Monday, April 29, 2019

CAFC analyzes "skepticism" in Neptune Generics case

Neptune Generics loses to Lilly at the CAFC in pemetrexed disodium case:

Because the Board did not err in its obviousness analysis,
substantial evidence supports its underlying
fact findings, and subject matter eligibility is not properly
before the court in an appeal from an IPR decision, we affirm.

Of skepticism:

Evidence of industry skepticism is a question of fact
that weighs in favor of non-obviousness. WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1335 (Fed. Cir. 2016). The
Board found that evidence of skepticism of others, particularly the FDA,
supported a conclusion of nonobviousness.
J.A. 87. During Lilly’s clinical trials for pemetrexed, a
number of fatalities occurred. In response, Lilly recommended supplementation
with folic acid and vitamin B12.
The FDA responded that the “medical officer does not support
adding vitamins to the ongoing . . . trial.” J.A. 8748
(capitalization changed).


Petitioners argue that the Board legally erred in holding this evidence sufficient
to support a finding of skepticism because, despite the FDA’s concerns, it allowed the
trial to continue. It argues skepticism must be premised
on whether it is “technically infeasible,” “unworkable,” or
“impossible” that the claimed subject matter would work
for its intended purpose. Appellants’ Br. 51. This position
is not consistent with our caselaw, which recognizes a
range of third-party opinion that can constitute skepticism.
See, e.g., Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331,
1337 (Fed. Cir. 2015) (holding testimony that third parties
were “worried” or “surprised” was sufficient to establish
skepticism). The FDA’s concerns in this case fall well
within that range. While evidence that third parties
thought the invention was impossible might be entitled to
more weight, that does not mean the Board erred in giving
weight to the skepticism evidence here. Accordingly, the
Board did not err in finding that skepticism supported a
conclusion of nonobviousness.

As to a 101 challenge in an IPR:

We do not agree. Congress expressly limited the
scope of inter partes review to a subset of grounds that can
be raised under 35 U.S.C. §§ 102 & 103. 35 U.S.C. § 311(b)
(stating that in an “inter partes review,” a petitioner is
limited to only grounds that “could be raised under section
102 or 103”). The ground of patent eligibility arises under
§ 101. Accordingly, we may not address it on appeal of an

Sunday, April 21, 2019

Conciliation in Civil War era United States

Gerrit Smith was an abolitionist who financially supported the raid of John Brown on the arsenal at Harper's Ferry (then in Virginia).
Years later, in 1867, Smith financially supported the bond for Jefferson Davis.

Friday, April 19, 2019

CAFC tackles CBM issues in Trading Technologies

The CAFC noted:

Pursuant to § 18(a)(1)(E) of the AIA, the Board may
only institute CBM review for a patent that is a CBM patent.
A CBM patent is “a patent that claims a method or
corresponding apparatus for performing data processing or
other operations used in the practice, administration, or
management of a financial product or service, except that
the term does not include patents for technological inventions.”
Id. § 18(d)(1) (emphasis added). Pursuant to its authority under § 18(d)(2), the Patent and Trademark Office
(“PTO”) promulgated 37 C.F.R. § 42.301(b), which requires
the Board to consider the following on a case-by-case basis
in determining whether a patent is for a technological invention:
“whether the claimed subject matter as a whole
recites a technological feature that is novel and unobvious
over the prior art” and whether it “solves a technical problem using
a technical solution.” We review the Board’s reasoning “under the arbitrary and capricious standard and
its factual determinations under the substantial evidence
standard.” SightSound Techs., LLC v. Apple Inc., 809 F.3d
1307, 1315 (Fed. Cir. 2015).

The only issue of CBM eligibility that TT contests is
whether its patents are for technological inventions.

The issue

We agree with the Board that these claims are directed
to a covered business method and thus CBM review was
appropriate. These claims are directed to a financial trading method used by a computer. We see no technological
invention in this software method for trading. The claims
require receiving bid and offer information from an electronic exchange, displaying such information (“bid indicators” and “offer indicators”), and sending an order to the
electronic exchange based on a user input. The two claims
differ mainly in the way the user places the order (clicking
and dragging an “order icon” to a location on the price axis
versus selecting a point on the price axis). In each case, the
Board applied the considerations of § 42.301(b) and found
that the claims do not recite a technological feature that is
novel and unobvious over the prior art and do not solve a
technical problem with a technical solution for essentially
the same reasons.

TT argues the Board erred in applying the first consideration of § 42.301(b)
based on our decision in Versata Development Group Inc. v. SAP America, Inc., 793 F.3d 1306
(Fed. Cir. 2015). According to TT, Versata set aside the
novelty and nonobviousness language of the regulation,
leaving the definition of a technological invention as one
having a technological feature that solves a technical problem using a technical solution.
E.g., Appellant Br. 24–25,
No. 18-1063 (citing 793 F.3d at 1326). We need not decide
this issue because we agree with the Board
that the considered claims do not solve a technical problem using a technical solution.
See Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016) (“We need not address this argument regarding whether the first prong of 37 C.F.R.
§ 42.301(b) was met, as we affirm the Board’s determination on the second prong of the regulation . . . .”).

CAFC reverses D. Oregon on trademark issue

From the opinion by Judge Newman:

The district court held that Georgia Expo’s use of VersaTop’s trademarks
in advertising and brochures did not
violate the Trademark Act because Georgia Expo had not
“affixed” the VersaTop trademarks to goods that were “sold
or transported in commerce.” The court held that such “use
in commerce” was required for trademark infringement liability,
and therefore the relevant statutory provision concerning likelihood of confusion was not applicable.
Summary judgment of noninfringement in favor of Georgia
Expo was granted on this ground.
We conclude that the district court erred in law. On
the correct law, violation of the Trademark Act was established
on the admitted facts. We reverse the district court’s
judgment, and remand for appropriate further proceedings.

Of relevance

The treatise McCarthy on Trademarks and Unfair
Competition explains that the “use in commerce” definition
in § 1127—
was clearly drafted to define the types of “use” that
are needed to qualify a mark for federal registration—not as a candidate for infringement. It defines the kinds of “use” needed to acquire
registerable trademark rights—not to infringe
4 McCarthy § 23:11.50 (5th ed. 2018) (footnote omitted); see
id. (“This statutory anachronism certainly was never intended to limit the scope of ‘uses’ that would constitute infringement.”).
In Hasbro, Inc. v. Sweetpea Entertainment, Inc.,
No. 13-3406, 2014 WL 12586021 (C.D. Cal. Feb. 25, 2014),
the district court again stated the distinction between infringing use and the “use in commerce” requirement for
federal registration:

Sweetpea’s statement of the law is incorrect. The
Ninth Circuit has explained that the definition of
“use in commerce” in Section 1127 “applies to the
required use a plaintiff must make in order to have
rights in a mark . . . .” Playboy Enterprises, Inc. v.
Netscape Commc’ns Corp., 354 F.3d 1020, 1024
n.11 (9th Cir. 2004). Section 1127 is not, however,
the legal standard for proving infringement.
Id. at *9 (omission in original).
Contrary to this precedent, the district court in this
case incorrectly applied the definition of “use in commerce”
that is included in the statute for purposes of trademark
registration. This definition does not apply to trademark
infringement. See Network Automation, 638 F.3d at 1144–
45; Playboy, 354 F.3d at 1024 n.11

Where will the statue of Confederate general Kirby Smith end up?

Back on 2 July 2017, IPBiz had a post titled CBS Sunday Morning on 2 July 2017: notable for what was not said which included text:

The Almanac feature, going back to July 2, 1864 (one year after Day 2 of Gettysburg) was of interest for what was NOT mentioned. The 1864 date was that of the authorization of the National Statuary Hall in what had been the place of the House of Representatives. Each state was authorized to submit statues of two important people from the state. Exemplars on the CBS show included Garfield and Edison from Ohio. Another inventor mentioned was Robert Fulton. Not mentioned was Florida's included inventor John Gorrie, and Florida's other person, Confederate General Edmund Kirby-Smith (of the Trans-Mississippi Department). Relevant to certain public debate about statues of prominent Confederates, one notes that Mississippi presented Jefferson Davis and Virginia did Robert E. Lee. South Carolina did John Calhoun and General Wade Hampton. One wonders the fate of these Southerners/Confederates in the National Statuary Hall if protests are made?

On 19 April 2019 (nearly two years later), the Orlando Sentinel ran a story titled 'Evil coup?' Confederate statue sparks political fight for control of Lake County Historical Society , which included the text

A statue of Confederate General Edmund Kirby Smith that has represented Florida for nearly a century in the U.S. Capitol is at the heart of an unlikely partisan political fight — for control of the Lake County Historical Society.

The normally low-profile society, which runs a free historical museum in Tavares, won the right last year to display the statue when the general’s bronzed likeness is evicted from National Statuary Hall to make room for a figure of African-American educator and civil-rights activist Mary McLeod Bethune. That could be as soon as next year.

But if the general is coming, he won’t arrive without a battle.

“He has no place here, no connection whatsoever to Lake County,” said Mae Hazelton of Eustis, who is among more than two dozen people who have applied to be voting members of the society in hopes of reversing a decision to bring the statue to Tavares.

Hazelton said the museum’s pursuit of a confederate statue is insulting to her and other African-Americans in Lake County, where notoriously racist Sheriff Willis McCall was elected to office seven times from 1944 to 1972.

Within the Sentinel piece:

Tuesday, April 09, 2019

CAFC reviews decision of MD FL in Omega: specificity needed to preserve appeal on invalidty issue

The outcome was mixed:

CalAmp Corp. appeals from a judgment that U.S. Patent Nos. 6,346,876 (’876 patent),
6,756,885 (’885 patent),
7,671,727 (’727 patent), and 8,032,278 (’278 patent) were
infringed and are not invalid. We affirm the judgment of no
invalidity, affirm-in-part, reverse-in-part, vacate-in-part,
and remand the judgment as to direct infringement. We vacate and remand
for a new trial on indirect infringement,
compensatory damages, willful infringement, enhanced
damages, and attorney’s fees.

CalAmp's argument of invalidity was of interest:

CalAmp argues that the district court’s claim construction of the terms
“transmitter,” “receiver,” and “data communication bus / vehicle data communications bus / vehicle
data bus” were erroneous. Some or all of the terminology
appears in each of the various claims of the asserted patents. There is no argument that these constructions had
any effect on the jury’s findings of infringement. Rather,
CalAmp contends that these constructions affected the
jury’s verdict of invalidity, though there is no claim that
these constructions affected invalidity with respect to prior
art introduced at trial. The contention is that had the district court adopted CalAmp’s proposed constructions,
“CalAmp’s invalidity defenses would have included additional prior art references.”

CalAmp, Open. Br. at 17.

The CAFC noted:

“Federal Rule [of Civil Procedure] 46 requires that a
party, at the time the ruling or order of the trial judge is . . .
sought, make known to the court the action that he desires
the court to take . . . and the grounds therefor,” otherwise
a claim of error is typically forfeited. 9B Charles A. Wright
& Arthur R. Miller, Federal Practice and Procedure § 2472
(3d ed. 2018) (“Wright & Miller”). “This requirement is not
a mere technical formality and is essential to the orderly
administration of civil justice.” Id. At the same time, courts
have recognized that the requirement of securing a ruling
is “not to be applied in a ritualistic fashion.” Wright & Miller § 2472.
Context may well reveal an implicit ruling that
will suffice to preserve the issue. CalAmp informed the district court
during Markman that construction of the terms
“transmitter,” “receiver,” and “data bus” were actually in
dispute because additional prior art for CalAmp’s invalidity defense may
or may not be relevant depending on the
court’s construction.
Here CalAmp did nothing in the district court Markman proceeding
to specifically identify the prior art that
would be impacted by the claim construction ruling. At the
Markman hearing, there was no identification of any specific
prior art references that would be excluded by the district court’s
claim construction ruling.2 Instead, the court
was presented with only vague claims that there was prior
art before August 22, 1995, one year before the earliest priority date of the asserted patents,
that would be relevant
under CalAmp’s proposed construction. To be sure,
CalAmp was not required to identify the prior art at the
Markman proceeding in order to preserve the argument,
but here CalAmp fails to argue the prior art was identified
at any time thereafter.
In its opening brief on appeal, CalAmp argued its “invalidity defenses would have included additional prior art
references showing such wired connections.” But in its
opening brief CalAmp failed to present a developed argument as to why any actions by the district court after the
Markman hearing had the effect of excluding or limiting
prior art that CalAmp offered to present or even what relevant prior art was excluded by the claim construction ruling. Under these circumstances, CalAmp has failed to
properly preserve the issue.


We decline CalAmp’s invitation to speculate as to how
additional prior art may have been rendered irrelevant
under the court’s claim construction. Thus, although
CalAmp’s challenge to the district court’s claim construction was preserved under Federal Rule of Civil Procedure
51 for purposes of challenging the jury instructions, Lighting Ballast Control LLC v. Phillips Elecs. N. Am. Corp., 790
F.3d 1329, 1338 (Fed. Cir. 2015), we conclude that CalAmp
failed to satisfy the requirements of Federal Rule of Civil
Procedure 46 by not seeking admission into evidence of, or
at least specifically identifying, the additional prior art.
Such a request and specific ruling by the district court is
particularly necessary where the prior art concerns a defense of obviousness because a prior art reference need not
satisfy every claim element to still be relevant to obviousness.
For these reasons, we affirm the judgment as to the validity of the asserted patent claims.

Thursday, April 04, 2019

Fake scientific publishers/meeting organizers lose to FTC on summary judgment; face $50 million damages

From Ars Technica, concerning OMICS and iMedPub, LLC :

The practices of the companies, as documented by the FTC, are pretty egregious. While the OMICS Group claims that its publications are peer reviewed, two different journalists have submitted nonsense papers to its publications and had them accepted without revision. Scientists who have submitted articles indicate that they came back from review in a matter of days; the court recognized that peer review typically takes months. In some cases, the manuscript was simply published without warning after submission.

Although the victims are stated to be

a mixture of genuine scientists who are unwary, people who want to pad their publication records, and fringe scientists who just want to see their ideas in the literature regardless of their lack of merit.

one notes there are other reasons scientists might be driven to less prestigious journals.

Note text in a 2015 post in IPBiz

LBE served on the "Ethics Task Force" of the American Chemical Society from 2000-2002. At the time, there was no procedure for third party correction of mistakes that appeared in the Journal of the American Chemical Society.
LBE was victimized by this procedural failing, by a paper published in JACS, which made a false statement about LBE's work on (poly(carbon monofluoride)), also published in JACS. Of patent relevance was an inaccurate paper in JACS which played a significant role in the litigation of SKB's US '639 on nabumetone (Relafen).

See As to "promote the progress," note issues in scientific journals--Misconduct and poor laboratory practice in science threatens the scientific progress

From a 2009 post on IPBiz:

B. Science issue

The inability of a journal to correct a mistake in a published paper leads to later workers overlooking key issues, here the large second moment of the F-19 NMR absorption, which cannot be reconciled with the chair model.

Earlier discussion:


In my own experience, I came across one episode which illustrated the inability of the scientific
community to deal with each side of the coin. In a paper by D. L. Wertz and M. Bissell, Energy &
Fuels, 1994, 8, 613-617 on the diffraction of the graphene layer ["(002)"] peak in bituminous coals, the
authors stated that the diffraction peak was "far too intense to be caused by amorphous scattering and far
too broad to be caused by conventional diffraction." The authors cited three papers to justify this
assertion. Of three papers relied upon to prove the statement, which was the key assumption in the
paper, one was non-existent, one was irrelevant and one supported a contrary position. Following use of
the key assumption, the authors utilized an undefined short range interference function to manipulate the
x-ray diffraction data of the paper. The modified data led to a remarkable conclusion: that analysis of a
peak related to interference between aromatic entities (sp2 hybridized carbon) could predict the amount
of aliphatic carbon (sp3 hybridized carbon). Pertinent prior work on diffraction of "poorly crystalline"
carbonaceous systems with sp2 and sp3 carbon was ignored.

I contacted the editor of the journal. Of the non-citation and mis-citation issues, nothing was
done, and in fact the mis-citation was repeated in a later paper.

From L.B. Ebert, A Tale of Conflicting Models;
THE COMING SKIRMISH ON THE IP FRONTIER, Intellectual Property Today, p. 20 July, 2001

The Journal of the American Chemical Society has a policy of not allowing mistake correction by third parties, and the present author has direct experience with this policy. This author wrote a paper on the calculation of the second moment of the fluorine nuclear magnetic resonance (NMR) of solid poly (carbon monofluoride), which led to the conclusion that the structure contained an infinite array of cyclohexane boats, rather than the expected chairs, J. Am. Chem. Soc., 1974, 96, 7841, which boat structure was reproduced in the Cotton and Wilkinson, 4th edition. Five years later, different workers, who also published in JACS, criticized the calculation, on the basis that it involved a single integration, rather than a double integration. Although the allegation had no basis in the text of the 1974 paper, and was untrue, the journal (which did not dispute the truth of what this author said) would not allow a comment to be published. Five years later, this author did publish a comment, which appeared in the Proceedings of the Workshop on Electrochemistry of Carbon, pp. 595-607, Electrochemical Society Proceedings Series, Volume 84 No. 5 (1984). (Poly(carbon monofluoride) is a useful cathode for high energy density lithium batteries.)


The Ars Technica link:

Wednesday, April 03, 2019

155th Anniversary of the Battle of Ft. Pillow on April 12

The 155th anniversary of the Civil War battle of Ft. Pillow, Tennessee, known for the massacre of Union African-American troops, comes April 12. In the past, there was some disagreement about "what happened." Grant, writing in his memoirs, wrote of Forrest's battle report:

"Subsequently, Forrest made a report in which he left out the part which shocks humanity to read."

Discussed less frequently is the Battle of Olustee, Florida, which happened earlier (in Feb. 1864) and in which African-American troops were also murdered. One gruesome account is from the Reminiscences of William Frederick Penniman:

In passing over the field, and the road ran centering through it, my attention was first attracted to the bodies of the yankees, invariably stripped, shoes first and clothing next. Their white bodies looked ghastly enough, but I particularly notice that firing seemed to be going on in every direction, until the reports sounded almost frequent enough to resemble the work of skirmishers.

A young officer was standing in the road in front of me and I asked him, "What is the meaning of all this firing I hear going on." His reply to me was, "Shooting niggers Sir. I have tried to make the boys desist but I can't control them." I made some answer in effect that it seemed horrible to kill the wounded devils, and he again answered, "That's so Sir, but one young fellow over yonder told me the niggers killed his brother after being wounded, at Fort Pillow, and he was twenty three years old, that he had already killed nineteen and needed only four more to make the matter even, so I told him to go ahead and finis the job." I rode on but the firing continued.


I was placed temporarily in charge of the field hospital at Waldo [Florida], with a few sick and wounded patients then convealescing, and had an extremely easy billet for next month or two.

One notes that the battle of Olustee happened before the battle of Fort Pillow.

See also

The battle of Olustee came to be regarded as somewhat of a waste of lives given the small strategic advantage to be gained by taking over a part of Florida. Although Olustee established the willingness of Confederates to savage African American troops, the later battle of Fort Pillow came to be the pivot for that theme.

However, Lincoln's plan for Florida went beyond military targets. Because of Florida's relatively small population AND the Union's control of significant population centers, Florida was a likely "poster child" for Lincoln's ten per cent plan. To that end, Lincoln commissioned his secretary, John Hay, a major and placed him in charge of securing converts to meet the 10% quota. The defeat at Olustee ended that plan.


[Hay] returned to Florida in January 1864, after Lincoln had announced his Ten Percent Plan, that if ten percent of the 1860 electorate in a state took oaths of loyalty and to support emancipation, they could form a government with federal protection. Lincoln considered Florida, with its small population, a good test case, and made Hay a major,[c] sending him to see if he could get sufficient men to take the oath. Hay spent a month in the state during February and March 1864, but Union defeats there reduced the area under federal control. Believing his mission impractical, he sailed back to Washington.


Gillmore, on 31 January 1864, described his mission as follows:

Maj. Gen. H. W. HALLECK,

General-in-Chief, Washington, D.C.:

GENERAL: In reply to your letter of the 22d instant I beg leave state that the objects and advantages to be secured by the occupation of that portion of Florida within my reach, viz, the richest portions between the Suwannee and the Saint John's Rivers, are: First. To procure an outlet for cotton, lumber, timber, turpentine, and the other products of that State. Second. To cut off one of the enemy's sources of commissary supplies. He now draws largely upon the herds of Florida for his beef, and is making preparations to take up a portion of the Fernandina and Saint Mark's Railroad for the purpose of connecting the road from Jacksonville to Tallahassee with Thomasville, on the Savannah, Albany and Gulf Railroad, and perhaps with Albany, on the Southwestern Railroad. Third. To obtain recruits for my colored regiments. Fourth. To inaugurate measures for the speedy restoration of Florida to her allegiance, in accordance with instructions which I have received from the President by the hands of Maj. John Hay, assistant adjutant-general.


The scope of the advance was to be limited:

Jacksonville, FLA., February 11, 1864

General Seymour,

Beyond Baldwin:

Eight companies of the Fifty-fourth Massachusetts have been ordered to Baldwin. Don't risk a repulse in advancing on Lake City, but hold Sanderson unless there are reasons for failing back which I don't know. Please inform me how your command is distributed between here and the South Fork of the Saint Mary's. Please report by telegraph from Baldwin frequently.





Jacksonville, FLA., February 12, 1864

General Seymour,

(By cuurier from Baldwin):

I want your command at and beyond Baldwin concentrated at Baldwin without delay. I have information of a mounted force that may trouble your right flank by fording the Saint Mary's River. When we landed here they were 80 miles from Baldwin, on the Albany and Gulf Railroad. You should have scouts well out on your front and right flank. I have sent word to Colonel Tilgman to be on the alert. I think Fribley had better move forward and join you, but you must judge. The locomotive has not arrived yet.



In a letter of March 7, 1864, Gillmore stated

On the 18th. I was greatly surprised at receiving a letter from General Seymour, dated the 17th (see Appendix P), stating that he intended to advance without supplies in order to destroy the railroad near the Suwannee River, 100 miles from Jacksonville. I at once dispatched General Turner (my chief of staff) to Jacksonville to stop the movement. He was the bearer of a letter to General Seymour (see Appendix Q). Upon arriving at Jacksonville, after considerable delay, due to the inclemency of the weather, he learned that General Seymour was engaged with the enemy in front, near Olustee.


AND in 1865

Headquarters, Department of South Carolina
Hilton Head, S.C. November 1, 1865

In the foregoing report of Brigadier-General Seymour he says he moved forward on February 20—

With the intention of advancing on Lake City, and, if successful, of destroying the railroad communications between East and West Florida at the Suwannee River, such being the general plan of operations upon which the occupation and control of East Florida had been founded.
In reference to the above statement I will say that General Seymour was never intrusted, and it never was my intention to intrust him with the execution of any general plan in Florida. I confided to him the objects I had in view in occupying East Florida, and the salient features of the plan by which I proposed to secure those objects. But he was never authorized to advance beyond the South Fork of the Saint Mary's River in my absence. On the contrary, he had plain and explicit instructions with regard to what was expected and required of him, and the ill-judged advance beyond the South Fork of the Saint Mary's River was in direct disregard of those instructions, and the disastrous battle of Olustee its legitimate fruit. General Seymour says, "But the disparity in numbers was too great, and the defense too obstinate to permit of decisive results" at the battle of Olustee. We now know since the close of the war that there was no "disparity in numbers," and we knew at the time that the "results" were a "decisive" defeat upon the field of battle and the frustration—as well by loss of men as by loss of prestige—of a well and carefully digested plan of campaign. General Finegan, who was in command of the enemy's forces, told two members of my staff (Capt. D. S. Leslie, One hundred and fourth U.S. Colored Troops, and Capt. Henry Seton, Fifty-fourth New York) that he had only about 5,000 men at that battle. General Seymour had 5,500 men. Our losses were 1,800 men in killed, wounded, and missing, 39 horses, and 6 pieces of artillery. Indeed, our forces appear to have been surprised into fighting, or attempting to fight, an offensive battle, in which the component parts of the command were beaten in detail. The enemy did not fight behind intrenchments or any kind of defenses.

Very respectfully, your obedient servant,



There are least two things to note:

1. Neither Gillmore nor Seymour had a plan to advance to Tallahassee. Gillmore ordered a concentration at Baldwin. Seymour disobeyed this, but only planned to go to the Suwannee River.

2. There is no discussion, in these documents, of the savage treatment of African-American troops.