Monday, September 30, 2019

CAFC addresses CBM in Sipco v. Emerson

The outcome:

We reverse the Board’s claim construction of “low
power transceiver” and its finding that the ’842 patent does
not satisfy the second part of the regulation defining “technological invention.” § 42.301(b). Because the Board did
not address the applicability of § 42.301(b)’s first part, we
vacate and remand for consideration consistent with this

Judge Reyna's partial dissent:

I respectfully dissent from the majority’s decision that
rejects the Board’s claim construction in favor of its own
construction. The record is clear in two respects. First, the
majority reaches its own construction by improperly reading a
functional limitation into the claim from a preferred
embodiment. Second, the Board’s construction rests on factual findings that are supported by substantial evidence,
including expert testimony on the meaning of the claim
term “low-power transceiver” to a person of ordinary skill
in the art. In the end, the majority does not explain why
the Board’s construction is so “clearly at odds with the
claim construction mandated by” the intrinsic record that
the extrinsic evidence on which the Board relied can be discounted entirely. Phillips v. AWH Corp., 415 F.3d 1303,
1318 (Fed. Cir. 2005). The majority explains only that it
prefers a different construction. Because the majority’s
opinion is contrary to basic tenants of claim construction
set forth in Phillips, and the deference owed to underlying
factual findings under Teva, I respectfully dissent.

Sunday, September 29, 2019

"Face the Nation" on the whistleblower/hearsay

Excerpts from "Face the Nation" on 29 September 2019:

SENATOR LINDSEY GRAHAM: --on the board being investigated for corruption and the guy doing the investigation is asked to be fired by Biden. I don't know what happened. It smells to high heaven. I never said the Mueller witch hunt-- the Mueller investigation was a witch hunt. I introduced legislation to protect Mueller.


SENATOR LINDSEY GRAHAM: This seems to me like a political setup. It's all hearsay. You can't get a parking ticket conviction based on hearsay. The whistleblower didn't hear the phone call.



Graham: I can't believe we're talking about impeaching the President based on an accusation based on hearsay. Who is this whistleblower? What bias do they have? Why did they pick this whistleblower to tell a hearsay story? The transcript does not match the complaint. What's going on here? Why did they change the rules about a whistleblower you can use hearsay when you could not just weeks before the complaint? So I think this thing stinks and let me tell you about Republicans--you want to know about Republicans?

SENATOR CHRIS MURPHY (D-Connecticut/@ChrisMurphyCT): Well, Republicans are circling the wagons because they know this isn't about hearsay evidence. This is about a transcript in which the President of the United States seeks to trade away the credibility of the country, seeks to use the immense power of the presidency in order to destroy a political rival. The whistleblower complaint is absolutely credible, but, frankly, you don't need it because you have a transcript of a conversation in which the President of the United States tried to convince a foreign leader to interfere in the 2020 election.


MARGARET BRENNAN: Mike, the whistleblower, as we've been reporting came from the intelligence community. And, yet, you have Republicans saying everything la-- laid out in that complaint was just hearsay. From the work you saw, that was then made public, does that look like it's based on just hearsay?

MICHAEL MORELL: So the whistleblower seems to me to be highly credible. Whistleblower made a number of allegations. We know that the first allegation that the phone call was made and the ask was made about investigating the vice president was one hundred percent correct. The whistleblower lays out not just the fact that they received this from one source but multiple sources. The whistleblower complaint is detailed. It's compelling. We still need to look into the other allegations but I think the whistleblower is highly credible.


--> As one patent case discussing hearsay, of possible relevance -->

Knorr v. Pearson, 671 F.2d 1368, 1372–73 (C.C.P.A. 1982),
the U.S. Court of Customs and Patent Appeals found that
a statement was not hearsay if “the communication (as
opposed to the truth) ha[d] legal significance.” Knorr
involved a telephone call, in which two co-inventors,
Buergin and Pearson, discussed an invention, and which
was overheard by a third party, Rutkowski. Id. at 1370.
The court held that Rutkowski’s testimony on what he
heard Buergin say to Pearson was not hearsay because
the communication of the idea had legal significance as
the basis for the conception of the invention
Id. at 1373-74. By contrast, Rutkowski’s testimony on “Buergin’s
statements to Rutkowski regarding what Pearson said”
was hearsay. Id. at 1373.

Link to November 2016 IPBiz post:

--> Also, of relevance to the rules change mentioned by Senator Graham -->

Saturday, September 21, 2019

Judge Newman's dissent in Mayo Foundation: ‘no deference is due to agency interpretations at odds with the plain language of the statute itself.’

The dissent of Judge Newman:

This appeal concerns calculation of the patent term adjustment (“PTA”) that is established
by statute to compensate for the patent life consumed by prolonged (over three
years) examination of the patent application. The aspect
on appeal relates to the period of ex parte examination conducted after termination of an interference and ending
with mailing of the notice of allowance. The district court,
affirming the United States Patent and Trademark Office
(“PTO”), held that this additional period of examination is
not subject to any term adjustment,1 and my colleagues
agree. This holding does not comport with the statutory
provisions and precedent, and is contrary to the purpose of
term adjustment. Mayo is correct that the calculation of
PTA includes the period of examination after termination
of the interference.
The panel majority holds that this post-interference examination period is
not included in the patent term adjustment, although it plainly is examination delay due to PTO
procedures. I respectfully dissent.

Of interest:

The PTO argues that this court should defer to the
PTO’s calculation of term adjustment. However, “it is elementary
that ‘no deference is due to agency interpretations
at odds with the plain language of the statute itself.’” Wyeth v. Kappos, 591 F.3d 1364,
1372 (Fed. Cir. 2010) (quoting
Smith v. City of Jackson, 544 U.S. 228, 267 (2005)). 37
C.F.R. § 1.703(b)(1) requires that the delay in examination
be requested by the applicant. “Where a statute’s language
carries a plain meaning, the duty of an administrative
agency is to follow its commands as written, not to supplant
those commands with others it may prefer.” SAS Inst., Inc.
v. Iancu, 138 S. Ct. 1348, 1355 (2018).

Federal case in Inspired Development vs. KidsEmbrace dismissed for lack of federal jurisdiction

The outcome:

Appellant Inspired Development Group, LLC (“Inspired Development”) sued Appellee Inspired Products
Group, LLC, d/b/a KidsEmbrace, LLC (“KidsEmbrace”) for
breach of contract and other related state law claims in federal district court
on the basis of diversity jurisdiction under 28 U.S.C. § 1332(a). The district court granted
summary judgment in KidsEmbrace’s favor on certain
claims and Inspired Development appealed to the U.S.
Court of Appeals for the Eleventh Circuit. After the Eleventh Circuit discovered
that diversity jurisdiction did not
exist, the district court concluded on remand that it retained jurisdiction over
the suit based on federal question
jurisdiction. The Eleventh Circuit transferred the case to
this court to determine whether the parties’ claims “aris[e]
under” the patent laws pursuant to 28 U.S.C. § 1338(a).
For the reasons below, we vacate and remand for dismissal
of the lawsuit for lack of jurisdiction.

Background law

“‘Federal courts are courts of limited jurisdiction,’ possessing ‘only that power authorized by Constitution and
statute.’” Gunn v. Minton, 568 U.S. 251, 256 (2013) (quoting Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S.
375, 377 (1994)). “Federal courts may hear only those cases
over which they have subject matter jurisdiction.” Semiconductor Energy Lab. Co. v. Nagata, 706 F.3d 1365, 1368
(Fed. Cir. 2013). Subject matter jurisdiction “may be based
upon either diversity of citizenship or federal question jurisdiction.” Id. at 1369.
“Where, as here, [the parties] do not claim diversity of
citizenship, there must be federal question jurisdiction.”
ExcelStor Tech., Inc. v. Papst Licensing GmbH & Co. KG,
541 F.3d 1373, 1375 (Fed. Cir. 2008). By statute, federal
district courts are authorized to exercise original jurisdiction in civil actions “arising under the Constitution, laws,
or treaties of the United States.” 28 U.S.C. § 1331. “Federal courts have exclusive jurisdiction over cases ‘arising
under any Act of Congress relating to patents.’” Gunn, 568
U.S. at 253 (quoting 28 U.S.C. § 1338(a)).

A masquerade theory?

Nonetheless, KidsEmbrace contends that Count III
was intended to be a “thinly disguised patent infringement
claim” simply “masquerading” as a claim for unjust enrichment.
Appellee’s Br. 27. KidsEmbrace’s arguments mischaracterize the pleadings. Count III pled a fallback
theory of relief sounding in quasi-contract in the event the
written contract was deemed unenforceable or not controlling. J.A. 99 ¶ 43;
see also Diamond “S” Dev. Corp. v. Mercantile Bank, 989 So. 2d 696, 697 (Fla. Dist. Ct. App. 2008)
(“Florida courts have held that a plaintiff cannot pursue a
quasi-contract claim for unjust enrichment if an express
contract exists concerning the same subject matter.”).
Count III cannot therefore reasonably be viewed as a freestanding claim for patent infringement. Rather, it was a
conditional claim for equitable relief under Florida law.
Accordingly, KidsEmbrace’s attempt to imply that Inspired
Development engineered a claim for patent infringement
under an alternative theory for unjust enrichment—which
would only be available if the written agreements were unenforceable—rings hollow. There is simply no support for
KidsEmbrace’s position.

More of the opinion is directed to an analysis
under Gunn v. Minton, 568 U.S. 251 (2013).

Trademark beef in Somerville, New Jersey over "Cheech's Own" coffee shop on Main Street

Koo Boo Banana Inc. filed a lawsuit against Bridgewater native Steven Chiocchi over
possible trademark infringement related to Chiocchi's "Cheech's Own" coffee shop.

See Patch post, 'Cheech' Sues Somerville Coffee Shop For Using His Name


September 22 marks the anniversary of the announcement of the Emancipation Proclamation

Tomorrow, September 22, marks the anniversary of the issuance of the Emancipation Proclamation, which took effect on January 1, 1863.  Following the Battle of Antietam, Abraham Lincoln called his cabinet into session on September 22, 1862 and issued the Preliminary Emancipation Proclamation.

A few footnotes.  

The Battle of Antietam was fought on September 17, 1862.  In between that battle and issuance of the Proclamation was the Battle of Shepherdstown.  On September 19, 1862, two Union regiments, the 1st U.S. Sharpshooters and the 4th Michigan, went across the Potomac River at Boteler's Ford. On September 20, 1862, Union General Porter  of V Corps sent two brigades across the Potomac and encountered troops of A.P. Hill.  The 118th Pennsylvania Regiment was attacked by four Confederate brigades and suffered 36% losses.  The Union forces retreated back to Maryland, and by September 22 it was clear that the Antietam campaign was over.  [General Porter was arrested and court-martialed on November 25, 1862 for his actions at Second Bull Run; in 1878, Porter was exonerated and in 1886 his sentence was commuted.]

At the time of Antietam and the Proclamation, the Congressional elections of 1862 were yet to occur.  An event, not given much attention in Civil War writings, was The Loyal War Governors' Conference which took place in Altoona, Pennsylvania, on September 24 and 25, 1862.  Governor Andrew Gregg Curtin of Pennsylvania sent out the invitation on September 6, 1862 [before the Battle of Antietam].  The governors prepared an address, supporting the war effort, which was delivered at the White House on September 26, 1862.  Non-attending governors  of VermontConnecticutKansasMinnesota, and Oregon all gave their approval of the document. but it was conspicuously declined by those (non-attending) of New YorkNew JerseyDelawareKentucky, and Missouri (and the attending governor of Maryland)

Tuesday, September 10, 2019

CAFC addresses antitrust issues in Intellectual Ventures v. Capital One. Intellectual Ventures wins.

Intellectual Ventures prevailed on the ANTITRUST component of the case:

However, the court subsequently
granted summary judgment against Capital One on all the
antitrust claims. Intellectual Ventures I LLC v. Capital
One Fin. Corp., 280 F. Supp. 3d 691 (D. Md. 2017). We

Of some details:

To begin with, the premise of Capital One’s argument
is wrong. The two issues on which Judge Trenga based his
dismissal order are not independent and alternative
grounds of decision, but are integrally related. Specifically,
the presence of a relevant antitrust market is critical both
to whether a relevant market has been identified and to
whether the defendant possesses monopoly power in a
relevant market. As Judge Trenga explained, the first
element of the offense of monopolization under section 2 of
the Sherman Act is “the possession of monopoly power in
the relevant market.” Trenga Op. at *4 (citing United
States v. Grinnell Corp., 384 U.S. 563, 570–71 (1966)). It
is artificial to divide that element into (1) the possession of
monopoly power and (2) a relevant market, because the
possession of monopoly power is meaningless without
reference to the market in which that power is exercised.
What Judge Trenga ruled was that Capital One failed
to plausibly allege a proper relevant antitrust market and
failed to plausibly allege that IV wields monopoly power
within that antitrust market. The requirement of a
relevant antitrust market is a necessary component of both
determinations; therefore, Judge Trenga’s finding that a
relevant antitrust market was not plausibly pleaded is
fatal to Capital One’s position on both issues. Judge
Trenga’s finding on the relevant market issue therefore
satisfied the requirement, for collateral estoppel purposes,
that an issue of fact decided in the prior proceeding be
critical and necessary to the judgment in that proceeding.

This analysis is supported by comment i and
illustration 16 in section 27 of the Second Restatement of
Judgments. The Second Restatement generally provides
that if a judgment of a court “is based on determinations of
two issues, either of which standing independently would
be sufficient to support the result, the judgment is not
conclusive with respect to either issue standing alone.”
Restatement (Second) of Judgments § 27 cmt. i (1982).
However, that general rule is subject to an express caveat
that if “the first action, even though decided on alternative
grounds, necessarily adjudicated the issue” in dispute in
the second action, the determination in the first action
would be conclusive in the second. Id. at cmt. i & illus. 16.3

This case fits that exception. Although Judge Trenga
separately concluded that Capital One had not proposed an
appropriate relevant market and that it had not plausibly
alleged that that IV wields unlawful monopoly power
within that market, both grounds required a showing of a
relevant antitrust market, and therefore Judge Trenga’s
decision “necessarily adjudicated the issue” of the
appropriate relevant market. Judge Grimm was therefore
correct in holding that Judge Trenga’s determination on
the relevant market issue in the Virginia case was
conclusive on that issue in the Maryland action.

Monday, September 09, 2019

PTAB decision vacated in Valspar

From the case:

Vacatur is an equitable remedy. Bancorp,
513 U.S. at 25. The Board’s interpretation of our mandate
produced an inequitable result. The ordered vacatur was
designed to protect the challenger from being forced to acquiesce to an unreviewable adverse ruling by the Board.
But by effectively canceling all the challenged claims, the
Board’s approach unfairly converted the vacatur shield
into a sword for the challenger. That is an inequitable result—especially
here, where the Board previously determined that the challenged claims are not invalid.

Had we intended such an incongruous result, we would
have made that intent explicit in our opinion. The Board
should have interpreted the scope of the vacatur based on
the context provided by this court’s opinion. See Laitram,
115 F.3d at 952 (consulting opinion to ascertain intended
effect of mandate). Our opinion did not meaningfully distinguish between the Board’s decisions and the examiner’s
decisions. Neither party asked this court for the relief the
Board understood this court to have granted. Furthermore, the cases cited in this court’s opinion and by the parties stand for the proposition of vacating the whole case
below, not a piecemeal approach. See, e.g., Bancorp,
513 U.S. at 21. With this context, it was clear that this
court’s intent was to nullify the entire inter partes reexamination without any collateral effect on other litigation. See
Munsingwear, 340 U.S. at 41 (endorsing procedure that
prevents “a judgment, unreviewable because of mootness,
from spawning any legal consequences”).
PPG argues that had we intended to vacate the entire
Patent Office proceeding, we would have had to “vacate the
judgment below and remand with a direction to dismiss,”
as the Supreme Court stated in Munsingwear.
See id. at 39. We do not agree. See Bancorp, 513 U.S. at 22
(“[V]acatur ‘clears the path for future relitigation of the issues between the parties and eliminates a judgment.’” (emphasis added) (quoting Munsingwear, 340 U.S. at 40));
Laitram, 115 F.3d at 951 (“[W]hile this court could have remanded with explicit instructions . . . the failure to do so is
not dispositive.”). Other appellate courts have used similar
language to ours to dispose of the entire proceeding without

In re Greenstein: merely having a successful new product is not enough to overcome 101

from the decision:

Mr. Greenstein argues that the limitation “utiliz[ing] a
projected amount of income at a future date for at least one
person” provides the requisite inventive concept. He contends
this limitation was the basis for the successful commercial launch of a new product, demonstrating its
material advantages to persons in the relevant market.
Mr. Greenstein’s contentions are unavailing.
Even if Mr. Greenstein is correct that the claimed utilization of a projected future income was the basis for a
commercially successful product, this is insufficient to
transform the claims into a patent-eligible application. It
is well-settled that a claimed invention’s “use of the ineligible concept
to which it is directed cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea.”).

Burt/Northwestern stem cell/MS program no longer taking new patients

In a story titled Northwestern University Stem Cell Therapy Clinic Closes Abruptly , The Scientist reports that
Northwestern Medicine’s immunotherapy and autoimmune diseases program is no longer accepting new patients. The program was testing hematopoietic stem cell transplantations (HSCT) for treatment of multiple sclerosis (MS).

Included within the article is the text:

Some in the field question why the program can’t continue without him [Burt].
“If his program is so successful, [why] it should suddenly stop if he’s not there
is a little bizarre,” remarks Mark Freedman, a neurologist who directs a
research division focused on multiple sclerosis at Ottawa Hospital.
Burt and Northwestern did not say why the program could not continue without him.

See also

Monday, September 02, 2019

September 2 is the anniversary of the fall of Atlanta during the Civil War

On September 2, 1864, the mayor of Atlanta surrendered the city to Union forces, with the Confederate troops under General Hood having withdrawn without a fight. Two years earlier, Confederate troops under General Heth had made a feint to Cincinnati, but withdrew without a fight, leaving Cincinnati intact.

There are probably a lot more people who remember the taking of Atlanta in 1864 than the demonstration in front of Cincinnati in 1862, probably informed in part by the current relative sizes of the cities.

However, the census of 1860 tells a different story of relative importance at the time. Cincinnati, of population 161,044 and the seventh largest US city, was only slightly smaller than New Orleans ( 168,675 ) , which was the most populated city in the Confederacy. Covington, KY, across the Ohio River from Cincinnati had a population of 16,471. In contrast, Atlanta of population 9,554 was only the 99th most populated city in the US, and smaller in size than, for example, New Brunswick or Hoboken, New Jersey.

Atlanta was a rail center, but Savannah ( 22,292 ) had more people, but only slightly larger than Salem, Massachusetts (22,252 ).

Sunday, September 01, 2019

September 1 is the anniversary of the Confederate Heartland demonstration at Cincinnati

Confederate Edmund Kirby Smith (later of the Confederate Trans-Mississippi) ordered Henry Heth (later to start the battle at Gettysburg, supposedly ordering men to look for shoes) to make a demonstration threatening Cincinnati. Union General Horatio Wright ordered Lew Wallace to protect Cincinnati. The Confederate campaign began on September 1, 1862, and was unsuccessful.

Horatio Wright (leading the VI Corps of the Army of the Potomac) and Lew Wallace (leading Union forces at the Monocacy) would later combine to defend Washington DC against the attack of Jubal Early in 1864.

Plans had been made to build a suspension bridge across the Ohio, with the work to be done by the Roeblings of Trenton, New Jersey. The military threat posed by Heth caused the construction of a pontoon bridge across the Ohio near the unfinished Roebling Bridge.

Prior to Roeblings' work on the Brooklyn Bridge, the Cincinnati Bridge (opened in 1867) was the longest suspension bridge in the world. Coincidentally, Horatio Wright was involved in work on the Brooklyn Bridge.

One of the early objections to the Cincinnati Bridge was that it would facilitate escape of enslaved African Americans from Kentucky.

As to the "shoes," troops under Ewell's Second Corps had likely cleaned out Gettysburg, and were preparing to attack Harrisburg, until recalled by Lee. There was a clash between Union and Confederate troops near Camp Hill, PA, which may be northern-most organized battle of the Civil War.