Tuesday, February 26, 2019

University of Florida Research Foundation loses appeal from ND FL at the CAFC

The CAFC affirmed a determination by the Northern District Court of Florida:

The University of Florida Research Foundation, Inc.
(“UFRF”) is the assignee of U.S. Patent No. 7,062,251, titled
“Managing Critical Care Physiologic Data Using Data
Synthesis Technology.” In 2017, UFRF sued General Electric Company,
GE Medical Systems Information Technologies, Inc., and GE Medical Systems,
Inc. (collectively, “GE”)
in the United States District Court for the Northern District of Florida,
alleging infringement of the ’251 patent.
GE moved to dismiss under Federal Rule of Civil Procedure 12(b)(6),
arguing the claims of the ’251 patent are directed to
ineligible subject matter under 35 U.S.C. § 101.
The district court granted GE’s motion. Applying the twostep framework
set forth in Alice Corp. Party Ltd. v. CLS
Bank International, 573 U.S. 208, 217 (2014), the district
court determined the claims of the ’251 patent are directed
to an abstract idea and do not recite an inventive concept.
UFRF appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1). We affirm.

Within the decision:

Unlike laches, which conflicts with
the statute of limitations set forth in § 282, treating a § 101
eligibility challenge as a defense to a claim of patent
infringement poses no conflict with § 282 and, thus, no risk
of “jettison[ing] Congress’ judgment.”
We do not read SCA
Hygiene to undermine our holding in Dealertrack.
Even if § 282 did not extend to a § 101 eligibility challenge,
such a challenge would still be a defense to a claim
of infringement.1 We and the Supreme Court have long
treated § 101 eligibility as a “condition[] of patentability”
alongside §§ 102 and 103. See, e.g., Graham v. John Deere
Co., 383 U.S. 1, 12 (1966) (“The Act sets out the conditions
of patentability in three sections . . . novelty and utility as
articulated and defined in § 101 and § 102, and nonobviousness . . .
as set out in § 103.”); Versata Dev. Gr., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1330 (Fed. Cir. 2015) (“It
would require a hyper-technical adherence to form rather
than an understanding of substance to arrive at a conclusion that § 101
is not a ground available to test patents.”);
Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543
F.3d 657, 661 (Fed. Cir. 2008) (“It has long been understood
that the Patent Act sets out the conditions for patentability
in three sections: sections 101, 102, and 103.”). And we and

Monday, February 25, 2019

CAFC finds, in part, in favor of pro se patentee

The decision of noninfringement of WD Mich was vacated:

We vacate the grant of summary judgment
of noninfringement and remand for further proceedings.

While we are sympathetic to the fact that the district
court is handling a complex patent case involving a pro se
patent owner, the district court erred in granting summary
judgment of noninfringement. In granting summary judgment,
the district court determined that the AeroFlap does
not contain three limitations of the RE’755 patent claims.
First, the district court held the AeroFlap does not have the
claimed “vanes” because its channels are formed from depressions
in the surface of its mud flap, rather than from
vanes that protrude from the surface. Second, it held these
depressions in the AeroFlap do not prevent water and debris from
passing through slotted openings. Third, to the
extent the AeroFlap has the claimed “vanes,” “channels,”
or “slotted openings,” it held they are not “vertically extending.”
The district court’s analysis of these limitations
was erroneous

The scope of the meaning of "vanes" was factually in dispute:

We agree with Mr. Surti, however, that a genuine issue
of fact exists as to whether the AeroFlap has the claimed
vanes. The district court based its conclusion that the
AeroFlap does not have “vanes” on the fact that its
channels are created from depressions in the front surface
of the mud flap, rather than structures that protrude from
a surface. Though AeroFlap’s vanes are flush with the
front surface of the mud flap, a reasonable jury could
conclude that they protrude from the rear wall of the
channels. The construction of vanes does not require that
the vanes protrude beyond all other surfaces on the mud

FLEET ENGINEERS, INC. v. Mudguard, Surti

Saturday, February 23, 2019

CAFC vacates ND Ohio in Coda v. Goodyear; a case of "judicial notice" overreaching?

The CAFC vacated the decision of the Northern District of Ohio in the Coda case:

Plaintiffs appeal the district court’s dismissal and denial of leave to amend. We vacate the district
court’s dismissal and remand for further proceedings consistent with this opinion.

GREGORY A. CASTANIAS of Jones, Day represented the losing party, Goodyear.

The issues included inventorship and misappropriation of trade secrets, involved after talks between Coda and
Goodyear broke down concerning a tire inflating technology. The gist of the problem is seen in the text:

The following month, December 2009, a Goodyear employee
on Mr. Benedict’s team independently contacted
Coda to inquire about the status of Coda’s SIT technology
in preparation for an internal Goodyear meeting.

Coda explained that Mr. Benedict had surprisingly gone silent.
The employee replied, saying that “during [Goodyear’s]
brainstorm session, I indicated your invention matches up
nicely with Goodyear’s current criteria for development
and asked if we have looked into this with SIT Coda. [Mr.
Benedict’s] response to this question was oddly vague.”
J.A. 58 ¶ 40 (first alteration in original).
Also that month, and unbeknownst to Coda, Goodyear
applied for a patent entitled “Self-Inflating Tire Assembly.”
Goodyear’s application published on June 23, 2011, issued
as U.S. Patent No. 8,042,586 (the “’586 patent”) on October
25, 2011, and named Messrs. Benedict and Losey as the


The complaint [of Coda] alleges that
these patents have claims with limitations covering the
novel, proprietary, and confidential information Coda disclosed to Goodyear.

Of Coda's initial losses at district court:

Nine months after briefing on the motion to dismiss
concluded, the district court issued an opinion and order
denying Plaintiffs’ motion to strike and granting Defendants’ motion to dismiss.
Coda Dev. s.r.o. v. Goodyear Tire
& Rubber Co., No. 5:15-cv-1572, 2016 WL 5463
058 (N.D.
Ohio Sept. 29, 2016) (“Dismissal Opinion”). The court denied Plaintiffs’ motion to strike because it found the Hrabal
article was judicially noticeable as a “2008 public disclosure of something [Plaintiffs]
now claim[] was secret when
disclosed to Goodyear in 2009.” Id. at *2.

The court’s opinion did not explain why it denied Plaintiffs’ alternative request
to file a sur-reply addressing the new article.


Nearly a year after Plaintiffs filed their post-judgment
motions, the district court denied them. Coda Dev. s.r.o. v.
Goodyear Tire & Rubber Co., No. 5:15-cv-1572, 2017 WL
4271874 (N.D. Ohio Sept. 26, 2017). The court acknowledged that the
proposed amended complaint set forth
Plaintiffs’ correction-of-inventorship claims with “amazing
clarity.” Id. at *6. But, in the court’s view, the factual details
added in the proposed amended complaint—particularly the specific location of the pump tube—should have
been in the original complaint. Id. at *5–6. Given this
view, and Plaintiffs’ decision not to request leave to amend
before judgment, the court declined to allow Plaintiffs a “do
over” on these claims. Id. at *7. The court separately rejected Plaintiffs’
arguments concerning their trade-secretmisappropriation claim. Id

The CAFC found the district court in error.

Accepting the complaint’s well-pleaded factual allegations as true and drawing all reasonable inferences in
Plaintiffs’ favor, we conclude that Plaintiffs’ claims for correction of inventorship are plausible.
The complaint describes Goodyear’s prior failures with inflation technology.
It also describes two meetings with Goodyear representatives—both arranged at Goodyear’s initiative and attended
by Mr. Benedict, Goodyear’s point-person on SIT technology. Goodyear sought technical information from Coda at
both meetings. And in the second meeting, Mr. Benedict
requested that he and his team be allowed to spend some
time alone with Coda’s functional prototype, during which
he photographed it without permission. After this second
meeting, Goodyear stopped communicating with Coda for
a time. When Coda reached out to Mr. Benedict attempting
to restart communications, Mr. Benedict responded that a
meeting would be premature.


These facts allow the
reasonable inference that Mr. Hrabal conceived the invention
of the ’586 patent and that Messrs. Benedict and Losey
did not. See Iqbal, 556 U.S. at 678 (“A claim has facial
plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”). They also
allow the reasonable inference that Mr. Hrabal made a
more-than-insignificant contribution to the conception of at
least one claim of each of the Alleged Jointly Invented Patents.
Cf. Fina Oil, 123 F.3d at 1473 (“The determination
of whether a person is a joint inventor is fact specific, and
no bright-line standard will suffice in every case.”).
Further, Coda’s two meetings with Goodyear representatives,
as well as the parties’ signing a nondisclosure agreement
going to cooperation between the parties in developing SIT
technology, allow the reasonable inference that the collaboration
requirement was satisfied as to the Alleged Jointly
Invented Patents.

The “plausibility standard is not akin to a ‘probability
requirement.’” Iqbal, 556 U.S. at 678 (quoting Twombly,
550 U.S. at 556). Rather, Plaintiffs need only “nudge[]
their claims across the line from conceivable to plausible.”
See Twombly, 550 U.S. at 570.

The district court committed procedural error:

The district court’s contrary conclusion rested largely
on a procedural error—namely, the consideration of material outside the pleadings.
The principle is familiar:

Assessment of the facial sufficiency of the complaint must ordinarily be undertaken without
resort to matters outside the pleadings. If a court
does consider material outside the pleadings, the
motion to dismiss must be treated as a motion for
summary judgment under Rule 56 and all parties
must be given a reasonable opportunity to present
all material pertinent to the motion.

Gavitt v. Born, 835 F.3d 623, 640 (6th Cir. 2016) (citation
omitted); see Fed. R. Civ. P. 12(d) (stating similarly); 5C
Charles Alan Wright & Arthur R. Miller, Federal Practice
and Procedure § 1366 (3d ed. 2018) (“Once the district court
decides to accept matters outside of the pleadings, the presence of the word ‘must’ [in Rule 12(d)] indicates that the
judge must convert the motion to dismiss into one for summary judgment . . . . [T]hat is what has been done in a vast
array of cases, especially when the district court actually
considers the contents of this material in deciding the motion.”).

The district court considered the Hrabal article without
converting Defendants’ motion into one for summary judgment
and without giving Plaintiffs a reasonable opportunity to present all pertinent material.

Of judicial notice:

Although a district court may consider judicially noticeable matters
outside the pleadings without converting
a Rule 12(b)(6) motion into one for summary judgment, see
Jackson v. City of Columbus, 194 F.3d 737, 745 (6th Cir.
1999), overruled on other grounds by Swierkiewicz v.
Sorema N. A., 534 U.S. 506 (2002), judicially noticeable
facts must “not [be] subject to reasonable dispute,” see Fed.
R. Evid. 201(b). Here, the district court used the Hrabal
article to “determine whether it was a 2008 public
disclosure of something Coda now claims was secret when
disclosed to Goodyear in 2009.” Dismissal Opinion, 2016
WL 5463058, at *2; see J.A. 24–25 (concluding that the article
publicly disclosed each element of the alleged trade
secrets). But whether the Hrabal article actually disclosed
those alleged novel trade secrets was a reasonably (indeed,
hotly) disputed factual issue—one outside any judicial-notice exception
to the general rule requiring conversion, and
one that should not have been resolved adversely to Plaintiffs on a motion to dismiss.
The district court erred in considering the Hrabal article for this purpose without
converting Defendants’ motion to dismiss into one for summary judgment and
giving Plaintiffs a reasonable opportunity to present all pertinent material.

Of significance in the trade secret component of the case was the fact that the
district court adopted a theory NOT PRESENTED by the defendants, and to which the plaintiffs had
no opportunity to respond:

The district court adopted a different
theory—one to which Plaintiffs never had an opportunity
to respond. The court found that the facts alleged in the
complaint, including the independent contact from the
Goodyear employee in 2009, “should have been sufficient
notice to plaintiffs that something might have been amiss,”
thus triggering a duty to investigate. Dismissal Opinion,
2016 WL 5463058, at *10 (emphasis in original). The court
found that such an investigation would have led to the discovery of the patent application when it published. Id.

Of the denial of plaintiffs' amended complaint:

At oral argument, Plaintiffs expressed their desire to
proceed with their proposed amended complaint even if
this court were to conclude, as it now has, that the original
complaint sufficiently stated the claims on appeal. Oral
Arg. at 7:40–52; see id. at 7:02–40 (describing how the number
of claims in the proposed amended complaint has been
pared down from the original complaint). We deem Plaintiffs’ suggested
approach sensible and are aware of no reason why they should not be permitted to file their proposed
amended complaint on remand

Thursday, February 21, 2019

More on Lesley Stahl and Xyleco

Back on 7 Jan 2019, IPBiz posted on some bad reporting by Lesley Stahl:
Lesley Stahl "at it" again in sad piece on biotech, Marshall Medoff, Xyleco

See also a post on 11 Jan 2019
60 minutes promotes biomass scam including text

Medoff’s company, Xyleco, has also garnered hundreds of millions of dollars from investors impressed with his inventive use of accelerators. Sixty minutes describes this as his “novel idea of using these large blue machines called electron accelerators to break apart nature’s chokehold on the valuable sugars inside plant life – or biomass”.

But wait! There are thousands of research papers going back as far as Imamura (1972) about using electron accelerators to break down lignocellulosic biomass. This is done to create more surface area for the next step, in Xyleco’s case, enzymes to break down the cellulose further. Other ways biomass can be shattered are milling, chipping, shredding, grinding, and pyrolysis.


Xyleco isn’t yet in business, so it remains to be seen if the founder’s name ought to be Madoff rather than Medeff.

Drew Ferguson and the 1897 book on Robert E. Lee

There has been an issue with the presentation, in the office of Congressman Drew Ferguson, of a page in an 1897 biography of Robert E. Lee.
See for example
A Confederate book was open to a racist passage in a Georgia GOP congressman’s office. He blamed his staff.

One irony here is that the book, published in 1897 during the time of proliferation of the "Lost Cause" theme, was meant to paint Lee in a favorable light, and text from that particular page is frequently quoted to that end.

Another observation, not being discussed, is that the quote being referenced from that page, is from a letter by Lee to his wife in December 1856.

To see something that is more clearly racist, consider the slogan of Democrat nominee Seymour during the 1868 presidential campaign:


See also

Reading the Man: A Portrait of Robert E. Lee Through His Private Letters
By Elizabeth Brown Pryor, Robert Edward Lee

The page in question from the 1897 book:

CAFC rules on attorney conflict of interest in Dr. Falk Pharma case

The outcome was disqualification:

At issue are three motions to disqualify Katten Muchin
Rosenman LLP as counsel for Mylan Pharmaceuticals Inc.
(“Mylan”) in three appeals before this court. Valeant Pharmaceuticals
International, Inc. (“Valeant-CA”) and Salix
Pharmaceuticals, Inc. (“Salix”) move to disqualify in Valeant
Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals Inc.,
No. 2018-2097 (“Valeant II”), Salix moves to
disqualify in Salix Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc.,
Nos. 2017-2636, 2018-1320 (“Salix II”), and
Valeant-CA and Salix move to disqualify in Dr. Falk
Pharma GmbH v. GeneriCo, LLC, No. 2017-2312 (“Dr. Falk
II”). Because we find that Katten has an ongoing attorney client
relationship with Valeant-CA and its subsidiaries,
including Salix, we conclude that Katten’s representation
of Mylan in these appeals presents concurrent conflicts of
interest. Therefore, we grant the motions to disqualify.

Of the issue

Specifically, Salix—a movant in all three appeals—
is a wholly-owned subsidiary of Salix Pharmaceuticals,
Limited, which is a wholly-owned subsidiary of ValeantDE, which is an indirect,
wholly-owned subsidiary of Valeant-CA. Bausch & Lomb is also an indirect subsidiary of
Valeant-CA and an affiliate of the above-listed entities.
Valeant-CA contends that it has been a longstanding
client of Katten, both directly and through its subsidiaries.


Mukerjee and Soderstrom, then at Alston & Bird, represented Mylan
throughout the district court litigation. On
May 3, 2018, Mylan notified the district court that Mukerjee and Soderstrom
had left Alston & Bird to join Katten.
On May 25, 2018, Valeant-CA filed a motion to disqualify
Katten in the district court action. Mylan timely appealed
the district court’s summary judgment on June 22, 2018.
Valeant-CA then filed a motion to disqualify Katten in this
court on July 9, 2018, and the district court stayed a decision
on the motion to disqualify pending before it. We
stayed the parties’ briefing on the merits in this appeal
pending our decision on the motion. Valeant II, ECF No.

Of applicable rules

In Valeant, the relevant regional circuit is the
Third Circuit, which applies the professional conduct rules
of the forum state. See United States v. Miller, 624 F.2d
1198, 1200 (3d Cir. 1980). The forum state, New Jersey,
has adopted the Model Rules of Professional Conduct. N.J.
Rule of Prof’l Conduct 1.7(a). In Salix, the relevant regional
circuit is the Fourth Circuit, which applies the rules
of professional conduct of the forum state. See Shaffer v.
Farm Fresh, Inc., 966 F.2d 142, 145 (4th Cir. 1992). The
forum state, West Virginia, has also adopted the Model
Rules. W. Va. Rule of Prof’l Conduct 1.7(a). Finally, in Dr.
Falk, the U.S. Patent and Trademark Office is the relevant
forum and it has also adopted the Model Rules. 37 C.F.R.
§ 11.107(a).
Indeed, Comment
34 to Rule 1.7, which addresses “organizational clients,”
A lawyer who represents a corporation or other organization does not,
by virtue of that representation, necessarily represent any constituent or
affiliated organization, such as a parent or subsidiary. See Rule 1.13(a).
Thus, the lawyer for an organization is not barred from accepting
representation adverse to an affiliate in an unrelated matter, unless the circumstances are such
that the affiliate should also be considered a client
of the lawyer, there is an understanding between
the lawyer and the organizational client that the
lawyer will avoid representation adverse to the client’s affiliates, or the lawyer’s obligations to either
the organizational client or the new client are
likely to limit materially the lawyer’s representation of the other client.
Model Rules of Prof’l Conduct r. 1.7 cmt. 34 (Am. Bar Ass’n
2018) (emphasis added). Circumstances in which an affiliate is considered a client of a lawyer can arise by express
agreement or when affiliates are so interrelated that representation of one constitutes representation of all. GSI
Commerce Sols., Inc. v. BabyCenter, LLC, 618 F.3d 204,
210–12 (2d Cir. 2010)


We find this reading of the engagement letter to be irrational.
Section 1.2 does not indirectly authorize Katten
to represent parties adverse to Valeant-CA and Salix so
long as Katten remains a non-key firm. Rather, section 1.2
expects a heightened degree of loyalty from key firms,
requiring something more than mere adherence to the ethical
rules. It states that key firms should not represent “any
party” in “any matters” that would conflict with “any Valeant entity.”
Gorman Decl. Ex. A, at § 1.2. This reference
to “any matters” encompasses, as Valeant-CA stated at oral
argument, a “blunderbuss” limitation on key firms to avoid,
not only matters that give rise to ethical conflicts, but also
those that give rise to other types of conflicts. See Oral Arg.
at 9:36. Other types of conflicts could include, for example,
a matter involving the filing of an amicus brief that presents
no ethical conflict under the rules of professional conduct, but that espouses a legal position contrary to one
taken by a Valeant entity in another case. Thus, section
1.2 broadens the degree and type of loyalty expected from
key firms.

The retraction by Nature of the Samaha work: is Gaetan Burgio correct on who is responsible for improper submissions to journals?

DIANA KWON of The Scientist discusses the retraction by Nature of a paper co-authored by oncologist Nabil Ahmed and Heba Samaha. Of note within her text:

But starting last October, a few weeks after the paper was posted online, comments about potential image manipulation in the article began to appear on PubPeer, and the issue quickly caught the attention of scientists on social media.

Gaetan Burgio, a geneticist at Australian National University who posted a widely circulated Tweet about the manuscript, notes that the extent of alleged image duplication identified in this paper was “quite exceptional.”


According to the retraction notice posted today, the authors are pulling the paper “due to issues with figure presentation and underlying data.” All the authors, except Samaha, the first author, agreed with the retraction.

“Unfortunately, issues were identified in the presentation of several figure panels and the underlying data [in the paper],” Ahmed writes in an email to The Scientist. “I promptly notified the office of research at Baylor College of Medicine, which is looking into the cause of these issues.”


Some commenters on both PubPeer and social media suggested that the duplicated images should have been caught by peer reviewers. But Burgio believes that the responsibility lies with the publisher, not the reviewer. “I think it’s on the publisher to ensure that the paper doesn’t contain any image duplication or plagiarism,” he says. “It’s unfair to rely solely on the reviewer to police the paper.”

Nature currently conducts random spot checks of images in manuscripts prior to publication. “If concerns about a figure in a Nature paper are raised, we have software tools that enable us to evaluate images in detail,” a Nature spokesperson writes in an emailed statement to The Scientist. (The spokesperson also noted that the journal could not comment on individual articles for confidentiality reasons).

Some journals, such as the Journal of Cell Biology and The EMBO Journal, have implemented procedures to screen figures in every article prior to publication. “This [practice] is absolutely admirable,” Ferguson says. “How to screen really carefully for image manipulation prior to publication is something that most journals will have to address.”

As to the issue of plagiarism, IPBiz disagrees with Burgio: it is the people who have knowledge of the field (the reviewers) who should be most responsible for identifying the copying of material, whether it is slavish word-for-word duplication or more subtle forms of intellectual theft.
IPbiz has already posted examples of plagiarism identified by readers, who are familiar with the given field, rather than publishers, who are not.

Wednesday, February 20, 2019

Who was the oldest inventor to receive a U.S. patent?

In 2014, the Los Angeles Times discussed US Patent 8606170 to Si Ramo (the R in TRW), then 100 years old.

On June 12, 2018, US Patent 8606170 issued to Charles Bliss, with Chip Reid of CBS noting of Bliss:

Last June, the chemical engineer became what's believed to be the oldest American ever awarded a patent. [at age 101]

See also



https://patents.google.com/patent/US8110395, Photobioreactor systems and methods for treating CO2-enriched gas and producing biomass


Sunday, February 17, 2019

United States published patent application 20190050629, SELECTIVE IDENTITY RECOGNITION UTILIZING OBJECT TRACKING

The background section of the Amazon application states

Multimedia content such as video content is used in multiple settings
and presents many difficult challenges in the context of video processing,
such as recognizing and identifying objects moving through the multimedia content.
Multimedia content often includes large amount of information that make it challenging
to process the video to determine, for example, when a particular individual is present in the video.
Determining when a particular individual or other object is present
in the video may require performing an identity recognition process
and it may be computationally infeasible or inefficient to perform repeated identity recognition processes.

The first claim states:

A computer-implemented method, comprising: identifying a person in a first image
of the person in a video; detecting a loss of identification of the person;
detecting a second image of a person in the video; and determining whether
the person in the first image is the same as the person in the second image,
wherein the determining includes identifying a face of the person.

Thursday, February 14, 2019

D. Delaware reversed in CenTrak case

CenTrak, Inc. sued Sonitor Technologies, Inc. for alleged infringement
of U.S. Patent No. 8,604,909 (’909 patent), which claims systems for locating and identifying
portable devices using ultrasonic base stations. The district court
granted Sonitor’s motions for summary judgment that claims 1, 7, 8, 16, 18, 21, 22, and 26 are invalid
for lack of written description and that claims 1, 7, 8, 16,
18, 21, and 22 are not infringed. Because the district court
erred in determining that there were no genuine disputes
of material fact on both issues, we reverse and remand for
further proceedings.

Ariad is cited as to written description:

We have held that “the test for sufficiency” of a patent’s
written description “is 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 Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
“[T]he test requires an objective inquiry into the four corners
of the specification from the perspective of a person of
ordinary skill in the art. Based on that inquiry, the specification must describe
an invention understandable to that
skilled artisan and show that the inventor actually invented the invention claimed.”
Id. A “mere wish or plan”
for obtaining the claimed invention does not satisfy the
written description requirement. Regents of the Univ. of
Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997).

The issue of whether a claimed invention satisfies the written description requirement
is a question of fact. Ariad, 598 F.3d at 1351.


As CenTrak correctly points out, a patented invention
must satisfy separate written description and enablement
requirements. Ariad, 598 F.3d at 1351. The governing
statute states, in relevant part: “The specification shall
contain a written description of the invention, and of the
manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person
skilled in the art . . . to make and use the same . . . .” 35
U.S.C. § 112, ¶ 1 (2006).3 One purpose of this statutory
provision is to require an inventor to provide sufficient detail
in a patent’s specification to enable a person of ordinary
skill in the art to make and use the invention. But a separate purpose
of this text “is to ‘ensure that the scope of the
right to exclude, as set forth in the claims, does not overreach the
scope of the inventor’s contribution to the field of ..


Thus, we have explained, “written
description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the
patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement
issue.” Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d
1180, 1191 (Fed. Cir. 2014).
In this case, genuine issues of material fact remain as
to whether disclosure of the implementation details that
the district court identified is necessary to satisfy the written description requirement. The considerations relied on
by the district court and Sonitor do not compel summary
judgment for lack of written description. As an initial matter, the district court leaned heavily on the fact that the
specification devoted relatively less attention to the ultrasonic embodiment compared to the infrared embodiment.
But in ScriptPro LLC v. Innovation Associates, Inc., 833
F.3d 1336, 1341 (Fed. Cir. 2016), we explained that “a specification’s focus on one particular embodiment or purpose
cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.”


Based on the evidence of record, there is a material dispute of fact as
to whether the named inventors actually
possessed an ultrasonic RTL system at the time they filed
their patent application or whether they were “leaving it to
the . . . industry to complete an unfinished invention.” Novozymes A/S v.
DuPont Nutrition Biosciences APS, 723
F.3d 1336, 1350 (Fed. Cir. 2013) (quoting Ariad, 598 F.3d
at 1353). Thus, the district court erred in granting summary judgment.

Wednesday, February 13, 2019

CAFC in IBG LLC: We conclude that the Board’s reasoning with regard to the ’132 and ’304 patents is internally inconsistent and therefore arbitrary and capricious.

The decision of the Board is vacated:

TT appeals, among other issues, the Board’s determinations regarding
whether the patents are directed to a
technological invention. Petitioners appeal the Board’s determinations
that the claims of the ’304 and ’132 patents
are patent eligible and that claims 29, 39, and 49 of the ’132
patent would not have been obvious. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A). We vacate the decision of
the Board in each case because the patents at issue are for
technological inventions and thus were not properly subject to CBM review.

Saturday, February 09, 2019

"Consumer Watchdog" case cited in Momenta case on standing

Momenta argues that since the purpose of the America
Invents Act is to provide an alternative to district court litigation,
appeal should be available from the PTAB as it
would be available from a district court decision. Momenta
states that the estoppel provision provides injury-in-fact,
and that this suffices to support constitutional standing.
However, estoppel of Momenta is irrelevant now that Momenta has
“exited” its development of the Orencia® product. Estoppel cannot constitute an injury-in-fact when
Momenta “is not engaged in any activity that would give
rise to a possible infringement suit.” Consumer Watchdog,
753 F.3d at 1262; see also Hollingsworth v. Perry, 570 U.S.
693, 704 (2013) (the party must be in the position of
“seek[ing] a remedy for a personal and tangible harm”);
Gill v. Whitford, 138 S. Ct. 1916, 1929 (2018) (“the requirement
of such a personal stake [in the outcome] ‘ensures
that courts exercise power that is judicial in nature’”
(quoting Lance v. Coffman, 549 U.S. 437, 441 (2007))).

Continental Circuits prevails in appeal against Intel at CAFC

The outcome indicated an error in claim construction by the district court of Arizona:

Continental Circuits LLC appeals from the judgment
of the United States District Court for the District of Arizona
of noninfringement of the asserted claims of U.S. Patents 7,501,582
(“the ’582 patent”); 8,278,560 (“the ’560
patent”); 8,581,105 (“the ’105 patent”); and 9,374,912 (“the
’912 patent”). See Final Judgment, Cont’l Circuits LLC v.
Intel Corp., No. 16-2026 (D. Ariz. Sept. 12, 2017), ECF No.
273. The parties stipulated to a judgment of noninfringement,
see Stipulation & Joint Motion, Cont’l Circuits LLC
v. Intel Corp., No. 16-2026 (D. Ariz. Sept. 7, 2017), ECF No.
266, based on the district court’s claim construction of certain claim terms,
see Cont’l Circuits LLC v. Intel Corp., No.
16-2026, 2017 WL 3478659 (D. Ariz. Aug. 9, 2017) (“Claim
Construction Order”). Because we conclude that the district court erred
in its claim construction, we vacate the
judgment of noninfringement and remand for further proceedings.

An issue was reading a limitation into the claims:

The district court construed the Category 1 Terms to
require that the “surface,” “removal,” or “etching” of the
dielectric material be “produced by a repeated desmear process.”
See Claim Construction Order, 2017 WL 3478659, at
*2–3 (emphasis added). The district court concluded that
Intel had “met the exacting standard required” to read a
limitation into the claims. Id. at *3. Specifically, the district court
found that the specification not only “repeatedly
distinguishe[d] the process covered by the patent from the
prior art and its use of a ‘single desmear process,’” id. at *4,
but also characterized “the present invention” as using a
repeated desmear process, see id. at *5.

The CAFC take on Teva is recited:

Claim construction is ultimately a question of law that
we review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 841 (2015). Any subsidiary factual findings
based on extrinsic evidence “must be reviewed for clear error on appeal.”
Id. But “when the district court reviews
only evidence intrinsic to the patent (the patent claims and
specifications, along with the patent’s prosecution history),
the judge’s determination will amount solely to a determination of law,”
which we review de novo. Id.

Continental prevailed:

We agree with Continental that the district court erred
in limiting the claims to require a repeated desmear process.
In construing claims, district courts give claims 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). “[B]ecause patentees frequently use terms idiosyncratically,
the court looks to” sources including “the words
of the claims themselves, the remainder of the specification,
the prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of
technical terms, and the state of the art.” Id. at 1314
(quoting Innova/Pure Water, Inc. v. Safari Water Filtration
Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004))

The meaning of "invention"

35 U.S. Code § 100 (a) defines invention:

The term “invention” means invention or discovery.

However, note keydifferences.com states:

Each and everything that surrounds us and we are using in our day to day
life is either discovered or invented, by experts. Most people have
a misconception regarding the words discovery and invention
, due to
which they end up with the supposition that these two are one and the same thing.
But that is not true, as discovery means uncovering something, which already existed,
but not recognised by anybody else before, i.e. finding something unexpected.

On the other hand, the invention refers to creating something new and useful,
with one’s ideas and experiments. In short, it means creating or designing something.
So, check out this article to know the difference between discovery and invention in detail.

link: https://keydifferences.com/difference-between-discovery-and-invention.html

Withing episode 11 of the first year of the tv series "Numbers," one finds Larry
speaking to Charlie:

Science you know, science, not this, but real science, is discovery, Charles.
It's not invention.
The truths are there, whether we find them or not.

link: https://www.springfieldspringfield.co.uk/view_episode_scripts.php?tv-show=numb3rs&episode=s01e11

Saturday, February 02, 2019

What is a country?

On 1 February 2019, "Travel Trivia" identified Greenland as the least densely populated country.
As Bill Clinton might say, it depends on the meaning of the word "country."
[Recall the Clinton text: "It depends upon what the meaning of the word 'is' is.]

Wikipedia notes:

On 21 June 2009, Greenland gained self-rule with provisions for assuming responsibility
for self-government of judicial affairs, policing, and natural resources.
Also, Greenlanders were recognized as a separate people under international law.
(One country, two systems)[62] Denmark maintains control of foreign affairs and defence matters.
Denmark upholds the annual block grant of 3.2 billion Danish kroner, but as Greenland begins
to collect revenues of its natural resources, the grant will gradually be diminished.
This is generally considered to be a step toward eventual full independence from Denmark.[63]
Greenlandic was declared the sole official language of Greenland at the historic ceremony.


The Prime Minister of the “Naalakkersuisut”, Greenland’s Home Rule, Kuupik Kleist,
has declared that his Government will seek independence from Denmark when the economic situation allows.
In a self-governing agreement with Denmark in 2009, the Greenlanders were recognized as a distinct people
with the right to self-determination and given greater control over potential oil finds.

In practice the agreement can serve as a road map to independence if /when the 57,000 Greenlanders
are self-sufficient but for now they are dependent on grants from the state budget of Denmark.
Greenland has been part of the Danish Kingdom for three hundred years but was granted limited
sovereignty when home rule was established in 1979.

link: https://www.unric.org/en/latest-news/27747-greenland-resources-key-to-international-recognition-

From Travel Trivia