Thursday, January 31, 2019

Pro se inventor loses on system to send compliance reminders to non-compliant patients as needed

Mere attorney argument fails in Karpf case:

Finally, we conclude that Karpf’s claim of a long-felt,
unmet need for improved patient compliance technology
does not render claims 23 and 25 nonobvious. Karpf
provides extensive documentation showing that patient
non-compliance is a prevalent and costly issue. However,
he does not provide evidence, other than attorney argument,
that the claimed invention meets that need. See In
re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(“For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish
a nexus between the evidence and the merits of the
claimed invention.”) (citation omitted). Thus, we conclude
that the nexus between the claimed invention and the
purported long-felt, unmet need is too attenuated to
provide a persuasive rationale for nonobviousness

The CAFC analyzes the “of another” portion within 35 U.S.C. § 102(e) in Duncan Parking v. IPS

This CAFC decision in Duncan Parking involved combined reviews
of a Board and of a district court decision:

We reverse the Board’s decision in the 1205 Appeal
that claims 1–5 and 7–10 of the ’310 patent are not unpatentable as anticipated.
We affirm the district court’s
decision in the 1360 Appeal granting summary judgment
of noninfringement of the ’310 patent. Finally, we vacate
the district court’s decision in the 1360 Appeal granting
summary judgment of noninfringement of the ’054 patent
because the district court erred in construing the claims
too narrowly, and we remand the case to the district court
for further proceedings consistent with the claim construction we set forth.

The technology involved parking meters. IPS is the patentee
with CEO Dave King and Chief Technical Officer
Alexander Schwarz.

Of the anticipation issue:

Meanwhile, shortly after IPS filed its complaint, DPT
petitioned in the U.S. Patent and Trademark Office for
inter partes review of claims 1–5 and 7–10 of the ’310
patent. The Board instituted a review on the ground that
the ’054 patent anticipates the ’310 patent under
35 U.S.C. § 102(e). After institution, IPS chose not to
dispute whether, on the merits, the ’054 patent anticipates the ’310 patent claims.

IPS instead argued in its
Patent Owner Response that the anticipating portions of
the ’054 patent are solely King’s invention, not that “of
another” under 35 U.S.C. § 102(e),
and therefore cannot
be applied as prior art against the ’310 patent claims. To
support its argument that King alone conceived the
relevant disclosure, IPS submitted declarations from
King, Schwarz, and David Jones—an engineer from D+I
and a named inventor of the ’310 patent—along with
contemporaneous documents reflecting the invention’s
development from 2003 to 2005. In the Petitioner’s Reply,
DPT argued that the ’054 patent is prior art because
Schwarz conceived at least a portion of the ’054 patent’s
anticipating disclosure.

The CAFC wrote:

We must review here whether the Board erred in concluding that
the applied portions of the ’054 patent were
invented by King alone and not by King and Schwarz
jointly. See In re DeBaun, 687 F.2d 459, 463 (CCPA
1982). If Schwarz is a joint inventor of the anticipating
disclosure, then it is “by another” for the purposes of §
102(e). In re Land, 368 F.2d 866, 879 (CCPA 1966) (“[A]n
invention made jointly by A & B cannot be the sole invention of A or B . . . .”).
To be a joint inventor, one must:
(1) contribute in some significant manner to the
conception or reduction to practice of the invention, (2)
make a contribution to the claimed invention that is not insignificant in quality, when that
contribution is measured against the dimension of
the full invention, and (3) do more than merely
explain to the real inventors well-known concepts
and/or the current state of the art.
In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018)
(quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir.
1998)). “The law of inventorship does not hinge coinventorship status
on whether a person contributed to
the conception of all of the limitations in any one claim of
the patent. Rather, the law requires only that a coinventor
make a contribution to the conception of the
subject matter of the claim.” Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1361–62 (Fed. Cir. 2004); see Fina
Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1474 (Fed. Cir.

Thus, to decide whether a reference patent is “by another”
for the purposes of 35 U.S.C. § 102(e), the Board
must (1) determine what portions of the reference patent
were relied on as prior art to anticipate the claim limitations at issue,
(2) evaluate the degree to which those
portions were conceived “by another,” and (3) decide
whether that other person’s contribution is significant
enough, when measured against the full anticipating
disclosure, to render him a joint inventor of the applied
portions of the reference patent. We conclude that the
Board erred in not holding that King and Schwarz are
joint inventors of the anticipating disclosure.

Of a separate doctrine of equivalents argument made
by patentee:

We agree with DPT that the Liberty Meter’s keypad
does not work in the same way as the claimed invention.
Under the doctrine of equivalents, a product or process
that does not literally infringe a patent claim may nevertheless
be held to infringe “if it performs substantially the
same function in substantially the same way to obtain the
same result.” Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605, 608 (1950) (quoting Sanitary Refrigerator Co. v. Winters,
280 U.S. 30, 42 (1929)). But the doctrine of equivalents
cannot be used to effectively read out
a claim limitation, Primos, Inc. v. Hunter’s Specialties,
Inc., 451 F.3d 841, 850 (Fed. Cir. 2006), because the
public has a right to rely on the language of patent claims.
See London v. Carson Pirie Scott & Co., 946 F.2d 1534,
1538 (Fed. Cir. 1991) (“[I]f the public comes to believe (or
fear) that the language of patent claims can never be
relied on, and that the doctrine of equivalents is simply
the second prong of every infringement charge, regularly
available to extend protection beyond the scope of the
claims, then claims will cease to serve their intended

A patent dispute story with a happy ending

See the story at KXnet titled After patent dispute, North Dakotan inventor makes name for herself

Relevant text:

"I call the company that called Amazon to shut me down and I was like hey this is who I am, this is my story I am a mom, I am a photographer, I am a wife, I am an entrepreneur, this is what I believe in, can you help me here?"

Little did Elliott know the company she thought ruined her would actually end up offering her a partnership. Black Rapids is the company that contacted Amazon in the first place.

It is one of the worlds most trusted camera strap companies and after hearing Elliot's story--- the owner decided he wanted to be a part of her story. She told me after teaming up, their first launch went better than she expected.

Separately, see the story on Apeel

Monday, January 28, 2019

United Technologies prevails over GE in case involving “Bond Coat for Silicon Based Substrates.”

Of claim construction:

Claim terms are generally given their ordinary and
customary meaning, which is “the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
In addition to the intrinsic evidence (i.e., the claims
themselves, the specification, and the prosecution history),
extrinsic evidence may be helpful in determining how
an ordinary artisan would have understood a claim term
at the time of the invention. Id. at 1317–18. These claim
construction principles are important even in an IPR like
this one, in which the claims are given the “broadest
reasonable interpretation” consistent with the specification.1
See Realtime Data, LLC v. Iancu, __ F.3d __, 2019
WL 149835, at *5 (Fed. Cir. Jan. 10, 2019).

Note the text of footnote 1:

This standard has recently changed. For IPR petitions
filed on or after November 13, 2018, the Board will
apply the Phillips claim-construction standard
. See
Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent
Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11,
2018) (to be codified at 37 C.F.R. pt. 42).

At issue was the meaning of the word "bond" in the text "bond layer":

UTC argues that the Board erred by construing “bond
layer” to not require any adherence quality. UTC notes
that the plain and ordinary meaning of “bond” means
adherence. Appellant’s. Br. 29 (citing J.A. 1082
(general purpose dictionary defining “bond” as “an adhesive,
cementing material, or fusible ingredient that combines,
unites, or strengthens” and “to cause to adhere firmly”)).
It also cites extrinsic evidence to argue that this common
understanding was prevalent in the art. E.g., J.A. 405–06
(“A silicon bond layer further improved the EBC durability
by providing stronger bonding of the coating.”)

The analysis by the CAFC gives intrinsic meaning to the word "bond":

GE does not argue that the claims and specification
give any different meaning to the word “bond.” Rather, it
argues that the claims and specification “describe the
‘bond layer’ solely in terms of its location and material
composition.” Appellee’s Br. 29. But describing “bond
layer” in terms of its location and material composition
would not be inconsistent with that same “bond layer”
having an adherence quality. In other words, the claimed
“bond layer” may have additional requirements as to its
location or material composition. See ’360 patent claim 1.
But those additional requirements do not mean that the
“bond layer” does not also have to bond. The specification’s
description of “bond layer” with reference to its
location and material composition does not indicate an
intent to depart from the term’s plain and ordinary meaning
with respect to bonding. We have considered GE’s
other claim-construction arguments but find them unpersuasive.
For the foregoing reasons, we adopt UTC’s
proposed construction and construe “bond layer” as “a
layer of material designed to adhere another layer to a

CAFC addresses lighted artificial trees in POLYGROUP LTD MCO v. WILLIS ELEC. CO., LTD

There was a mixed outcome:

This is a patent case involving lighted artificial trees.
Polygroup Ltd. MCO petitioned for inter partes review of
U.S. Patent No. 8,936,379. The Patent Trial and Appeal
Board instituted review of all challenged claims. The
Board determined that Polygroup had not established the
unpatentability of any of the challenged claims.
Polygroup now appeals. Because the Board did not err in
finding that Korengold does not teach an “interference fit”
under the broadest reasonable interpretation of that term,
we affirm the Board’s determination that claims 12, 15,
and 32 were not shown to be unpatentable. But, we find
that the Board erred in construing “modular artificial
tree” and erred in finding that Polygroup failed to establish
a motivation to combine the asserted prior art. As a
result, we vacate the Board’s determination that claims
1–6, 8, 10–11, 13–14, 16–17, and 28–29 were not shown to
be unpatentable. On remand, the Board should consider
whether those claims are unpatentable under a proper

Substantial evidence was lacking:

Polygroup suggested
enhancing DeVicaris with the connection used to insert
Korengold’s connectors into the conduit pipe, not the
connectors themselves. Because most of the Board’s
analysis, and the expert testimony it relied upon, focused
on the motivation to replace DeVicaris’s connector with
Korengold’s connector, neither that analysis nor the
expert testimony provides substantial evidentiary support
for the Board’s rejection of Polygroup’s proposed motivation.
See J.A. 41–43 (focusing on the finding that replacing DeVicaris’s
connector with Korengold’s connector
would make tree assembly more difficult).

CAFC says: "patent infringement is not a recognized predicate “racketeering activity” for a RICO claim"

See ARUNACHALAM v. IBM. 2018-2105.

Sunday, January 27, 2019

Jay Bell: “When it comes down to it, not one thing I can teach is an original thought. It’s all plagiarized."

From an article in Pinstripe Alley:

When it comes down to it, not one thing I can teach is an original thought. It’s all plagiarized. I have a tremendous respect for Hall-of-Famer Alan Trammell. I learned from him and he learned from the generation prior, who learned from the players before that. It’s all part of what we learn and we will use that to help build Major League-caliber players.”

Although that quote might make it seem like Bell could be more inclined to take an old school approach to the game, that isn’t altogether true. Bell has been noted to be keen on analytics as well.


Special 40th Anniversary Episode of "CBS Sunday Morning"

The moment of nature piece was stated to have begun in 1979, and the feature of this day (27 January 2019) was Caddo Lake in Texas.

Wikipedia notes that the area is located on the border between Texas and Louisiana, in northern Harrison County and southern Marion County in Texas and western Caddo Parish in Louisiana.

CBS Sunday Morning had done Caddo Lake on 30 Sept 2012 and 16 Nov 2014.

Episode Number One of Sunday Morning on 28 Jan 1979:

Famine and the turbulent political situation in Somalia; Memphis art exhibition "Splendors of the Ottoman Sultans"; Steamboat Springs, Colo., classical music festival; 50th anniversary of the Battle of Guadalcanal; viewer mail; train buffs.

Thursday, January 24, 2019

Multiple sclerosis and gadolinium contrasting agents

About six months ago, IPBiz posted about possible adverse clinical effects arising from the use of some linear gadolinium contrasting agents in magnetic resonance imaging (MRI):

From ITNonline:

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

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

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

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

link: Linear gadolinum imaging agents and clear and convincing evidence

It may be that in the year 2019 not everyone has gotten the message about these certain linear gadolinium contrast agents.

As to risks, consider the mechanism. The blood-brain barrier is hydrophobic and repels hydrophilic moieties (eg, contrasting agents). A breakdown in the barrier allows intrusion of hydrophilic entities. The contrast agent, with paramagnetic Gd+3, shortens the T1's of nearby protons, allowing them to be perceived in this particular NMR sequence. HOWEVER, when the contrast agent itself begins to breakdown (as it does for some linear agents), the matter of "where" the Gd+3 ends up is not so clear. If the Gd+3 remains in the brain, it will influence later MRI measurements.

See also the Nov. 2018 paper which concludes:

Increased signal intensity in the deep cerebellar nuclei of rats persists for at least 1 year
after administration of linear gadolinium-based contrast agents (GBCAs), in line with
persistent brain gadolinium concentrations with no elimination after the initial 5-week period.
The animals that received macrocyclic GBCAs showed an ongoing elimination of gadolinium from the
brain during the entire observation period.

Gregor Jost et al., Published Online:Nov 13 2018

Obviousness through a single reference?

In a post Motivation to Combine Unnecessary Under Section 103 if Secondary Reference Does
Not Supply Element or Teaching
, Gene Quinn of IPWatchdog blistered the CAFC, writing:

It is worth pausing for a moment, however, to take issue with the Federal Circuit saying
that it is proper to reject a claim under §103 based on a single reference.
That is not technically correct. While there is no doubt a belief in the industry
that so-called single reference obviousness rejections exist and are legitimate,
even by some Judges on the Federal Circuit, that is not correct. Perpetuating the
myth of a single reference obviousness rejection really must stop.

While the outcome in the case would be unchanged, an anticipation rejection
under 35 U.S.C. § 102 is proper when a single reference provides exact identity
with the claimed invention. Obviousness always requires more than a single reference,
although that which is additional does not need to add an element or teaching found in the claims.

Post of 21 Jan 19 relating to Realtime Data, LLC v. Iancu, No. 2018-1154 (Fed Cir. Jan. 10, 2019)

MPEP 2143 states in pertinent part:

To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries.
Then, Office personnel must articulate the following:

(1) a finding that the prior art included each element claimed,
although not necessarily in a single prior art reference,
with the only difference between the claimed invention and
the prior art being the lack of actual combination of the elements in a single prior art reference;

(2) a finding that one of ordinary skill in the art could have combined
the elements as claimed by known methods, and that in combination,
each element merely performs the same function as it does separately;

(3) a finding that one of ordinary skill in the art would have recognized
that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary,
in view of the facts of the case under consideration, to explain a conclusion of obviousness.

[emphasis added]

Note also

the post on PatentlyO titled Single Reference Obviousness including the text:

Idemitsu Kosan Co., Ltd., v. SFC Co. Ltd. (Fed. Cir. 2017).

The decision here is important as one example of a single-reference obviousness decision upheld by the Federal Circuit on appeal.


From corridorlaw in July 2018:

Recent decisions by the Federal Circuit have ruled that obviousness under 35 USC 103 can be based upon a single prior art reference.


In some cases, obviousness has been found where only a single prior art reference, which didn’t disclose all of the claim elements, was cited, and “common sense” was cited to provide the missing element(s). In such cases, the Federal Circuit has ruled that the application of common sense requires explicit and objective support. In its decision in Arendi v. Apple, 832 F.3d 1355, 1363, 119 USPQ2d 1822, 1827 (Fed. Cir. 2016), the Federal Circuit stated: “[W]e conclude that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching.



To reject a claim as obvious over a single reference, it was necessary to identify a teaching, suggestion, or motivation to modify the single reference to fall within the scope of the claim.


CAFC explores "public use" in Barry v. Medtronic; Barry wins

Medtronic, represented by SETH P. WAXMAN, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, lost its appeal at the CAFC:

Medtronic appeals on numerous grounds, principally concerning the public
use and on-sale statutory bars, but also concerning prior
invention, inequitable conduct, and induced infringement
and associated damages. We affirm.

The technology of the patents relate to
methods and systems for correcting spinal column anomalies,
such as those due to scoliosis.

Of public use:

We begin with Medtronic’s argument for judgment as
a matter of law that the ’358 patent’s asserted claims are
invalid under § 102(b)’s statutory bar on patenting of
inventions in “public use” in the United States more than
one year before the application for the patent was filed.
Here, the application was filed on December 30, 2004, so
the critical date for an invalidating domestic public use is
December 30, 2003. We reject Medtronic’s challenge.


This court has long held that “the Supreme Court’s
‘ready for patenting test’” from Pfaff, involving the on-sale
bar, also “applies to the public use bar under § 102(b).”
Invitrogen, 424 F.3d at 1379. Medtronic accepts in this
appeal that, to show readiness for patenting, it had to
show (a) a reduction to practice or (b) drawings or descriptions
enabling an ordinarily skilled artisan to practice the
invention. Pfaff, 525 U.S. at 67–68.4 Here, Medtronic’s
ability to support judgment as a matter of law in its favor
under that test depends on its succeeding under the
reduction-to-practice alternative.


Although the foregoing discussion suffices to affirm
the rejection of Medtronic’s invalidity challenge under
§ 102(b)’s public-use bar, we think it worthwhile to address
Medtronic’s contentions regarding the other element
of the test of invalidity under the public-use bar: whether
the invention was “in public use.” We conclude that
Medtronic also fails under this element.
Medtronic sought to establish this element by showing that the
invention was accessible to the public and
that it was commercially exploited. We conclude, however, that
the evidence permitted a reasonable finding that
Dr. Barry’s ’358 patent invention was not accessible to the
public before the critical date. We also conclude that the
asserted acts of commercial exploitation, namely, the
August and October 2003 surgeries, come within the
experimental-use exception.

Yes, Egbert v. Lippmann is cited:

Unlike in the classic case of Egbert v. Lippmann, 104
U.S. 333, 335 (1881), the inventor here did not relinquish
control of his invention. Dr. Barry was the only one who
actually practiced the invention, i.e., performed the surgery
using the claim-required manipulation of linked
derotators. And while other people were present in the
operating room—an anesthesiologist, two assistant physi-
cians, a scrub technician, a neurophysiologist, a circulating nurse,
and an equipment representative—there was
sufficient evidence for the jury to find facts establishing
that the technique was not accessible to the public
through those people.
The evidence showed that very few of the people in
the operating room had a clear view of the surgical field,
where Dr. Barry was using his invention, because they
were either not permitted near the sterile field or because
there was a drape blocking the view. More dispositively,
although sometimes (as in Egbert) even a limited disclosure can
make an invention accessible to the public, see
Dey 715 F.3d at 1355–56, an accessibility determination
may be rejected where the evidence establishes a sufficient obligation
of confidentiality, which can be implied
rather than express. Id. at 1357; Delano Farms Co. v.
Cal. Table Grape Comm’n, 778 F.3d 1243, 1249 (Fed. Cir.
2015) (“[D]emonstration of a prototype to ‘friends and
colleagues’ was not invalidating because the evidence
supported the existence of ‘a general understanding of
confidentiality.’”); Invitrogen, 424 F.3d at 1381 (“[T]his
court has determined that a use before the critical period
was not public even without an express agreement of

Wednesday, January 23, 2019

CAFC reverses ED Va in SUPERNUS PHARMACEUTICALS, a patent term adjustment case

The outcome:

Supernus Pharmaceuticals, Inc. and United Therapeutics
Corp. appeal the entry of summary judgment by
the U.S. District Court for the Eastern District of Virginia.
The district court determined that, based on this
court’s decision in Gilead Sciences, Inc. v. Lee, the U.S.
Patent and Trademark Office’s calculation of the patent
term adjustment for the patent at issue was correct, and
that summary judgment was warranted as a matter of
law. We reverse the district court’s grant of summary
judgment because the patent term adjustment in this case
went beyond the period during which the applicant failed
to undertake reasonable efforts and thereby exceeded the
limitations set by the patent term adjustment statute.

Monday, January 21, 2019

The gunpowder engine

In 1876, the year of the U.S. Centennial and Custer's loss at Little Big Horn, Nicolaus A. Otto, (who had worked with Daimler and Maybach) patented a compressed charge, four-stroke engine [U.S. Patent No. 194,047 on Aug. 14, 1877, on an application filed July 13, 1876 ]

About 200 years earlier, in the time period 1671-1680, Huygens and Papin had worked on a gunpowder engine, which used the ignition of gunpowder to move a piston in a cylinder.

Of note is a communication from Leibniz to Papin, as reported in wikipedia:

Leibniz tried to interest Papin in further development throughout, at one point noting

"Yet I would well counsel [you], Monsieur, to undertake more considerable things
which would force everyone to give their approbation and would truly change the state of things."


CBS Sunday Morning on January 20, 2019 presents the issue of homeless college students

Lee Cowan reported the cover story for 20 January 2019, which centered on homelessness of some students attending college.
Information was furnished from one Sara Goldrick-Rab, who was described as "the leading national researcher on the problem." Sara is a professor at Temple University in Philadelphia, and the founder of the Hope Center. In a survey involving 43,000 students at 66 institutions, Sara reported that almost one in ten college students said they were homeless in the last year,

The moment of nature was Kirkham Hot Springs in Lowman, Idaho.

Monday, January 14, 2019

TTAB decision in Guild Mortgage vacated

The outcome:

Guild Mortgage Co. (“Guild”) appeals a decision of the
Trademark Trial and Appeal Board affirming the examiner’s
refusal to register the mark “GUILD MORTGAGE
COMPANY” and design shown below based on a likelihood of confusion
with the registered mark “GUILD
failed to consider relevant evidence and argument
directed to DuPont factor 8, we vacate and remand.

The prior analysis

The examiner concluded there was a likelihood of
confusion based on her findings that the marks, nature of
the services, and trade channels were similar. The Board
affirmed those findings, concluding that, on balance, those
factors outweighed the Board’s finding that consumers
“may exercise a certain degree of care in investing money,
if not perhaps in seeking a mortgage loan.” J.A. 10–11.
Guild appeals.

DuPont factor 8:

(8) The length of time during and conditions under which
there has been concurrent use without
evidence of actual confusion


“In every case turning on likelihood of confusion, it is
the duty of the examiner, the board and this court to find,
upon consideration of all the evidence, whether or not
confusion appears likely.” DuPont, 476 F.2d at 1362
(emphasis in original). “In discharging this duty, the
thirteen DuPont factors ‘must be considered’ ‘when [they]
are of record.’” In re Dixie Rests., Inc., 105 F.3d 1405,
1406 (Fed. Cir. 1997) (quoting DuPont, 476 F.2d at 1361).
This is true even though “not all of the DuPont factors are
relevant or of similar weight in every case.” Id. at 1406;
see also Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1265 (Fed. Cir. 2002) (noting the likelihood of
confusion analysis “considers all DuPont factors for which
there is evidence of record” but may focus on dispositive
The Board erred by failing to address Guild’s argument and evidence
related to DuPont factor 8, which
examines the “length of time during and conditions under
which there has been concurrent use without evidence of
actual confusion.” DuPont, 476 F.2d at 1361.


In its decision, the Board stated that it “consider[ed]
the DuPont factors for which there were arguments and
evidence” and considered the others to be neutral. J.A. 3.
The Board’s opinion, however, provides no indication that
it considered DuPont factor 8, for which there was argument and evidence.
The Board’s opinion does not mention
factor 8, let alone address Guild’s argument and evidence
directed to that factor. The Board erred in failing to
consider Guild’s arguments and evidence. Cf. Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340
(Fed. Cir. 2015) (vacating and remanding where the
Board did not properly assess all relevant evidence);


The Board erred
in its analysis by failing to consider this evidence and
argument as to factor 8. Because this evidence weighs in
favor of no likelihood of confusion, we do not deem the
Board’s error harmless. We make no assessment as to the
evidentiary weight that should be given to Guild’s CEO’s
declaration and simply hold that it was error to not consider it.
We leave it to the Board to reconsider its likelihood of confusion
determination in the first instance in
light of all the evidence.

Separately, blawgsearch ranking on January 14, 2019:


AND for the week of January 14, 2019:

Tuesday, January 08, 2019

CRISPR to bring us a spicy tomato?

In a paper in Trends in Plant Science:

Capsicum belongs to the Solanaceae family, and recent completion of its full genome sequence
shows that inactive genes for the biosynthetic pathway of capsaicinoids are also present in tomato.
We propose that the use of state-of-the-art genome engineering techniques to activate capsaicinoid
biosynthesis in tomato is a suitable option to exploit these valuable secondary compounds.

NCIS does chlorine and Fritz Haber on January 8, 2019

In an episode first airing on 8 Jan. 2019, titled “Toil and Trouble,” Agent Leroy Gibbs (Mark Harmon) and his team are getting some negative, threatening commentary from United States Secretary of Defense Wynn Crawford (Mitch Pileggi), which episode concludes ominously with Crawford asking a CIA contact for information on Leon Vance.

In between, there is a plot line on chemical warfare agents, specifically chlorine. Chlorine has been around for a long time, and was named by Sir Humphry Davy around 1810. Chlorine is used in the manufacture of many products.

NCIS mistakenly asserted that chlorine was discovered by Fritz Haber in 1915.

Coincidentally, this NCIS episode of January 8, 2019 is eleven years after an episode on Law & Order, which also mentioned Fritz Haber and chemical warfare. As posted on IPBiz in Patents and Fritz Haber in Law & Order on 9 Jan 08 , Haber won the Nobel Prize in chemistry in 1918, three years after the use of chlorine in World War I, and Haber's wife committed suicide because of his work in chemical warfare.

Returning to "Wynn Crawford," the plotline suggested that Crawford owned stock in the company featured in the story, which company apparently had unaccounted stock of chlorine, and which had been getting contracts to destroy chemical warfare agents.

Going to "60 Minutes" on January 7, 2019, one recalls the parade of former cabinet secretaries who were backing Xyleco.

Monday, January 07, 2019

Lesley Stahl "at it" again in sad piece on biotech, Marshall Medoff, Xyleco

Back in 2014, Lesley Stahl of "60 Minutes" did a negative piece on cleantech, of which Slate wrote in a rebuttal piece titled --Clean Tech Is Not Dead --:

If this would-be exposé felt familiar, that’s because it was all over the media two years ago. Why 60 Minutes decided to drag it back into our living rooms in January 2014 is a mystery. By now, the Solyndra horse is so dead that even Fox News is tired of flogging it.

But there’s a more important reason you haven’t heard much about the “clean-tech crash” in the past couple of years: It turned out to be, in many ways, a myth. Yes, a lot of the alternative-energy startups that Silicon Valley investors flocked to five years ago have run into serious trouble. A few were among those that got government support. In the 60 Minutes segment, Stahl named nine failed or struggling companies in all—lumping in those that received government loans with some that didn’t—then declared herself “exhausted.” I guess it’s a good thing, then, that she didn’t try to name all the ones that succeeded: There are a lot more than nine of those.


Over the course of the segment, 60 Minutes got so many things wrong about clean technology that I don’t have room to refute them all here, though plenty of others have made valiant efforts. The Department of Energy ripped the show, calling it “flat wrong on the facts.” And on Tuesday, Vinod Khosla himself—the venture capitalist whom Stahl’s segment held up as the face of the “clean-tech bust”—published a scathing open letter to the show, disputing more than half a dozen key facts and comparing it to the National Enquirer. That’s an unfair comparison, of course: The National Enquirer could never hope to mislead as many Americans as 60 Minutes did.

It’s understandable that Khosla led his letter by taking issue with specific points of fact. But in doing so, he risks unintentionally obscuring the far greater sin of 60 Minutes’ journalism. It didn’t just botch the numbers. It utterly botched the underlying story.


Flash forward five years, and observe that Lesley Stahl has done a spin reversal, lionizing Marshall Medoff of Xyleco on January 6, 2019:

You never know who's gonna be the one with the big idea. History has shown it's not necessarily the person with the most impressive credentials.

A breakthrough can come from the least expected, perhaps like an 81-year-old eccentric from Massachusetts who toiled in isolation with no financial support for more than a decade.

His focus? A challenge that has stumped scientists for many years – how to transform inedible plant life into environmentally friendly transportation fuels in a clean and cost-effective way.

As to what was known about this technology five years ago, see for example Bak's paper titled: Process evaluation of electron beam irradiation-based biodegradation relevant to lignocellulose bioconversion.


George Shultz appeared as a Xyleco advocate. One might remember the appearance of Shultz in a different "60 Minutes" story on "high tech." Specifically, in May 2018, one had The Theranos Deception. Palo Alto online noted:

Former Secretaries of State George Shultz and Henry Kissinger served on the Theranos board, as did former Secretary of State William Perry and James Mattis, prior to his current appointment as Secretary of Defense. Investors included the founders of Walmart, media mogul Rupert Murdoch and Secretary of Education Betsy deVos, according to the Wall Street Journal.

Yes, Perry appeared on "60 Minutes" in the Xyleco segment.

AND, of lionizing a non-mainstream "scientist," recall Lesley Stahl's piece on Kanzius, as discussed in the IPBiz post

Fool born every minute? Lesley Stahl's shameful piece on Kanzius.

One will not find Mr. Kanzius (who also described an invention to burn water) in the "60 Minutes" piece on other "innovators" (people whose creations are celebrated, even if their names are not)


UPDATE on Theranos:

UPDATE from a review of the movie about Theranos:

But really, what Theranos was selling — and what people were so eager to invest in — was Elizabeth Holmes herself. Much like Edison, Holmes was her own greatest invention.

Theranos would be devoted to saving [lives]. It wasn’t a bad idea — in fact, it was a beautiful idea.
However, it wasn’t a plausible idea, but Holmes kept shopping it around until she found a rich old man who didn’t realize that.

Of course, everyone wanted it to work. That’s true of the the potential investors who rejected Holmes’ proposal, and it’s true of the goon squad of retired statesmen (Henry Kissinger!), military legends (General Mattis!), and tongue-wagging venture capitalists (George Schultz!) who happily sat on the board of directors in order to spend time with her. It’s even true of the media, who were licking their chops at the chance to counter the narrative that Silicon Valley was a total sausage party (a Fortune Magazine cover story proved instrumental in launching the Theranos brand). Even before issues of representation grew urgent enough to shift the tectonic plates of our culture, people were still eager to rally around a woman and to champion her company as a sign of the future in more ways than one. Cut to: Theranos being valued at almost $10 billion, which is quite a lot of money for a company that only sold people on their own misguided optimism.


Sunday, January 06, 2019

CBS Sunday Morning on January 6, 2019

Jane Pauley hosted, and the first story presented was the interview by Pauley with House Speaker Nancy Pelosi, who among other things, said that Trump wanted to abolish Congress.

Of note was the interview by Mark Phillips of actor Michael Caine, which among other things pushed the book Blow the Bloody Doors Off. There was a quote from Caine:

You don't retire from movies. Movies retire you.

This brought to mind the quote attributed to Braves pitcher Warren Spahn:

“I didn’t retire from baseball. Baseball retired me.”


The first headline mentioned was the arrest of Eric Black in Houston. The theme of gruesome continued in the Almanac feature, which recalled the attack on skater Nancy Kerrigan on January 6, 1994. News also covered ice sculptures in China.

In a piece by Serena Altschule, Sunday Morning pushed the movie "At Eternity's Gate," done by CBS films. Of the performance by Willem Dafoe:

At 63, Dafoe is 26 years older than Van Gogh at the time of his death, but for director Julian Schnabel, he was destined for the role.

Altschul asked, "In your mind, it was Willem Dafoe?"

"It was always gonna be Willem," Schnabel said. "He became something else. I don't think it's a performance. He was the incarnation of something."

Note also a previous CBS piece: How Willem Dafoe unlocked Vincent Van Gogh for "At Eternity's Gate" ("CBS This Morning," 11/16/18)

There was a piece on the current "longest" non-stop flight, now 19 hours from New York to Singapore, which covers 9500 miles and passes over the north pole.

The "pulse" feature found a slight preference for car travel over air travel 44% to 43%.

There was a piece on King Tut, which included an allusion to re-writing history:

Perlov showed correspondent John Blackstone a 10-foot quartzite statue of King Tut that was found at his mortuary temple. "What's interesting about this is that right after King Tut passed away, his successor, Ay, tried to destroy all remnants of his rule, including erasing King Tut's name from the belt of that statue and putting his own name.

"But they failed miserably, because few people have heard of King Ay, and the name of King Tut is essentially immortal."

And yet, he was not a particularly significant king of Egypt. "No, he was not," said Dr. Hawass. "Actually, if his tomb was not found, maybe we'll write three lines about him."

One notes the patent system, in encouraging people to write things down, discourages this sort of revisionism.

The nature feature presented sperm whales at Sao Miguel in the Azores. Pico Island is also a good spot to catch the whales.
One recalls a recent story on Sunday Morning about the USS Scorpion, which ended up on the ocean floor near the Azores.

Saturday, January 05, 2019

"Martial Law" depicts an evil patent attorney

In a 2000 episode of "Martial Law" titled "Dog Day Afternoon," one has a bad guy patent attorney and a bad guy patent backer/investor.

The story unfolds with the shooting death of a man, whose body was found by Sammo and friends, underneath a howling dog.

After uncovering a patent application buried in the ground (with the help of the dog), Sammo interviews the relevant patent attorney, who does not remember the patent application of victim/inventor Mason Talbot but does remember that Talbot was fired by Caltech because Talbot had the attention span of a tsetse fly, moving from one invention to another. In fact, the patent attorney remembered this invention very well.

In particular, in the case of this literally "buried" invention, Talbot had reduced the invention to practice, re-wiring the nerves of a dog "Homer," who went from not able to walk to fully functioning dog. The patent attorney, without contacting Talbot, went to investor Zelliger, but the inventor Talbot refused to deal, because he considered Zelliger evil. The patent attorney himself then cut a deal with Zelliger, arguing he could get any resultant patent invalidated.

As shown in the opening, the evil Zelliger himself shot and killed Talbot and later, with henchman, spent a large part of the episode trying to capture Homer, presumably to take the dog apart to understand the "working" embodiment of the invention.

The patent attorney finally confesses his evil actions, and Sammo and friends arrive just in time to save Homer. Homer goes after Zelliger in the resultant fight scene.

There is some interesting dialog from the patent attorney about inventors who do not grasp the business side of things. We have an extreme result here, wherein the investor both kills the inventor and tries to steal the idea. Sammo recognizes that the inventor had given up his life to save the dog (and the invention).

The "feel good" ending here has the NIH being given all the relevant information.

The patent attorney "Carrington" is played by David Wells.


[There seems to be no relation to the 1975 movie of the same name.]