Saturday, December 29, 2018

Rolling the dice at the CAFC

A claim involved in the case:


A method of playing a dice game comprising:

providing a set of dice, the set of dice comprising a
first die, a second die, and a third die, wherein on-
ly a single face of the first die has a first die
ing, wherein only two faces of the second die have
an identical second die marking, and wherein only
three faces of the third die have an identical third
die marking;

placing at least one wager on at least one of the
following: that the first die marking on the first
die will appear face up, that the second
die mark-
ing on the second die will appear face up, that the
third die marking on the third die will appear face
up, or any combination thereof;
rolling the set of dice; and

paying a payout amount if the at least one wager

Organizing human activity?

In its brief, Appellant that the Patent Offi
ce uses a certain label —methods of organizing human activities—
as a “catch-all abstract idea” and expresses concern
that the Board has used the phrase improperly as an
“apparent shortcut.”

We agree that this phrase can be confusing
and potentially misused, since, after all, a
defined set of steps for combining particular
ingredients to create a drug formulation could be
categorized as a method of organizing human activity.

Judge Mayer, concurring:

I agree that the claims at issue here are patent in
eligible, but write separately to make two points. First,
subject matter eligibility under 35 U.S.C. § 101 is a pure
question of law, one that can, and should, be resolved at
the earliest stages of litigation. Second, claims directed to
dice, card, and board games can never meet the section
101 threshold because they endeavor to influence human
behavior rather than effect technological change.

Saturday, December 22, 2018

Trump reprising the fictionalized Aiken?

Within Slate one finds:

Trump seems to have taken a page from the late Sen. George Aiken,
who was widely (but somewhat misleadingly) quoted as saying in 1966,
as the Vietnam War was heating up, that we should
“declare victory and go home,” when in fact we hadn’t won at all.

As implied by the Slate text in parentheses, Aiken never said those words.

The interesting thing is the lack of discussion of the actual text of Aiken
giving rise to the pithy, quotable text falsely attributed to Aiken.

Friday, December 21, 2018

Lysistrata re-visited in 1960, but what about now?

On November 9, 1960, one day after the Presidential election between Kennedy and Nixon, CBS presented an episode of
Wanted Dead or Alive, titled "To the Victor," which had some relation to the play Lysistrata by Aristophanes.

In the TV version, the women of the town Coronado separate from the men, and vow not to return until the men give up
their guns. Josh Randal (Steve McQueen) resolves the problem by hiring two armed men (dressed in black) to attack the town.
The populace concludes: Gotta have a gun these days. Within the episode, "Liz Strata" gets a big kiss from Josh (McQueen) and
later confesses "You were right I was crazy."

In the 1960 election, Kennedy asserted there was a "missile gap" with the US inferior in firepower to the Soviet Union.
Did his election mean: gotta have more missiles?

In the Greek play, Sparta and Athens agree to end the war, with both sides going off happy, a different ending than in the
real world.

link to discussion of tv episode:

Vivent loses at CAFC, with the CAFC noting: the Board is not bound by any findings made in its Institution Decision

The outcome of the CAFC case was bad for the patentee Vivent:

Vivint now appeals the Board’s decision invalidating
its claims. cross-appeals, arguing that the
surviving claims should also be invalidated. Because the
Board did not err in invalidating the patent claims at
issue in Vivint’s appeal, we affirm. With respect to’s cross-appeal, we conclude that the Board’s
construction of “communication device identification
codes” is not consistent with the broadest reasonable
interpretation of the relevant claims. We therefore reverse
its construction, vacate its related conclusions, and
remand for further consideration. We affirm the Board’s
decision on the claims at issue in the cross-appeal in all
other respects.

The technology:

The patents at issue describe systems and methods
for remotely monitoring equipment, such as a heating,
ventilating, and cooling system (“HVAC system”). See,
e.g., ’601 patent, col. 1, ll. 10–14.2 These systems and
methods work by using a centralized server to communicate
with monitored equipment so that a user, e.g. a
property owner or contractor, is contacted if the equipment encounters problems.

The matter of "substantial evidence" was discussed:

Substantial evidence is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Arendi S.A.R.L.
v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
2016); see also Consol. Edison Co. of New York v.
N.L.R.B., 305 U.S. 197, 229 (1938).


The Board’s construction of
“communication device identification codes” is therefore
not entitled to deference. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (“As all parties
agree, when the district court reviews only evidence
intrinsic to the patent . . . the judge’s determination will
amount solely to a determination of law, and the Court of
Appeals will review that construction de novo.”).

The problem with the Board's interpretation:

And yet, the Board
decided that “communication device identification codes”
must refer to something “capable of uniquely identifying
communication devices.” ’601 Decision at 20; ’123 Decision at 20 (same).
Even assuming this is correct, however, the Board’s conclusion that a phone number or email
address cannot uniquely identify a communication device
defies the patents’ teachings. For example, both patents
explain that a mobile identification number refers to a
device in the same way that a phone number refers to a
cellular phone, i.e. a communication device. ’601 patent,
col. 6, ll. 61–65 (“Every interface unit 10 is provided, like
a cellular telephone, with an electronic serial number
(ESN, to identify the specific interface unit sending the
message) and a mobile identification number (MIN,
similar to a cellular telephone’s phone number).”); ’123
patent, col. 10, ll. 38–42 (same).4 But the Board’s construction suggests the opposite.

The CAFC made reference to oral argument:

If there is no satisfactory
response, then the central alarm monitoring station
follows up with further error checking to detect a compromised
communication path.” (emphasis added)). But
Britton’s status messages do not confirm that equipment,
sensors, or interfaces are functioning properly. See Oral
Arg. at 34:18–34:30, available at
17-2218.mp3 (“[Court:] But isn’t the problem that you
could get that message in Britton, saying that the telephone
connection is okay, but still have an underlying
problem with the system. [Counsel for] That
certainly is the issue the Board identified . . . .”). By
contrast, the patents at issue explain that normal status
messages convey information, directly or indirectly, about
monitored equipment, e.g. sensors, interfaces, or other

Motivation is discussed:

Cf. Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not
only could have made but would have been motivated to
make the combinations or modifications of prior art to
arrive at the claimed invention.”).

The relevance of institution material is discussed:

To the extent invites us to reverse because the Board
acknowledged a possible motivation in its
Institution Decision or found a motivation with respect to
different claims, we decline to do so. See Trivascular, Inc.
v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (“Contrary
to TriVascular’s assertions, the Board is not bound
by any findings made in its Institution Decision. At that
point, the Board is considering the matter preliminarily
without the benefit of a full record. The Board is free to
change its view of the merits after further development of
the record and should do so if convinced its initial inclinations
were wrong.” (emphasis in original)); Oral Arg. at
31:30–32:40, available at
17-2218.mp3 (discussing motivation to combine with
respect to claim 19).

CAFC deems factual assertions of declaration to be conclusory legal assertions in Glasswall case

A declaration does no good:

Glasswall cannot render its
complaint immune from dismissal by merely asserting
that its methods are “novel” and “improve the technology
used in electronic communications.” Dr. Leopold’s declaration
of the alleged advantages in the claimed invention
also does not preclude dismissal on the pleadings. The
alleged “factual” assertions that Glasswall points to as
creating genuine issues of material fact are not factual in
nature, but conclusory legal assertions which the district
court was “not bound to accept as true.” See Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting
Papasan v. Allain, 478 U.S. 265, 286 (1986)).

Sunday, December 16, 2018

CBS Sunday Morning on 16 Dec 2018 does intellectual property

The Almanac feature of CBS Sunday Morning on December 16, 2018 displayed the front page of an 1884 patent to William Henry Fruen, of Minneapolis, granted for his "Automatic Liquid-Drawing Device," which dispensed mineral water. Although this was a first in the United States, there had been a previous provisional patent applied for in Britain for a vending machine for dispensing stamps, unmentioned by CBS. This had been done over 20 years before Fruen's work. See the book by Kerry Segrave, Vending Machines: An American Social History. CBS included the scene from Dr. Strangelove depicting the shooting of a Coca Cola vending machine.

The cover story was on the demise of Sears, and noted the irony that Sears, once a leader in innovative selling techniques, had failed to keep up. Thus, the original Mr. Sears was a railroad man, and recognized the ability of railroads to deliver goods to remote locations. The original Sears company was mail order (not a brick and mortar store) and sold goods through catalog. Only later, seeing the future of suburbs and automobiles for shopping, did Sears go to stores.

The second story was on popups. Therein, it was noted that the average retail lease had gone from over 20 years to about five years, curiously paralleling the shortening of the lifetime of a science career, noted in the 11 December 2018 issue of PNAS.

Of note in the Buble interview was the comment that success (at least in music) was 10% talent, 40% hard work, and 50% luck.

The moment of nature was Boise National Forest.

As a footnote, Ross Winans, of fame in the 1853 Supreme Court Case Winans v. Denmead (related to the doctrine of equivalents) was also a railroad man. He was also a Maryland legislator, one of many who were arrested at the direction of Abraham Lincoln in 1861. Winans was from Vernon, New Jersey.

Friday, December 14, 2018

CAFC declines to "get into the weeds" of SPINEOLOGY, INC. v. WRIGHT MEDICAL TECHNOLOGY

The outcome in 2018 U.S. App. LEXIS 35162:

Wright Medical Technology, Inc., appeals the United
States District Court for the District of Minnesota’s denial
of its motion for attorney fees under 35 U.S.C. § 285.
Because we hold that the district court did not abuse its
discretion in denying Wright’s motion, we affirm.

The main issue in the case was what the word "body" meant:

The district court issued a claim construction order in
2016. In the order, it acknowledged that the parties
disputed construction of the term “body,” but it declined to
adopt either party’s construction. Wright and Spineology
then filed cross-motions for summary judgment on infringement.
Recognizing the alleged infringement depended
on how “body” was construed, the district court
construed “body” consistent with Wright’s noninfringement
position and granted Wright’s motion.

Of note was "when" the term was given a meaning:

Prior to the claim construction order, Spineology and
Wright each proposed a construction of “body.” J.A. 18,
21. In the order, the district court “decline[d] to adopt
either party’s proposed construction of ‘body,’” determining
“the claims themselves provide substantial guidance
as to the meaning of the claim.” J.A. 22. It was not until
summary judgment
that the district court construed
“body” consistent with Wright’s, rather than Spineology’s,
proposed construction.

We agree with the district court that, while Spineology’s
proposed construction of “body” was ultimately rejected
at summary judgment, “[t]he attempt was not so
meritless as to render the case exceptional.” J.A. 64. As
we have stressed, “[a] party’s position . . . ultimately need
not be correct for them not to ‘stand[] out’.” SFA Sys.,
LLC v. Newegg Inc., 793 F.3d 1344, 1348 (Fed. Cir. 2015).
And Wright cannot fairly criticize Spineology for continuing
to pursue a construction not adopted by the district
court in the claim construction order, since the district
court declined to adopt Wright’s proposed construction as
well. We see no abuse of discretion here.

Also of interest was an attorneys fees request on an issue that was mooted
by the summary judgment:

Wright asks this court to basically decide the damages
issues mooted by summary judgment in order to determine
whether it ought to obtain attorney fees for the
entire litigation. This we will not do. We will not force
the district court, on a motion for attorney fees, to conduct
the trial it never had by requiring it to evaluate Mr.
Nantell’s “but for” calculations or royalty rates, and we—
an appellate court—will certainly not conduct that trial in
the first instance.

A district court need not, as Wright seems to urge, litigate
to resolution every issue mooted by summary judgment
to rule on a motion for attorney fees. And we need
not, as Wright requests, get into the weeds on issues the
district court never reached. We see no abuse of discretion
in the district court’s determination that “the arguments
made by Spineology to support its damages theory
. . . are not so meritless as to render the case exceptional.”
J.A. 65. We see no error in the district court’s determination
that, on this record, the case was not exceptional, and
we caution future litigants to tread carefully in their
complaints about district courts not doing enough.

As to writing opinions:

After reviewing Wright’s arguments regarding Spineology’s
claim construction position, damages theories, and
litigation conduct, the district court concluded “[n]othing
about this case stands out from others with respect to the
substantive strength of Spineology’s litigating position or
the manner in which the case was litigated.” J.A. 65–66.
The district court “had no obligation to write an opinion
that reveals [its] assessment of every consideration,” and
remand is unnecessary to obtain one. Univ. of Utah v.
Max-Planck-Gesellschaft, 851 F.3d 1317, 1323 (Fed. Cir.

See also
Sarif v. Brainlab, 725 Fed. Appx. 996 (2018)
Raniere v. Microsoft, 887 F.3d 1298 [abuse of discretion; clearly erroneous]
AdjustaCam v. Newegg, 861 F.3d 1353 (Deference, however, is not absolute...clearly erroneous view of the evidence)

Wednesday, December 12, 2018

Fake facts on trivia sites

Back on 2 Nov 2018, IPBiz noted an incorrect answer given on "triviagenius"
[ ]

On 12 Dec 2018, "trip trivia" asked the question:

Which U.S. city has the most coffee shops per capita?

and stated the correct answer to be Juneau, Alaska, further noting

While Alaska’s capital city Juneau certainly can't claim to have the highest number of coffee shops overall, it ranks highest in density per capita. Its 22 coffee shops serve Juneau's roughly 32,000 citizens, according to the National Coffee Association. Anchorage, Alaska ranks second, with 170 coffee shops for its 431,200 citizens. When you're done sipping that frothy, hot latte, check out Juneau's incredible wildlife, world-class fishing, exhilarating glaciers, historic sites, quaint shops and museums!

60% of the respondents picked Seattle, which was deemed incorrect.

One notes 22 shops for 32,000 people works out to 68.75 shops per 100,000.

Seattle has 253 per 100,000 and San Francisco 307.



VirnetX loses at CAFC

The outcome:

VirnetX Inc. (“VirnetX”) appeals from two final written
decisions of the Patent Trial and Appeal Board
(“Board”) finding that Apple Inc. (“Apple”) had demonstrated
by a preponderance of the evidence that claims 1–
11, 14–25, and 28–30 of U.S. Patent No. 8,504,696 (“the
’696 patent”) were unpatentable as obvious. VirnetX Inc.
v. Apple Inc., No. IPR2016-00331 (P.T.A.B. June 22, 2017)
(“331 Board Decision”); VirnetX Inc. v. Apple Inc., No.
IPR2016-00332 (P.T.A.B. June 22, 2017) (“332 Board
Decision”). Because VirnetX is collaterally estopped from
relitigating the threshold issue of whether prior art
reference RFC 24011 was a printed publication and because
VirnetX did not preserve the only remaining issue
of whether inter partes review procedures apply retroactively
to patents that were filed before Congress enacted
the America Invents Act (“AIA”), we affirm.


[VirnetX] attempts to justify this failure by arguing
that our precedent prior to Oil States generally upheld
the constitutionality of inter partes review proceedings
and thus, foreclosed the argument. But we have never
decided this issue, and, even if we had, VirnetX never
sought to provide supplemental briefing or to otherwise
develop this argument following the Supreme Court’s
decision in Oil States. Rather, VirnetX insists it preserved
this issue by way of a single, generic paragraph. It
did so only after Apple filed its notice of supplemental
authority identifying our Rule 36 judgment in VirnetX I,
which VirnetX acknowledges significantly weakens an
otherwise dispositive issue in this appeal

PNAS paper on the rise of the temporary workforce in science; average science career now lasts only five years!

Back in 1997, Alan Hale (of the Hale-Bopp comet) discussed problems of lack of opportunity in science, which issues were later discussed
on IPBiz:

IPBiz notes that there is a far more insidious internal brain drain: the waste of trained American minds. One recalls the letter of Alan Hale of Hale-Bopp fame, from the year 1997:

I am Alan Hale, the co-discoverer of Comet Hale-Bopp which, as I'm sure you're aware, is getting a tremendous amount of media attention at this time. Like I'm sure is true for many of you, I was inspired by the scientific discoveries and events taking place during my childhood to pursue a career in science only to find, after completing the rigors of undergraduate and graduate school, that the opportunities for us to have a career in science are limited at best and are which I usually describe as "abysmal." Based upon my own experiences, and those of you with whom I have discussed this issue, my personal feeling is that, unless there are some pretty drastic changes in the way that our society approaches science and treats those of us who have devoted our lives to making some of our own contributions, there is no way that I can, with a clear conscience, encourage present-day students to pursue a career in science. It really pains me a great deal to say something like that, but I feel so strongly about this that I have publicly made this statement at almost every opportunity I have been given.

I am trying to use the media attention that is currently being focused upon me to raise awareness of this state of affairs, and perhaps start to effect those changes that will allow me to convey a more positive message to the next generation. So far, I'm sensing a certain reluctance among the media to discuss this issue, as they seem far more interested in items which I consider to be irrelevant and unimportant. (...)

Flash forward more than twenty years, and note the appearance of a paper in PNAS on 11 December 2018 titled
Changing demographics of scientific careers: The rise of the temporary workforce by
Staša Milojević, Filippo Radicchi, and John P. Walsh, PNAS December 11, 2018 115 (50) 12616-12623; published ahead of print December 11, 2018.

The abstract states:

Contemporary science has been characterized by an exponential growth in publications and a rise of team science. At the same time, there has been an increase in the number of awarded PhD degrees, which has not been accompanied by a similar expansion in the number of academic positions. In such a competitive environment, an important measure of academic success is the ability to maintain a long active career in science. In this paper, we study workforce trends in three scientific disciplines over half a century. We find dramatic shortening of careers of scientists across all three disciplines. The time over which half of the cohort has left the field has shortened from 35 y in the 1960s to only 5 y in the 2010s. In addition, we find a rapid rise (from 25 to 60% since the 1960s) of a group of scientists who spend their entire career only as supporting authors without having led a publication. Altogether, the fraction of entering researchers who achieve full careers has diminished, while the class of temporary scientists has escalated. We provide an interpretation of our empirical results in terms of a survival model from which we infer potential factors of success in scientific career survivability. Cohort attrition can be successfully modeled by a relatively simple hazard probability function. Although we find statistically significant trends between survivability and an author’s early productivity, neither productivity nor the citation impact of early work or the level of initial collaboration can serve as a reliable predictor of ultimate survivability.

(emphasis added by IPBiz)

The matter of citations arises in the PNAS paper:

There is an abundance of studies that focus on the criteria that may affect researchers’ success in terms of the impact of their work, especially in terms of citations to publications. However, another, and perhaps more fundamental, aspect of success is the ability to perform research over the full extent of someone’s career, rather than leaving the field prematurely.

The concept of a "transient" is mentioned:

The minimal level of contribution to scientific knowledge is the production of a single paper. The existence of such authors was first pointed to by Price and Gürsey in 1976 (35), who named this type of author “transients” and established that they accounted for 25% of the population of scientists in the late 1960s. In Fig. 3, we find that the fraction of transients has remained relatively constant in most cohorts, although this category of authors has started to increase in recent cohorts across all three fields (since about the 1990s), especially in robotics and ecology. Notably, we also find that, unlike the fraction of lead authors, which is universal, the number of transients is field-dependent, with levels in astronomy similar to the ones Price and Gürsey (35) found and much higher rates (50–70%) in ecology and robotics. Interestingly, one-quarter of recent transients in all three fields were lead authors. This fraction was as high as one-half in the 1960s. This suggests that the threshold for lead authorship is often crossed even in the population that never genuinely embarks on a research path in that discipline.

This leads to "survival" analysis:

For authors who persist after the initial publication, we employ survival analysis to study their scientific career longevity. In Fig. 4, we show the survival curves of select cohorts spanning the period of the most recent four decades. Survival curves are calculated as the fraction of a cohort remaining after x years. While the survival curves of contemporaneous cohorts in different fields have different slopes, we see that the curves undergo a similar evolution in each field: from relatively long survival times in the 1980s to very rapid attrition of the scientific workforce in most recent times. We observe that until the 1980s (1990s for astronomy), more than half of each cohort had “full” (20+ y) careers. However, in recent decades, this is no longer the case. The results correspond to a continuous decline in the expected career length.

link to PNAS paperL

As to the words "temporary workforce" in the title of the PNAS paper, one recalls the long-ago work by William Bridges.
In a review of his JobShift book, one finds the text

The concept of secure employment is fading; being replaced by an “on demand” workforce hired
in on a temporary basis to meet market challenges.

See IPBiz post The "new normal" in jobs predicted long ago by William Bridges

The 1994 book by Bridges: Jobshift: How To Prosper In A Workplace Without Jobs

**Thus, the 1994 book by Bridges and the 1997 communication by Hale (among others) fairly anticipated the analysis of
the 2018 PNAS paper.

Transformative use defense rejected in Trump wedding crasher photo case

Jonathan Otto took a photo with his phone of President Trump "crashing" a wedding
at the Trump Bedminster, NJ facility. Esquire/Hearst ended up using the photo,
which appeared on the internet, and argued transformative use as a defense to a charge of
copyright infringement brought by Otto.

Hollywood Reporter quoted from the decision:

"Stealing a copyrighted photograph to illustrate a news article, without adding new understanding or meaning to the work, does not transform its purpose — regardless of whether that photograph was created for commercial or personal use."

Hearst certainly argued otherwise by pointing out that the photo was taken for personal use while here it was used for news. That's transformative, said the news company.


Sunday, December 09, 2018

CBS Sunday Morning on 9 December 2018: when was the USS Scorpion found?

Jane Pauley reported the top news story as the snow in North Carolina and Virginia.

The cover story, nominally about the Titanic, also involved the submarine USS Scorpion, which sank in 1968:

Unable to get science grants, he [Robert Ballard] asked Deputy Chief of Naval Operations Ronald Thunman if the Navy would help fund his project. "He said, 'All my life I've wanted to go find the Titanic.' And I was taken aback by that," Thunman recalled. "I said, 'Come on, this is a serious, top secret operation. Find the Titanic? That's crazy!'"

Thunman did say yes, but only if Ballard used the funds and the time to find two missing U.S. nuclear submarines – the Thresher and the Scorpion – which had sunk in the Atlantic in the 1960s.

"So, it was a deal – you'll let me do what I want to do, if I do what you want to do," Ballard recalled.

"Sounds like the real 'Hunt for Red October,'" said correspondent Chip Reid.
The focus of this mission was to find the Scorpion. The Navy didn't want anyone else, like the Russians, to find the submarine. "It was very top secret," Ballard said. "And so I said, 'Well, let's tell the world I am going after the Titanic.'"

The top secret part of the mission took longer than he expected, so when he found the Scorpion, and was finally free to look for the Titanic, he only had 12 days left. But his experience finding the Scorpion had been invaluable. "I learned something from mapping the Scorpion that taught me how to find the Titanic: look for its trail of debris," Ballard said.

Seeing this text, one might infer that the Scorpion had not been found by 1985, when Ballard did his work.

In fact, as wikipedia notes, the Scorpion was "found" in 1968:

At the end of October 1968, the Navy's oceanographic research ship Mizar located sections
of the hull of Scorpion on the seabed, about 740 km (400 nmi; 460 mi) southwest of the Azores,[15]
under more than 3,000 m (9,800 ft) of water. This was after the Navy had released sound tapes
from its underwater "SOSUS" listening system, which contained the sounds of the destruction of Scorpion.
The court of inquiry was subsequently reconvened, and other vessels, including the bathyscaphe Trieste II,
were dispatched to the scene, collecting many pictures and other data.

The U.S. Navy has acknowledged that it periodically visits the site to conduct testing for the release
of nuclear materials from the nuclear reactor or the two nuclear weapons aboard her, and to determine
whether the wreckage has been disturbed. The Navy has not released any information about the status
of the wreckage, except for a few photographs taken of the wreckage in 1968, and again in 1985 by deep water submersibles.

One notes the 2018 Sunday Morning cover story is basically a re-hash of a 2017 presentation by
National Geographic [ Titanic Was Found During Secret Cold War Navy Mission ]

In passing, the CBS Titanic story even had a Civil War allusion:

"You don't go to Gettysburg with a shovel. You don't take belt buckles off the Arizona," he replied.

There was a nice story about the relationship between Norman Mineta, a former Democratic Mayor,
Congressman and Cabinet member, and Alan Simpson, a former Republican Senator from Wyoming,
related to their meeting at a Japanese internment camp at Heart Mountain, Wyoming.
An interesting line by Simpson: "The word 'politics' is interesting because it comes from the Greek,
you know that? Poly, meaning many, and tics, meaning blood-sucking insects!"
Also, of reunions at Heart Mountain: "We don't talk of Scouts and tying knots.
We have organ recitals. How's your heart? Liver? These are called organ recitals!"

Almanac did the smog in London on December 9, 1952.

Moment of nature was puffins in northwestern Iceland.

Friday, December 07, 2018

ND Texas reversed by CAFC in Jack Henry

The outcome

Jack Henry & Associates, Inc. (“Jack Henry”) and
eleven Texas banks (“the Banks”), collectively “Appellants,”
appeal the ruling of the United States District
Court for the Northern District of Texas, dismissing this
declaratory judgment action against Plano Encryption
Technologies LLC (“PET”). The district court held, citing
Federal Circuit rulings, that PET’s contacts with the
Northern District did not subject it to personal jurisdiction,
and therefore that venue was improper.1
Applying the venue statute and guided by precedent,
we conclude that PET is subject to personal jurisdiction in
the Northern District. We reverse the dismissal and
remand for further proceedings.


Precedent illustrates the dominance of concerns for
due process and fairness. In Red Wing Shoe Co. v. Hockerson-Halberstadt,
Inc., the court cited a “policy favoring
settlement” and “the interstate judicial system’s interest
in obtaining the most efficient resolution of controversies.”
148 F.3d 1355, 1361 (Fed. Cir. 1998) (quoting World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)),
and held that the letter contacts in that case did not
support jurisdiction in the recipient’s forum. Id.
The diversity of facts in consideration of due process
comports with the Court’s guidance that personal jurisdiction
“is not susceptible of mechanical application.” Kulko
v. Superior Court of Cal., 436 U.S. 84, 92 (1978). The
standard is “fair play and substantial justice.” E.g.,
International Shoe Co. v. Washington, 326 U.S. 310, 316
(1945). For example, in Inamed this court found personal
jurisdiction based only on letters and phone calls initiated
from out-of-state:
Based on the clear principles set out in Supreme
Court jurisprudence, we conclude that Dr. Kuzmak’s
negotiation efforts, although accomplished
through telephone and mail from New Jersey, can
still be considered as activities “purposefully directed”
at residents of California.
Inamed, 249 F.3d at 1362. The court held that personal
jurisdiction in California was “reasonable and fair” on the
facts of that case.


The burden befalls PET, as the source of the minimum
contacts, to make a “compelling case” that the
exercise of jurisdiction in the Northern District would be
unreasonable and unfair. In World-Wide Volkswagen, the
Court identified factors including “the burden on the
defendant, . . . the forum State’s interest in adjudicating
the dispute, the plaintiff’s interest in obtaining convenient
and effective relief, . . . [and] the interstate judicial
system’s interest in obtaining the most efficient resolution
of controversies; . . .” 444 U.S. at 292 (internal citations
omitted). The Court also looks to “the shared interest of
the several States in furthering fundamental substantive
social policies.” Id.
PET cites Red Wing Shoe and Avocent for the proposition
that patent enforcement letters can never provide the
basis for jurisdiction in a declaratory judgment action.
Red Wing Shoe and Avocent did not create such a rule,
and doing so would contradict the Court’s directive to
“consider a variety of interests” in assessing whether
jurisdiction would be fair. Bristol-Myers Squibb Co. v.
Superior Court of Cal., 137 S.Ct. 1773, 1780 (2017). In
Bristol-Myers, the Court made clear that for personal
jurisdiction “the ‘primary concern’ is ‘the burden on the
defendant.’” Id. (quoting World-Wide Volkswagen, 444
U.S. at 292). This concern is even more potent when it
relates to a challenge to venue, for venue “is primarily a
matter of choosing a convenient forum.” Leroy v. Great
Western United Corp., 443 U.S. 173, 180 (1979). PET does
not argue that litigating in the Northern District would be
unduly burdensome, or that any of the other factors
supports a finding that jurisdiction would be unfair.

There was also an issue of standing:

PET repeats its challenge to the standing of Jack
Henry. PET states that it did not accuse Jack Henry of
infringement, and that there is no adversity between
Jack Henry states that it has agreed to indemnify the
Banks for any liability for patent infringement. An
indemnitor has standing to participate in an action that
could determine its liability. See Microsoft Corp. v.
DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014) (“If
Appellees ha[ve] an obligation to indemnify their customers,
they would [] have standing to bring suit.”); Arris
Grp., Inc. v. British Telecomms. PLC, 639 F.3d 1368, 1375
(Fed. Cir. 2011) (“We have recognized that, where a
patent holder accuses customers of direct infringement
based on the sale or use of a supplier’s equipment, the
supplier has standing to commence a declaratory judgment
action if (a) the supplier is obligated to indemnify its
customers from infringement liability . . . .”);

There were additional views:

While I agree with the judgment of the court, I write
separately to address the statement in Red Wing Shoe Co.
v. Hockerson-Halberstadt that “principles of fair play and
substantial justice afford a patentee sufficient latitude to
inform others of its patent rights without subjecting itself
to jurisdiction in a foreign forum.” 148 F.3d 1355, 1360–
61 (Fed. Cir. 1998). This statement has since been interpreted
to mean that “the sending of infringement letters
would satisfy the minimum contacts requirement of due
process except for policy considerations unique to the
patent context.” Silent Drive, Inc. v. Strong Indus., Inc.,
326 F.3d 1194, 1206 (Fed. Cir. 2003); see also Breckenridge
Pharm., Inc. v. Metabolite Labs., Inc., 444 F.3d
1356, 1362 (Fed. Cir. 2006)


As the majority notes above, the factor
that is “of primary concern” is “the burden on the defendant.”
Bristol-Myers Squibb Co. v. Superior Court of Cal.,
San Francisco Cty., 137 S. Ct. 1773, 1780 (2017) (quoting
World-Wide Volkswagen, 444 U.S. at 292). To the extent
that Red Wing or its progeny fail to adequately assess
these factors, I suggest that they be reconsidered as
directly contrary to established Supreme Court precedent.

Complicated double-patenting issue in Novartis v. Breckinridge

The outcome was reversal; Novartis wins:

Novartis Pharmaceuticals Corporation and Novartis
AG (collectively, Novartis) appeal the district court’s
decision to invalidate U.S. Patent No. 5,665,772 based on
obviousness-type double patenting. The invalidating
reference, Novartis’s U.S. Patent No. 6,440,990, was filed
after, and issued after, but expired before the ’772 patent.
Both patents claimed the same priority date. The ’990
patent expired before the ’772 patent because the ’990
patent was filed after the June 8, 1995 effective date of
the Uruguay Round Agreements Act of 1994 (URAA)
The patents at issue in Gilead were both filed after
the effective date of the URAA and claimed different
priority dates. 753 F.3d at 1210. Because Gilead’s earlier-filed
patent claimed an earlier priority date, despite
issuing after the later-filed patent, that earlier-filed
patent expired before the later-filed patent. Id. As the
district court correctly summarized, we held in Gilead
that the expiration date is the benchmark of obviousnesstype
double patenting. But our opinion was limited to the
context of when both patents in question are post-URAA
patents. Id. at 1216. Here we have one pre-URAA patent
(the ’772 patent) and one post-URAA patent (the ’990
patent), governed by different patent term statutory
regimes. Our decision in Gilead thus does not control the
present situation.
Instead, the correct framework here is
to apply the traditional obviousness-type double patenting
practices extant in the pre-URAA era to the pre-URAA
’772 patent and look to the ’772 patent’s issuance date as
the reference point for obviousness-type double patenting.
Under this framework, and because a change in patent
term law should not truncate the term statutorily assigned
to the pre-URAA ’772 patent, we hold that the ’990
patent is not a proper double patenting reference for the
’772 patent. Accordingly, we reverse.

Of note:

“While the ultimate conclusion that a patent is invalid
under the doctrine of obviousness-type double patenting is
reviewed de novo, the underlying factual determinations—including
the existence of secondary factors such
as unexpected results—are reviewed for clear error.”
AbbVie, 764 F.3d at 1372 (citing Eli Lilly & Co. v. Teva
Parenteral Meds., Inc., 689 F.3d 1368, 1376 (Fed. Cir.
2012)). This appeal presents a narrow legal question: can
a post-URAA patent that issues after and expires before a
pre-URAA patent qualify as a double patenting reference
against the pre-URAA patent? We conclude under the
circumstances of this case that it cannot. Therefore, the
district court erred in using the ’990 patent as a double
patenting reference for the ’772 patent.

In Novartis v. Ezra, CAFC extends Merck & Co. v. Hi-Tech Pharmacal Co., so that obviousness-type double patenting does not invalidate a validly obtained PTE

The outcome of Novartis v. Ezra:

This case concerns the interplay between a patent
term extension (PTE) granted pursuant to 35 U.S.C. § 156
and the obviousness-type double patenting doctrine. The
Delaware District Court concluded that, in accordance
with statutory construction principles and as a logical
extension of this court’s holding in Merck & Co. v. Hi-Tech
Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007), obviousness-type
double patenting does not invalidate an otherwise
validly obtained PTE under § 156. We agree and
accordingly affirm.

The issue

Although § 156 recognizes that a patent owner may
own multiple patents relating to a product, a method of
using that product, and/or a method of manufacturing the
product, nothing in the statute restricts the patent owner’s
choice for patent term extension among those patents
whose terms have been partially consumed by the regulatory
review process. Importantly, Congress did not,
through § 156, compensate a loss of term for all patents
affected by regulatory review. In striking a balance
between the competing interests of new drug developers
and low-cost generic competitors, Congress limited a PTE
grant for such a patent owner to only one of its patents.
Ezra argues that Novartis violated § 156(c)(4) because,
in its view, two patents were extended here: the
extension of the ’229 patent’s term “effectively” extended
the ’565 patent’s term as well, because the ’229 patent
covers a compound necessary to practice the methods
claimed by the ’565 patent.
We agree with the district court, however, that there
is no reason to read “effectively” as a modifier to “extend”
in the language of § 156(c)(4). As a basic principle of
statutory construction, courts “ordinarily resist[] reading
words into a statute that do not appear on its face.” Bates
v. United States, 522 U.S. 23, 29 (1997). Further, as the
district court found, “throughout the rest of § 156, ‘extend,’
‘extension,’ and ‘extending’ refer to the legal status
conferred upon a patent chosen to benefit from PTE.”
Novartis, 2016 WL 5334464, at *2 (citing 35 U.S.C.
§ 156(a) and (b)). This legal status is the literal changing
of the patent’s expiration date by the Director under
§ 156, ensuring a government-granted de jure exclusionary
right for an extended time period—as opposed to an
“effective” or “de facto” exclusion. Section 156(c)(4)’s
language that “in no event shall more than one patent be
extended under subsection (e)(1) for the same regulatory
review period for any product” was intended to limit a
legally conferred PTE (not an “effective” or “de facto”
PTE) to one patent selected by the patent owner. Here,
only the ’229 patent was selected and then legally extended
with a certificate of extension “recorded in the official
file of the patent and . . . considered as part of the original
patent.” 35 U.S.C. § 156(e)(1). That the method of the
’565 patent cannot be practiced during the ’229 patent’s
extended term is a permissible consequence of the legal
status conferred upon the ’229 patent by § 156.


This case also presents the question of whether the
’229 patent is invalid due to obviousness-type double
patenting because the term extension it received causes
the ’229 patent to expire after Novartis’s allegedly patentably
indistinct ’565 patent. We conclude, as a logical
extension of our holding in Merck & Co. v. Hi-Tech Pharmacal
Co., that obviousness-type double patenting does
not invalidate a validly obtained PTE in such a scenario.
In Merck, U.S. Patent No. 4,797,413 was terminally
disclaimed after the expiration of U.S. Patent No.
4,677,115 to overcome an obviousness-type double patenting
rejection during prosecution. 482 F.3d at 1318–19.
The ’413 patent later received a PTE of 1,233 days pursuant
to § 156. Id. at 1319. Appellant Hi-Tech Pharmacal
Co. argued that “as a condition for the lifting of the double-patenting
rejection and thus the grant of the ’413
patent, Merck disclaimed any extension of its term beyond
the expiration of the ’115 patent and is thus foreclosed
from obtaining a term extension under § 156.” Id.
at 1321. This court upheld the validity of the ’413 patent’s
term extension grant. Id. at 1324. We first recognized
that a straightforward reading of § 156 mandates a
term extension so long as the other enumerated statutory
requirements for a PTE are met. I

Thursday, December 06, 2018

Female inventor Nan Grey

Back in August 2008, IPBiz noted the anniversary of the patent to Hedy Lamarr [ August 11 is the anniversary of Hedy Lamarr's patent (US 2,292,387); see ]. IPBiz also noted the controversy over the BraBaby and BraBell [ ]

Of lessor fame is female inventor Nan Grey who invented a mirror for near-sighted people.

Grey was an actress who was married to singer Frankie Laine, and last appeared with her husband in an episode of Rawhide, titled On the Road to Yesterday. The plot line, involving Laine having a list of past misdeeds, and atoning therefore, foreshadowed "My Name is Earl" by many years.

Separately, as to "copying," Laine (who sang the theme in Rawhide) was known for, among other things, his version of the theme in "High Noon." His version outsold the version that did appear in the movie "High Noon," which was done by Tex Ritter.

One also notes that the "theme song" for 1961 movie "Town without Pity," originally done by Gene Pitney, did not appear in the movie. According to wikipedia, the song received a Golden Globe award for "Best Motion Picture Song," and was nominated for an Academy Award for "Best Music, Original Song"