Friday, September 28, 2018

Kavanaugh proceedings on 27 Sept 18 and the statute of limitations on attempted rape

From time to time, laches issues arise in patent law. The discussion of "statute of limitations" in the Kavanaugh matter was of interest.

In an article titled Why Maryland police aren’t investigating the Kavanaugh allegations the Washington Post addresses the issue of the relevant statute of limitations which arose during the Senate proceeding on 27 September 2018.

The article confirms that, presently, there is no "statute of limitations" on attempted rape, now a felony:

The Maryland legislature changed the law in 1996, making attempted rape a felony and removing the statute of limitations, according to McCarthy and Jordan.

HOWEVER, the relevant law would be as it existed at the time of the crime, which was before 1996:

“But we’d have to apply the law as it existed at the time of the allegations,” McCarthy said.


As a misdemeanor, the offense carried a one-year statute of limitations, meaning charges would have had to be filed within a year of an incident, according to John McCarthy, Montgomery County’s longtime chief prosecutor. Lisae C. Jordan, the executive director and counsel for the Maryland Coalition Against Sexual Assault, and other longtime Maryland lawyers interviewed in recent days concurred.

A separate issue of interest was the matter of the leak, brought up by Senators Cruz and Cornyn. Senator Feinstein emphatically denied leaking, by herself or by her staff. A semantic issue may be the distinction between the actual letter itself compared to the factual contents of the letter. The DailyMail gave a bit of a timeline:

JULY 6: Christine Ford sends a letter to Rep. Anna Eshoo (D-CA) alleging that she was sexually assaulted in high school by Brett Kavanaugh, a leading contender to fill the Supreme Court seat vacated by Justice Anthony Kennedy. Ford also sends a text about the incident to the Washington Post. The assault allegedly took place in the early 1980s, when Ford was 15 and Kavanaugh was 17.

JULY 6 to JULY 8: Christine Ford tells 'beach friends' in California for the first time that she was assaulted by Kavanaugh and asks for advice on whether to go public.

JULY 9: President Donald Trump nominates Kavanaugh to the Supreme Court. After the announcement, a staffer in Rep. Eshoo's office calls Ford to discuss her allegations against Kavanaugh.

JULY 10: Ford contacts the Washington Post for the second time, and gets a response. She starts having conversations with a reporter at the paper off the record via WhatsApp. The app is encrypted, meaning its contents cannot be access by a third party. To use it, Ford's phone number would be known to the Washington Post.

The "public" report did not appear until September:

Grim's story [ Ryan Grim isthe D.C. bureau chief for The Intercept ], which ran on Sept. 12, reported that Democrats on the Senate Judiciary Committee 'have privately requested to view a Brett Kavanaugh-related document' held by Feinstein. The story noted that Feinstein had rejected the requests.

Text from the DailyMail.

Monday, September 24, 2018

Hyatt wins legal point at CAFC, but loses anyway

Gilbert Hyatt sued the United States Patent and
Trademark Office alleging that the PTO acted unlawfully
in denying his petition for rulemaking. Mr. Hyatt now
appeals from the district court’s grant of the PTO’s motion
for summary judgment and dismissal of his claims for
lack of subject matter jurisdiction. We reverse the district
court’s dismissal for lack of subject matter jurisdiction.
Because Mr. Hyatt’s claims are either time-barred or
reliant on mistaken statutory interpretation, however, we
affirm on alternate grounds the district court’s grant of
summary judgment.

Of note:

In contrast to the agency actions challenged in those
cases, the PTO’s denial of Mr. Hyatt’s petition was not an
intermediate action taken in the course of proceedings
that would culminate in a final agency action exclusively
reviewable by this court and the Eastern Virginia district
court. The process for petitioning the PTO for rulemaking
is completely separate from the patent application examination
process that culminates in final PTAB decisions.
Thus, we do not need to exercise exclusive jurisdiction
over denials of petitions for rulemaking in order to protect
our future jurisdiction. If another court granted Mr.
Hyatt’s requested relief and prohibited PTO examiners
from reopening prosecution of applications after an appeal
brief has been filed, the prosecution process would
change, but our ability to review final PTAB decisions
would remain unaffected.

Accordingly, the exclusive jurisdiction of this court
and the Eastern Virginia district court to review final
PTAB decisions under § 141 and § 145 does not displace
the district court’s jurisdiction over APA challenges to the
PTO’s denial of a petition for rulemaking.

Of the time bar issue

Because his other claims are time-barred, we only
consider the merits of Mr. Hyatt’s claim that the PTO
unlawfully denied his petition for rulemaking because
MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1). Section
6(b)(1) requires that the PTAB “shall — (1) on written
appeal of an applicant, review adverse decisions of examiners
upon applications for patents pursuant to section
134(a).” Under 35 U.S.C. § 134(a), “[a]n applicant for a
patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the
Patent Trial and Appeal Board, having once paid the fee
for such appeal.”

Sunday, September 23, 2018

Curious collection of stories on "CBS Sunday Morning" on 23 September 2018

The cover story on Sandy Hook was sad: A battle currently pits parents still mourning the loss of their children in the Sandy Hook school shooting against purveyors of the most mean-spirited and outlandish of myths. Our Cover Story is reported by Tony Dokoupil

Kurt Andersen was quoted in the piece, in turn quoting Patrick Moynihan:

"As Daniel Patrick Moynihan famously said 30 years ago, many times, repeatedly, 'You're entitled to your own opinions but not to your own facts,'" said Kurt Andersen. "He was kind of joking back then. And we've come to this place where many, many, many millions of people feel absolutely entitled to their own facts."

Although the details of the case against Alex Jones were not enumerated, Floyd Abrams was quoted:

Floyd Abrams is a respected First Amendment lawyer, famed for defending The New York Times' publication of the Pentagon Papers. "This is a very tough case for Alex Jones to win," he said, "because what he has said is so appalling."

He says Jones may have gone beyond the protections of free speech, and the consequences may be severe.

The Almanac feature touching on "Typhoid Mary" was a bit grim: And now a page from our "Sunday Morning" Almanac: September 23, 1869, 149 years ago today … the day that saw the birth, in rural Ireland, of Mary Mallon – remembered today as "Typhoid Mary."

The piece by Dr. Sanjay Gupta somewhat indirectly addressed the Kavanaugh / Ford issue. Although the connection was made clear in the prefatory text --The question of whether alcohol affects memory hangs over the current Supreme Court confirmation battle. Here with some answers is Dr. Sanjay Gupta: --, the indicated conclusion was a bit oblique, with the story ending on a suggestion "to improve your memory":

Truth is: When it comes to alcohol and memory, people assume a lot of things – and a lot of those assumptions are wrong.


One study last year showed that in this situation mild- to moderately-intoxicated people had very similar recall as sober people.

Now, there is a thing known as "blackout drunk." That is not the same as "passed out drunk." Someone who is blacked-out drunk may still be talking and walking. But they might be totally amnestic to the event, meaning they have no memory of it.

The biggest culprit is not necessarily how much you drank, but how quickly they drank it – the binge drinker.

With memory and alcohol you also have to consider how much time has passed. While a mild- to moderately-intoxicated person can remember things pretty well in the short term, their long term memories are much more difficult to retrieve.

And to understand why, it helps to understand how memory works. You take in sensory information – see, hear, feel – and that almost immediately gets transferred to short-term memory. From there, short-term memories get encoded into long-term memory.

It's this last phase where alcohol seems to have the most impact. For someone who's intoxicated, that encoding into long-term memory often doesn't occur very well, or at all. And that is why days later someone may have a hard time remembering something that was so vivid earlier, but can't retrieve the memory from the long-term stores, because the memories were never there in the first place.

[Then, the narrative abruptly and oddly switches from absence of long term memory through binge intoxication (related to the viewpoint of the Ford scenario AND why Kavanaugh might not remember) to a recommendation to the general public]

If you want to improve your memory, the best things you can really do: pay attention when something is happening; that helps a lot. And don't forget sleep, because it's when you sleep that your body consolidates and transfers your short-term memories to long-term memoriesm the kind you'll have for the rest of your life.


The viewer was told there was no space for the news events of the coming week. CBS sunday morning calendar | We have it on Downloadsearch‎

The moment of nature involved dolphins in the Red Sea. Previously, on Jan 21, 2018 , Sunday Morning did sea slugs in the Red Sea.

***Merely as background

Christine Blasey Ford, Kavanaugh accuser, commits to public hearing this Thursday , including

In a statement on Sunday [23 Sept. 2018], Ford's lawyers Debra Katz, Lisa Banks and Michael Bromwich said their client "has agreed to move forward" with a public hearing before the Senate Judiciary Committee on Thursday, Sept. 27, at 10 a.m. on Capitol Hill. The legal team said that "important progress" had been made with committee staffers after a week of negotiations over the format and conditions of her testimony.

"Despite actual threats to her safety and her life, Dr. Ford believes it is important for Senators to hear directly from her about the sexual assault committed against her," the attorneys wrote. Committee Chairman Chuck Grassley confirmed the hearing would be taking place on Thursday in a statement late Sunday, calling it a "continuation of the hearing to consider" Kavanaugh's nomination. Following Ford's testimony, the statement said, Kavanaugh will then "appear before the committee."

Saturday, September 22, 2018

CAFC discusses "entire market value rule" in Power Integrations

Power Integrations, Inc. owns U.S. Patent Nos.
6,212,079 (“the ’079 patent”) and 6,538,908 (“the ’908
patent”). Power Integrations sued Fairchild Semiconductor
Corporation and Fairchild (Taiwan) Corporation
(collectively “Fairchild”) for infringement. A jury found
Fairchild literally infringed claims 31, 34, 38, and 42 of
the ’079 patent and infringed claims 26 and 27 of the ’908
patent under the doctrine of equivalents. In a second trial,
a jury awarded damages of roughly $140 million, finding
that the entire market value rule applied in calculating
damages for infringement of the ’079 patent. The district
court denied Fairchild’s motions for judgment as a matter
of law. Fairchild appeals.

We affirm the district court’s judgments of infringement.
We conclude that the entire market value rule
cannot be used here to calculate damages. We vacate the
damages award and remand for further proceedings.

Lester Holt omits mention of "Wisdom of the Crowd" on 21 Sept 2018

In discussing "Countdown to Capture" on NBC Nightly News on September 21, 2018, Lester Holt did not mention
the TV series "Wisdom of the Crowd," which described much the same function.

Life imitating art, but forgotten?

Monday, September 17, 2018

CAFC chastises PTAB in DuPont case: the evidence in this case supports the unremarkable fact that an oxidation reaction is affected by temperature and PO2. No substantial evidence supports the Board’s contrary finding that it made under the wrong legal standard.

DuPont, at the CAFC, won its appeal of a PTAB decision:

E. I. du Pont de Nemours and Company and ArcherDaniels-Midland
Company (collectively, “DuPont”) appeal
from an inter partes review (“IPR”) decision of the United
States Patent and Trademark Office Patent Trial and
Appeal Board (the “Board”). See DuPont v. Furanix
Techs. B.V., No. IPR2015-01838, Paper No. 43, slip op.
(P.T.A.B. Mar. 3, 2017) (“Decision”). The Board held that
DuPont failed to prove by preponderant evidence that
claims 1–5 and 7–9 of U.S. Patent 8,865,921 (“’921 patent”)
would have been obvious at the time of the claimed
invention. We conclude that the Board applied the wrong
legal standards for obviousness, and reverse.

As to standing

Under the circumstances here, we agree with DuPont
that it has standing to appeal the Board’s decision. As in
the declaratory judgment context, a petitioner who appeals
from an IPR decision need not face “a specific threat
of infringement litigation by the patentee” to establish
jurisdiction. ABB Inc. v. Cooper Indus., LLC, 635 F.3d
1345, 1348 (Fed. Cir. 2011). Rather, on appeal the petitioner
must generally show a controversy “of sufficient
immediacy and reality” to warrant the requested judicial
relief. Id. (citing MedImmune, Inc. v. Genentech, Inc., 549
U.S. 118, 127 (2007)).
Such a controversy exists here because DuPont currently
operates a plant capable of infringing the ’921
patent. After Synvina challenged DuPont’s standing in
its responsive brief,12 DuPont submitted several declarations
in support of standing.

As to obviousness:

Our review of a Board decision is limited. In re Baxter
Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). We
review the Board’s legal determinations de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we
review the Board’s factual findings underlying those
determinations for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported
by substantial evidence if a reasonable mind might
accept the evidence as adequate to support the finding.
Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229
DuPont asserts that the Board erred in its obviousness
analysis primarily in two ways. First, DuPont
argues that the Board misinterpreted our precedent and
erroneously refused to apply a burden-shifting framework
in the context of overlapping prior-art ranges from cases
such as In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003), and
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299
(Fed. Cir. 2006). Second, DuPont contends that the Board
invoked a “result-effective variable” requirement inconsistent
with precedent. Given these errors, DuPont
argues that the Board’s decision should be reversed with
respect to each instituted claim

As to optimization:

The legal principle at issue in this case is old. For
decades, this court and its predecessor have recognized
that “where the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum
or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456 (CCPA 1955); see also, e.g., In
re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Thus,
“[n]ormally, it is to be expected that a change in temperature,
or in concentration, or in both, would be an un-
patentable modification.” Aller, 220 F.2d at 456. A more
specific application of this general principle is that “[a]
prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed
in the prior art.” Peterson, 315 F.3d at 1329 (collecting
cases). We have said that such overlap creates a
presumption of obviousness. See Galderma Labs., L.P. v.
Tolmar, Inc., 737 F.3d 731, 737–38 (Fed. Cir. 2013);
Ormco, 463 F.3d at 1311; Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004).
There are several ways by which the patentee may
rebut that presumption. First, a modification of a process
parameter may be patentable if it “produce[s] a new and
unexpected result which is different in kind and not
merely in degree from the results of the prior art.” Aller,
220 F.2d at 456. A claimed range that demonstrates such
unexpected results is referred to as a “critical” range, and
the patentee has the burden of proving criticality. Id.
Second, and relatedly, a patentee may rebut the presumption
of obviousness by showing that the prior art taught
away from the claimed range. Ormco, 463 F.3d at 1311.
Third, a change to a parameter may be patentable if the
parameter was not recognized as “result-effective.” In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citing In re Antonie, 559 F.2d 618, 620 (CCPA
1977)). But “[a] recognition in the prior art that a property
is affected by the variable is sufficient to find the
variable result-effective.” Id. at 1297. Fourth, we have
reasoned that disclosure of very broad ranges may not
invite routine optimization. Genetics Inst., LLC v. Novartis
Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1306 (Fed.
Cir. 2011) (holding that ordinary motivation to optimize
did not apply where disclosure was 68,000 protein variants
including 2,332 amino acids); Peterson, 315 F.3d at
1330 n.1. As we explain, the presumption of obviousness
applies here, and none of the means for rebutting it has
been shown.

As to overlapping range:

We agree with DuPont that the Board erred in concluding
that the type of burden-shifting framework consistently
applied in our overlapping range cases was
implicitly foreclosed by subsequent cases not addressing
this framework. We have articulated the relevant framework
as follows. “[W]here there is a range disclosed in the
prior art, and the claimed invention falls within that
range, the burden of production falls upon the patentee to
come forward with evidence” of teaching away, unexpected
results, or other pertinent evidence of nonobviousness.
Galderma, 737 F.3d at 738; see Allergan, Inc. v.
Sandoz Inc., 796 F.3d 1293, 1304–05 (Fed. Cir. 2015)
(citing Galderma, 737 F.3d at 737–38); Ormco, 463 F.3d
at 1311 (“Where a claimed range overlaps with a range
disclosed in the prior art, there is a presumption of obviousness.
The presumption can be rebutted if it can be
shown that the prior art teaches away from the claimed
range, or the claimed range produces new and unexpected
results.”) (citations omitted)); Iron Grip Barbell, 392 F.3d
at 1322 (same). The factfinder then assesses that evidence,
along with all other evidence of record, to determine
whether a patent challenger has carried its burden
of persuasion to prove that the claimed range was obvious.

Since Dynamic Drinkware and Magnum Oil did not
alter the framework governing overlapping range cases,
and Synvina presents no persuasive argument supporting
a special rule for IPRs, we conclude that the same scheme
applicable to district court adjudications and PTO examinations
controls in IPR proceedings. Thus, “where there
is a range disclosed in the prior art, and the claimed
invention falls within that range, the burden of production
falls upon the patentee to come forward with evidence”
of teaching away, unexpected results or criticality,
or other pertinent objective indicia indicating that the
overlapping range would not have been obvious in light of
that prior art. Galderma, 737 F.3d at 738.

The Board committed legal error as to result-effective variable:

Next, we address DuPont’s argument that the Board
erred in holding that the PO2 and temperature of a known
oxidation reaction were not “result-effective variables.”
Synvina disagrees, arguing that the Board properly
concluded that DuPont failed to prove that the claimed
parameters were result-effective.
We agree with DuPont that the Board erred in its
analysis of whether PO2 and temperature were resulteffective
variables. As we explain, the Board did not
apply the proper legal standard for result-effective variables,
and, under the correct standard, PO2 and temperature
are result-effective variables.

The idea behind the “result-effective variable” analysis
is straightforward. Our predecessor court reasoned
that a person of ordinary skill would not always be motivated
to optimize a parameter “if there is no evidence in
the record that the prior art recognized that [that] particular
parameter affected the result.” Antonie, 559 F.2d at
620. For example, in Antonie the claimed device was
characterized by a certain ratio, and the prior art did not
disclose that ratio and was silent regarding one of the
variables in the ratio. Id. at 619. Our predecessor court
thus reversed the Board’s conclusion of obviousness. Id.
at 620.
Antonie described the situation where a “parameter
optimized was not recognized to be a result-effective
variable” as an “exception” to the general principle in
Aller that “the discovery of an optimum value of a variable
in a known process is normally obvious.” Id. at 620.
Our subsequent cases have confirmed that this exception
is a narrow one. Indeed, we have located no case where
this court relied on a variable not being result-effective in
an obviousness analysis. In summarizing the relevant
precedent from our predecessor court, we observed in
Applied Materials that “[i]n cases in which the disclosure
in the prior art was insufficient to find a variable resulteffective,
there was essentially no disclosure of the relationship
between the variable and the result in the prior
art.” 692 F.3d at 1297. Likewise, if the prior art does
recognize that the variable affects the relevant property
or result, then the variable is result-effective. Id. (“A
recognition in the prior art that a property is affected by
the variable is sufficient to find the variable resulteffective.”).
And “the prior art need not provide the exact
method of optimization for the variable to be resulteffective.”
Although the Board correctly articulated the basic
standard for result-effective variables, Decision, slip op. at
16–17 (citing Applied Materials, 692 F.3d at 1297), it did
not follow it. Rather, the Board appears to have required
DuPont to prove that the disclosures in the prior art
“necessarily required” the variable to be within the
claimed range, or that the variables “predictably affected
FDCA yields.” Id. at 19. But that was not DuPont’s
burden. Under the applicable standard, DuPont needed
to show that it was recognized in the prior art, either
expressly or implicitly, that the claimed oxidation reaction
was affected by reaction temperature and PO2. See
Applied Materials, 692 F.3d at 1297; Antonie, 559 F.2d at
620. And there does not appear to be a legitimate dispute
that temperature and PO2 were understood to affect the
claimed oxidation reaction, which was known at the time
of invention.
Rather, each reference relevant to claims 1–5 expressly
disclosed appropriate or preferred temperatures and air
pressures for the reaction, indicating that persons of
ordinary skill understood that the reaction was affected
by temperature and pressure. The testimony of thenpatent
owner Furanix’s expert was consistent with this
understanding. He explained that temperature generally
affects the rate of chemical reactions, and if a temperature
is too low, the reaction may not occur at all.

Altogether, the evidence in this case supports the unremarkable
fact that an oxidation reaction is affected by
temperature and PO2. No substantial evidence supports
the Board’s contrary finding that it made under the wrong
legal standard.14 On the record evidence, only one finding
was permissible: temperature and PO2 were recognized
as result-effective variables.

Footnote 14: We assume, without deciding, that whether a variable
was recognized as result-effective is a question of
fact. See Graham v. John Deere Co. of Kan. City, 383 U.S.
1, 17 (1966) (scope and content of the prior art are factual


Friday, September 14, 2018

ParkerVision loses appeal of PTAB decision at CAFC

The outcome:

ParkerVision, Inc. (“ParkerVision”) appeals from
three final written decisions of the U.S. Patent Trial and
Appeal Board (“Board”) in related inter partes review
proceedings, in which the Board held certain claims of
U.S. Patent No. 6,091,940 (“the ’940 patent”) unpatentable
as obvious under 35 U.S.C. § 103(a).1 Qualcomm Inc.
and Qualcomm Atheros, Inc. (together, “Qualcomm”)
cross-appeal from the Board’s determination that Qualcomm
failed to prove by a preponderance of the evidence
that certain other claims of the ’940 patent are unpatentable.
We affirm.

The appealed matter:

ParkerVision argues on appeal that the Board erred
in holding the apparatus claims challenged in the Nozawa
IPRs unpatentable, while Qualcomm contends in its crossappeal
that the Board erred in upholding the patentability
of the challenged method claims. We address these
arguments in turn.

The CAFC noted

We explained long ago that “[a]pparatus claims cover
what a device is, not what a device does.” HewlettPackard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). As a result, “[a]n invention need not
operate differently than the prior art to be patentable, but
need only be different”—or, rather, “unobviously different.”
Id. at 1464 & n.2 (citations omitted). A corollary of
these principles is that an apparatus that is “capable of”
performing certain functions may be anticipated by or
obvious in view of a prior art apparatus that can likewise
perform these functions. See Finjan, Inc. v. Secure Computing
Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (explaining
“that, to infringe a claim that recites capability
and not actual operation, an accused device ‘need only be
capable of operating’ in the described mode.” (quoting
Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832
(Fed. Cir. 1991))). Indeed, “depending on the claims, ‘an
accused device may be found to infringe if it is reasonably
capable of satisfying the claim limitations, even though it
may also be capable of noninfringing modes of operation.’”
Id. (citations omitted). Similarly, a prior art
reference may anticipate or render obvious an apparatus
claim—depending on the claim language—if the reference
discloses an apparatus that is reasonably capable of
operating so as to meet the claim limitations, even if it
does not meet the claim limitations in all modes of operation.


Here, the apparatus claims are most similar to those
in Ericsson and are fundamentally dissimilar to those in
Ball Aerosol. The ’940 patent’s apparatus claims are
drawn to “[a]n apparatus for frequency up-conversion”
(claim 4) or “[a]n apparatus for communicating” (claim
22), all of which comprise “a switch module to receive” an
oscillating signal and a bias signal, wherein the oscillating
signal “causes said switch module to gate said bias
signal and thereby generate a periodic signal having a
plurality of harmonics.” ’940 patent, col. 67, ll. 25–33
(emphases added); id. col. 69, ll. 19–32 (emphases added).
Accordingly, just as D-Link’s products only required a
component that was reasonably capable of “arranging
information for transmission . . . which identifies a type of
payload information . . . ,” Ericsson, 773 F.3d at 1217,
Nozawa’s circuit requires only an oscillating signal that is
reasonably capable of gating the bias signal in a manner
that generates a periodic signal having a plurality of
harmonics. And, unlike in Ball Aerosol, the claims here
recite no structural limitations that would preclude a
prior art reference that discloses a different structure
from performing the claimed function.

But Qualcomm loses the cross-appeal

The method claims present a different story, however.
While Qualcomm was only required to identify a prior art
reference that discloses an apparatus “capable of” performing
the recited functions to prove that the apparatus
claims would have been obvious, more was required with
respect to the method claims. Specifically, Qualcomm
needed to present evidence and argument that a person of
ordinary skill would have been motivated to operate
Nozawa in a manner that satisfied the “plurality of harmonics”
limitation. See InTouch Techs., Inc. v. VGO
Commc’ns, Inc., 751 F.3d 1327, 1346–47 (Fed. Cir. 2014)
(explaining that a party seeking to invalidate method
claims on obviousness grounds must “demonstrate . . .
‘that a skilled artisan would have been motivated to
combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in
doing so’”). Qualcomm failed to do so.

Thursday, September 13, 2018

"Printed publication" issue in Nobel Biocare

The parties dispute whether the ABT Catalog qualifies
as a “printed publication” under pre-AIA § 102(b).
Whether a reference qualifies as a “printed publication” is
a legal conclusion based on underlying factual findings.
Jazz Pharm., 895 F.3d at 1356. The underlying factual
findings include whether a reference was publicly accessible.
In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011).
In an IPR, the petitioner bears the burden of establishing
by a preponderance of the evidence that a particular
document is a printed publication. Medtronic, Inc. v.
Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).
“Because there are many ways in which a reference
may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’
. . . .” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986).
“A reference will be considered publicly accessible if it was
disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence can
locate it.” Medtronic, 891 F.3d at 1380 (internal quotation
marks and citations omitted). “Whether a reference is
publicly accessible is determined on a case-by-case basis
based on the ‘facts and circumstances surrounding the
reference’s disclosure to members of the public.’” In re
Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).
We first note that we are not bound by our prior affirmance
of the ITC’s holding that there was insufficient
evidence to find pre-critical date public accessibility. The
parties agree that our prior decision is not binding on this
factual issue. Oral Arg. at 13:05–14:17, 26:49–28:36. As
the Board correctly observed, the evidentiary standard in
its proceedings, preponderance of the evidence, is different
from the higher standard applicable in ITC proceedings,
clear and convincing evidence. See Board Decision,
2017 Pat. App. LEXIS 8329, at *22. The Board also had
“more evidence on this issue than what was before the
ITC.” Id. Moreover, we apply a substantial evidence
standard of review to both ITC and Board factual findings,
“and the possibility of drawing two inconsistent
conclusions from the evidence does not prevent an administrative
agency’s finding from being supported by substantial
evidence.” Consolo v. Fed. Mar. Comm’n, 383
U.S. 607, 620 (1966).


We agree with Instradent that substantial evidence
supports the Board’s finding that the ABT Catalog was
publicly accessible prior to the critical date. The Board
credited Chakir and Hantman’s testimony that Chakir
obtained a copy of the ABT Catalog at the March 2003
IDS Conference and that Hantman retained that copy in
his records thereafter. Hantman’s declaration included
excerpts of his copy of the ABT Catalog taken from his
files. The Board found that Hantman’s copy of the ABT
Catalog and the copy offered as prior art by Instradent in
the IPR had identical pages except for some handwriting
on the cover of Hantman’s copy. Nobel does not dispute
this finding. Hantman and Chakir provided specific
details as to why Chakir collected dental implant brochures
for Hantman at the March 2003 IDS Conference.
Hantman further provided specific details as to why he
remembers the circumstances under which he received
the ABT Catalog. The Board reasonably credited their
combined testimony as supporting its public accessibility
finding. See TypeRight Keyboard Corp. v. Microsoft Corp.,
374 F.3d 1151, 1159 (Fed. Cir. 2004) (stating that the
proffered testimony of two witnesses relating to public
accessibility at a trade show “is sufficient to support a
jury finding that the Marquardt document is prior art”).

The Finnigan case is cited:

We next address the sufficiency of the corroboration of
the testimony. “[C]orroboration is required of any witness
whose testimony alone is asserted to invalidate a patent,
regardless of his or her level of interest.” Finnigan Corp.
v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir.
1999). Corroborating evidence may include documentary
or testimonial evidence. See TransWeb, LLC v. 3M Innovative
Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016).
Circumstantial evidence can be sufficient corroboration.
Id. We have articulated a number of factors that may be
considered in assessing the sufficiency of the corroboration
in prior invention or public use cases:

Tuesday, September 11, 2018

Big defeat for UC/Berkeley in CRISPR war

The outcome was an affirmance that no interference-in-fact existed;
UC/Berkeley loses its appeal:

This case turns in its entirety on the substantial evidence
standard. The Board found a person of ordinary
skill in the art would not have had a reasonable expectation
of success in applying the CRISPR-Cas9 system in
eukaryotic cells. J.A. 48–49. Given the mixture of evidence
in the record, we hold that substantial evidence
supports the Board’s finding that there was not a reasonable
expectation of success, and we affirm. UC argues
that the Board: (1) improperly adopted a rigid test for
obviousness that required the prior art contain specific
instructions, and (2) erred in dismissing evidence of
simultaneous invention as irrelevant. For the reasons set
forth below, we hold the Board did not err in its analysis.

Statements made on the UC/Berkeley side were used
AGAINST UC/Berkeley:

The Board was also presented evidence of statements
by the UC inventors acknowledging doubts and frustrations
about engineering CRISPR-Cas9 systems to function
in eukaryotic cells and noting the significance of Broad’s
success. One of the named inventors, Dr. Jennifer Doudna,
acknowledged the “huge bottleneck” in making genetic
modifications in animals and humans, J.A. 5911, and
after the publication of the initial UC research, she stated
“[o]ur 2012 paper was a big success, but there was a
problem. We weren’t sure if CRISPR/Cas9 would work in
eukaryotes,” J.A. 5880. She also explained that she had
“many frustrations” in getting CRISPR-Cas9 to work in
human cells, and that she thought success in doing so
would be “a profound discovery.” J.A. 5908. Evidence in
the record also suggested her colleagues recognized
Broad’s development was significant. When a colleague
contacted Dr. Doudna to inform her of Broad’s success he
stated “I hope you’re sitting down,” “CRISPR is turning
out to be absolutely spectacular in [Broad researcher]
George Church’s hands.” J.A. 5908. The Board viewed
this evidence as indicating that an ordinarily skilled
artisan would have lacked a reasonable expectation of

Footnote 3:

UC also argues the Board erred in giving “near dispositive
weight” to statements by Dr. Doudna and Dr.
Carroll, which it claims were misinterpreted by the
Board. The Board considered a variety of statements
made by both Dr. Doudna and Dr. Carroll. In doing so, it
afforded the statements weight depending on the contexts
in which they were made and their relevance to its analysis.
See J.A. 14–23. To the extent UC argues the Board
erred in its reading of these statements in the contexts in
which they arose, we conclude substantial evidence supports
the Board’s interpretation.

Note text by the CAFC:

UC expended substantial time and effort to convince
this court that substantial evidence supports the view it
would like us to adopt, namely, that a person of ordinary
skill would have had a reasonable expectation of success
in implementing the CRISPR-Cas9 system in eukaryotes.
There is certainly evidence in the record that could support
this position. The prior art contained a number of
techniques that had been used for adapting prokaryotic
systems for use in eukaryotic cells, obstacles adopting
other prokaryotic systems had been overcome, and Dr.
Carroll suggested using those techniques to implement
CRISPR-Cas9 in eukaryotes. We are, however, an appellate
body. We do not reweigh the evidence. It is not our
role to ask whether substantial evidence supports factfindings
not made by the Board, but instead whether such
evidence supports the findings that were in fact made.
Here, we conclude that it does.

Of simultaneous invention:

Simultaneous invention may serve as evidence of obviousness
when considered in light of all of the circumstances.
Lindemann Maschinenfabrik GMBH v. Am.
Hoist & Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir. 1984).
We have recognized that simultaneous invention may
bear upon the obviousness analysis in two ways. Monarch
Knitting Mach. Corp. v. Sulzer Morat GmbH, 139
F.3d 877, 883 (Fed. Cir. 1998). First, it is evidence of the
level of skill in the art. Id. Second, it constitutes objective
evidence that persons of ordinary skill in the art
understood the problem and a solution to that problem.
Id. Inherent in the existence of interference practice is
the principle that evidence of simultaneous invention
cannot alone show obviousness, otherwise any claims
involved in an interference would be unpatentable for
obviousness. Lindemann, 730 F.2d at 1460. The weight
of evidence of simultaneous invention must, therefore, be
carefully considered in light of all the circumstances. See
Monarch Knitting, 139 F.3d at 883.
In August 2012, the Jinek 2012 paper was published
explaining the CRISPR-Cas9 system and its use in vitro
using isolated components. There is no dispute that this
represented a breakthrough in the art. The fact that six
research groups succeeded in applying this technology in
eukaryotic cells within a short period of time after this is
certainly strong evidence that there was a motivation to
combine the prior art in this manner. The Board expressly
recognized UC’s evidence of simultaneous invention in
this context, and it concluded the evidence of simultaneous
invention was evidence of the motivation to combine
the prior art references but did not “necessarily” indicate
an expectation of success prior to the completion of the
experiments. J.A. 23.

UC would have the Board read more into this evidence
and infer that because several research teams
pursued a particular approach, and that approach was
ultimately successful, they must have expected that
approach to work. It argued to the Board that absent an
expectation of success, multiple groups “would not have
undertaken the use of UC’s Type-II CRISPR-Cas system
in eukaryotic cells.” J.A. 245. The Board rejected this
bright-line rule and instead determined in this instance
the evidence of simultaneous invention did not establish a
reasonable expectation of success given the “specific
context of the art at the time.” See J.A. 23–25. The Board
explained that “[e]ach case must be decided in its particular
context, including the characteristics of the science or
technology, its state of advance, the nature of the known
choices, the specificity or generality of the prior art, and
the predictability of results in the area of interest.”
J.A. 25 (quoting Abbott Labs. v. Sandoz, Inc., 544 F.3d
1341, 1352 (Fed. Cir. 2008)). We do not see any error in
this analysis. Contrary to UC’s claims, the Board recognized
that UC’s evidence of simultaneous invention is
relevant to the obviousness determination. We consider
Broad’s evidence of simultaneous invention, along with
evidence regarding the state of the art, the statements of
the inventors, failures involving similar technologies, and
the remainder of the record evidence, and conclude the
Board’s finding is supported by substantial evidence.

The conclusion:

For the foregoing reasons, we affirm the Board’s
judgment of no interference-in-fact. The Board performed
a thorough analysis of the factual evidence and considered
a variety of statements by experts for both parties and the
inventors, past failures and successes in the field, evidence
of simultaneous invention, and the extent to which
the art provided instructions for applying the CRISPRCas9
technology in a new environment. In light of this
exhaustive analysis and on this record, we conclude that
substantial evidence supports the Board’s finding that
there was not a reasonable expectation of success, and the
Board did not err in its determination that there is no

We have considered UC’s remaining arguments and
find them unpersuasive. We note that this case is about
the scope of two sets of applied-for claims, and whether
those claims are patentably distinct. It is not a ruling on
the validity of either set of claims.

***Of relevance

UC’s Patent Application No. 13/842,859

Broad's U.S. Patent No. 8,697,359

PTAB 106,048

Monday, September 10, 2018

Big news in multiple sclerosis drugs: Acorda loses appeal on patent invalidity

The outcome in Acorda v. Roxane was that Acorda lost:

Roxane Laboratories, Inc.; Mylan Pharmaceuticals,
Inc.; and Teva Pharmaceuticals USA, Inc., have submitted
Abbreviated New Drug Applications seeking FDA
approval to market generic versions of Ampyra. In July
2014, Acorda and Alkermes sued those entities (“defendants”)
in the District of Delaware, alleging infringement
of several claims in each of the Elan and Acorda patents.
The defendants stipulated to infringement but challenged
the validity of the asserted claims. The district court held
that the asserted claims in the Acorda patents are invalid
for obviousness. But the court upheld the asserted claims
of the Elan patent against invalidity challenges and
enjoined the defendants from activity infringing that
patent until it expired on July 30, 2018.

Acorda appealed the invalidity ruling regarding the
Acorda patents. The defendants cross-appealed the
validity ruling regarding the Elan patent and the resulting
injunction. We now affirm the judgment that the
asserted Acorda patent claims are invalid. We dismiss
the cross-appeal as moot.

Of legal matters, the discussion of "blocking patents" is

Of background

4-AP [4-aminopyridine], also called “dalfampridine” and “fampridine,”
was first identified in 1902. Acorda Therapeutics, Inc. v.
Roxane Labs., Inc., No. 1:14-cv-00882-LPS, 2017 WL
1199767, at *3, *5 (Mar. 31, 2017) (Dist. Ct. Op.). Belonging
to a class of compounds that function as potassiumchannel
blockers, 4-AP “has been found to slow the potassium
flow in nerve impulse transmission” and, by doing
so, help “restor[e] conduction in blocked and demyelinated
nerves,” ’826 patent, col. 2, lines 5–11, i.e., nerves whose
myelin insulation has been damaged. 4-AP was first used
in human studies in the 1970s to investigate its effect on
neurological diseases resulting in muscle weakness. Dist.
Ct. Op. at *5. For several decades, 4-AP has been the
focus of research regarding the treatment of multiple
sclerosis in particular. See, e.g., id. at *5–7 (reciting
studies); J.A. 6697 (paper published in 1987 describing
study of the effect of 4-AP on subjects with multiple
sclerosis). Multiple sclerosis causes the demyelination, or
loss of myelin, of nerves in the central nervous system
and results in a wide variety of symptoms, including
walking impairment, tingling or pain, brain scarring,
cognitive changes, visual impairments, and fatigue. See
’826 patent, col. 1, lines 36–42; Dist. Ct. Op. at *2. Eventually,
4-AP research led to the development, patenting,
and FDA approval of Ampyra.

As to the mootness issue, July 30, 2018 has passed:

On April 25, 2017, the court entered final judgment in
favor of the defendants as to the Acorda patents and in
favor of Acorda as to the Elan patent. The court set the
effective date of any final FDA approval of the defendants’
Abbreviated New Drug Applications no earlier than the
expiration date of the Elan patent—July 30, 2018—and
enjoined the defendants from any infringing activity
before that date.

A Kyle Bass effort is mentioned in footnote 10:

In inter partes reviews initiated by a petitioner
not included among the defendants here, the Patent Trial
and Appeal Board considered challenges to the Acorda
patents that did not involve Schwid or the Goodman
references but, instead, depended on whether a particular
filing with the Securities and Exchange Commission was
prior art to the patents. The Board concluded that it was
not. Coalition for Affordable Drugs (ADROCA) LLC v.
Acorda Therapeutics, Inc., Nos. IPR2015-01850, -01853, -
01857, -01858, 2017 WL 950736, at *9–20 (P.T.A.B. Mar.
9, 2017). That ruling does not change the analysis in this

Acorda's [unsuccessful] arguments:

Acorda challenges the district court’s findings about
the relevant skilled artisan’s motivations and expectations
regarding the administration of a stable 10 mg 4-AP
dose twice daily to improve walking. It presents two
relatively focused arguments: that Schwid teaches away
from the claimed invention; and that the prior art teaches
the administration of sustained-release 4-AP in a titrateddosing
regimen rather than a stable-dosing regimen.
More broadly, Acorda argues that neither the Goodman
Poster nor the prior art collectively teaches the efficacy of
a stable 10 mg twice-daily dose or indicates that such a
dose is among the small number of options that a skilled
artisan would have been motivated to test with a reasonable
expectation of success to improve walking. We reject
these challenges.

Of the first argument:

And in light of Schwid’s warning that seizures may occur at higher doses,
the district court did not clearly err in finding that a
person of skill would look to lower doses rather than
higher ones. See Dist. Ct. Op. at *32 (“While the prior art
may have generally suggested that 4-AP would be more
effective in higher doses, the art also reduced the set of
plausible doses because it suggested that higher doses of
4-AP were more likely to cause adverse events.”)

Of titrated dosing:

Acorda’s second argument is that the prior art teaches
administering sustained-release 4-AP only in a titrateddosing
regimen to avoid the risk of seizure, and therefore
that the district court could not properly find that a
person of skill would have been motivated to pursue, or
had a reasonable expectation of success concerning, a
stable-dosing regimen. We reject this argument.
The prior art is not limited to titrated dosing (where
doses start low and move higher) but rather contains
evidence of stable dosing (where the dose starts and stays
at the claimed level). As the district court noted, Polman
is evidence of safe and effective long-term oral administration
of a stable dose of immediate-release 4-AP. Dist.
Ct. Op. at *34; see J.A. 6655. Schwid also provides evidence
of a stable-dosing regimen of 4-AP, if only for a
week. As for the studies that used escalating doses, some
of those studies began with 10 mg as the lowest dose
before titrating upwards to doses that may increase the
risk of seizure. E.g., Davis at 187 tbl.1; see also Dist. Ct.
Op. at *8 (1994 Elan study began with 12.5 mg 4-AP twice
daily); id. at *9 (10 mg twice daily was the lowest dose
used in the Acorda MS-F202 study); cf. J.A. 6647 (trial in
patients with other conditions began with dose of 10 mg 4-
AP twice daily and titrated up to 200 mg daily); J.A. 6434
(Acorda’s trial in patients with spinal cord injury began
with 10 mg twice daily as the lowest dose). Significantly,
the most important prior art, the Goodman references,
report a start dose of 10 mg twice daily. J.A. 6370, 6372,


Expert testimony supports the district court’s finding
that a person of ordinary skill in the art would have been
motivated to pursue, and had a reasonable expectation of
success in pursuing, a stable-dosing regimen of 10 mg 4-
AP twice daily. According to Dr. Peroutka, “the general
goal of drug development [is] to provide a stable dosing
regimen.” J.A. 414. He testified that stable dosing was
particularly desirable for treating multiple sclerosis
because, as a chronic disease that requires long-term
treatment, a stable oral dose is much easier to administer.
See Sept. 19, 2016 Trial Tr. 110 (“Obviously, it’s a lot
easier simply to take one pill, the same pill twice a day
than to have to figure out, well, this morning I need this
much, that much. But with pills, it is almost impossible
to titrate easily.”). Even Dr. Goodman conceded that “it
would be desirable” to have a stable-dosing regimen
where “the patient would be prescribed [some dose] to
take on a regular basis.” J.A. 868. And titration was not
required given such a low starting dose: Acorda founder
Dr. Cohen testified that, upon recognizing the efficacy of
the 10 mg twice-daily dose, “we realized we didn’t have to
titrate anymore.” J.A. 614. Finally, Dr. Peroutka explained
that nothing in the prior art suggested that 4-AP
could not be used for long-term treatment for a chronic
condition. Sept. 19, 2016 Trial Tr. 104.


Acorda’s core argument appears not to be that the evidence
fails to support the finding of a motivation to
combine. Rather, it appears to be that the evidence
cannot support a finding of a reasonable expectation of
success (in 2004) in the absence of publications showing a
statistically significant difference in walking tests between
the specific dose of 10 mg 4-AP taken twice daily
versus placebo. See Acorda Br. 41–42; Acorda Reply Br.
20–21; Oral Arg. at 6:10–30. We reject this contention.


In some cases, of course, the evidentiary basis for an
inference of reasonable expectation of success may be
inadequate. See, e.g., In re Cyclobenzaprine, 676 F.3d at
1070–71. Here, though, as we have discussed, expert and
other evidence indicates that a person of skill in the
present context can draw reasonable inferences about the
likelihood of success even without a perfectly designed
clinical trial showing a statistically significant difference
in efficacy between a specific dose and placebo. See also
J.A. 6657 (Polman: “Although a placebo effect cannot be
excluded, the dynamics of the response in relation to the
intake of the medication and the deterioration and subsequent
improvement in functioning during a drug-free
interval and subsequent restarting of the therapy are, in
our view, highly suggestive of a real effect being induced
by the 4-[AP]. Improvements in fatigue and ambulation
were mentioned quite often by the patients as being
responsible for the favorable overall effect.”). We see no
clear error in the district court’s finding to that effect.

Of relevance to MS patients

Similarly, the “inconclusiveness of the exploratory
studies of 4-AP, a 102-year old drug,” Acorda Reply
Br. 28, does not speak to the more recent research relied
on by the district court—namely, Schwid and the Goodman
references. And “the rigorous 2003 Solari review of
the field dispelling any confidence in using
am[ino]pyridines to treat [multiple sclerosis],” id. at 29,
does not dispel confidence in a walking improvement;
rather, Solari, a prior-art literature review, reports a
statistically significant improvement in walking,
J.A. 7208 (reviewing three studies that “assessed the
efficacy of aminopyridines on ambulation” and reporting
that patients who received 4-AP showed a statistically
significant improvement in ambulation compared to
placebo (p<0.0001)).13 When Acorda asserts that the “prior art’s [Schwid’s] teaching that 4-AP had a narrow therapeutic window where high doses and high blood serum levels were necessary for any meaningful therapeutic effect,” Acorda Reply Br. 29, Acorda is incorrect, as discussed previously: Schwid reports that a relatively low (17.5 mg twice a day) dose showed a statistically significant improvement in walking and that high serum levels were not required for improvements in timed gait. Schwid, which reports success and no seizure events with a stable dose of 17.5 mg twice daily, also undermines Acorda’s argument that “the prior art’s consistent use of titration to achieve a therapeutic dose because of seizure risk” conclusively precludes a reasonable expectation of success even for a low dose like 10 mg twice daily that avoids high peak serum levels. Id. In the end, Schwid, Goodman as a whole, and expert testimony supply a sufficient basis for the district court’s finding of a reasonable expectation of success in this case.

Of relevance to patent academics, as to the concept of
"blocking patents":

A patent has been called a “blocking patent” where
practice of a later invention would infringe the earlier
patent. The existence of such a blocking patent may deter
non-owners and non-licensees from investing the resources
needed to make, develop, and market such a later,
“blocked” invention, because of the risk of infringement
liability and associated monetary or injunctive remedies.
If the later invention is eventually patented by an owner
or licensee of the blocking patent, that potential deterrent
effect is relevant to understanding why others had not
made, developed, or marketed that “blocked” invention
and, hence, to evaluating objective indicia of the obviousness
of the later patent. See Note, Subtests of “Nonobviousness”:
A Nontechnical Approach to Patent Validity, 112
U. Pa. L. Rev. 1169, 1177 (1964) (Regarding commercial
success, “a court must be assured that the patentee’s
market domination is not attributable to monopoly power
or other economic coercion, or to other factors unrelated to
patent validity.”) (cited in Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 18, 36 (1966)).

We briefly discussed blocking patents in Merck & Co.
v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364 (Fed.
Cir. 2005) (Merck I). The Merck patent at issue, applied
for in 1998, was for the weekly administration of alendronate
monosodium trihydrate (Fosamax). Id. at 1366–67.
That patent was preceded by Merck’s earlier patent
(issued in 1986) covering a method of administering an
effective amount of Fosamax to treat osteoporosis, as well
as Merck’s statutory right, since obtaining FDA approval
in 1995, to the exclusive marketing of any dosage strength
of Fosamax for the next five years. 395 F.3d at 1367,
1377; Br. for Def.-Appellant Teva Pharm. USA, Inc.,
Merck I, No. 04-1005, 2003 WL 24307848, at *62–63 (Fed.
Cir. Dec. 17, 2003). We ruled that the district court had
erred in its analysis of commercial success because the
earlier patent and FDA regulatory approval depressed
incentives for others to invent the weekly-dosing scheme.
395 F.3d at 1377 (“Because market entry by others was
precluded on those bases, the inference of nonobviousness
of weekly-dosing, from evidence of commercial
success, is weak.”). In that context, we said, the
evidence of commercial success was “not enough to show
the claims at bar are patentably distinct from the weeklydosing
ideas in the [invalidating prior art].” Id.
In Galderma Laboratories, L.P. v. Tolmar, Inc., 737
F.3d 731 (Fed. Cir. 2013), we considered the district
court’s finding, in support of commercial success, that the
FDA-approved product “quickly gained and maintained
market share.” Id. at 740. Because earlier patents owned
by Galderma may have “blocked” competition to market
the FDA-approved product by any entity other than
Galderma, we reasoned that the commercial success of the
product was “of ‘minimal probative value’” and not sufficient
to justify a conclusion of nonobviousness in light of
the other evidence supporting obviousness. Id. at 741
(quoting Merck I, 395 F.3d at 1376).
Recently, in Merck Sharp & Dohme Corp. v. Hospira,
Inc., 874 F.3d 724 (Fed. Cir. 2017) (Merck II), we concluded
that Merck’s exclusive license to a blocking patent did
not, all by itself, justify discounting evidence of commercial
success. Id. at 730–31. We explained that commercial
success is “a fact-specific inquiry” that may involve
considering the operation of specific blocking patents on
possible competition. Id. at 731. But the mere existence
or sheer number of blocking patents does not, without
more, “necessarily detract from evidence of commercial
success of a product or process.” Id. Nevertheless, “even
giving the evidence of commercial success its full and
proper weight,” we affirmed the judgment invalidating
the claims at issue for obviousness in light of “the evidence
that the claimed process was substantially described
in the prior art” and that “merely ordinary
experimentation was required to arrive at the [patent at
issue].” Id.
Merck II’s reasoning reflects a common-sense recognition
that, as a theoretical matter, a blocking patent may
or may not deter innovation in the blocked space by
commercially motivated potential innovators other than
the owners or licensees of the blocking patent.15 Where
the owner of the blocking patent or exclusive licensee is
different from the owner of the patent in suit, the granting
of a license may be a realistic possibility. Even where,
as here, the owner of the patent in suit and the exclusive
licensee of the blocking patent are the same, such a
potential innovator might or might not think it could
successfully challenge the blocking patent. And such a
potential innovator might or might not be willing to
research in the blocked space without a license to a blocking
patent—even if the research itself is within the safe
harbor provided by 35 U.S.C. § 271(e)(1)—and wait until
it has already developed and patented its aimed-at im-
provement to negotiate for a cross-license with the blocking
patent’s owner to share the profits from the improvement.
Besides the assessment of whether the blocking
patent can be successfully challenged, a number of variables
appear generally relevant to the calculus, including:
the costliness of the project; the risk of research failure;
the nature of improvements that might arise from the
project, and whether such improvements will be entirely
covered by the blocking patent; the size of the market
opportunities anticipated for such improvements; the
costs of arriving at the improvements and getting them to
market; the risk of losing the invention race to a blockingpatent
owner or licensee; the risk that the blocking-patent
owner (making its own economic calculations, perhaps in
light of its own other products or research activities) will
altogether refuse to grant a license to the improvement or
will demand so large a share of profits that the whole
project is not worthwhile for the potential innovator—all
evaluated in light of other investment opportunities.
For such reasons, it is clear that, if all other variables
are held constant, a blocking patent diminishes possible
rewards from a non-owner’s or non-licensee’s investment
activity aimed at an invention whose commercial exploitation
would be infringing, therefore reducing incentives for
innovations in the blocked space by non-owners and nonlicensees
of the blocking patent. Such a blocking patent
therefore can be evidence that can discount the significance
of evidence that nobody but the blocking patent’s
owners or licensees arrived at, developed, and marketed
the invention covered by the later patent at issue in
litigation. But the magnitude of the diminution in incentive
in any context—in particular, whether it was great
enough to have actually deterred activity that otherwise
would have occurred—is “a fact-specific inquiry.” Merck
II, 874 F.3d at 731. That inquiry, conducted within the
framework under which the challengers always retain the
burden of persuasion on obviousness, may be a difficult
one as a practical matter. In a particular case, a court
may ultimately be left, for its evaluation, with the solid
premise of diminished incentives, plus some evidence
(possibly weak or ambiguous) about the significance of the
deterrence, together with a background sense of the
general realities in the area at issue that can affect the
weight to be given to the evidence in the specific case.
Against this background, we review the district
court’s consideration of objective indicia of nonobviousness
in light of the Elan patent. Acorda licensed the Elan
patent in the late 1990s, before the period of commercial
success alleged by Acorda and found by the district court.
Here, Acorda bore the burden of producing evidence of
objective indicia, but the “ultimate burden of proving
obviousness” at all times remained with the defendants.
Galderma, 737 F.3d at 736–38. We conclude that the
district court did not err in viewing the Elan patent,
among other evidence, as evidence that discounted the
weight of Acorda’s evidence of commercial success, failure
of others, and long-felt but unmet need so that “the evidence
as a whole” in the case “prove[d] clearly and convincingly
that the Acorda Patents are invalid due to
obviousness.” Dist. Ct. Op. at *41.
The parties presented evidence on the objective indicia
of commercial success, failure of others, and long-felt
but unmet need.16 In particular, the defendants presented
evidence of blocking by the Elan patent. See Dist. Ct.
Op. at *38 & n.43 (undisputed that invention of Acorda
patents practice the Elan patent).

Judge Newman dissented.

The district court observed that the objective indicia,
viz. commercial success, long-felt but unmet need, failure
of others, and copying, could change the result, yet discounted
its weight on the theory that the patentee had a
“blocking” patent. Adopting this flawed reasoning, my
colleagues hold that this new treatment for multiple
sclerosis was obvious. However, it is apparent that there
is not clear and convincing evidence of obviousness.

The consequences of this new legal theory are large,
as the amici curiae advise. Had the court’s approach to
the law of obviousness been in effect when Acorda took up
the study of 4-aminopyridine after decades of failures by
others, it is questionable whether this new treatment for
multiple sclerosis would have been discovered and pursued.
The loser is the afflicted public.1


Sunday, September 09, 2018

CBS Sunday Morning on 9 September 2018 does Woodward/Fear, but not as the cover story

In an episode with the first on-air TV interview with Woodward about Fear, CBS Sunday Morning on 9 Sept 2018 led off with a one year old puff piece by Susan Spencer Why parents opt for unusual baby names , recycled from a broadcast on on September 24, 2017. The "highlight" was about a boy named Billion Ayer, and got into the theory of "nominative determinism." Jane Pauley did not refer to this as the cover story, although the web version does so state --WHAT'S IN A NAME is our Cover Story, reported by Susan Spencer --. It might appear that this puff piece was shoved in front while work was still being done on the interview of Woodward by David Martin.

Almanac went to Sept. 9, 1942, marking a bombing raid by a Japanese fighter on Wheeler Ridge on Mount Emily near Brookings, Oregon. The later return of pilot Nobuo Fujita to Brookings was noted. The CBS piece did not note that the I-25 submarine which launched Fujita's seaplane was involved in Pearl Harbor and later sank a Soviet submarine, at a time when the Soviets and Japan were not at war.

Two "inserts" on Sunday Morning observed the anniversary of California statehood in 1850, and a survey finding that 58% of respondents did not have a bucket list.

The Woodward piece appeared later in the broadcast. The first text in the interview created an aura of fear:

Woodward: "You look at the operation of this White House and you have to say, 'Let's hope to God we don't have a crisis.'"

The final text of the piece:

[of the New York Times op-ed:] "Well, too vague, and does not meet the standards of trying to describe specific incidents. Specific incidents are the building blocks of journalism, as you well know."

"Fear: Trump in the White House" is Woodward's 19th book, and he says reporting it took him deeper inside a working White House than he's ever been before.

"This one was in the belly of the beast," he said.

Martin asked, "And what did you conclude about the beast?"

"That people better wake up to what's going on."

The CBS piece did note: "Fear: Trump in the White House" (published by Simon & Schuster, a division of CBS)


The moment of nature had black bears in Alligator River Refuge in eastern North Carolina.


Saturday, September 08, 2018

"Well, he's a patent attorney. Maybe his tie is pending."

It's about 1.5 years since "Big Bang" aired "The Application Deterioration" on March 10, 2016.

Having come up with an idea for patenting, the characters learn from the university patent attorney that the university will get 75% of the total proceeds from their idea. Howard, as a NASA (federal) employee will get nothing.


See previous IPBiz posts on the Sibley tent, reaching a different conclusion about federal employees and patents

Friday, September 07, 2018

CAFC vacates PTAB in Worlds/Bungie. Issues of real party in interest and issue preclusion.

In Worlds v. Bungie, the CAFC vacated a decision of PTAB:

Appellant Worlds Inc. (“Worlds”) appeals the final decisions
of the Patent Trial and Appeal Board (“Board”)
invalidating three patents in three inter partes reviews
(“IPRs”). Because we hold that the Board erred in its
real-party-in-interest analysis, we vacate its decisions and
remand for proceedings consistent with this opinion.

Two issues were presented by the appellant:

This consolidated appeal presents two issues. First,
Worlds contends that Bungie’s IPR petitions were timebarred
because an alleged real party in interest, Activision,
had been served with a complaint alleging infringement
of these patents over one year prior to the
IPRs’ filing dates. Second, Worlds appeals the Board’s
substantive obviousness analysis.

Under 35 U.S.C. § 312(a)(2), an IPR petition “may be
considered only if . . . the petition identifies all real parties
in interest.” Correctly identifying all real parties in
interest with respect to each IPR petition is important, as
the determination may impact whether a petition may be
instituted. See 35 U.S.C. § 315(a)(1) (concerning a real
party in interest’s civil action challenging the patent’s
validity); id. § 315(b) (concerning a patent owner’s civil
action against a real party in interest). It may also limit
the arguments available in subsequent proceedings. See
id. § 315(e). In this case, Worlds argues that Bungie’s
IPR petitions were time-barred under § 315(b) because
they were filed over one year after Worlds served Activision,
the alleged real party in interest, with a complaint
alleging infringement of the challenged patents

On appeal, Worlds contends that the Board placed the
burden of persuasion on the patent owner to prove that
Bungie’s petitions were time-barred under § 315(b) because
Activision was a real party in interest, and that this
allocation of the burden was error. These appeals therefore
require us to determine the appropriate burden
framework for analyzing the real-party-in-interest determinations
in these IPRs. Worlds has not sought review of
the Board’s order denying Worlds’s motion for discovery
on this issue.

Both Worlds and Bungie point us to Atlanta Gas Light
Co. v. Bennett Regulator Guards, Inc. as representing a
burden framework used by other Board panels in the realparty-in-interest
analysis. See IPR2013-00453, Paper 88
(P.T.A.B. Jan. 6, 2015). Although there is no indication
that the Board relied on Atlanta Gas Light in these appeals,
we find it appropriate to begin our analysis with
that decision, given the parties’ focus on that framework.

The CAFC gets into presumptions:

Initially, we question the Board’s practice of creating
a “presumption” by its acceptance of a petitioner’s initial
identification of the real parties in interest. Generally, for
a party to gain the benefit of a presumption, the party
must prove certain basic facts from which the presumed
fact is then inferred according to the relevant substantive
law. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
960 F.2d 1020, 1035–37 (Fed. Cir. 1992) (en banc) (explaining
that the presumption of laches, which was a
defense available in patent cases prior to SCA Hygiene,
arose upon proof that the patentee delayed filing suit for
more than six years after actual or constructive
knowledge of the defendant’s alleged infringing activity),
abrogated on other grounds by SCA Hygiene Prods.
Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct.
954 (2017); 21B Charles A. Wright & Kenneth W. Graham,
Jr., Federal Practice and Procedure: Evidence
§ 5122 (2d ed. 2005) (“[A] true presumption cannot arise
without proof of some ‘basic fact’. . . .”). In the real-partyin-interest
context at issue here, the relevant statute and
regulations do not require evidentiary proof of such basic
facts. See 35 U.S.C. § 312(a)(2) (requiring a petition to
“identif[y] all real parties in interest”); 37 C.F.R.
§ 42.8(b)(1) (requiring a party to “[i]dentify each real
party-in-interest for the party”); see also id. § 42.104(a)
(requiring a petitioner to “certify . . . that the petitioner is
not barred or estopped from requesting an inter partes
review challenging the patent claims on the grounds
identified in the petition”).


Moreover, presumptions are usually created based on
certain policy considerations, such as correcting an imbalance
due to one party’s superior access to sources of proof,
or promoting efficiency by presuming a fact to be true
where the existence of certain basic facts makes the truth
of the presumed fact highly probable. See 2 George E.
Dix, et al., McCormick on Evidence § 343 (7th ed. 2016).
In the real-party-in-interest context, however, we see no
particular need to create a formal presumption—
especially a presumption that would disfavor the party
that likely has inferior access to potential sources of proof.


The next question then becomes: what must a patent
owner do to sufficiently raise the issue? In Atlanta Gas
Light, the Board viewed the “presumption” created by the
IPR petitioner’s initial identification of the real parties in
interest as shifting the burden of production to the patent
owner. From this, the Board explained that, where “a
patent owner provides sufficient rebuttal evidence that
reasonably brings into question the accuracy of a petitioner’s
identification of the real parties in interest, the burden
remains with the petitioner to establish that it has complied
with the statutory requirement to identify all the
real parties in interest.” Atlanta Gas Light, Paper 88 at 8
(emphasis added). As explained above, we disagree with
the use of a presumption in this context. We agree,
however, that a patent owner must produce some evidence
that tends to show that a particular third party should be
named a real party in interest.8 A mere assertion that a
third party is an unnamed real party in interest, without
any support for that assertion, is insufficient to put the
issue into dispute.

The debated evidence:

Worlds argued before the
Board that these IPRs are “legal reviews” necessary to
clear intellectual property rights, and that Activision had
the opportunity to control the IPRs, making Activision a
real party in interest. In response, Bungie presented a
different interpretation of the “legal reviews” provision,
arguing that, in the context of a videogame development
agreement, a “legal review[]” refers to “reviewing the title,
script, and visual and audio assets to ensure that any
appropriate rights have been obtained and that they do
not infringe any trademarks or copyrights.” J.A. 415
(Opp. to Worlds’s Discovery Mot.).12
The Board flatly rejected Worlds’s argument that
Bungie’s IPRs could be considered “legal review[s] of a
‘Product,’” first in its order denying Worlds’s discovery
motion, then again in its institution decisions. J.A. 429
(Discovery Order) (stating that “[a] legal review of a
‘Product’ under the Agreement and other provisions do
not specify, require, or necessarily include filing an IPR
against a patent”); J.A. 507, 3874, 5092 (Institution
Decisions) (stating that Worlds’s argument was based on
a faulty assumption that “legal reviews” could include
IPRs). The Board’s institution decisions explained that
the IPRs involved a patent rather than a product, and
thus the IPRs could not be considered “legal reviews of a
Product” that would give Activision a right of review and
approval. J.A. 507 (“The only subject of this proceeding is
the ’856 patent; this proceeding does not involve any
product. Thus, Patent Owner has not shown that this
proceeding falls within the scope of a ‘legal review[] of the
Products’ . . . .” (citation omitted)); see also J.A. 3874,


This implies that the Board assumed
the burden of persuasion rests with the patent owner.
Moreover, the Board’s potential reliance on the rebuttable
presumption from Atlanta Gas Light may have effectively
skewed the burden of persuasion despite Atlanta Gas
Light’s statement that it was not approving such a shift.
Under these circumstances, we cannot discern whether
the Board placed the burden on Worlds, the patent owner,
to persuade the Board that Bungie failed to list a real
party in interest that would render the petitions timebarred
under § 315(b). As discussed above, this would
have been improper.

The subject of mere attorney argument arose:

As an aside, we have some concern that the Board
may have relied on attorney argument as evidence that
Activision was not controlling or funding these IPRs. See
J.A. 510, 3877, 5095 (citing Bungie’s briefing and stating
that “[o]n this record, we accept Petitioner’s express
representations that Activision is not controlling or funding
this proceeding”); see also Icon Health & Fitness, Inc.
v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)
(“Attorney argument is not evidence.”). This is particularly
concerning given that the Board’s apparent reliance on
such statements seemed to outweigh the actual evidence
presented by Worlds. Instead of citing evidence to support
this factual conclusion, the Board merely cited attorney
argument from Bungie’s briefing—attorney argument
that itself failed to cite evidence, such as affidavits or
declarations. See J.A. 510, 3877, 5095 (Institution Decisions);
J.A. 409–10, 416 (Bungie’s briefing).

Issue preclusion arose:

The general rule for issue preclusion (also called collateral
estoppel) is “[w]hen an issue of fact or law is
actually litigated and determined by a valid and final
judgment, and the determination is essential to the
judgment, the determination is conclusive in a subsequent
action between the parties, whether on the same or a
different claim.” B & B Hardware, Inc. v. Hargis Indus.,
Inc., 135 S. Ct. 1293, 1303 (2015) (quoting Restatement
(Second) of Judgments § 27 (1982)). This general rule is
“subject to certain well-known exceptions.” Id. (citing
Restatement (Second) of Judgments § 28 (1982) as listing
Bungie devotes just two pages of its briefing to arguing
that the basic requirements of issue preclusion are
satisfied in this case. Appellee’s Br. 62–63. In similarly
cursory fashion, Worlds’s Reply Brief compiles a handful
of conclusory assertions in an attempt to avoid issue
preclusion. Reply Br. 30–32. And because of the timing
of the six IPRs, the Board did not consider issue preclusion.

The CAFC gave PTAB prioritized instructions:

For the foregoing reasons, the Board’s final written
decisions in these three consolidated appeals are vacated.
On remand, the Board should first address whether
Worlds is estopped from arguing the real-party-in-interest
issue. The Board should thoroughly consider the posture
of the related proceedings, as well as any relevant exceptions
to collateral estoppel. If the Board determines that
collateral estoppel does not apply, the Board should then
reevaluate the merits of the real-party-in-interest issue.
And, in light of this court’s recent guidance on the substantive
real-party-in-interest inquiry, the Board, in its
discretion, should consider whether to allow for additional
discovery on this issue

Thursday, September 06, 2018

TWi loses appeal at CAFC

The CAFC affirmed DNJ in the TWi/Supernus case:

TWi Pharmaceuticals, Inc. (“TWi”) appeals from a decision
of the United States District Court for the District
of New Jersey holding, after bench trial, that Supernus
Pharmaceuticals, Inc.’s (“Supernus”) U.S. Patent Nos.
7,722,898 (“the ’898 patent”), 7,910,131 (“the ’131 patent”),
and 8,821,930 (“the ’930 patent) (collectively, “the
asserted patents”) are not invalid and would be infringed.
Supernus Pharms., Inc. v. TWi Pharms., Inc., 265 F.
Supp. 3d 490 (D.N.J. 2017). For the following reasons, we

Of arguments by appellant which did not prevail:

First, the district court did not give its decision in Actavis
de facto preclusive effect in this case. The district
court explicitly stated in its post-trial decision that its
decision in Actavis has “some relevance to this action,”
but that its “findings of fact and conclusions of law set
forth [in this post-trial decision] are based upon the
evidence and argument presented in this litigation.”
Supernus, 265 F. Supp. 3d at 497 n.6. The district court
adhered to this position throughout its analysis. TWi
disagrees and contends that the district court improperly
relied on its decision in Actavis in three ways, each of
which we address below.


But, as noted above, the district
court referenced Actavis only to the extent that the
records in the two cases were the same. For these reasons,
the district court did not err in referencing Actavis
in its decision in this case. The Actavis decision also does
not color our decision-making on appeal.

Wednesday, September 05, 2018

Identical twins and immune modulated diseases

In the case of multiple sclerosis, there has been some evidence of a genetic effect, although not a defining one. For example, if one identical twin has MS, the other has a 30% chance of MS, not a controlling factor, but one of above average risk.

New evidence in rheumatoid arthritis (RA) may suggest an answer.

See Identical Twins With, Without Rheumatoid Arthritis Have Differentially Variable DNA Methylation

"Through genome-wide analysis of DNA methylation in disease-discordant monozygotic twins, we have identified a differentially variable DNA methylation signature, in the absence of differential methylation in rheumatoid arthritis," Manchester's Jane Worthington and her colleagues wrote in Genome Medicine this week. "This finding supports the importance of epigenetic variability as an emerging component in autoimmune disorders."

Tuesday, September 04, 2018

Network analysis in patent mining

Cristiano Gonçalves Pereira et al, Patent mining and landscaping of emerging recombinant factor VIII through network analysis, Nature Biotechnology (2018). DOI: 10.1038/nbt.4178


"Plagiarizing" an ad campaign for burgers in South Africa?

See Drama Between Wimpy And McDonald’s Amidst Accusations Of Plagiarism

Employees at one ad agency for McDonalds went to work for an ad agency representing Wimpys, and created a campaign.


Separately, Idea Plagiarism and Ethics in Competitive Research

Intellectual Ventures wins claim construction appeal at CAFC

Intellectual Ventures won its appeal on claim construction at the CAFC:

Intellectual Ventures I LLC (“IV”) appeals from a
grant of summary judgment by the U.S. District Court for
the District of Delaware that T-Mobile USA, Inc., TMobile
US, Inc., Ericsson Inc., Telefonaktiebolaget LM
Ericsson, and United States Cellular Corporation (collectively,
“T-Mobile”) have not infringed U.S. Patent
No. 6,640,248. Because we hold that the district court’s
grant of summary judgment resulted from an erroneous
claim construction, we vacate and remand.
We affirm the
district court’s determination regarding indefiniteness.

Teva is cited:

Because it is based solely upon the intrinsic record,
we review the district court’s claim constructions de novo.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841–42 (2015). We review a determination of indefiniteness
de novo, though we review any factual findings about
extrinsic evidence for clear error. BASF Corp. v. Johnson
Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). We
review the district court’s grant of summary judgment
under the law of the regional circuit, here the Third
Circuit, which performs de novo review. Akzo Nobel
Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338
(Fed. Cir. 2016).

Of IV's argument:

IV argues the district court erred in construing “application-aware
resource allocator” in claim 1 and “application-aware
media access control (MAC) layer” in claim 20
as a resource allocator that “has knowledge of the type of
data application and further takes into account, when
allocating bandwidth, information about applications at
[OSI] application layer 7.” According to IV, application
awareness requires only that the resource allocator allocate
resources based on application type, which can be
discerned using information obtained from any of network
layer 3, transport layer 4, or application layer 7.
We agree. “The words of a claim are generally given
their ordinary and customary meaning as understood by a
person of ordinary skill in the art when read in the context
of the specification and prosecution history.” Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). The plain language of the claims, the
specification, and the prosecution history all support IV’s

T-Mobile argued "clear disavowal" of claim scope:

Since “[i]t is the claims that define the metes and bounds
of the patentee’s invention,” “[t]he patentee is free to
choose a broad term and expect to obtain the full scope of
its plain and ordinary meaning unless the patentee explicitly
. . . disavows its full scope.” Thorner, 669 F.3d at
1367 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc)). Disavowal is an “exacting”
standard under which it must be established that the
patentee “demonstrate[d] an intent to deviate from the
ordinary and accustomed meaning of a claim term”
through “expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.” Epistar
Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed.
Cir. 2009).

The statements in the prosecution history T-Mobile
cites do not meet this exacting standard.


The patentee’s reference to Figure 15A, depicting embodiments
in which the resource allocator becomes application
aware using information obtained from network layer 3
and transport layer 4 packet headers, is inconsistent with
T-Mobile’s urged disavowal of these embodiments.

Even more telling is the patentee’s addition, in the
2002 Reply, of claim 19, which expressly provides that the
“application type” can be recognized through “analysis of
at least one of: . . . information operated on at layer 3 of
the OSI model, information operated on at layer 4 of the
OSI model, . . . and information operated on at layer 7 of
the OSI model.” This shows that the patentee knew how
to restrict the resource allocator to using information
obtained from layer 7. If the patentee had intended to
similarly restrict the resource allocator in claim 1, it could
have done so using the language of claim 19, but did not.
See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
1359 (Fed. Cir. 2016). What’s more, the addition of a
dependent claim reciting that the resource allocator can
use information obtained not only from application layer 7
but also from network layer 3 and transport layer 4 belies
any disavowal of these latter embodiments in the independent
claim from which it depends.


Having discerned no disavowal, we hold that the “application-aware
resource allocator” in claim 1 and “application-aware
media access control (MAC) layer” in
claim 20 are not restricted to allocating resources using
information obtained from application layer 7. We construe
this claim language to have its plain meaning,
which permits the resource allocator to allocate resources
based on application type, which can be discerned using
information from any of network layer 3, transport layer
4, and application layer 7.

As to indefiniteness:

Under 35 U.S.C. § 112, a patent claim must “particularly
point[] out and distinctly claim[] the subject matter”
regarded as the invention. In particular, a claim, viewed
in light of the specification and prosecution history, must
“inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); see
also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1371 (Fed. Cir. 2014) (“The claims, when read in light of
the specification and the prosecution history, must provide
objective boundaries for those of skill in the art.”).
While a claim employing a “term[] of degree” may be
definite “where it provide[s] enough certainty to one of
skill in the art when read in the context of the invention,”
Interval Licensing, 766 F.3d at 1370, a term of degree that
is “purely subjective” and depends “on the unpredictable
vagaries of any one person’s opinion” is indefinite
, Datamize,
LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–
51 (Fed. Cir. 2005).

We conclude that the “QoS requirements” are entirely
subjective and user-defined. The ’248 patent analogizes
QoS to “a continuum, defined by what network performance
characteristic is most important to a particular
user” and characterizes it as “a relative term, finding
different meanings for different users.” ’248 patent at
12:51–52, 62–65. “Ultimately,” the ’248 patent states,
“the end-user experience is the final arbiter of QoS.” Id.
at 14:39–40.

Sunday, September 02, 2018

CBS Sunday Morning on 2 September 2018

CBS Sunday Morning on September 2, 2018 recycled its cover story "Companies open doors to talent with autism" from an earlier episode on 11 February 2018. The Sunday Profile on Twiggy was recycled from an earlier broadcast on May 13, 2018. There was a plug for John Kerry's book "Every Day Is Extra" (Simon & Shuster) both on Sunday Morning and on Face the Nation.

There was a piece on "Rockwell, Roosevelt & the Four Freedoms," which included discussion of the work of Pops Petersen on Reinventing Rockwell. The show “Re-Imagining the Four Freedoms” closes on 2 Sept. 18.

Almanac featured the first ATM opened on September 2, 1969. [Don't forget Bryan Adams and Summer of '69. ]

Anthony Mason did a piece on Leon Bridges.

Conor Knighton did a piece on washboards. Other then Bayou musicians [for those in Bridgewater ZYDECO-A-GO-GO], washboards are used by servicemen overseas.

Steve Hartman reported on the interesting First Amendment case involving Lubek Jastrzebski and Nancy Nemhauser, of Mount Dora, Fla.

The Moment of Nature was on Valley of the Gods. It is near Mexian Hat and Bluff, Utah.


Of politics, wikipedia notes: On December 4, 2017, President Donald Trump issued a proclamation that reduced the area of Bears Ears National Monument (proclaimed by President Barack Obama in December 2016), with new monument boundaries that exclude the Valley of the Gods.