel by a package delivery service. The present disclosure also relates to determining a location of a worker within the fulfillment center, which can facilitate rendering information on a user interface on the display to facilitate a given task. user interface can be rendered and displayed by a wearable computing device, such as augmented reality glasses, that overlay a user interface over a field of view of a fulfillment center worker.

[0016] For example, if a location of a worker within a fulfillment center can be determined, location-specific information, such as, for example, turn-by-turn directions to a destination within the fulfillment center, can be rendered in the user interface. A destination within the fulfillment center can include a particular floor, row, shelf, bin, or a particular item or product that is stocked within the fulfillment center. Accordingly, embodiments of the disclosure can facilitate providing various types of information to a worker in a fulfillment center in a user interface that is rendered by a wearable computing device, where the information is also based at least in part on the location of the user as detected in accordance with embodiments described herein.


[0025] The user interface 105 can also be updated in response to the changing orientation of the wearable computing device 103. Because the wearable computing device 103 can take the form of augmented reality glasses that are worn on the user's head and in which the user interface 105 is rendered upon one or more lenses of the augmented reality glasses, it may be the case that the visual indicator 109 requires updating as the user moves his or her head while moving through the fulfillment center as well as when the user is standing still within the fulfillment center. Accordingly, the wearable computing device 103 can also be equipped with one or more sensors that can detect movement, acceleration,
orientation, and other aspects of the position of the device.


[0048] The wearable computing device 103 can also be configured with wireless communication capabilities such as wireless local area network (WLAN) capability that can be employed to facilitate communications with the computing environment 303 via the network 309. Additionally, the wearable computing device 103 can also be equipped with personal area network (PAN) wireless communications capabilities such as a Bluetooth capability. In any form, the wireless communications capabilities of the wearable computing device 103 can allow the wearable computing device 103 to detect location beacons that are positioned throughout the fulfillment center 200. A location beacon can comprise a device that emits a wireless signal indicating a location within the fulfillment center 200. Such a location beacon can emit a location identifier that can be captured by the wireless communications capabilities of the wearable computing device 103 and in turn by the client application 381.

[0049] The wearable computing device 103 can also be equipped with one or more position sensors 385 that can provide information about orientation and/or movement of the wearable computing device 103. For example, position sensors 385 can include accelerometers, altimeters, speedometers, or other sensors that can provide pitch data, yaw data, roll data, velocity, acceleration, or other information related to movement and orientation of the wearable computing device 103. In one embodiment, the wearable computing device 103 can execute an operating system that provides an application programming interface (API) that provides API calls with which the client application 381 can access information about device position and/or orientation or other data obtained by the position sensors 385.

Taking notes from a lecture, or copying notes; is this plagiarism?

There was an odd post on (alleged) plagiarism by police recruits in Cleveland, Ohio. Relevant text:

An investigation is underway into 15 Cleveland police recruits following alleged irregularities involving plagiarism found in their Ohio Peace Officer Training Academy (OPOTA) required notebooks.

The notebooks are required by the police academy and are used to take the final exam the cadets need to pass in order to become sworn officers, a police source said. Each cadet is required to take notes during class and then transfer their notes to an OPOTA notebook. The class notebooks are regularly inspected by instructors.

The investigation was ordered when the notebooks were inspected and signs of plagiarism were found, according to a police source. Details surrounding what was allegedly plagiarized were not released.

If the recruits were making notes from the same class, one would infer that the notes would necessarily bear substantial similarity, even if the recruits took the notes independently. And, in taking notes, all the recruits are basically copying from the lecture. Is this the kind of "plagiarism" we want to punish?


Friday, August 03, 2018

JTEKT case: standing requires that a planned product create a substantial risk of infringement

The outcome was "no standing":

GKN Automotive LTD (“GKN”) owns U.S. Patent No.
8,215,440 (“the ’440 patent”). In inter partes review
(“IPR”), the Patent Trial and Appeal Board (“the Board”)
found claims 2 and 3 of the ’440 patent not unpatentable.
JTEKT Corporation (“JTEKT”), the petitioner in the IPR,
appealed. Because JTEKT lacks standing to appeal, we
dismiss the appeal.

The Consumer Watchdog/WARF case is cited:

Under the IPR statute, any person or entity may petition
the Patent Office to institute an IPR proceeding. 35
U.S.C. § 311(a). There is no requirement that the petitioner
have Article III standing, as “[p]arties that initiate
[IPRs] need not have a concrete stake in the outcome;
indeed, they may lack constitutional standing.” Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016).
We have similarly concluded that “Article III standing is
not necessarily a requirement to appear before an administrative
agency.” Consumer Watchdog v. Wis. Alumni
Research Found.,
753 F.3d 1258, 1261 (Fed. Cir. 2014)
(citation omitted). The statute also provides that an
unsuccessful petitioner may appeal an adverse final
written decision. 35 U.S.C. § 141(c) (“A party to an inter
partes review or a post-grant review who is dissatisfied
with the final written decision of the Patent Trial and
Appeal Board . . . may appeal the Board’s decision . . . to
the United States Court of Appeals for the Federal Circuit.”).


Similarly, in Consumer Watchdog, a nonprofit organization
(Consumer Watchdog) petitioned for IPR concerning
a patent for embryonic stem cells, but was
unsuccessful before the Board. Consumer Watchdog, 753
F.3d. at 1260. Consumer Watchdog appealed to this
court. Consumer Watchdog did not “allege[] any involvement
in research or commercial activities involving human
embryonic stem cells. Nor . . . that it [was] an actual
or prospective competitor of [the patent owner] or licensee.”
Id. We held that there was no standing “[b]ecause
Consumer Watchdog [did] not establish[] an injury in
fact.” Id. These cases stressed that the “obligation to
establish an injury in fact” for appellants “remains firm.”
Phigenix, 845 F.3d. at 1172 n.2.

In THIS case:

As the party seeking judicial review, JTEKT has the
burden of establishing that it possesses the requisite
injury. See DaimlerChrysler Corp. v. Cuno, 547 U.S. 332,
342 (2006). Thus, in IPR appeals, “an appellant must . . .
supply the requisite proof of an injury in fact when it
seeks review of an agency’s final action in a federal court,”
by creating a necessary record in this court, if the record
before the Board does not establish standing. Phigenix,
845 F.3d at 1171–72. When the record before the Board is
inadequate, the appellants “must supplement the record
to the extent necessary to explain and substantiate its
entitlement to judicial review,” such as by submitting
“affidavits or other evidence to demonstrate its standing.”
Id. at 1173 (citations omitted).

The fact that JTEKT has no product on the market at
the present time does not preclude Article III standing,
either in IPRs or in declaratory judgment actions. See,
e.g., Altaire Pharms., Inc. v. Paragon Bioteck, Inc., 889
F.3d 1274, 1280–83 (Fed. Cir. 2018). Both IPRs and
declaratory judgment actions enable a party to secure a
judicial determination in advance of actual, liabilitycreating
injury. But where the party relies on potential
infringement liability as a basis for injury in fact, but is
not currently engaging in infringing activity, it must
establish that it has concrete plans for future activity that
creates a substantial risk of future infringement or likely
cause the patentee to assert a claim of infringement.
While JTEKT has submitted two declarations in support
of its standing, JTEKT’s problem is that these declarations
do not establish that its planned product would
create a substantial risk of infringing claims 2 or 3 of
GKN’s ’440 patent or likely lead to charges of infringement.
GKN has not alleged infringement, see PPG Indus.,
Inc. v. Valspar Sourcing, Inc., 679 F. App’x 1002, 1004
(Fed. Cir. 2017) (non-precedential), and, while JTEKT
and GKN are competitors generally, JTEKT expressly
conceded that “no product is yet finalized.” J.A. 1642, at ¶
13. JTEKT’s product is in development and “will continue
to evolve.” J.A. 1642, at ¶ 15. The declaration of Mikiharu
Oyabu, JTEKT’s Chief Engineer, admits that
“JTEKT is [still] currently validating its design, including
tuning and conducting customer demonstrations. . . . [t]he
concept will continue to evolve and may change until it is
completely finalized.” J.A. 1642, at ¶¶ 14–15.

The bottom line:

Because JTEKT has failed to establish an actual injury
sufficient to confer Article III standing, we dismiss this

Thursday, August 02, 2018

In GLG Farms, BOTH parties agree on error by district court, but decision stands

In GLG Farms:

As an initial matter, we note that the parties agree
that the district court erred by replacing the phrase
“adjacent the [first/second] side edge” with the phrase “on
the [first/second] side edge.” According to the parties, the
word “adjacent” encompasses both “on” and “near” in this
particular context. See Oral Arg. at 36:16–38:10, GLG
Farms LLC v. Brandt Agric. Prods., Ltd. (No. 2017-1937),

We nevertheless agree with the court’s construction
insofar as it requires the drive assemblies to be mounted
between the end walls. The ’131 patent discloses a single
embodiment which the patent consistently describes as
having its drive assemblies and wheels located on the
base wall between the end walls. See, e.g., ’131 patent,
Abstract (“Each drive assembly is mounted approximately
midway across the base wall . . . .”), fig.2 (depicting drive
wheels mounted between the end walls), col. 3, ll. 61–65
(stating that the wheels can be moved “along the inclined
wall” of the base wall). These disclosures stand in stark
contrast to the patent’s depiction of the prior art, which
shows that the only wheels on the hopper are mounted to
the outside of the end walls. S

CAFC in SAP America: We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility.

The beginning of the SAP America decision:

InvestPic, LLC’s U.S. Patent No. 6,349,291 describes
and claims systems and methods for performing certain
statistical analyses of investment information. We addressed
this patent in In re Varma, 816 F.3d 1352 (Fed.
Cir. 2016), where we construed key claim terms and
partly reversed and partly vacated the Patent Trial and
Appeal Board’s cancellations of various claims in two
reexamination proceedings involving issues of anticipation
and obviousness under 35 U.S.C. §§ 102 and 103.
The present appeal involves a declaratory judgment
action filed in 2016 by SAP America, Inc., which alleges,
among other things, that the claims of the ’291 patent are
invalid because their subject matter is ineligible for
patenting under 35 U.S.C. § 101. When SAP moved for a
judgment on the pleadings on that ground, the district
court granted the motion, holding all claims ineligible
under § 101 and hence invalid. SAP Am., Inc. v. InvestPic,
LLC, 260 F. Supp. 3d 705, 718–19 (N.D. Tex.
We affirm. We may assume that the techniques
claimed are “[g]roundbreaking, innovative, or even brilliant,”
but that is not enough for eligibility. Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for
subject-matter eligibility that claimed techniques be novel
and nonobvious in light of prior art, passing muster under
35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is
still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”);
Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness)
(Symantec). The claims here are ineligible because their
innovation is an innovation in ineligible subject matter.
Their subject is nothing but a series of mathematical
calculations based on selected information and the
presentation of the results of those calculations (in the
plot of a probability distribution function). No matter
how much of an advance in the finance field the claims
recite, the advance lies entirely in the realm of abstract
ideas, with no plausibly alleged innovation in the nonabstract
application realm. An advance of that nature is
ineligible for patenting.

Wednesday, August 01, 2018

No prosecution history estoppel in Advantek design patent case

The beginning of the opinion by Judge Pauline Newman:

Advantek Marketing, Inc. is the owner of design patent
No. D715,006 (“the D’006 patent”) for a portable
animal kennel that Advantek sells with the mark “Pet
Gazebo.” Advantek states that the Pet Gazebo is its
“flagship product,” that it has received awards and been
successful commercially, for “[i]t provided a great solution
for pet owners who wanted to take their pets with them,
whether to a friend’s house, on vacation, or simply out to
the backyard.” Appellant’s Br. at 2.
Advantek sued its former manufacturer, Shanghai
Walk-Long Tools Co., together with Advantek’s former
vice president and others (collectively, “Walk-Long”), for
patent infringement, breach of contract, and aiding and
abetting breach of fiduciary duty. The complaint alleged
that Walk-Long copied the Pet Gazebo and infringed the
D’006 patent with their device called the “Pet Companion.”
The district court granted Walk-Long’s motion for
judgment on the pleadings under Federal Rule of Civil
Procedure 12(c), holding that prosecution history estoppel
bars Advantek from enforcing the D’006 patent against
the Pet Companion. Final judgment was entered after
the parties stipulated to dismissal of the non-patent

We conclude that prosecution history estoppel does
not preclude enforcement of the D’006 patent against the
accused kennel. The judgment is reversed, and the case is
remanded for further proceedings.


We conclude that Advantek is not estopped by the
prosecution history from asserting the D’006 patent
against Walk-Long and its Pet Companion. The dismissal
under Rule 12(c) is reversed. We remand for further

Festo is cited:

Advantek stresses that the accused kennel’s structure
is the same as shown in the D’006 patent, whether or not
a cover is present. Advantek states that it elected the
broader scope of the kennel structure design, that is,
unlimited by the presence of a cover, and that prosecution
history estoppel does not arise, for “[e]stoppel arises when
an amendment is made to secure the patent and the
amendment narrows the patent’s scope.” Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736

Regardless of whether Advantek surrendered claim
scope during prosecution, the accused product falls outside
the scope of the purported surrender, contrary to the
district court’s conclusion. Advantek elected to patent the
ornamental design for a kennel with a particular skeletal
structure. A competitor who sells a kennel embodying
Advantek’s patented structural design infringes the D’006
patent, regardless of extra features, such as a cover, that
the competitor might add to its kennel.2 Construed in the
light most favorable to Advantek, the complaint can be
read to accuse the skeletal structure of Walk-Long’s Pet
Companion. The complaint alleges that Walk-Long

infringes the D’006 patent “by making, using, offering for
sale, and/or selling the patented design without the
authority of Advantek,” and by “making, using, selling,
offering for sale or importing the Accused Product.” J.A.
25. Although Walk-Long argues that it was uncertain as
to what was being accused of infringement, if clarification
was needed, the district court should have granted Advantek
leave to file an amended complaint. Under Ninth
Circuit procedural law, “[a] simple denial of leave to
amend without any explanation by the district court is
subject to reversal.” Sharkey v. O’Neal, 778 F.3d 767, 774
(9th Cir. 2015) (quoting Eminence Capital, LLC v. Aspeon,
Inc., 316 F.3d 1048, 1052 (9th Cir. 2003)).