Thursday, October 31, 2019

ED Texas rules in favor of US Automobile Association over Wells Fargo in denying SJ via 35 USC 101

A district court (ED Texas) determined, in denying a motion for summary judgment, that claims of U.S. Patent Nos. 8,977,571 (the “’571 Patent”) and 9,818,090, were not patent ineligible under 35 USC 101.

Yes, Berkheimer and Exergen were cited:

“[t]he question of whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in the relevant field is a
question of fact” that must be “proven by clear and convincing evidence.” Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).

Something is not necessarily well-understood, routine, and conventional simply because it
is disclosed in a prior art reference. Exergen Corp. v. KAZ USA, Inc., 725 F. App’x 959, 965–66
(Fed. Cir. 2018).
There are many obscure references that may qualify as prior art but are
insufficient to establish something is a “well-understood, routine, and conventional activity
previously engaged in by scientists who work in the field.” Mayo, 566 U.S. at 79. Accordingly,
determining “[w]hether a particular technology is well-understood, routine, and conventional goes
beyond” simply examining “what was simply known in the prior art.” Berkheimer, 881 F.3d at

Additionally, specific improvements described in a patent specification, “to the extent they
are captured in the claims, create a factual dispute regarding whether the invention describes well understood,
routine, and conventional activities.” Berkheimer, 881 F.3d at 1369. However,
“[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed
combination is well-understood, routine, conventional to a skilled artisan in the relevant field,
[patent eligibility] can be decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d
at 1368.


Alternatively and independently, the Court finds that even if the Asserted Claims were
directed at an abstract concept, a genuine dispute of fact would exist as to whether the claim
elements individually or as an ordered combination were “well-understood, routine, and
conventional to a skilled artisan in the relevant field.” Berkheimer, 881 F.3d at 1368. Such a factual
dispute precludes summary judgment.

See IPBiz post

The USPTO and the Berkheimer memo

Patent fight over hair color

The fight is over hair color:

Plaintiff-appellant Metricolor LLC sued defendantsappellees L’Oréal S.A.,
L’Oréal USA, Inc., L’Oréal USA
Products, Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC, LLC
(collectively, “L’Oréal” or “L’Oréal defendants”) in the United States District Court for the Central
District of California alleging various claims related to the
launch of two L’Oréal hair bonding products that allegedly
resemble the hair coloring system claimed in Metricolor’s
patent, U.S. Patent No. 9,301,587 (’587 patent).

There was a vacate and remand:

Because the district court did not address Metricolor’s
request for leave to amend the complaint, much less conduct an
analysis of whether any amendment would have
been futile, we vacate the district court’s grant of L’Oréal’s
Rule 12(b)(6) motion and remand for the district court to
address Metricolor’s request for leave in the first instance.

The CAFC gets into the "abuse of discretion" standard:

Though the “grant or denial of an opportunity to amend is within the
discretion of the [d]istrict [c]ourt,” “outright refusal to
grant the leave without any justifying reason appearing for
the denial is not an exercise of discretion.”

Merely taking an action, without justifying the action with a reason,
is an abuse of discretion.

Relevant to a recent NCIS: New Orleans episode (Spies and Lies) note the

We also agree with the district court that the complaint
failed to sufficiently plead any of Metricolor’s non-patent
claims of breach of contract, breach of confidence, federal
trade secret theft, and unfair competition under state law.
As the district court correctly found, the complaint did not
sufficiently allege any misuse of confidential information
beyond what was already disclosed in the published ’587
patent application

You can't "steal" information in a patent or published application.

Wednesday, October 30, 2019

CAFC analyzes copying in Liqwd case

The outcome in Liqwd:

Liqwd, Inc., appeals from a decision by the Patent Trial
and Appeal Board that certain claims in its patent on formulations and methods of
keratin treatment are unpatentable as obvious. In its obviousness analysis, based on
evidence presented by Liqwd, the Board found that L’Oreal
USA, Inc., used Liqwd’s confidential information and copied Liqwd’s patented method. But the Board disregarded
its factual finding when concluding that the copying involved was legally irrelevant. Because that conclusion was
error, we vacate the Board’s obviousness determination
and remand. We agree with the other appealed aspects of
the Board’s final written decision.

An issue

Liqwd argues that the Board erred by ruling that
L’Oreal’s copying of Liqwd’s unpublished ’885 patent application
“did not qualify as an objective indicium of nonobviousness” despite the Board’s factual finding that “[L’Oreal]
used maleic acid because of [L’Oreal’s] access to [Liqwd’s]
non-public information, rather than because of
[L’Oreal’s] . . . independent development.” Appellant
Br. 27 (quoting J.A. 45). L’Oreal responds and relies on
Iron Grip Barbell in arguing that Liqwd did not show replication of any specific
product embodying the claimed invention, so there is no evidence of copying by L’Oreal.
Appellee Br. 37–40. We therefore review whether the
Board erred in determining that L’Oreal’s “development of
its products due to access to non-public information about
[Liqwd’s] patent application” was not “copying of the type
that is relevant to the question of obviousness of the
challenged claims of the ’419 patent” on the basis that the
evidence did not show L’Oreal copied a specific product.
J.A. 45–46. We conclude this was error.
This court has consistently held that objective indicia
“‘may often be the most probative and cogent evidence’ of
nonobviousness.” Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000) (quoting
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983)). Objective indicia are essential safeguards that protect
against hindsight bias. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012). The objective
indicia analysis is, therefore, a fundamental part of the
overall § 103 obviousness inquiry. See W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983).
As a result, the Board must consider all such evidence of
objective indicia and determine the weight to give it “en
route to a determination of obviousness.” Stratoflex, Inc.
713 F.2d at 1538.
It is well established that copying by a competitor is a
relevant consideration in the objective indicia analysis.
Iron Grip Barbell, 392 F.3d at 1325. Such copying may be
evidence that the patented invention is nonobvious. Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir.
1984). “Copying requires duplication of features of the patentee’s work
based on access to that work, lest all infringement be mistakenly treated as copying.” Institut Pasteur
& Universite Pierre Et Marie Curie v. Focarino, 738 F.3d
1337, 1347–48 (Fed. Cir. 2013). Evidence of copying may
include internal documents, direct evidence such as photos
of patented features or disassembly of products, or access
and similarity to a patented product. Iron Grip Barbell,
392 F.3d at 1325.


Other cases following Iron Grip Barbell have also emphasized that similarities between an issued patent and an
accused product do not, on their own, establish copying. In
Wyers v. Master Lock Co., we held that the patent owner
failed to establish copying despite its argument that “competitors’ copying and marketing of convertible shank hitch
pin locks shortly after the invention’s existence became
known supports a finding of nonobviousness.” 616 F.3d
1231, 1245–46 (Fed. Cir. 2010) (citing Iron Grip Barbell,
392 F.3d at 1325). We again distinguished between infringement and copying, reasoning that “[n]ot every competing product that arguably falls within the scope of a
patent is evidence of copying; otherwise, ‘every infringement suit would automatically confirm the nonobviousness
of the patent.’” Id. at 1246 (quoting Iron Grip Barbell, 392
F.3d at 1325). In Tokai Corp. v. Easton Enterprises, Inc.,
although we restated that “[c]opying requires evidence of
efforts to replicate a specific product,” we emphasized the
vital difference between infringement and copying. 632
F.3d 1358, 1370 (Fed. Cir. 2011) (quoting Wyers, 616 F.3d
at 1246).

Bottom line:

We therefore vacate the Board’s obviousness determination and remand the case for the Board to consider this
evidence in its obviousness analysis. See Knoll Pharm. Co.
v. Teva Pharms. USA, Inc., 367 F.3d 1381, 1385 (Fed. Cir.
2004) (“The so-called ‘objective’ criteria must always be
considered and given whatever weight is warranted by the
evidence presented.” (internal citation omitted));
Stratoflex, Inc. 713 F.2d 1530, 1539 (Fed. Cir. 1983) (the
obviousness analysis requires that “all pieces of evidence
on that issue have been fully considered and each has been
given its appropriate weight”).

Judge Newman in dissent in Idenix: "The jury verdict of validity under section 112 is in accordance with law and supported by substantial evidence. "

The outcome of Idenix v. Gilead:

Idenix Pharmaceuticals LLC and Universita Degli
Studi Di Cagliari (collectively, “Idenix”) appeal from the
decision of the U.S. District Court for the District of
Delaware granting judgment as a matter of law (“JMOL”)
against Idenix and finding that U.S. Patent No. 7,608,597
is invalid for lack of enablement. Idenix Pharm. LLC v.
Gilead Scis., Inc., 2018 WL 922125, at *25 (D. Del. Feb. 16,
2018) (“JMOL Opinion”). Gilead Sciences Inc., (“Gilead”)
argues that the patent is also invalid for failure to meet the
written description requirement, and that the district court
erred by failing to grant JMOL on that ground as well. We
affirm as to non-enablement and hold that the patent is
also invalid for lack of written description.

Judge Newman dissented:

I respectfully dissent. The court errs in holding that
the specific narrow claims of the ’597 patent are invalid.
The large number of unclaimed chemical variants in the
specification are not described, not synthesized, and not
tested for antiviral activity. It is incorrect to include these
variants in the claims and then to invalidate the claims because
these variants are not described and not enabled.


reasonable jury could have understood the claims as directed to the nucleosides that are specifically described and
that are shown to have the claimed antiviral activity. A
reasonable jury could have credited the evidence that the
’597 claims are for these specific compounds, not the “billions and billions” of unsynthesized and
unevaluated variants in the specification. It is not disputed that the specific
claimed compounds meet the requirements of 35 U.S.C.
§ 112. The jury verdict of validity must be viewed in light
of the evidence and argument before the jury.
The majority’s holding that validity under section 112
is determined based on whether unclaimed subject matter
is described and enabled, provides a new path of uncertainty and unreliability of the patent grant. I respectfully

The claims define the scope of the invention.
Judge Newman wrote:

My colleagues err in ruling that the claims cover “billions” of variants. The ’597 specification recites a very
large number of substituents for nucleosides that are not
synthesized, not characterized, not evaluated, and not included in the claims. Some of these variants have been
claimed in other patents and applications.1 However, they
are not claimed in the ’597 patent.
My colleagues err in
holding that because other substituents and modifications


The panel majority now discards the jury verdict, stating “the jury was not free to adopt a number lower than the
many, many thousands of configurations identified as
‘principal embodiment[s]’ in the patent itself.” Maj. Op.
at 12 (alteration in original). However, the jury was not
free to adopt an incorrect view of the patent, for almost all
of the embodiments that the specification calls “principal
embodiments” are for Formulas for which no synthesis and
no evaluation data are provided in the ’597 specification.

The patent quality debate re-arising???

Within a post by David W. Jones at The Hill:

Now, patent quality rarely gets the attention it deserves, so Sen. Thom Tillis (R-N.C.) should be commended for addressing it at a hearing this week. It’s the high-tech industry's hope that the hearing makes clear that instead of lowering the bar, we need to apply existing standards more rigorously to improve patent quality.

What is “quality?” It’s simple: Good patents satisfy the requirements of the Patent Act – that the invention be new, disclosed with specificity and clarity, and appropriate subject matter. Bad patents do not and were erroneously issued by the Patent and Trademark Office (PTO).


**Patent quality. "It's simple" ???

Second anniversary of Ingraham/Kelly interview: Robert E. Lee was an honorable man

Two years ago, on October 30, 2017, Laura Ingraham had her debut program with guest, (then) White House Chief of Staff John F. Kelly.
As to the debate over the presence/removal of Confederate monuments, Kelly said:

I think it’s just very, very dangerous and it shows you what, how much of a lack of appreciation of history and what history is. I will tell you that [Confederate general and commander] Robert E. Lee was an honorable man. He was a man that gave up . . . his country to fight for his state, which in 150 years ago was more important than country. It was always loyalty to state first back in those days. Now it’s different today. But the lack of an ability to compromise led to the Civil War, and men and women of good faith on both sides made their stand where their conscience had them make their stand.

There were issues about calling Lee "an honorable man" and with the "lack of ability to compromise" leading to the Civil War.

It is true that "150 years ago [loyalty to state] was more important than country ]to some]." It was so for Robert E. Lee. Lee went with his state when Virginia seceded. Curiously, Lee's loyalty to Virginia came to be adverse to the Confederacy, when Confederate leaders proposed sending some of Lee's troops to the defense of Vicksburg in early 1863. Lee fought this proposal, arguing that attacking Pennsylvania would free up Virginia farmers to get their crops in. Lee valued Virginia over Vicksburg and the Confederate West.

As to compromise, the firebrands of the South started the Civil War. Lincoln, and other Northern politicians, tried all sorts of compromises. Note that Senator William H. Seward and Representative Thomas Corwin introduced the "Corwin Amendment."

As to Ingraham/Kelly:

Separately, this is roughly the fourth anniversary of the confrontation arose between Yale University students and faculty Head of College, Nicholas A. Christakis over an issue about Halloween costumes

As to snowflakes:

As a piece of trivia, the term "snowflake" was used in Civil War era Missouri.

Tuesday, October 29, 2019

The CAFC discusses "wherein" clauses in Alere v. Rembrandt

The outcome of Alere v. Rembrandt:

Alere, Inc., appeals from a final written decision of the
Patent Trial and Appeal Board in an inter partes review
proceeding, upholding certain challenged claims as not unpatentable.
We conclude that the Board correctly construed the disputed “wherein” clause in claim 1 and affirm
that limited portion of the Board’s final written decision.
Because the Board improperly declined to institute review
on certain claims and grounds included in Alere’s petition
and its final written decision did not address those claims
and grounds, we vacate the remaining aspects of the final
written decision and remand for further proceedings.

The judicial standards:

The Administrative Procedure Act (“APA”) at 5 U.S.C.
§ 706(2) guides our review of Board decisions. Dickinson v.
Zurko, 527 U.S. 150, 152, 165 (1999). Under the APA, we
review the Board’s legal determinations de novo and its factual findings
for substantial evidence. ACCO Brands Corp.
v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). As
such, we review the Board’s ultimate determinations on
claim construction de novo and any subsidiary factual findings for substantial evidence.
HTC Corp. v. Cellular
Commc’ns Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir.

As to the "wherein" clause:

We start with the plain language of the claim.1 Phillips
v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). The
disputed “wherein” clause is found in claim 1 and states:
wherein the flow control channel is disposed inside
the sample fluid container with the liquid pervious
side oriented toward the base of the sample fluid
container so that the assay sample fluid, when
added to the container, is delivered to the sample
loading zone of the assay test strip by entry through
a liquid pervious side of the flow control channel
without migration through an intermediate structure . . . .
’019 patent col. 8 ll. 57–64 (emphases added). This clause
includes functional language that informs us of the structural requirements
of the claim. K-2 Corp. v. Salomon S.A.,
191 F.3d 1356, 1363 (Fed. Cir. 1999). The most natural
reading of this claim language shows a functional limitation that simply
requires that in the claimed device, when
the flow control channel is in place (i.e., “disposed inside
the . . . container”), fluid can be “added to the container”
and “delivered to” the loading zone of the assay test strip
without migration through another structure. In other
words, when (1) the flow control channel is in place and (2)
fluid is added to the container, then the fluid is delivered
to the loading zone.


Nothing in the claim language excludes a container
that contains fluid before the flow control channel is disposed inside or imports a temporal limitation on when fluid
must be introduced into the container. As the Board
pointed out, the claim recites a device, not a method—an
important distinction. See IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Thus,
the claim language does not create a process limitation.

Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (stating that “apparatus claims
cover what a device is, not what a device does”). That the
written description includes examples of embodiments
where the flow control channel is placed into fluid already
in the container does not mean that the device disclosed is
incapable of allowing the addition of fluid after the flow
control channel is “disposed inside.” Further, there are no
embodiments that disclose devices without that capability.
Accordingly, nothing in the specification is inconsistent
with the requirement of being able to add fluid to the container once the flow control channel is placed inside.
The Board correctly construed the wherein clause as
creating a functional limitation for structural relationships
of the device. Accordingly, we agree with the Board’s construction of the “wherein” clause found in claim 1(c) as
“requir[ing] a structure that is capable of allowing liquid to
enter the container when the flow control channel is disposed therein and capable of directing this liquid to the
sample loading zone of the assay test strip without the liquid having to migrate through an intermediate structure.”

As to the remand issue:

The parties agree that Alere is entitled to remand under SAS Institute, Inc. v. Iancu, ––– U.S. ––––, 138 S.Ct.
1348, 200 L.Ed.2d 695 (2018) in order for the Board to consider the non-instituted claims and grounds in the petition.
The parties dispute whether we should first reach the merits of the unpatentability challenges for the instituted
claims and grounds. We have previously declined parties’
invitations to address the merits of instituted claims and
grounds before remanding partially instituted proceedings,
recognizing that, “[a]ppellate courts have historically disfavored piecemeal litigation and permitted appeals from
complete and final judgments only.” BioDelivery Scis. Int’l,
Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 1210
(Fed. Cir. 2018) (quoting W.L. Gore & Assocs., Inc. v. Int’l
Med. Prosthetics Research Assocs., Inc., 975 F.2d 858, 861
(Fed. Cir. 1992)). Other panels of this court, however, have
taken a different approach, addressing the merits of the instituted claims and grounds and then remanding for the
Board to consider the non-instituted claims and grounds.
E.g., Medtronic, Inc. v. Barry, 891 F.3d 1368, 1371 n.1 (Fed.
Cir. 2018).
We conclude that the better course of action in this case
is to remand without addressing the merits of the patentability challenges. Here, there are both non-instituted
claims and non-instituted grounds. As Alere points out,
the Board did not institute review on the same claims at
issue in this appeal for four other challenges included in
the petition. The likelihood of having to review the Board’s
patentability determinations for some of the same claims
for different grounds after the Board considers all claims
and grounds included in the petition weighs in favor of
awaiting a “complete and final” decision without further
addressing the merits.

Monday, October 28, 2019

Patent fight in California wine country

The Napa Valley Register discusses a patent infringement suit brought by Paul Skinner against Gallo.

Within the article, one finds text along the lines of "stealing credit" for the invention:

The complaint also alleges that Gallo went on to publish “papers and articles” about the technology. Gallo has a few papers and presentations concerning VRDI available on the internet, including a presentation given by one of its research scientists in 2017 at the California Plant and Soil Conference and a conference paper partially authored by two of its employees the same year. Skinner alleges the wine distributor as “taking credit for and championing” the benefits of his inventions.

link: St. Helena inventor, vineyard consultant, sues Gallo Winery for patent infringement

Sunday, October 27, 2019

Another Civil War book

The Civil War book "Hymns of the Republic" becomes available October 29, 2019.

Of the book:

Now, S.C. Gwynne’s Hymns of the Republic addresses the time Ulysses S. Grant arrives to take command of all Union armies in March 1864 to the
surrender of Robert E. Lee at Appomattox a year later. Gwynne breathes new life into the epic battle between Lee and Grant; the advent of 180,000 black soldiers
in the Union army; William Tecumseh Sherman’s March to the Sea; the rise of Clara Barton; the election of 1864 (which Lincoln nearly lost); the wild and
violent guerrilla war in Missouri; and the dramatic final events of the war, including the surrender at Appomattox and the murder of Abraham Lincoln.


History News Network has comments by the author:

At the beginning of the war’s last year, Ulysses S. Grant had taken charge of the Union armies and particularly of the Army of the Potomac,
whose mission was to destroy Lee. To the dismay of people in the North, Grant utterly failed to do that. Sixty-five thousand Union casualties
in 2 months in Virginia testified to that. Lee would not be beaten. And so the war dragged on.

But Lee’s—and the South’s—ability to survive came at a ghastly price. The more Lee won—or at least did not lose—the more the South itself was destroyed.
Survival meant destruction. This is the Lee Paradox. The collapsing Confederacy was steadily taking down everything and everyone with it.
Two-thirds of all Southern wealth had vanished, along with 40 percent of its livestock, half of its farm machinery, and 25 percent of all white men between the ages of 25 and 40.

The worst part of Lee’s success was the hard war against civilians that it unleashed in the form of devastatingly destructive marches by Union generals William Tecumseh Sherman and Philip Sheridan. Their targets were not armies. After the fall of Atlanta in September 1864, Sherman was not much interested in armies. He wanted to break the South’s unbreakable will, and so the war was conducted mostly against civilians and their assets. Sherman’s march through Georgia in the fall of 1864 was horrendously destructive of all productive assets, from cotton gins to crops and barns and railroads. It was exceeded in destruction and horror only by what Sherman’s army did in South Carolina, which made the march to the sea in Georgia seem almost kindly by comparison. In the Shenandoah Valley that same fall, Phil Sheridan’s troopers fanned out behind his infantry and burned everything they could get their hands on except, technically, houses, though they burned plenty of those, too. Sheridan’s burning campaign also gave impetus to a brutal guerrilla war in Virginia, in which commanders like John Singleton Mosby and George Armstrong Custer engaged in retaliatory killings of captive soldiers. This was bitterness on a scale unseen in the war.

Enhancing this turn into hatred was the presence, in the Union army, of 180,000 black troops, 10 percent of the entire Union army, more than 60 percent of whom had recently been slaves. Confederate soldiers hated them with a passion, targeting them for slaughter in battles and giving them no quarter when captured.


Perhaps not lost on Robert E. Lee—this was the final irony of the Paradox—was the fact that he was personally ruined by his own success. By the end of the war he had lost his family’s three large estates—including Arlington House (where Arlington National Cemetery is today)—all of his productive assets(including the people he once enslaved), and all of his personal money and investments. While he and the Army of Northern Virginia fought hard to the end, his shattered family became refugees, virtual paupers.


At the moment, IPBiz does not have access to the book itself. However, as to the remarks on "history news network," one recalls Lee's arguments to Confederate politicians to justify the Gettysburg campaign, which fairly outlined the fate of the Confederacy described in "Lee's Paradox." That is, "Lee's Paradox" was not a paradox to Robert E. Lee, but was quite foreseeable.

Separately, as to NOT targeting armies, the attack on Corinth, and later Vicksburg campaign, of Grant, with Sherman, did not target armies, but rather targeted strategic points. The Confederacy did not respond with a unified strategy: Davis wanted Vicksburg held; Johnston did not. Pemberton's army was captured because it remained in Vicksburg, not because it was the actual target.

One can find a discussion of Lee's views, circa spring 1863, at PadreSteve's
The Failure to Link Grand-Strategy and Operational Objectives: Robert E. Lee and the Decision to Invade Pennsylvania 1863 .

Some relevant text from PadreSteve:

In early May 1863 Lee, commanding the Army of Northern Virginia realized that the Confederacy was in desperate straits. Despite numerous victories against heavy odds, Lee knew that time was running out. Though he had beaten the Army of the Potomac under General Joseph Hooker at Chancellorsville, he had not destroyed it and Hooker’s Army, along with a smaller force commanded by General Dix in Hampton Roads still threatened Richmond.


Lee’s Chief of Staff Colonel Charles Marshall crafted a series of courses of action for Lee designed to present the invasion option as the only feasible alternative for the Confederacy. Lee’s presentation was an “either or” proposal. He gave short shrift to any possibility of reinforcing Vicksburg and explained “to my mind, it resolved itself into a choice of one of two things: either to retire to Richmond and stand a siege, which must ultimately end in surrender, or to invade Pennsylvania.” [20] As any military planner knows the presentation of courses of action designed to lead listeners to the course of action that a commander prefers by ignoring the risks of such action, downplaying other courses of action is disingenuous. In effect Lee was asking Davis and his cabinet to “choose between certain defeat and possibly victory” [21] while blatantly ignoring other courses of action or playing down very real threats.


Lee was convinced that ultimate victory could only be achieved by decisively defeating and destroying Federal military might in the East. His letters are full of references to crush, defeat or destroy Union forces opposing him. His strategy of the offensive was demonstrated on numerous occasions in 1862 and early 1863, however in the long term, the strategy of the offensive was unfeasible and counterproductive to Southern strategy. Lee’s offensive operations always cost his Army dearly in the one commodity that the South could not replace, nor keep pace with its Northern adversary, his men. His realism about that subject was shown after he began his offensive when he wrote Davis about how time was not on the side of the Confederacy. He wrote: “We should not therefore conceal from ourselves that our resources in men are constantly diminishing, and the disproportion in this respect…is steadily augmenting.” [31]


Lee had to know from experience that even in victory “the Gettysburg campaign was bound to result in heavy Confederate casualties…limit his army’s capacity to maneuver…and to increase the risk of his being driven into a siege in the Richmond defenses.” [34] The fact that the campaign did exactly that demonstrates both the unsoundness of the campaign and is ironic, for Lee had repeatedly said in the lead up to the offensive in his meetings with Davis, Seddon and the cabinet that “a siege would be fatal to his army” [35] and “which must ultimately end in surrender.” [36]

References of PadreSteve:

[31] Taylor, John M. Duty Faithfully Performed: Robert E Lee and His CriticsBrassey’s, Dulles VA 1999 p.134

[32] Gallagher, Gary W. The Confederate War: How Popular Will, Nationalism and Military Strategy Could not Stave Off Defeat Harvard University Press, Cambridge MA and London 1999 p.120

[33] Alexander, Edward Porter. Fighting for the Confederacy: The Personal Recollections of General Edward Porter Alexander, ed. Gary W. Gallagher, University of North Carolina Press, Chapel Hill NC, 1989 p.415

[34] Ibid. NolanR. E. Lee and July 1 at Gettysburg in the First Day at Gettysburg p.11

[35] Ibid. NolanR. E. Lee and July 1 at Gettysburg in the First Day at Gettysburg p.11

[36] Ibid. Foote The Civil War, A Narrative. Volume Two Fredericksburg to Meridian p.431

***Just to connect the dots, Lee argued "for" the Gettysburg campaign because Lee felt that defensive victories, such as the recent success at Chancellorsville, would lead only to a draining war, which Lee knew the
South would lose. There was absolutely no "Lee Paradox" as to Lee. Further, after the failure at Gettysburg of Lee's army, Lee definitely foresaw the inevitable outcome, which would deplete Southern resources.

Wednesday, October 23, 2019

Wilson loses appeal to CAFC. No judicial estoppel here.

The outcome

John R. Wilson appeals from a decision of the Patent
Trial and Appeal Board in an interference proceeding finding certain claims
of U.S Patent No. 8,809,044 unpatentable as anticipated or obvious. Because substantial evidence
supports the Board’s finding that the prior art discloses the
claimed “ambient gas” limitation, and the Board did not
abuse its discretion by refusing to apply judicial estoppel,
we affirm.

As to judicial estoppel:

The doctrine of judicial estoppel provides that “where a
party successfully urges a particular position in a legal proceeding, it is estopped
from taking a contrary position in a
subsequent proceeding where its interests have changed.”
Data Gen. Corp. v. Johnson, 78 F.3d 1556, 1565 (Fed. Cir.
1996) (citing Davis v. Wakelee, 156 U.S. 680, 689 (1895)).
The Board has authority and discretion to apply the doctrine of judicial estoppel.
Id.; see New Hampshire v. Maine,
532 U.S. 742, 750 (2001) (“[J]udicial estoppel is an equitable doctrine invoked by a court at its discretion.”
quotation marks omitted)). To decide whether to apply judicial estoppel, courts typically consider several factors,
including (1) whether a party’s later position is “clearly
inconsistent” with its earlier position; (2) whether a court
has accepted the party’s prior position, such that accepting
its “inconsistent position in a later proceeding would create
the perception that either the first or the second court was
misled”; and (3) whether the party changing its position
“would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.”
New Hampshire, 532 U.S. at 751 (internal quotation marks and
citations omitted). “Additional considerations may inform
the doctrine’s application in specific factual contexts.” Id.
We review the Board’s refusal to apply the doctrine for
abuse of discretion. Id. The Board abuses its discretion
when it makes “a clear error of judgment in weighing the
relevant factors” or bases its decision “on an error of law or
clearly erroneous factual findings.” ArcelorMittal Atlantique et Lorraine v. AK Steel Corp., 908 F.3d 1267, 1277
(Fed. Cir. 2018).
Wilson argues on appeal that the Board abused its discretion by refusing to judicially estop Martin from arguing
that Toner discloses the “ambient gas” limitation. Wilson
contends that application of the judicial estoppel doctrine
was warranted in this case because during prior prosecution of a parent application to the ’267 application,
Corning, the real party in interest behind Martin, made
statements that allegedly are inconsistent with Martin’s
position in this case. Specifically, Wilson points to Corning’s response to a non-final rejection of its prior application,
in which Corning stated that “Toner discloses a ‘closed
oxygen chamber’” that permits “users [to] ‘control and manipulate’ the gas delivered to the device,” and argues that
a closed oxygen chamber cannot be open to “ambient gas.”
Appellant’s Br. 19. Wilson further asserts that accepting
Martin’s current position that Toner discloses “ambient
gas” would lead to the perception that “either the patent
examiner or the Board was misled,” and would provide an
unfair advantage to Corning. Appellant’s Br. 24 (capitalization removed). We disagree for two reasons.

Google loses appeal at CAFC

The outcome:

Google appeals from the final written decision of the
United States Patent and Trademark Office Patent Trial
and Appeal Board (Board) in the above-captioned inter
partes review proceeding. The Board found that petitionerappellant
Google failed to meet its burden of establishing
that challenged claims 10–16, 20, and 21 of U.S. Patent No.
6,772,114 (the ’114 patent) are unpatentable on either of
two grounds: (1) anticipation by Patent Cooperation Treaty
(PCT) International Application Publication No. 98/52187
(Tucker), or (2) obviousness over Tucker in view of wellknown art.
We agree with the Board as to both grounds
and therefore affirm.

As to anticipation:

Anticipation is a question of fact reviewed for substantial evidence.
Synopsys, Inc. v. Mentor Graphics Corp., 814
F.3d 1309, 1317 (Fed. Cir. 2016). The central dispute on
appeal is whether Tucker’s disclosure of a low-pass filter
and reflection step is the claimed high-pass filter.


In sum, we agree with the Board that Tucker’s low-pass
and reflection process cannot be the claimed “high-pass filter” because this process does not transmit frequencies
above a given cutoff frequency and does not substantially
attenuate all others. The Board’s conclusion that Google
failed to meet its burden to establish that the challenged
claims are anticipated by Tucker is supported by substantial evidence.

As to the obviousness argument:

The Board explained that
this argument was raised for the first time in Google’s Reply briefing, and thus patent owner Koninklijke did not
have a fair and meaningful opportunity to respond. Id.
We review the Board’s decision not to consider an untimely argument for abuse of discretion.
Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1367 (Fed. Cir. 2016). Although Google argues that the
obviousness of filters was raised at the depositions of the
parties’ experts, Google concedes that it never raised this
theory of including a high-pass filter in Tucker’s receiver in
its petition for inter partes review. See Oral Arg. at 11:44–
12:11,; J.A. 5461. We find that the
Board was within its discretion in declining to consider this
obviousness theory that was outside the scope of the petition for inter partes review.1

Footnote 1:

The Board also rejected Google’s untimely arguments as unpersuasive. J.A. 20 n.8. Because we agree with
the Board that Google’s arguments were untimely, we do
not reach the issue of whether it would have been obvious
to include a high-pass filter in Tucker’s decoder.

CAFC reverses D. Delaware on 12(b)(6) dismissal of Fraunhofer claim against Sirius

The CAFC noted of 12(b)(6):

We review the district court’s dismissal under Federal
Rule of Civil Procedure 12(b)(6) de novo. See Adams Outdoor Advert.
Ltd. P’ship v. Pa. Dep’t of Transp., 930 F.3d
199, 205 (3d Cir. 2019). When conducting this inquiry, “we
accept all factual allegations in the complaint as true and
view them in the light most favorable to the plaintiff.”
Umland v. PLANCO Fin. Servs., 542 F.3d 59, 64 (3d Cir. 2008)
(quoting Buck v. Hampton Twp. Sch. Dist., 452 F.3d 256,
260 (3d Cir. 2006)).
The issues are whether the Master
Agreement was terminated and, if so,
whether that termination had the effect of terminating the sublicense.

Before oral argument, the CAFC explicitly told the parties what issues
would be addressed:

We have jurisdiction over this appeal pursuant to 28
U.S.C. § 1295(a)(1). Before oral argument, we issued an
order advising that parties be prepared to address:

1. Whether the choice of law provision in Section
9.5 of the Master License Agreement requires this
court to interpret the Master License Agreement
according to German law, and to determine the
rights of SXM according to German law.
2. Whether the application of German law would
result in SXM’s sublicense rights surviving contract
termination of the Master License
Agreement. See, e.g., M2Trade, Bundesgerichtshof
[BGH] [Federal Court of Justice] July 19, 2012,
Entscheidungen des Bundesgerichtshofes in Zivilsachen [BGHZ]
194, 136 (Ger.); Take Five, BGH
July 19, 2012, Neue Juristische Wochenschrift
Rechtsprechungs-Report Zivilrecht [NJW-RR]
2012, 1127 (Ger.).
3. Whether this case should be remanded to the
District Court for further proceedings to address
the impact of German law on the issues before this
Dkt. No. 49.

In the end, a 12(b)(6) motion was inappropriate:

Although the district court
should consider extrinsic evidence, we do not preclude its
resolution of this issue on summary judgment if appropriate.

Therefore, we vacate the order dismissing the complaint for
failure to state a claim and remand for further


"NCIS: New Orleans" does two patent themes in "Spies and Lies" on October 22, 2019

The "Spies and Lies" episode of NCIS: New Orleans managed to bring patent themes into both of its sub-stories on October 22, 2019.

In one sub-story, Navy Lieutenant Max Landry, who is working on a room temperature superconductor, suspects his girlfriend, Rina, of copying classified information about his work onto flashdrives. As the story unfolds, it seems that while Rina was working in Uganda, she became involved with a person who said a company was suppressing information on its patents. One thing led to another, and Rina was taking classified information from Max, adulterating it, and conveying it to the Russians. Yes, the idea that information in a patent being suppressed is a bit humorous. Patents are public information. And yes the Russians are woven into the story. And yes, in the real world, the Russians are trying to sell nuclear reactors to Uganda, in contrast to the solar energy based devices Rina was trying to bring to Uganda.

In the other sub-story, LaSalle is trying to get information on who killed his brother Cade. Yes, opioids and patents are involved. It seems that one company had a patent on a less addictive opioid. A lab tech had been fired and stole information from the patent to make a dangerous opioid. Again, one notes patents are public information and no one "steals" the information.

So, two storylines, one involving patents, superconductors and Russians and one involving patents, opioids and drug dealers.

As to stealing, from :

They discovered it was a variety of fentanyl, a synthetic opioid, and traced it back to the Alabama lab where it was patented.
There, the doctor told Pride about a disgruntled ex-employee, Stan Jenkins, as a likely suspect for who could have stolen the formula.

If this is an accurate account of the storyline, the bad guys may have infringed, but they did not "steal" the formula.

Sunday, October 20, 2019

On Joe Biden's plagiarism

A pamphlet of the NJ Bar Association discusses plagiarism generally and the plagiarism of Joe Biden specifically.


The pamphlet of the NJ Bar Association does not mention the plagiarism incident of Joe Biden as a 1L at Syracuse Law School.

Of this more serious incident of plagiarism by Biden, see a 2008 IPBiz post

On the Biden plagiarism incident at Syracuse Law School

including the text:

IPBiz notes a key point: Biden was told that copying five pages without footnoting was wrong BUT he didn’t think there was a problem.

Cross-reference: Arthur M. Cooper

And see
1965 plagiarism flap 'a non-issue now,' says Biden's ex-classmate . However, the link in the 2008 IPBiz post yields the response:

Oops. Looks like we are unable to show you that content.

**Separately, as to Biden 2019:

Biden apologizes for calling Clinton impeachment 'partisan lynching,' but hammers Trump again for using term

Wednesday, October 09, 2019

CAFC contemplates meaning of "prevailing party" in BE Technology vs. Facebook

Of note, within the case:

The [Supreme] Court disagreed, holding that a merits decision is
not a prerequisite to a finding of prevailing party status.
The Court explained that “[c]ommon sense undermines the
notion that a defendant cannot ‘prevail’ unless the relevant
disposition is on the merits.” Id. Instead, it held that a
“defendant has . . . fulfilled its primary objective whenever
the plaintiff’s challenge is rebuffed, irrespective of the precise
reason for the court’s decision,” and that a “defendant
may prevail even if the court’s final judgment rejects the
plaintiff’s claim for a nonmerits reason.” Id.
In so holding, the Court noted that one purpose of the
fee-shifting provision is to deter the bringing of lawsuits
without foundation.

Facebook wins.

Key text
CRST, 136 S. Ct. 1642,

The Emancipation Proclamation did free slaves in 1863

A post by Rebecca R. Bibbs titled
Living historian sheds new light on Civil War general
in the Anderson, Indiana Herald Bulletin on October 5, 2019 contains the text from a talk in MIDDLETOWN:

Those in attendance learned Grant and his wife, Julia, owned slaves, that Lee never was asked to surrender his bejeweled saber and that the Emancipation Proclamation did not free a single slave.


The historical lecture, “The Surrender of Lee at Appomattox Court House,” was presented Saturday [October 5] by the Middletown Historical Society.

Going to William R. Boone High School in Orlando, I was taught "that the Emancipation Proclamation did not free a single slave." However, because portions of the states in rebellion were under control of Union forces, the Proclamation did free slaves. From Wikipedia:

Around 25,000 to 75,000 slaves were immediately emancipated in those regions of the Confederacy where the US Army was already in control. It could not be enforced in the areas still in rebellion, but as the Union army took control of Confederate regions, the Proclamation provided the legal framework for freeing more than three and a half million slaves in those regions.


The Emancipation Proclamation has been ridiculed, notably in an influential passage by Richard Hofstadter for "freeing" only the slaves over which the Union had no power.[27] These slaves were freed due to Lincoln's "war powers". This act cleared up the issue of contraband slaves.[28] It automatically clarified the status of over 100,000 now-former slaves. Some 20,000 to 50,000 slaves were freed the day it went into effect[29] in parts of nine of the ten states to which it applied (Texas being the exception).[30] In every Confederate state (except Tennessee and Texas), the Proclamation went into immediate effect in Union-occupied areas and at least 20,000 slaves[29][30] were freed at once on January 1, 1863.

It has been inaccurately claimed that the Emancipation Proclamation did not free a single slave;[79] historian Lerone Bennett, Jr. alleged that the proclamation was a hoax deliberately designed not to free any slaves.[80] However, as a result of the Proclamation, many slaves were freed during the course of the war, beginning with the day it took effect; eyewitness accounts at places such as Hilton Head Island, South Carolina,[81] and Port Royal, South Carolina[78] record celebrations on January 1 as thousands of blacks were informed of their new legal status of freedom. Estimates of how many thousands of slaves were freed immediately by the Emancipation Proclamation are varied. One contemporary estimate put the 'contraband' population of Union-occupied North Carolina at 10,000, and the Sea Islands of South Carolina also had a substantial population. Those 20,000 slaves were freed immediately by the Emancipation Proclamation."[29] This Union-occupied zone where freedom began at once included parts of eastern North Carolina, the Mississippi Valley, northern Alabama, the Shenandoah Valley of Virginia, a large part of Arkansas, and the Sea Islands of Georgia and South Carolina.[82] Although some counties of Union-occupied Virginia were exempted from the Proclamation, the lower Shenandoah Valley, and the area around Alexandria were covered.[29] Emancipation was immediately enforced as Union soldiers advanced into the Confederacy. Slaves fled their masters and were often assisted by Union soldiers.[83]


If the facts enumerated in Wikipedia (and elsewhere) are true, then the talk of October 5, 2019, purporting to expose a myth, is itself a myth.

As to Grant and slavery, see

key words:
Rebecca R. Bibbs
E. Curt Fields Jr