Wednesday, October 31, 2018

USA Today doing "fake history"

With much discussion of "fake news," it is interesting to note that USA Today is re-writing history.

As seen in the image below, USA Today wrote that Dred Scott "was enslaved after living
free in Missouri." As one point, Dred Scott, prior to the Supreme Court decision in
1857, NEVER lived free in the state of Missouri. Further, although Scott did live in the
free state of Illinois, and also what would later become Minnesota, he did not live "free" there
either, being hired out to perform work on behalf of his owner.

Scott's argument before state courts in Missouri, and later before the U.S. Supreme Court, was
that by living in free states/territories he had become free.

Of greater relevance to the present debate was the status of Dred Scott's daughter Eliza, who was born on a
riverboat on the Mississippi River, between the free state of Illinois, and the free territory of
what would become Iowa.

The U.S. Supreme Court decision was based on an asserted lack of standing of Dred Scott to bring the
lawsuit at all. That presumably would have applied to a suit brought on behalf of the daughter.

USA Today wrote that "his owners eventually freed him." The issue of "who owned" Scott at given points in
time is a bit murky. Scott was initially owned by Peter Blow, who sold Scott to Dr. John Emerson, who died
in 1843, leaving his estate to his wife Irene Emerson. John Sanford was the brother of Irene Emerson, and
there is no record showing that he ever "owned" Dred Scott. In 1850, Irene Emerson re-married, to
Calvin C. Chaffee. In 1857, the Chaffees deeded Scott and his family to Taylor Blow, Peter Blow's son, and
it was Taylor Blow who freed the Scott family. Dred Scott died in 1858, having lived "free" for about 18 months.

From USA Today, on 30 October 2018:

Monday, October 29, 2018

CAFC vacates PTAB ruling which was adverse to BASF

From the BASF decision:

Entitled “Copper Electrodeposition in Microelectronics,”
the ’992 patent generally relates to the field of “microelectronics
manufacture to provide electrical
interconnection in a wide variety of applications, such
as . . . in the manufacture of semiconductor integrated
circuit . . . devices.” ’992 patent col. 1 ll. 13–16. Specifically,
it teaches a “method . . . for electrolytically plating
[copper] onto a semiconductor integrated circuit substrate
having submicron-sized interconnect features.” Id.,
Abstract. “An interconnect feature is a feature such as a
via or trench formed in a dielectric substrate which is
then filled with metal to yield an electrically conductive
interconnect.” Id. col. 1 ll. 23–25. The ’992 patent’s
“method involves superfilling by rapid bottom-up deposition
at a superfill speed by which [copper] deposition
[occurs] in a vertical direction from the bottoms of the
features to the top openings of the features [and] is substantially
greater than [copper] deposition on the side
walls.” Id

BASF argument:

Before the PTAB, BASF asserted that two combinations
of prior art rendered the Challenged Claims obvious:
(1) U.S. Patent No. 6,444,110 (“Barstad”) in view of U.S.
Patent Application No. 2002/0127847 (“Alling”) (J.A. 468–
74) and BASF, Pluronic & Tetronic Block Copolymer
Surfactants (1989) (“BASF Catalog”) (J.A. 436–67), and
(2) U.S. Patent Application No. 2002/0043467 (“Morrissey”)
(J.A. 429–35) in view of Alling and the BASF Catalog.
See BASF I, 2017 WL 4014997, at *1. On appeal, the
parties do not dispute the PTAB’s finding that both combinations
teach each limitation of the Challenged Claims.
See id. at *5–7. See generally Appellant’s Br.; Appellee’s
Br. Instead, the central issue is whether, in view of
Alling, a PHOSITA would have been motivated to replace
either Barstad’s or Morrissey’s suppressor with the BASF
Catalog’s Tetronic® surfactant copolymer.3 See Appellant’s
Br. 27; Appellee’s Br. 1–2.

PTAB's problems:

Important PTAB Findings Regarding Its Holding of
Nonobviousness Either Lack Support in the Cited Evidence
or Are Inadequately Explained


Alling references chip interconnects at dimensions of 200
nanometers or less, but stating “beyond that the reference
offers no description of or allusion to filling submicron
features,” nor does it explicitly mention superfilling). At
oral argument, Enthone admitted that the PTAB failed to
support its finding. Oral Arg. at 16:41–19:22,
2018-1095.mp3 (Q: “I’m struck by what appears to be,
first of all, a mis-citation on [J.A.] 21–22,
where [the
PTAB] reject[s] this argument that the dimensions disclosed
in Alling necessarily require superfilling, and they
say no that’s not true ‘because those specific dimensions
could effectively receive electrodeposition without superfilling,’
and they cite [J.A.] 2031 and paragraph 69 for
that proposition. . . . [T]hat paragraph . . . does not support
what the [PTAB] says about it.” A: “That statement
is not in [paragraph] 69.”).


“[T]he PTAB must examine the relevant data and articulate
a satisfactory explanation for its action including
a rational connection between the facts found and the
choice made.” In re NuVasive, 842 F.3d at 1382 (internal
quotation marks and citation omitted). “This explanation
enables the court to exercise its duty to review the PTAB’s
decisions to assess whether those decisions are arbitrary,
capricious, an abuse of discretion, or unsupported by
substantial evidence.” Id. (internal quotation marks,
ellipses, and citation omitted).
The PTAB acted arbitrarily and capriciously by failing
to provide a reasoned explanation for reaching an inconsistent
finding regarding Barstad. Barstad states that, in
general, electroplating solutions may contain additives
“such as surfactants, brighteners, levelers[,] and suppressants.”
Barstad col. 1 ll. 24–25.


The PTAB’s finding that Barstad teaches that suppressors
and surfactants are separate is, therefore, plainly
inconsistent with the PTAB’s finding in the inter partes
review of the ’786 patent that Barstad teaches a Tetronic
copolymer acting as a surfactant-type suppressor agent.
Compare BASF II, 2017 WL 4015000, at *7, with BASF I,
2017 WL 4014997, at *8. This inconsistency is critical
because, if the PTAB finds Barstad teaches a Tetronic
copolymer may be used as a suppressor in superfilling,
such a finding would be highly relevant to obviousness.
See BASF I, 2017 WL 4014997, at *8 (requiring “some
specific motivation to employ specific plating bath components,
given the general unpredictability in the field and
the art” (emphasis added)). Rather than providing a
satisfactory explanation for its divergent findings, the
PTAB simply rejected BASF’s argument “that Barstad
does not contain the clear delineation between suppressors
and surfactants,” by stating it was “not persuaded
that Barstad does not disclose each distinctly.” Id. (internal
quotation marks and citation omitted). Absent “any
reasoned explanation for th[is] inconsistent result” between
the two inter partes reviews, we find it appropriate
to vacate and remand so the PTAB may reevaluate
whether Barstad discloses Tetronic copolymers as suppressors
for use in superfilling. Vicor, 869 F.3d at 1323;
see id. (vacating and remanding where the PTAB failed to
provide any reasoned explanation for reaching directly
conflicting obviousness conclusions in two reexaminations
involving closely-related subject matter)

Wednesday, October 24, 2018

Issue of plagiarism in Christian publications

Forward loses multiple sclerosis drug case to Biogen

From the decision:

This appeal arises from an interference proceeding1 at
the United States Patent and Trademark Office, Patent
Trial and Appeal Board (Board) and involves a treatment
method for multiple sclerosis with a particular daily
dosage—480 mg—of fumaric acid esters (fumarates).
Appellee Biogen MA, Inc. (Biogen) owns U.S. Patent No.
8,399,514, which describes and claims this method of
treatment. Appellant FWP IP ApS (Forward)2 is the
assignee of U.S. Patent Application No. 11/576,871, which
discloses controlled release compositions of fumarates.
Forward argues that its patent application describes the
specific treatment method in dispute. While the Board
found that Forward’s ’871 application had an earlier
priority date than Biogen’s ’514 patent, it granted Biogen’s
motion for judgment that the MS treatment Forward
now seeks to claim is not supported by adequate
written description under 35 U.S.C. § 112 (2006). Because
substantial evidence supports the Board’s finding
that Forward’s ’871 application does not adequately
disclose a method of treating MS with 480 mg of
fumarates per day, we affirm.

Of the law:

Whether a patent claim is supported by an adequate
written description is a question of fact, which we review
for substantial evidence. ULF Bamberg v. Dalvey, 815
F.3d 793, 797 (Fed. Cir. 2016). A Board decision is supported
by substantial evidence if “a reasonable mind
might accept the evidence to support the finding.” Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
449 (Fed. Cir. 2015) (citation omitted). A decision is
supported by substantial evidence even if the record
would reasonably support contradictory conclusions. In re
Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002).
Section 112 ¶ 1 provides that “[t]he specification shall
contain a written description of the invention.” 35 U.S.C.
§ 112. The written description requirement examines
“whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as
of the filing date.” Ariad, 598 F.3d at 1351. To demonstrate
possession, the inventor must provide enough
description in the specification to demonstrate that he
actually invented what has been claimed—a “mere wish
or plan for obtaining the claimed invention” is not enough.
Centrocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d
1341, 1348 (Fed. Cir. 2011).

From footnote 5:

Relatedly, Forward argued that the Board misapplied
written description law by applying a “heightened”
blaze marks analysis. This is not so. First, the blaze
marks analysis is part of the written description inquiry;
it is not a heightened inquiry. The blaze marks analysis
is a useful guide for evaluating laundry-list disclosures,
like the one in Forward’s ’871 application.


Recently in Nike, Inc. v. Adidas AG, we explained
that the written description requirement “serves
the same function as ‘blaze marks on the trees’ to help
‘find[] one’s way through the woods.’” 812 F.3d 1326, 1347
(Fed. Cir. 2016) (quoting In re Ruschig, 379 F.2d 990, 995
(CCPA 1967)). Second, Forward’s argument against the
application of a blaze marks analysis is premised on the
interference count being disclosed as a unified whole in
the ’871 application, which the Board found was not the
case. We observe no unified disclosure of all three limitations
of the interference count in the ’871 application and
thus see no reason to disturb the Board’s finding.

Of multiple dependent claims:

The task of locating the now-claimed subject matter
within the original claims is made uncommonly more
difficult by the original claims themselves, which are
written in a cascading, multiple dependencies manner
such that many of them generically refer back to any one
of the preceding claims. For example, claim 44, which
contains a laundry list of diseases and conditions, depends
on “any one of claims 1–43.” Other claims use
similar language including “any one of the preceding
claims” (claims 11, 27, 28) and “any one of the claims 3–
12” (claim 13). In addition, claim 33 is a multiple dependent
claim, and it is effectively serving as the basis for
claim 37 and subsequently, claim 44. Title 35 forbids this
type of claim drafting because it can—as here—lead to
bizarrely complex chains of cross-referencing claims in
which one multiple dependent claim impermissibly serves
as a basis for other multiple dependent claims, and so on.
See 35 U.S.C. § 112 ¶ 5 (“A claim in multiple dependent
form shall contain a reference, in the alternative only, to
more than one claim previously set forth and then specify
a further limitation of the subject matter claimed.

keyword: Tecfidera

Sunday, October 21, 2018

The USPTO and the Berkheimer memo

The last paragraph of an allthingspros post on Berkheimer states:

But the appellants lost in those cases because they were not able to show binding precedential support for their suppositions as to what was required during examination. The Federal Circuit's Berkheimer decision, however, provides more definite precedential support for the content of the Berkheimer memo than Enfish does for the May 2016 Enfish memo. For instance, Berkheimer states in no uncertain terms that "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." 881 F.3d at 1369. As such, applicants may have more success in asking the Board to uphold the procedural requirements imposed on examiners by the Berkheimer memo, at Alice step two, than they have had in trying to enforce the July 2015 and May 2016 guidance memos, relating to step one of the Alice framework.


The problematic nature of Berkheimer resides in the issue that what was "well-understood, routine, and conventional" at some point in the past is a matter of opinion, not one of fact. What was disclosed in a piece of prior art is a matter of historical fact. A separate issue, raised in the CCIA brief and elsewhere, is that those of skill in the art do not tend to memorialize those things which are "well-understood, routine, and conventional."

Ebert note

See also

See also CCIA brief

Saturday, October 20, 2018

Substantive and procedural due process in the Third Circuit

An actionable claim under 42 USC § 1983 requires: (1) a violation of a right provided under the U.S. Constitution or federal law (2) resulting from a state sanctioned act. Some 1983 plaintiffs allege violations of both their substantive and procedural due process rights under the Fourteenth Amendment. These are distinct species of 1983 claims.

A plaintiff seeking relief under § 1983 for a violation of procedural due process must demonstrate that "(1) he was deprived of an individual interest that is encompassed within the Fourteenth Amendment's protection of 'life, liberty, or property,' and (2) the procedures available to him did not provide 'due process of law.'" Hill v. Borough of Kutztown, 455 F.3d 225, 233-34 (3d Cir. 2006). Due process usually requires at least "the opportunity to be heard 'at a meaningful time and in a meaningful manner.'" Mathews v. Eldridge, 424 U.S. 319, 333, 96 S. Ct. 893, 47 L. Ed. 2d 18 (1976) (quoting Armstrong v. Manzo, 380 U.S. 545, 552, 85 S. Ct. 1187, 14 L. Ed. 2d 62 (1965)). The taking of a constitutionally protected property interest without a hearing is nearly a per se violation of procedural due process.

Within the Third Circuit, a cognizable substantive due process claim may require deprivation of a protected interest by executive action "so ill-conceived or malicious that it shocks the conscience."

When a plaintiff specifically invokes PROCEDURAL due process, one might assume procedural due process is the species of claim intended.

More broadly than in the Third Circuit, "substantive" claims under the 14th Amendment may involve taking of property interests. Within Dolan v. City of Tigard, 512 U.S. 374 (1993):

Later cases have interpreted the Fourteenth Amendment's substantive protection against uncompensated deprivations
of private property by the States as though it incorporated the text of the Fifth Amendment's Takings Clause
See, e. g., Keystone Bituminous Coal Assn. v. DeBenedictis, 480 U.S. 470, 481, n. 10, 94 L. Ed. 2d 472, 107 S. Ct. 1232 (1987).
There was nothing problematic about that interpretation in cases enforcing the Fourteenth Amendment
against state action that involved the actual physical invasion of private property. See Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S. 419, 427-433, 73 L. Ed. 2d 868, 102 S. Ct. 3164 (1982); Kaiser Aetna v. United States, 444 U.S. at 178-180.
Justice Holmes charted a significant new course, however, when he opined that a state law making it
"commercially impracticable to mine certain coal" had "very nearly the same effect for constitutional purposes
as appropriating or destroying it." Pennsylvania Coal Co. v. Mahon, 260 U.S. 393, 414, 67 L. Ed. 322, 43 S. Ct. 158 (1922).
The so-called "regulatory [page 407] takings" doctrine that the Holmes dictum the text of the note kindled
has an obvious kinship with the line of substantive due process cases that Lochner exemplified.
Besides having similar ancestry, both doctrines are potentially open-ended sources of judicial power
to invalidate state economic regulations that Members of this Court view as unwise or unfair.

Within the Third Circuit, a violation of substantive due process involves conscience-shocking actions:

"A substantive due process violation occurs if a government official engages in
'an abuse of executive power so clearly unjustified by any legitimate objective of law enforcement'
that it is barred by the Fourteenth Amendment." Button v. Snelson, No. 16-1835,
679 Fed. Appx. 150, 2017 U.S. App. LEXIS 2411, 2017 WL 543184, at *2 (3d Cir. Feb. 10, 2017)
(quoting City of Sacramento v. Lewis, 523 U.S. 833, 840, 118 S. Ct. 1708, 140 L. Ed. 2d 1043 (1998)).
To establish a valid substantive due process claim, a plaintiff must "prove that
'the particular interest at issue is protected by the substantive due process clause and
the government's deprivation of that protected interest shocks the conscience.'" Id.
(quoting Chainey v. Street, 523 F.3d 200, 219 (3d Cir. 2008)).
""[O]nly the most egregious official conduct' shocks the conscience."
Perano v. Twp. of Tilden, 423 F. App'x 234, 238 (3d Cir. 2011) (quoting United Artists Theatre Circuit, Inc., 316 F.3d at 400).

HOWEVER, one notes that "what is conscience-shocking" may be in the eye of the beholder; from

"The substantive component of the Due Process Clause 'protects individual liberty against 'certain government actions regardless of the fairness of the procedures used to implement them.'" Gottlieb ex rel. Calabria v. Laurel Highlands Sch. Dist., 272 F.3d 168, 172 (3d Cir. 2001) (quoting Collins v. Harker Heights, 503 U.S. 115, 125, 112 S. Ct. 1061, 117 L. Ed. 2d 261 (1992)). "To establish a substantive due process claim, a plaintiff must prove the particular interest at issue is protected by the substantive due process clause and the government's deprivation of that protected interest shocks the conscience." Chainey v. Street, 523 F.3d 200, 219 (3d Cir. 2008). "[C]onduct intended to injure in some way unjustifiable by any government interest is the sort of official action most likely to rise to the conscience-shocking level." Cty. of Sacramento v. Lewis, 523 U.S. 833, 849, 118 S. Ct. 1708, 140 L. Ed. 2d 1043 (1998).


First, with respect to the nature of Frompovicz's property interest, "[t]he United States Court of Appeals for the Third Circuit has recognized that ownership interests in property are interests protected by the substantive aspect of due process." See M & M Stone Co. v. Pennsylvania, Dep't of Envtl. Prot., No. CIV.A. 07-CV-04784, 2008 U.S. Dist. LEXIS 76050, 2008 WL 4467176, at *21 (E.D. Pa. Sept. 29, 2008) (citing Indep. Enterprises Inc. v. Pittsburgh Water & Sewer Auth., 103 F.3d 1165, 1179 n.12 (3d Cir. 1997)). Moreover, "[t]he Third Circuit has explicitly held that cases involving 'zoning decisions, building permits, or other governmental permission required for some intended use of land owned by the plaintiffs . . . implicat[e] the "fundamental" property interest in the ownership of land.'" Id. (quoting Indep. Enterprises, 103 F.3d at 1179 n.12); see DeBlasio v. Zoning Bd. of Adjustment for Twp. of W. Amwell, 53 F.3d 592, 601 (3d Cir. 1995), abrogated on other grounds by UA Theatre Circuit, Inc. v. Twp. of Warrington, 316 F.3d 392 (3d Cir. 2003) (recognizing that a substantive due process right is implicated where a "government decision . . . impinges upon a landowner's use and enjoyment of property").

Here, Frompovicz alleges that Defendants interfered with his use of a DEP operations permit that allowed Frompovicz to "remove and resell spring water for the bottled water industry" from his property in Auburn, Pennsylvania. Compl. ¶¶ 1, 31. The Court finds that Frompovicz's interest in the permit is protected by substantive due process because this interest concerns the use and enjoyment of his real property. See M & M Stone, 2008 U.S. Dist. LEXIS 76050, 2008 WL 4467176, at *22 ("Plaintiff's mining license implicates plaintiff's fundamental property interest in the use, control and enjoyment [*15] of its real property.").

Second, the Court must consider whether Frompovicz has alleged conduct on the part of Defendants that both impinges on his protected property right and "shocks the conscience." Frompovicz's Complaint is replete with allegations of "conscience-shocking" conduct on the part of Defendants, but many of these allegations concern alleged conduct that occurred before June 2015 (which Frompovicz admits is irrelevant to his claims) or concern Defendants' alleged failure to enforce DEP regulations with respect to Frompovicz's competitor, MCR. This latter conduct—regardless of whether it was "conscience shocking"—did not impinge on Frompovicz's use and enjoyment of his land. At most, this alleged conduct reduced the value of Frompovicz's operations permit by providing his competitor with an allegedly unfair advantage. But "a decline in property value, by itself, cannot support a substantive due process claim." Kriss v. Fayette Cty., 827 F. Supp. 2d 477, 493 (W.D. Pa. 2011), aff'd, 504 F. App'x 182 (3d Cir. 2012). Accordingly, to the extent Frompovicz seeks to assert a substantive due process claim on the basis of Defendants' alleged conduct vis-à-vis MCR, he fails to state a claim. But Frompovicz's allegations that Defendants have prevented him from removing and [*16] selling his own water—for example, by unjustifiably refusing to finalize the "Corrections Completed Notice"—allege conduct that impinges on the use and enjoyment of his land. Accordingly, these allegations may support a substantive due process claim.

Finally, Frompovicz has alleged that Defendants refused to finalize the Corrections Completed Notice, among other thing, in an effort to "silence and destroy" him and to benefit MCR. See Compl. ¶ 193. He has therefore alleged "conscience-shocking" conduct on the part of Defendants, that is, "conduct intended to injure in some way unjustifiable by any government interest."

Procedural due process is a different entity.

from De Sapio Props. #Six, Inc. v. Alexandria Twp., 2017 U.S. Dist. LEXIS 65603 (D NJ 2017)

The Third Circuit discussed procedural due process in DeBlasio, 53 F.3d 592:

In order to establish a violation of his right to procedural due process,
DeBlasio, in addition to proving that a person acting under color of state law deprived him of a protected property interest,
must establish that the state procedure for challenging the deprivation does not satisfy the requirements of procedural due process. Midnight Sessions, Ltd. v. City of Philadelphia, 945 F.2d 667, 680 (3d Cir. 1991) (citation omitted).
As we observed in Bello,a state provides constitutionally adequate procedural due process
when it provides reasonable remedies to rectify a legal error by a local administrative body.
Bello, 840 F.2d at 1128 (citations omitted).
In other words, when a state "affords a full judicial mechanism with which to challenge the administrative decision"
in question, the state provides adequate procedural due process, id.,
whether or not the plaintiff avails him or herself of the provided appeal mechanism.
Midnight Sessions, 945 F.2d at 682.

CBS dramas involving piracy of sand

Back on June 19, 2018, IPBiz highlighted the episode of the CBS Show "Elementary" titled "Sand Trap," which, among other things, involved some people stealing sand. [ "Curiously, however, not by the intellectual property theft victims, nor by the sand pirates. Rather, by a seemingly mild-mannered county government employee living by kick-backs from contractors. "]

Flash forward to October 19, 2018, and an episode of the CBS Show "Hawaii Five-0" also had a plot line involving theft of sand. [ season 9 episode 4 “A’ohe kio pohaku nalo i ke alo pali (On the Slope of the Cliff, Not One Jutting Rock is Hidden From Sight),” ] With an inside Sherlockian reference to "the game's afoot," one suspects this plot line similarity was quite intentional. The Five-0 episode got more mileage out of the sand theme, with McGarrett improbably jumping into a big sand mixer after a suspect, risking life and limb.

The "bad guy" in both CBS shows was improbable. For Elementary, a meek but highly corrupt county official. For Five-0, a cheating husband, who hired a killer off the internet [Craigslist ?] for $2000, which killer killed the wrong [but same named] person first, which mistaken first killing cracked the case.

There was a second plot line involving Jerry and Junior. Sadly, this included Jerry uttering a completely false statement of history that the Bell P-59 Airacomet was the first jet fighter. Several problems here. The P-59 was basically copied from the British Gloster E.28/39. The P-59 was technically impractical and ultimately scrapped, never flying in combat.
One should review the story of Adolf Galland and the Me-262.

See also

from an IPBiz post on 2016:

Yes, the Germans had jets during World War II in particular the Me-262. The Germans used the Me-262 to target bombers, as on March 24, 1945 over Berlin. From

The Me 262 was way ahead of it's time. The ONLY proven method to successfully bring down an Me 262 was to attack it during take-off/landing. In the air, the Me 262's job was to bring down bombers. This role was one that would be successfull. The P-51 was a superb prop fighter but in a head on fight with the Me 262, it would not win. The P-51 could out turn the Me 262 to get away but to catch up and make a kill....nope.

Air & Space noted:

more than 1,400 Me 262s were manufactured, but only some 300 flew combat.

Read more:
Save 47% when you subscribe to Air & Space magazine
Follow us: @AirSpaceMag on Twitter

The jet fighter craft was an innovation.

[As to attacking bombers, note the story of Galland, and the internal German conflict over the proper
use of the Me-262. How an invention becomes an innovation can depend on "how used;" recall the story of the
computer mouse, among others, and various failed Xerox strategies.]

the 2008 post on IPBiz

As to the Elementary episode:

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

Thursday, October 18, 2018

LiquidPower Specialty Products Inc. (“LSPI”) wins appeal at CAFC in asphaltenic crude oil case

The outcome:

LiquidPower Specialty Products Inc. (“LSPI”) appeals
the final written decision on inter partes review of the
Patent Trial and Appeal Board holding claims 8–10 of
U.S. Patent No. 8,022,118 unpatentable for obviousness
over U.S. Patent No. 6,015,779 (“Eaton”), a publication
titled “The Chemistry of Alberta Oil Sands, Bitumens and
Heavy Oils” (“Strausz”), and U.S. Patent No. 4,983,186
(“Naiman”).1 Because the Board erred by failing to weigh
LSPI’s objective evidence of nonobviousness, we vacate
and remand.

Of the technology:

The ’118 patent relates to high molecular weight drag
reducing polymers for use in heavy, asphaltenic crude oil
(“HAC”). ’118 patent at 1:8–12. Independent claim 10 is
illustrative and recites:

10. A method comprising:

introducing a drag reducing polymer having a solubility
parameter of at least about 17 MPa1/2, into
a pipeline, such that the friction loss associated
with the turbulent flow through the pipeline is reduced
by suppressing the growth of turbulent eddies,
into a liquid hydrocarbon having an
asphaltene content of at least 3 weight percent
and an API gravity of less than about 26° to
thereby produce a treated liquid hydrocarbon
wherein the viscosity of the treated liquid hydro-
carbon is not less than the viscosity of the liquid
hydrocarbon prior to treatment with the drag reducing
wherein the drag reducing polymer has a solubility
parameter within 4 MPa1/2 of the solubility parameter
of the liquid hydrocarbon and the drag
reducing polymer comprises at least about 25,000
repeating units, and wherein a plurality of the repeating
units comprise a heteroatom, wherein the
heteroatom is selected from the group consisting
of an oxygen atom, a nitrogen atom, a sulfur atom
and/or a phosphorus atom and wherein the drag
reducing polymer has a weight average molecular
weight of at least 1×106 g/mol and
the drag reducing polymer is added to the liquid
hydrocarbon in the range from about 0.1 to about
500 ppmw.

The CAFC noted:

The Board declined to consider LSPI’s
objective evidence because it found that LSPI did not
establish it was entitled to a presumption of nexus. The
Board’s reasoning is not entirely clear, but we need not
determine whether the presumption applies because there
was extensive direct evidence of nexus and arguments
related thereto presented by LSPI. J.A. 876–99. To the
extent that the Board made a fact finding that LSPI failed
to establish nexus for its objective evidence, we conclude
that this fact finding is not supported by substantial

For example, LSPI submitted ample support establishing
nexus for its objective evidence related to the
commercial products of LSPI, Baker Hughes, and
Flowchem. For LSPI’s product ExtremePower, it submitted
evidence of commercial success driven by the claimed
features of the ’118 patent, including its ability to reduce
drag in HAC. J.A. 883–84; J.A. 2865–82. It also submitted
evidence that ExtremePower was recognized in the
industry as a pioneering technological breakthrough.
J.A. 882–83; J.A. 2864–65. There is no evidence in the
record that this commercial success or industry praise
was due to any unclaimed features of the product.
also submitted evidence detailing how its competitors
copied drag reducing agents from the ’118 patent to
develop their own products that practice the claimed
methods. J.A. 884–99; J.A. 2882–86. By tying the evidence
to these commercial products that are designed and
marketed to reduce drag in the flow of HAC through a
pipeline, LSPI has put forth enough evidence to establish
a nexus to the claimed invention. J.A. 884, 896;
J.A. 2881–85.

Monday, October 15, 2018

The idea of compulsory licensing of patents in the health context?

This author has discussed the relevance of certain World War I federal statutes on later patent policy. See for example:

Where have you gone, Richard K. Lyon?, Int. Prop. Today, p. 20 (Dec. 2001) (discussing patent issues with CIPRO during the anthrax scare)

The Impact of World War I on Present Day Patent Issues, Int. Prop. Today p. 35 (Feb. 2005).

Now, in 2018, from healthleadersmedia :

Section 1498 was used to negotiate lower drug prices in the 1960s and '70s, but has since faded. In 2001, during the nation's anthrax scare, the Department of Health and Human Services threatened to invoke it to procure more of the antibiotic used to treat the deadly bacterial disease, according to contemporaneous reports. Last year, Louisiana's health secretary unsuccessfully tried to use it to ease the toll pricey hepatitis C medications exerted on the state's Medicaid program.NIH Director Francis Collins remains skeptical, repeatedly saying that a drug's price doesn't constitute a health or safety concern within the agency's jurisdiction.HHS Secretary Alex Azar, speaking at a June Senate hearing, described march-in, also known as "compulsory licensing," as a "socialist" approach.


See also

See also

Patents on drugs are not the only issue in the release of generic formulations

with text:

As to a choice "between the generic version of the older
but effective drug and the convenient but more expensive patented version," see some of
the discussion surrounding the drug -- tenofovir alafenamide fumarate ("TAF")-- compared with the drug --tenofovir disoproxil fumarate ("TDF"), a component of Truvada. Truvada made the recent FDA list of Reference Listed Drug (RLD) Access Inquiries (with no REMS issue). The FDA approved generic Truvada in 2017, with Teva and Gilead making a deal. Some of the lawsuits involving Gilead and TAF are over issues other than patents,
including asserted ethics issues of delaying market entry of a drug with superior safety profiles.

See also

Friday, October 12, 2018

Kavanaugh, Henius, and McLean

One thing that was not disputed in the Senate hearings on Judge Kavanaugh was that, as a young man, Kavanaugh enjoyed beer.
As one bit of trivia, Max Henius (Ph.D., chemistry, University of Marburg, 1881) founded the Chicago-based American Brewing Academy, which became a school for brewmasters, and later was instrumental in creating Rebild National Park in Denmark, supposedly the site of the largest "Fourth of July" celebrations outside of the United States (Rebildfesten). Beer is patriotic [?]

Separately, one issue related to Kavanaugh which did not "take off" seemed to be the role of Monica McLean, a high school classmate of Ford's and a graduate of the University of Baltimore School of Law.


Teva loses appeal of invalidity of patent claims of 40mg Copaxone multiple sclerosis drug

The CAFC affirmed the decision of D. Delaware of invalidity of claims:

Plaintiffs-Appellants Teva Pharmaceuticals USA,
Inc., Teva Pharmaceutical Industries, Ltd., Teva Neuroscience,
Inc., and Yeda Research and Development Co.,
Ltd., appeal the decision of the United States District
Court for the District of Delaware invalidating all asserted
claims of patents directed to COPAXONE® 40mg/mL, a
product marketed for treatment of patients with relapsing
forms of multiple sclerosis. Because the district court
correctly held the asserted claims invalid as obvious
under 35 U.S.C. § 103, we affirm.

Footnote 1 of the case

In a companion case decided today, Yeda Research
& Development Co., v. Mylan Pharmaceuticals Inc., Nos.
17-1594, 17-1595, 17-1596 (Fed. Cir. Oct. 12, 2018), Yeda
Research and Development Co. appealed from the Patent
Trial and Appeal Board’s final written decisions finding
all claims of U.S. Patent Nos. 8,232,250, 8,399,413, and
8,969,302 unpatentable as obvious in three related inter
partes review proceedings.
[Therein: "We affirm the
Board’s decisions."]

The use of the Khan (2009) reference was of interest:

The district court admitted the Khan 2009 reference
for the limited purpose of showing the state of the art at
the time of the invention. In re Copaxone Consolidated
Cases, No. 14-1171-GMS, 2017 WL 401943, at *14 (D. Del.
Jan. 30, 2017). Khan 2009 was published three weeks
after August 20, 2009, the priority date of the Copaxone
patents, but the study began two years earlier. J.A.
23904–05. The study abstract noted that “[t]here is
considerable interest in studying a more patient friendly
dosing regimen of GA that may be as efficacious and
better tolerated than daily GA.” J.A. 23904. Following
the results of Khan 2008, which showed that alternate
day administration of GA appears to be as effective as
daily administration, Khan 2009 compared 20mg GA
administered twice a week to 20mg GA administered
daily in a pilot, prospective, randomized, and raterblinded
two-year study. J.A. 23904.


In light of these factual findings, the district court
concluded that a 40mg GA 3x/week dosage would be
obvious to try, noting that there were only two tested
dosage amounts in the prior art—20mg and 40mg—and
that researchers were pursuing less frequent dosing
regimens while recognizing there are a limited number of
days in a week on which to test frequency. See id. at *19.
The court recognized that obvious-to-try logic is not
always appropriate, but found that “[h]ere, there was
market pressure to solve a known problem—the fact that
many MS patients could not tolerate daily injections—and
there were a finite number of predictable solutions that a
person of ordinary skill in the art would have good reason
to pursue.” Id. The district court cited to Khan 2009,
Teva’s GALA study, and trial testimony as evidence of the
motivations of POSITAs at the time of the invention, and
noted evidence and testimony supporting the proposition
that a dosing schedule based on three predetermined days
each week is preferable for patients over an every other
day schedule. Id. at *20. The district court highlighted
testimony from Dr. Green that a regimen of injections on
three pre-determined days of each week is more convenient
for patients and has better patient adherence than an
every other day regimen, in which the days on which
patients inject differ depending on the week. Id.

Teva's position:

Teva contends that the district court erred in finding
the claimed 40mg GA 3x/week dosing regimen obvious.
Specifically, Teva argues that the district court impermissibly
relied on hindsight and an improper “obvious to try”
analysis, and analyzed the obviousness of individual
claim elements, rather than the invention as a whole.
Teva further maintains that the district court’s decision is
at odds with this court’s decision in In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litigation,
676 F.3d 1063 (Fed. Cir. 2012).

Of obvious to try

We have previously identified two categories of impermissible
“obvious to try” analyses that run afoul of
KSR and § 103: when what was “obvious to try” was (a) to
vary all parameters or try every available option until one
succeeds, where the prior art gave no indication of critical
parameters and no direction as to which of many possibil-
ities is likely to be successful; or (b) to explore a new
technology or general approach in a seemingly promising
field of experimentation, where the prior art gave only
general guidance as to the particular form or method of
achieving the claimed invention. See In re Kubin, 561
F.3d 1351, 1359 (Fed. Cir. 2009) (quoting In re O’Farrell,
853 F.2d 894, 903 (Fed. Cir. 1988)).
This case falls into neither of the two impermissible
categories. Here, the prior art focused on two critical
variables, dose size and injection frequency, and provided
clear direction as to choices likely to be successful in
reducing adverse side effects and increasing patient
adherence. As of the priority date, only two GA dose sizes
had been shown to be effective, safe, and well-tolerated:
20mg and 40mg. Concerning frequency, the 1996 FDA
SBOA, Flechter, and Khan 2008 all encouraged POSITAs
to pursue a less frequent than daily dosing regimen; these
references indicated that less frequent injections of GA
were just as effective as daily injections, and less frequent
injections improved patient adherence and reduced adverse


Given this motivation, a POSITA had only a limited
number of permutations of dose and frequency to explore
that were not already disclosed in the prior art. Because
a thrice-weekly 40mg injection would result in a total
weekly dose very close to that in the already-approved
daily 20mg injection—120mg/week versus 140mg/week—
the district court found a POSITA would have had a
reasonable expectation of success in pursuing the thriceweekly
dose frequency in terms of effectiveness, patient
adherence, and FDA approval.


Although the universe of potential GA doses is
theoretically unlimited
, the universe of dosages in the
prior art that had clinical support for being effective and
safe consisted of only two doses: 20mg and 40mg. Even if
there were multiple injection frequencies not yet tested in
the prior art—1x, 2x, 3x a week etc.—these still represent
a limited number of discrete permutations.

This is not a situation where the prior art gave no direction
in how to reach a successful result; the prior art
clearly indicated that less frequent doses should be explored
(i.e., moving away from the daily, “7x/week” dose
towards less frequent doses) and that higher doses, while
maintaining the same weekly dose (i.e., moving from
20mg daily to 40mg every other day), could increase
efficacy while not affecting adverse reactions.


Nor do we find merit in Teva’s argument that the district
court separately analyzed the 40mg dose limitation
and the 3x/week limitation, without considering them
together “except to conclude that the mash-up would be
obvious to try.” Appellants’ Opening Br. 55. We note that
the district court spent considerable time discussing why
the combination of a 40mg dose administered 3x/week
would be obvious to try. See In re Copaxone, 2017 WL
401943, at *19. And while “[t]he determination of obviousness
is made with respect to the subject matter as a
whole, not separate pieces of the claim,” SanofiSynthelabo
v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir.
2008), this court has previously employed the same frequency-and-dosage-amount
approach to obviousness used
by the district court here. In Hoffmann-La Roche, 748
F.3d at 1329, the court considered whether it would have
been obvious at the time of invention to select a once a
month oral dosing regimen of 150mg of ibandronate to
treat osteoporosis. The court first discussed how the prior
art taught that infrequent dosing, such as monthly dosing,
was preferred. Id. at 1329–31. The court then separately
discussed why a POSITA would have selected a
150mg dose, before considering the limitations together
and concluding that “[a]t the very least, the 150mg dose
was obvious to try.” Id. at 1331–33. Teva makes no
convincing argument why a similar approach is inappropriate

Footnote 14 gets into "needle fatigue"

See, e.g., J.A. 4676–77 (Kolodny deposition, describing
needle fatigue associated with Copaxone
20mg/day); J.A. 4869 (Dr. Green, describing Khan 2008:
“It reveals clear and obvious patient preference for an
every-other-day dosing regimen when compared to a daily
dosing regimen given the option.”); J.A. 4857 (Dr. Green:
“As we discussed, most of the adverse events associated
with the use of glatiramer acetate, and in fact the most
troubling set of adverse events had to do with injection
site reactions or immediate post-injection reactions. Both
of those are tied to injections. So if you reduce the frequency
of injections, well, it’s clearly obvious that you
would reduce the frequency of those injection site reactions
or immediate post-injection reactions.”).

As to unknown mechanisms

Finally, this court’s decision in In re Cyclobenzaprine,
676 F.3d at 1063, does not warrant a different outcome.
Teva argues that prior to the invention, higher doses of
GA were not necessarily known to be more effective, GA’s
pharmacokinetic and pharmacodynamic (“pk/pd”) profile
was and remains unknown, GA’s mechanism of action is
still unknown, and the cause of patient’s reactions to
injections of GA is unknown. Teva contends that the
unpredictable nature of GA categorically precludes the
obvious-to-try analysis employed by the district court.
Appellants’ Opening Br. 50.
In Cyclobenzaprine, we held that bioequivalence alone
could not establish obviousness because “skilled artisans
could not predict whether any particular PK profile,
including a bioequivalent one, would produce a therapeutically
effective formulation.” 676 F.3d at 1070. The court
applied traditional motivation and reasonableexpectation-of-success
analysis, reasoning that “[w]hile it
may have been obvious to experiment with the use of the
same PK profile [from an immediate-release formulation]
when contemplating an extended-release formulation,
there [wa]s nothing to indicate that a skilled artisan
would have had a reasonable expectation that such an
experiment would succeed in being therapeutically effective.”
Id. In Cyclobenzaprine, there were no prior art
clinical studies to suggest what would be a therapeutically
effective formulation.

We do not read Cyclobenzaprine as establishing a rigid
rule categorically precluding obviousness findings
without pk/pd data.

In this case, the evidence shows that pk/pd data
was largely irrelevant to the invention.
Numerous clinical
studies in the prior art describe GA and its effects on
the human body. Although the precise mechanism of GA
is not known, it is known to be immunomodulating—i.e.,
it changes the immune system—and is not necessarily
measurable in the bloodstream and its levels are not
indicative of efficacy. See In re Copaxone, 2017 WL
401943, at *21–22; J.A. 3998–99, 4886–87. Testimony
was given at trial that pharmacokinetic studies for drugs
like GA are less appropriate than for small molecule
drugs, such as those at issue in Cyclobenzaprine. J.A.
4886–87. GA was also known to be “forgiving,” in that
occasional missed doses would not reduce efficacy, and
that fact gave POSITAs further confidence in eliminating
one dose every two weeks. J.A. 4848–49; 4884–85; 4732.
Higher doses were clinically shown to be at least as
effective as lower doses; Cohen shows, at the very least,
that 40mg is as effective and well-tolerated as 20mg, but
with a more rapid onset of action. Finally, Teva itself, in
its 1996 application to FDA, indicated that pharmacokinetic
studies “would be of limited value.” J.A. 20689.

Is invocation of "common sense" camouflage for conclusory assertions?

Teva finds fault with the district court’s reference to
“common sense” in its reliance on Dr. Green’s testimony.
During trial, Appellees’ expert Dr. Green testified that a
POSITA would expect reducing the frequency of injections
to be associated with enhanced overall tolerability of the
regimen. J.A. 4911. In its post-trial briefing, Teva argued
that Dr. Green’s testimony was conclusory and
unsupported by the prior art. The district court rejected

The bottom line for the CAFC:

In light of the foregoing, we conclude that the district
court did not err in invalidating all asserted claims of the
Copaxone patents as obvious.

Thursday, October 11, 2018

Plagiarism at speech at the World Medical Association (WMA)?

about charges leveled against Dr. Leonid Eidelman, the newly installed president of the WMA.

Lawsuit asserting bad effects from the use of gadolinium contrast agents in MRI

Another case related to (alleged) bad effects from the use of gadolinium contrast agents in MRI, as for example to seek active
lesions in multiple sclerosis.

Case No.3:18-cv-491, in the United States District Court for the Western District of North Carolina.

For background, see the previous post on IPBiz

Linear gadolinium imaging agents and clear and convincing evidence

Wednesday, October 10, 2018

Roche loses in Rifampin case

The issues in the Roche case were :101

The only issues on appeal are whether the aforementioned
primer claims and the method claims of the ’723
patent are patent-ineligible within the meaning of § 101.
Section 101 provides that “[w]hoever 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.” 35 U.S.C.
§ 101. There are certain exceptions to this provision: laws
of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014) (collecting cases).

Roche lost.

Appellant Roche Molecular Systems, Inc. (“Roche”)
owns U.S. Patent No. 5,643,723 (“the ’723 patent”), titled
“Detection of a Genetic Locus Encoding Resistance to
Rifampin in Microbacterial Cultures and in Clinical
Specimens.” The United States District Court for the
Northern District of California found that the asserted
claims of the ’723 patent are directed to patent-ineligible
subject matter and are therefore invalid under 35 U.S.C.
§ 101. Roche appeals from a grant of summary judgment
of invalidity. We affirm.

Mixed 101 result in Data Engine Technologies v. Google

From the opinion:

Data Engine Technologies LLC (“DET”) appeals the
district court’s entry of judgment on the pleadings holding
that the asserted claims of DET’s U.S. Patent
Nos. 5,590,259; 5,784,545; 6,282,551; and 5,303,146 are
ineligible under 35 U.S.C. § 101. The district court held
that the asserted claims are directed to abstract ideas and
fail to provide an inventive concept. We conclude that,
with the exception of claim 1 of the ’551 patent, the asserted
claims of the ’259, ’545, and ’551 patents (“Tab
Patents”) are directed to patent-eligible subject matter.
These claims are not abstract, but rather are directed to a
specific improved method for navigating through complex
three-dimensional electronic spreadsheets. We agree,
however, that the asserted claims of the ’146 patent,
reciting methods for tracking changes to data in spreadsheets,
are directed to the abstract idea of collecting,
recognizing, and storing changed information. After a
searching review, we find nothing in these claims that
provides an inventive concept sufficient to render the
claims patent eligible. Accordingly, we affirm-in-part,
reverse-in-part, and remand.

QuatroPro is mentioned:

Although these spreadsheet interfaces have become
ubiquitous, Quattro Pro, the first commercial embodiment
of the claimed invention, was highly acclaimed as having
revolutionized three-dimensional electronic spreadsheets.
During prosecution, DET submitted contemporaneous
articles showing the state of the art at the time of the
invention and evidencing the significance of the claimed
methods to spreadsheet technology. For example, PC
World, a leading computer magazine, published a frontpage
article, “Quattro Pro for Windows: The Ultimate 3-D
Spreadsheet.” J.A. 981. The article reflected the industry’s
view that “keeping large, complex worksheet projects
organized, manageable, and reliable ha[d] long been a
major concern for serious spreadsheet users” and that
existing spreadsheets had “data and results hidden all
over the place.” J.A. 982. The article touts the claimed
notebook-tabbed spreadsheet interface as a solution to
that problem, explaining that it “makes developing nifty
applications far easier for the average spreadsheet user,
and [that] intelligent command organization makes
navigation efficient.” Id. PC World published another
cover story naming Quattro Pro “The Best of 1992,” again
lauding it as “the first spreadsheet to make threedimensional
modeling an accessible, useful analytic tool.”
J.A. 1007. The article stated that “[o]ne of the keys to the
product’s success is a notebook metaphor, in which each
worksheet page can be assigned a descriptive name and
users can navigate through the set by clicking on page
tabs.” Id.

Of the '146 patent:

Google filed a motion for judgment on the pleadings
under Federal Rule of Civil Procedure 12(c), arguing that
the asserted claims of the Tab Patents and the ’146 patent
are directed to patent-ineligible subject matter under
§ 101. The district court granted the motion with respect
to the Tab Patents, concluding that representative
claim 12 of the ’259 patent is “directed to the abstract idea
of using notebook-type tabs to label and organize spreadsheets.”
District Court Op., 211 F. Supp. 3d at 678. The
district court also agreed with Google that claim 12 “is
directed to an abstract idea that humans have commonly
performed entirely in their minds, with the aid of columnar
pads and writing instruments.” Id. at 679. The
district court held that the remaining limitations of
claim 12 fail to recite an inventive concept. Id.

Of the '259 patent:

When considered as a whole, and in light of the specification,
representative claim 12 of the ’259 patent is not
directed to an abstract idea. Rather, the claim is directed
to a specific method for navigating through threedimensional
electronic spreadsheets. The method provides
a specific solution to then-existing technological
problems in computers and prior art electronic spreadsheets.
The specification teaches that prior art computer
spreadsheets were not user friendly. They required users
to “master many complex and arbitrary operations.”
’259 patent col. 2 ll. 28–29. Users had to search through
complex menu systems to find appropriate commands to
execute simple computer tasks, which required users to
memorize frequently needed commands. Id. at col. 2
ll. 29–45. This was burdensome and hindered a user’s
ability to find or access the many commands and features
available in prior art computer spreadsheets, undercutting
the effectiveness of the computer as a means to
review and edit a spreadsheet. Id. at col. 2 ll. 45–56. This
was particularly true for three-dimensional spreadsheets,
which allowed users to build spreadsheet workspaces
consisting of multiple two-dimensional spreadsheets,
further increasing the complexity of using and navigating
between multiple spreadsheets. Id. at col. 2 l. 66–col. 3
l. 24

Note footnote 2:

The district court declined to consider the articles
included in the prosecution history, relying only on the
pleadings and the patents attached to DET’s complaint.
District Court Op., 211 F. Supp. 3d at 681 n.4. On a
motion for judgment on the pleadings, however, the court
may consider “matters of public record.” Cf. Bruni v. City
of Pittsburgh, 824 F.3d 353, 360 (3d Cir. 2016) (quoting
Pension Benefit Guar. Corp. v. White Consol. Indus., Inc.,
998 F.2d 1192, 1196 (3d Cir. 1993)). Prosecution histories
constitute public records. See Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir.
2000) (“The prosecution history constitutes a public
record . . . .”); see 37 C.F.R. § 1.11(a) (“The specification,
drawings, and all papers to the file of: [a] published
application; a patent; or a statutory invention registration
are open to inspection by the public . . . .”). We consider
this evidence relevant in our de novo review because it is
part of the Tab Patents’ prosecution histories and was
relied on in DET’s opposition to Google’s Rule 12(c) motion.


Google avers that humans have long used tabs to organize
information. It cites tabbed notebooks, binder
dividers, file folders, and sticky Post-it notes as wellknown
examples of organizing information using tabs.
We agree that tabs existed outside the context of electronic
spreadsheets prior to the claimed invention. It is not
enough, however, to merely trace the invention to some
real-world analogy. The eligibility question is not whether
anyone has ever used tabs to organize information.
That question is reserved for §§ 102 and 103. The question
of abstraction is whether the claim is “directed to” the
abstract idea itself. Id. We must consider the claim as a
whole to determine whether the claim is directed to an
abstract idea or something more. Google fails to appreciate
the functional improvement achieved by the specifically
recited notebook tabs in the claimed methods. The
notebook appearance of the tabs was specifically chosen
by the inventors because it is easily identified by users.
The tabs are not merely labeled buttons or other generic
icons. DET has disclaimed as much. See Oral
Arg. at 11:03–47. Rather, the notebook tabs are specific
structures within the three-dimensional spreadsheet
environment that allow a user to avoid the burdensome
task of navigating through spreadsheets in separate
windows using arbitrary commands

American Chemical Society goes after ResearchGate for copyright infringement

The American Chemical Society (and Elsevier) filed suit in the federal District Court of Maryland on 2 October 2018 asserting copyright infringement by the German entity ResearchGate.

The complaint is available on the internet.

There are a variety of issues.

As a condition of publishing, the American Chemical Society ["ACS"] requires authors to execute an assignment of copyright. Sometimes, authors will modify the agreement to allow use for "advertising" the authors or the institutions of the authors. Sometimes, authors, who do not modify, are not fully aware of the restrictions imposed by the standard ACS form. ResearchGate apparently gets some of its copies from websites into which authors have posted copies of their articles.

As to publication requirements on papers arising from federally-funded research, note the policy impacting papers arising through funding by
the National Science Foundation [NSF]:

NSF's policy on public access to copyrighted material (Public Access Policy) reflects the Foundation's commitment to making certain that, to the extent possible, the American public, industry and the scientific community have access to the results of Federally funded scientific research. Pursuant to this policy, grantees must ensure that articles in peer-reviewed scholarly journals and papers in juried conference proceedings:

are deposited in a public access compliant repository (as identified in the Public Access Policy);
are available for download, reading, and analysis within 12 months of publication
possess a minimum set of machine-readable metadata elements as described in the Public Access Policy; and
are reported in annual and final reports with a persistent identifier.
Either the final printed version or the final peer-reviewed manuscript is acceptable for deposit. NSF’s Public Access Policy applies to awards, funded in whole or in part, as a result of proposals submitted, or due, on or after January 25, 2016. NSF’s Public Access Policy may be viewed at:

If the ACS policy sounds vaguely familiar, look back to a post on IPBiz in the year 2006:

Journal publication, pubmedcentral and the ACS
, including the text:

In context, Nally is complaining about posting of scientists' final, peer-reviewed articles on an internet website (pubmedcentral) within 12 months AFTER publication in the journal.

I could not help thinking about Dan Hunter's article, Walled Gardens, 62 Wash & Lee L. Rev. 607, which complained about the requirement of some law reviews that articles which had been pre-published on an internet website to be removed from the website BEFORE publication in the journal.

The common theme is the perceived undesirability, by the journals, of information being made available on the internet. The noncommon theme is the timing. The SCIENCE journals have the expectation of presenting the information FIRST, and worry about the impact of later publication. The LAW journals do not care that the information has been presented somewhere else first, but don't want someone to access the information (presented elsewhere first) AFTER they decide to publish it LATER.

See also the 2004 post
American Chemical Society suing Google over google scholar?

Saturday, October 06, 2018

NAI loses appeal of IPR decision at the CAFC; 120 and chain of priority issues

Woodbolt Distributors, LLC (“Woodbolt”) requested
that the United States Patent and Trademark Office
(“PTO”) reexamine U.S. Patent No. 8,067,381 (“the ʼ381
patent”) owned by Natural Alternatives International,
Inc. (“NAI”). The PTO ordered inter partes reexamination,
and the examiner rejected the challenged claims as
anticipated by or obvious over cited prior art, including a
parent of the reexamined patent. NAI appeals the Patent
Trial and Appeal Board’s (“Board”) final determination
affirming the examiner’s rejections and its subsequent
denial of NAI’s request for rehearing. Woodbolt is not a
party to this appeal. The Director of the PTO has intervened
to defend the Board’s decision. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A). We affirm.

Of the history

District court litigation involving the ʼ381 patent
commenced between NAI and Woodbolt in December
2011.2 In May 2012, during that proceeding, Woodbolt
sought inter partes reexamination of the asserted patent
claims.3 The request alleged that “the asserted claim to
priority of the ʼ381 Patent is defective” because the “applicants
deliberately and expressly terminated their claim
to the priority of the first four applications[,]” which thus
“broke[] the chain of priority between the Fourth and
Fifth Applications.” J.A. 45–46. During reexamination,
NAI did not dispute that it had waived priority to the
fourth through the first applications in its fifth application.
J.A. 971. But it insisted that the sixth application
maintained priority back to the first application because
NAI did not amend the “Cross Reference of Related Applications”
in the sixth application. According to NAI, it was
irrelevant what happened to the fifth application once the
sixth application became entitled to the first application’s
filing date. J.A. 975. Unpersuaded, the examiner finally
rejected the reexamined claims in view of prior art including
the ʼ596 patent (i.e., the patent that issued from the
first application), and then closed prosecution.4 J.A. 1210,

NAI appealed the examiner’s decision to the Board.
The Board determined that when NAI filed the eighth
application, “[t]he fifth application [was] not entitled to
the benefit of the fourth application since the specific
reference to the fourth application was deleted in the
fifth.” J.A. 13. Because the eighth application claimed
priority to the first application via the fifth application,
the Board determined that the eighth application (and
thus the ʼ381 patent) was also not entitled to the benefit
of the fourth through the first applications. See J.A. 16.
The Board issued a final written determination affirming
the examiner’s rejections and denied NAI’s request for


The Board determined that
when filed, the eighth application did not meet the “specific
reference” requirement of § 120 as to the filing date
of the first application. J.A. 11–12. That was so, according
to the Board, because the eighth application claimed
the benefit of the first application’s filing date by way of
the fifth application, and NAI had amended the fifth
application to claim priority to only the 2003 provisional
application. See id. In other words, because the fifth
application lacked priority to the first application, the
eighth application’s priority claim to the first application
(via the fifth application) did not satisfy all of § 120’s
requirements. The Board, therefore, did not err in determining
that the ʼ381 patent was not entitled to claim the
benefit of the filing date of the first application under
§ 120, as the priority claim in the ʼ381 patent was defective
from the start.

The MPEP arises:

As an initial matter, we note that the MPEP “does not
have the force of law[,]” Molins PLC v. Textron, Inc., 48
F.3d 1172, 1180 n.10 (Fed. Cir. 1995), and does not bind
us, Litton Sys., 728 F.2d at 1439. Nonetheless, we have
reviewed MPEP § 201.11 and find that nothing in its text
limits the scope of waiver to only the instant application.
Indeed, § 201.11 does not contemplate all possible consequences
of waiving a benefit claim in a particular application.
Moreover, at least in the context of terminal
disclaimers, the MPEP has explicitly indicated when a
disclaimer applies only to the instant application and not
to downstream applications. See, e.g., Hagenbuch v.
Sonrai Sys., 2015 U.S. Dist. LEXIS 39083, *10–13 (N.D.
Ill. Mar. 27, 2015) (explaining that “[t]he MPEP in effect
in 1993 described the effect of a disclaimer that, by its
terms, applied only to the ‘instant application’”); see also
MPEP § 1490(VI)(B) (9th ed., Rev. 8) (2017) (“A terminal
disclaimer filed to obviate a nonstatutory double patenting
rejection is effective only with respect to the application
or patent identified in the disclaimer unless by its
terms it extends to continuing applications . . . .”).

A Civil War era patent case is cited:

NAI, however, neither explains why § 120 compels
this interpretation of priority claims nor provides any case
law to support its conclusion. Nor does NAI provide any
argument to undermine the long-standing interpretation
of priority as a single chain, growing with each additional
continuation. The Supreme Court has previously explained
that under § 120, parent and continuing applications
“are to be considered as parts of the same
transaction, and both as constituting one continuous
application, within the meaning of the law.” Godfrey v.
Eames, 68 U.S. 317, 326 (1863); see also Sticker Indus.,
405 F.2d at 93 (stating that “each application in a long
chain grows out of the one immediately preceding it”). We
therefore decline to adopt NAI’s interpretation of chain of

Frito-Lay prevails in crispbread slices trademark dispute

In Real Foods v. Frito-Lay, appellant Real Foods lost, cross-appellant Frito-Lay won, although not
for the reasons argued by Frito-Lay.

The general issue:

Appellant Real Foods Pty Ltd. (“Real Foods”) [represented by Norris, McLaughlin & Marcus]
sought registration of two marks: “CORN THINS,” for “crispbread
slices predominantly of corn, namely popped corn
cakes”; and “RICE THINS,” for “crispbread slices primarily
made of rice, namely rice cakes.” J.A. 279 (emphasis
omitted). Cross-Appellant Frito-Lay North America, Inc.
(“Frito-Lay”) opposed the registrations, arguing that the
proposed marks should be refused as either generic or
descriptive without having acquired distinctiveness.

Frito-Lay won its cross-appeal, but not for the reasons it argued:

Specifically, Frito-Lay contends the TTAB erred by
finding “‘thins’ is not a generic term” “based solely on the
fact that it is used within some third-party brand names”
because “‘thins’ is commonly used as a generic term for
snack food products, including crackers and crispbread
slices.” Id. at 22. We agree that the TTAB erred, but not
for the reasons asserted by Frito-Lay.

“[A] term can be generic for a genus of goods or services
if the relevant public understands the term to refer
to a key aspect of that genus.” Royal Crown, 892 F.3d at
1367 (ellipsis, internal quotation marks, and citation
omitted). Genericness involves a “two-step inquiry” that
asks: (1) “what is the genus of goods or services at issue,”
and (2) “is the term sought to be registered or retained on
the register understood by the relevant public primarily
to refer to that genus of goods or services?” Princeton
Vanguard, 786 F.3d at 965 (internal quotation marks and
citation omitted); see id. at 968 (explaining that the TTAB
should consider “the record evidence of the public’s understanding
of the mark as a whole”). “The authority is
legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of
goods set forth in the application[,] regardless of what the
record may reveal as to the particular nature of an applicant’s
goods . . . .” In re Cordua, 823 F.3d at 602 (internal
quotation marks and citation omitted).

The TTAB improperly narrowed the genus of the
goods at issue.

Olivia de Havilland takes her "truth in docudrama" case to the U.S. Supreme Court

Back in 2007, IPBiz discussed California's anti-SLAPP law in the context of the Cha/Flamm plagiarism matter.
See Judge to hear anti-SLAPP arguments in Cha/Flamm matter on Nov. 20 .

Anti-Slapp issues arose in the context of actress Olivia de Havilland's fight against her false depiction in a docudrama.

In March 2018, the New York Times discussed an anti-SLAPP issue in the de Havilland/FX matter:

FX tried to have the lawsuit tossed last summer, on the grounds of California’s anti-Slapp (Strategic Lawsuit Against Public Participation) statute, designed to quickly set aside lawsuits that may be designed to chill free speech. But a trial judge surprised legal observers by ruling that Ms. de Havilland had sufficient grounds to proceed with her lawsuit.

Although de Havilland won on the anti-SLAPP issue, she lost at the California appellate level.

As to the core of the unsuccessful argument by de Havilland, the California appellate court noted:

“Books, films, plays and television shows often portray real people,” the court decision reads. “Some are famous and some are just ordinary folks. Whether a person portrayed in one of these expressive works is a world-renowned film star — ‘a living legend’ — or a person no one knows, she or he does not own history.”

See FX Prevails in ‘Feud’ Defamation Suit Filed by Olivia de Havilland

One would assume de Havilland would point out that a false statement is not history.

Now, in October 2018, de Havilland is taking her fight to the US Supreme Court

“We must persevere and speak truth to power,” the 102-year-old two-time Oscar winner said Friday as her attorneys petitioned SCOTUS in the ongoing legal battle. “The fight is itself important to the principle of honesty, so much in need today in the face of deliberate public confusion for selfish agendas,” she added in a statement from her Paris home

Having suffered a number of legal setbacks and defeats since filing her lawsuit in June 2017, — including the California Supreme Court’s decision in July not to review her case — de Havilland is seeking to have the nation’s highest court re-examine what jurisdictions in the Golden State have decided.

See Olivia De Havilland Takes ‘Feud’ Feud With FX & Ryan Murphy To Supreme Court