Wednesday, November 27, 2019

Chinese national pleads guilty to theft of battery secrets

A Chinese national, 35-year-old Hongjin Tan, pleaded guilty on 12 November 2019, to trade secret theft from Phillips 66 of technology
related to next-generation batteries.

See report in TIME:


From an earlier post:

Tan was a “materials scientist” for the Disruptive Technologies team at the Phillips 66 Research Center when he resigned in December 2018, indicating he wanted to return to his native China to care for his parents. He was arrested after company authorities reviewed his computer access following the resignation and discovered he had allegedly stolen technology valued at more than $1 billion.

According to, government prosecutors have sought a trial protective order so some of the technology will not be revealed publicly during Tan’s trial, but Tan’s defense attorney, Ryan A. Ray says such an order would be “unduly burdensome” and that “protecting alleged trade secrets from public disclosure cannot be done with a one-size-fits-all solution.”


CAFC says PTAB lacked reasoned basis in Merck case: too cryptic to survive judicial review

The outcome

It is well established that “[t]he agency tribunal must
make findings of relevant facts, and present its reasoning
in sufficient detail that the court may conduct meaningful
review of the agency action.” In re Lee, 277 F.3d 1338, 1346
(Fed. Cir. 2002). “The [Board]’s own explanation must suffice for
us to see that the agency has done its job and must
be capable of being ‘reasonably . . . discerned’ from a relatively
concise [Board] discussion.” In re NuVasive, Inc., 842
F.3d 1376, 1383 (Fed. Cir. 2016) (quoting In re Huston, 308
F.3d 1267, 1281 (Fed. Cir. 2002)).
On appeal, Merck argues that the Board’s decisions
here fail to provide a reasoned basis for upholding claim 18.
For the reasons discussed below, we agree.

The issue

Instead, the question was whether it was obvious to
conjugate the 13 serotypes to the CRM197 protein in a single
vaccine. The Board’s decision rests on its finding that the
study discussed in Peña did not show that “a formulation
comprising each of the thirteen known serotypes conjugated to a CRM197 [protein] . . . was even considered, tried
and successful.” J.A. 44. Standing alone, this finding is
insufficient to support a lack of motivation or a reasonable
expectation of success. Obviousness, unlike anticipation,
does not require a prior art successful formulation. See Par
Pharm., 773 F.3d at 1198. Here, there was conflicting evidence as to motivation and reasonable expectation of success—evidence not discussed by the Board.


“If all
elements of a claim are found in the prior art, as is the case
here, the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would
be motivated to combine those references . . . .” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015); see
also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (“[I]t can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed
new invention does.”).

The conclusion:

We conclude that the Board’s decision
is too cryptic to survive judicial review.
Under these circumstances, “we have consistently vacated and remanded for further proceedings.” In re Van
Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017). We therefore vacate the Board’s obviousness findings with respect to claim
18, and remand for further consideration of the parties’ arguments and evidence as to (1) motivation to combine and
(2) reasonable expectation of success and, if the Board finds
a sufficient motivation to combine and reasonable expectation of success, other issues such as secondary considerations.4 We do not reach Merck’s remaining arguments.

See also BloombergLaw post: Merck Gets Second Shot at Axing Wyeth’s Vaccine Patent Claim

Friday, November 22, 2019

Split decision in Virnetx v/ Apple

The outcome:

Apple appeals. We affirm the district court’s determination that Apple is precluded by the prior litigation from
pressing its proposed invalidity challenges. We affirm the
judgment of infringement as to two of the patents but reverse as to two others. In light of our partial reversal on
infringement, we vacate the damages award and remand
for the district court to consider whether it can and should
enter a revised award without conducting a new trial and,
if not, to hold a new trial limited to damages.

Of the relevant law:

We review the district court’s ruling on issue preclusion
de novo, following the Fifth Circuit. Wills v. Arizon Structures Worldwide, LLC,
824 F.3d 541, 545 (5th Cir. 2016);
Voter Verified, Inc. v. Election Systems & Software LLC,
887 F.3d 1376, 1382 (Fed. Cir. 2018) (applying regional circuit law).
We review the grant of summary judgment de
novo and apply the “same criteria employed by the district
court.” Waste Mgmt. of Louisiana, L.L.C. v. River Birch,
Inc., 920 F.3d 958, 964 (5th Cir. 2019); Eli Lilly & Co. v.
Hospira, Inc., 933 F.3d 1320, 1327 (Fed. Cir. 2019) (applying regional circuit law).
We review the denial of a motion
for judgment as a matter of law de novo and ask whether
the underlying jury findings were supported by substantial
evidence. See Apache Deepwater, L.L.C. v. W&T Offshore,
Inc., 930 F.3d 647, 652–53 (5th Cir. 2019); Elbit Systems
Land & C4I Ltd. v. Hughes Network Systems, LLC, 927
F.3d 1292, 1296 (Fed. Cir. 2019) (following Fifth Circuit
law). We review a claim construction de novo and any underlying factual findings based on extrinsic evidence for
clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.
Ct. 831, 841 (2015).

Of issue preclusion

A leading treatise states that, as a general rule, “preclusion applies to any issue framed by the pleadings and
not withdrawn, even though it has not been raised at trial
PRACTICE AND PROCEDURE § 4419 (3d ed.) (Wright and Miller). The Fifth Circuit has concluded that an issue is “actually litigated” when the “issue is raised and the party
who has the burden fails in his proof and the issue is decided against him.” Santopadre v. Pelican Homestead &
Sav. Ass’n, 937 F.2d 268, 274 (5th Cir. 1991) (citing United
States v. Silliman, 167 F.2d 607, 617 (3d Cir. 1948)). Here,
in the 417 litigation, Apple asserted invalidity under 35
U.S.C. §§ 101, 102, 103, and 112 from the outset, and the
issues were extensively developed in discovery. Apple expressly included a host of invalidity issues, as enumerated
above, in the pretrial order, which “supersede[d] all prior
pleadings” and governed the proceedings to come. Meaux
Surface Protection, Inc. v. Fogleman, 607 F.3d 161, 167 (5th
Cir. 2010); see In re Pirani, 824 F.3d 483, 493 n.1 (5th Cir.
2016). That framing of the issues in the trial-governing
pleadings, together with full pretrial engagement on the issues and the eventual judicial rulings resolving the issues
based on evidentiary insufficiency, is enough to constitute
actual litigation.

Preclusion in this scenario serves important interests
protected by preclusion principles. One is the judicial system’s interest in avoiding duplication caused by an earlier
bypassing of a present and adequate opportunity for conclusive resolution after fully prepared development of the
issue. Another is the related reliance interest of the opposing party: “once an issue has been framed, the opposing
party has a right to rely on the expectation that it will be
resolved conclusively in that action.” Wright and Miller § 4419. When the adversarial litigation of the issue has
proceeded as far as it did in the 417 matter, preclusion
serves the interests in “conserving judicial resources” and
“avoiding oppression or harassment of the adverse party.”
Restatement (Second) of Judgments § 27 comment e

Here, VirnetX expended “considerable effort . . . in preparing to meet a case that [was] never made” when the
time came for presentation of evidence. Wright and Miller
§ 4419. VirnetX prevailed by summary judgment on two of
the invalidity issues, including non-joinder. Then, only one
week before trial, Apple informed the district court and
VirnetX, in an “Emergency Motion to Dismiss,” that it

would prefer not to pursue the remaining invalidity challenges, but it proposed to dismiss them only if it could save
them, unimpaired, for future litigation. J.A. 25487. In response, VirnetX explained to the court:
VirnetX has spent well over a million dollars in this
case defending the validity of the patents. There
were more than 100 references asserted by Apple
in this case in their invalidity contentions. We had
to deal with all of those.
We have had extensive motion practice in this
Court on invalidity issues. We filed expert reports
in this Court. We have taken depositions in this
Court directed to invalidity.
J.A. 25585–86. When the district court denied the motion
to dismiss, Apple knew that the issues remained in the
case. But Apple bypassed the opportunity to try the issues
then and there, choosing to present no evidence on those
issues. Judgment as a matter of law for failure of proof
followed. Apple’s choice to present no evidence does not
change the character of the judgment as a resolution of issues actually litigated.

The CAFC notes PTAB cannot rely on material outside the record

The outcome:

In this appeal, Appellant IPR Licensing (“IPRL”) argues that the only additional
evidence the Board cited in support of its conclusion
on remand was not part of the record before the Board. We
Because the Board’s decision remains unsupported, we
reverse the Board’s finding of invalidity as to ground one
and, because all other challenges to the Board’s final judgment of
invalidity are waived, we vacate that judgment.

The opposing party must be given a chance to respond:

Our review of final written decisions by the Board is
rooted in “basic principles of administrative law.” Pers.
Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir.
2017). These principles impose important limits on our review of decisions
by the Board. But they also impose important limits on the Board’s authority during inter partes
reviews. For example, “the Board must base its decision on
arguments that were advanced by a party, and to which the
opposing party was given a chance to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
2016); see also Rovalma, S.A. v. Bohler-Edelstahl GmbH &
Co. KG, 856 F.3d 1019 (Fed. Cir. 2017). Whether the Board
improperly relied on new arguments is reviewed de novo.
In re NuVasive, Inc., 841 F.3d 966, 970 (Fed. Cir. 2016).


The Board therefore cannot rely on evidence relating
solely to grounds on which it never instituted. To hold otherwise would
allow the Board’s final written decision to
rest on arguments that a patent owner has no ability to
rebut or anticipate. See Magnum Oil, 829 F.3d at 1381
(“[T]he Board must base its decision on arguments . . . to
which the opposing party was given a chance to respond.”).
But the Board did just that in relying on UMTS in its final
written decision here

As to jurisdiction:

It is well-established that the filing deadline for a notice of appeal is jurisdictional. For example, in Bowles v.
Russell, 551 U.S. 205 (2007), a habeas petitioner failed to
file his appeal within the 30-day time limit established by
28 U.S.C. § 2107(a) and Fed. R. App. Proc. 4(a)(1)(A). The
Supreme Court held that this failure created a jurisdictional defect. Bowles, 551 U.S. at 208. In doing so,

CAFC reverses PTAB for lack of substantial evidence in TQ Delta

Of issue here was conclusory expert testimony:

Conclusory expert testimony does not qualify
as substantial evidence. See, e.g., MobileMedia Ideas LLC
v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015) (“Conclusory statements by an expert . . . are insufficient to sustain a jury’s verdict.”); Regents of Univ. of Minn. v. AGA
Med. Corp., 717 F.3d 929, 941 (Fed. Cir. 2013) (quoting Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir.
2008)) (“Conclusory expert assertions cannot raise triable
issues of material fact . . . .”); Koito Mfg. Co. v. Turn-KeyTech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (“General
and conclusory testimony . . . does not suffice as substantial evidence of invalidity.”); Sea Robin Pipeline Co. v.
FERC, 795 F.2d 182, 188 (D.C. Cir. 1986) (“[I]nordinate
faith in the conclusory assertions of an expert . . . cannot
satisfy the requirement . . . [of] substantial evidence.”).
“Rejections on obviousness grounds,” in particular,
“cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).5 “This requirement is
as much rooted in the Administrative Procedure Act, which
ensures due process and non-arbitrary decisionmaking, as
it is in § 103.” Kahn, 441 F.3d at 988 (citing Lee, 277 F.3d
at 1344–45). Accordingly, “a conclusory assertion with no
explanation is inadequate to support a finding that there
would have been a motivation to combine” because “[t]his
type of finding, without more, tracks the ex post reasoning
KSR warned of and fails to identify any actual reason why
a skilled artisan would have combined the elements in the
manner claimed.” In re Van Os, 844 F.3d 1359, 1361–62
(Fed. Cir. 2017) (citing KSR, 550 U.S. at 418, 421).

Also from ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012))

In particular, “[t]he expert
failed to explain how specific references could be combined,
which combination(s) of elements in specific references
would yield a predictable result, or how any specific combination would operate or read on the asserted claims.” Id.
The challenger’s expert further testified that:
The motivation to combine would be because you
wanted to build something better. You wanted a
system that was more efficient, cheaper, or you
wanted a system that had more features, makes it
more attractive to your customers, because by combining these two things you could do something
new that hadn’t been able to do before.
Id. at 1328. We rejected this testimony because it “fail[ed]
to explain why a person of ordinary skill in the art would
have combined elements from specific references in the way
the claimed invention does.” Id. (first citing KSR, 550 U.S.
at 418; then citing Innogenetics, 512 F.3d at 1373). We explained that “[k]nowledge of a problem and motivation to
solve it are entirely different from motivation to combine

Of TQ Delta:

Untethered to any supporting evidence, much less any
contemporaneous evidence, Dr. Tellado’s ipse dixit declaration
“fail[s] to provide any meaningful explanation for why
one of ordinary skill in the art would be motivated to combine these references at the time of this invention.”
InTouch, 751 F.3d at 1353–54 (emphasis added). It also
“fails to explain why a person of ordinary skill in the art
would have combined elements from specific references in
the way the claimed invention does.” ActiveVideo, 694 F.3d
at 1328 (first citing KSR, 550 U.S. at 418; then citing Innogenetics, 512 F.3d at 1373). Without this support, Dr.
Tellado’s declaration ultimately fails “to resist the temptation to read into the prior art the teachings of the invention
in issue.” Graham v. John Deere Co. of Kan. City,
383 U.S. 1, 36 (1966). Indeed, the only support for Dr. Tellado’s assertions is found in the description of the invention
of the patents-in-suit:
The modulator 46 also includes a phase scrambler 66 that combines a phase shift computed for
each QAM-modulated carrier signal with the phase
characteristic of that carrier signal. Combining
phase shifts with phase characteristics, in accordance with the principles of the invention, substantially scrambles the phase characteristics of the
carrier signals in the transmission signal 38. By
scrambling the phase characteristics of the carrier
signals, the resulting transmission signal 38 has a
substantially minimized peak-to-average (PAR)
power ratio.
’243 patent col. 4 ll. 29–38.
Dr. Tellado’s “conclusory statements and unspecific expert testimony” are thus inadequate to support the Board’s
factfinding regarding motivation to combine.

CAFC analyzes prosecution history estoppel in Pharma Tech v. LifeScan. Defendant LifeScan wins.

The outcome of Pharma Tech:

This is an appeal from the district court’s summary
judgment of noninfringement under the doctrine of equivalents.
Because prosecution history estoppel bars the
claims for infringement under the doctrine of equivalents,
we affirm.

The technical matter involves electrochemistry:

To test blood glucose, an
individual typically draws blood by pricking a finger, placing the blood
on the end of a test strip, and placing the test
strip into a meter. The test strip contains a pair of electrodes, including
a working electrode and a second electrode. The working electrode is coated with an enzyme that
oxidizes glucose in the blood sample. Following an incubation period, the meter
(1) applies a known electric potential
across the electrodes, creating a diffusion limiting electric
current (referred to as the “Cottrell current”) through the
sample; and (2) measures Cottrell current. A proportional
relationship exists between the measured current and
blood glucose concentration. Based on this proportional relationship,
a microprocessor in the meter converts the
measured electric current to a blood glucose level and then
reports the blood glucose level to the user.

Following failed dismissal motions under FRCP 12, LifeScan went
for summary judgment, on which LifeScan prevailed at district court:

LifeScan asserted that argument-based and amendmentbased prosecution
history estoppel barred Pharma Tech’s
doctrine of equivalents infringement theory.
The court
reasoned that LifeScan’s accused system falls within the
claim scope surrendered by the inventors during prosecution of the ’069 patent. In so ruling,
the district court concluded that the tangentiality exception did not apply
because the inventors’ remarks during prosecution indicated that “comparison of analyte
concentration measurements was, at a minimum, a significant aspect of the
[October 1997] amendment.” Pharma Tech Sols. Inc. v.
LifeScan Inc., 348 F. Supp. 3d 1076, 1084 (D. Nev. 2018).
The district court further held that argument-based estoppel likewise barred Pharma Tech’s
claims, noting that the
inventors “consistently relied on the comparison of two analyte concentration measurements
as a distinguishing feature of [their] claims.” Id. Accordingly, the district court
granted LifeScan’s motion for summary judgment.

The CAFC cited Festo:

“Prosecution history estoppel applies as part of an infringement analysis to prevent a patentee from using the
doctrine of equivalents to recapture subject matter surrendered from the literal scope of a claim during prosecution.”
Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d
1309, 1322 (Fed. Cir. 2013). Prosecution history estoppel
can occur in two ways: “either (1) by making a narrowing
amendment to the claim (‘amendment-based estoppel’) or
(2) by surrendering claim scope through argument to the
patent examiner (‘argument-based estoppel’).” Conoco,
Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1363
(Fed. Cir. 2006).
With respect to amendment-based prosecution history
estoppel, the Supreme Court has recognized that a “patentee’s decision to narrow his claims through amendment
may be presumed to be a general disclaimer of the territory
between the original claim and the amended claim.” Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S.
722, 740 (2002). The presumption may be overcome if the
patentee can show the applicability of one of several exceptions identified by the Supreme Court: (1) the equivalent
was “unforeseeable at the time of the application”; (2) “the
rationale underlying the amendment may bear no more
than a tangential relation to the equivalent in question”; or
(3) “there may be some other reason suggesting that the
patentee could not reasonably be expected to have described the insubstantial substitute in question.” Id.
at 740–41.


“The tangential relation inquiry ‘focuses on
the patentee’s objectively apparent reason for the narrowing amendment,’ which ‘should be discernible from the
prosecution history record.’” Integrated Tech. Corp. v. Rudolph Techs., Inc., 734 F.3d 1352, 1358 (Fed. Cir. 2013)
(quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., 344 F.3d 1359, 1369 (Fed. Cir. 2003)).

Insituform is also cited:

Finally, Pharma Tech analogizes the facts here to those
in cases where we held that amendment-based prosecution
history estoppel did not apply. For example, Pharma Tech
argues that Insituform Technologies, Inc. v. CAT Contracting, Inc., 385 F.3d 1360 (Fed. Cir. 2004), controls the result
here. We disagree. In Insituform, the remarks accompanying the patentee’s amendment did not emphasize or rely
on the added claim language to distinguish the prior art in
a manner relevant to the asserted equivalent. Id. at 1370.
This court held that Insituform’s amendment narrowing
the claim to a one-cup vacuum process located near a resin
source was merely tangentially related to an equivalent
multiple-cup vacuum process because the rationale underlying the amendment “was to avoid the need to use a large
compressor when the vacuum is created a significant
distance from the resin source.” Id. (quoting Insituform
Techs., Inc. v. Cat Contracting, Inc., 161 F.3d 688, 692
(Fed. Cir. 1998)). Insituform noted “no indication in the
prosecution history of any relationship between the narrowing amendment and a multiple cup process.” Id.
Here, by contrast, the applicants’ October 1997 amendment sought to avoid prior art systems that measured and
displayed diffusion limiting current. To distinguish their
claims from Kuhn, Pollmann, and Szuminsky, which measured and displayed diffusion limiting current, the inventors amended their claims to require obtaining a plurality
of current readings, converting the current readings to analyte concentration measurements, and comparing the analyte concentration measurements to detect errors. The
inventors’ remarks accompanying the October 1997
amendment distinguished the prior art based on the newly
added sequential “converting” and “comparing” limitations. It is undisputed that—like the prior art—LifeScan’s
meter does not convert diffusion limiting current readings
to analyte concentration measurements and then compare
analyte concentration measurements to one another to detect errors.

Thursday, November 21, 2019

Apple/Intel go antitrust against patents of Fortress Investment

CNBC reported:

Apple and Intel on Wednesday [20 Nov. 2019] filed an antitrust lawsuit against SoftBank-owned Fortress Investment Group,
alleging the firm stockpiled patents to hold up technology companies with lawsuits demanding as much as $5.1 billion from Apple.


Pricing errors by Taco Bell for the "chalupa box"

In October 2019, Newsweek had an article titled NEW JERSEY COUPLE TAKING TACO BELL TO FEDERAL COURT FOR $2.18 , which included text

The suit claims that in May 2018 the New Jersey couple saw a TV commercial for Taco Bell's Chalupa Cravings Boxes that advertised the price as five dollars for a Chalupa Supreme, Five-Layer Burrito, Crunchy Taco, Cinnamon Twist and medium drink. Intrigued, they drove out to Route 22 and ordered two of the meals.

The couple were shocked when the cashier charged them $12.99 instead of the $10 they were expecting. Besides sales tax amounting to $0.81, the location charged the couple an additional $1.09 for each of their meals. They raised the issue to the manager and claim that he told them that the commercial contained "legal fine print" that prices could vary by location.


The suit was originally filed in Superior Court in Middlesex County, but Taco Bell's attorneys successfully petitioned to have it transferred to federal court because the company's headquarters are not in the state.

Fast forward to November 2019, and a Taco Bell in Tarpon Springs literally has a sign saying the Chalupa Box is $5.00 [below] but one will in fact be charged $5.69. The sign also says the individual "double chalupa" is $5.69.


The CAFC in Fiber, LLC determines that the word "control" in a claim an invoke "means-plus-function" status

The word "control" in a claim can be interpreted as "means" in a "means plus function" claim:

We agree with the district court that “control” is a
means-plus-function limitation. The limitation does not include the word
“means,” so there is a rebuttable presumption that § 112, ¶ 6 does not apply. However, the
presumption has been overcome in this case. We agree
with the district court that the term “control,” which is
used in relation to the function of positioning the beam directing device, is a means-plus-function term.


For these reasons, we conclude that with respect to the
“control” limitation, the presumption against means-plus-function claiming has been overcome. We therefore agree
with the district court that this limitation is subject to the
provisions of § 112, ¶ 6.

An important legal point as to "structure" supporting a "means-plus-function" claim:

On appeal, Fiber fails to identify a structure in the
’917 patent corresponding to the function. Fiber argues
that the ’348 patent incorporated by reference in the specification
provides sufficient corresponding structure. Appellant’s Br. 39.3
As an initial matter, “material
incorporated by reference cannot provide the corresponding structure necessary
to satisfy the definiteness requirement for a means-plus-function clause.” Default Proof
Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d
1291, 1301 (Fed. Cir. 2005).
Even if incorporating corresponding structure by reference was permissible, we agree
with the district court that the ’348 patent does not impart
structure for the “control.” See Fiber, 2017 WL 3896443,
at *15.

The outcome:

Our holding on the “control” limitations described
above is sufficient to resolve this appeal. The parties
agreed that if we affirmed the district court’s holding that
“control” was a means-plus-function limitation and that it
was invalid as indefinite, all of the asserted claims of the
’917 patent would be invalid and the entire case would be
resolved. See Oral Argument at 3:57–4:15 (Fiber), 12:01–
12:23 (Appellees), Fiber, LLC v. Ciena Corp. (No. 2019-
Because we agree that the district court correctly construed “control” and found it invalid as indefinite, we do
not reach the district court’s construction of the terms
“data gathering and transmission element” and “positioning.”

Wednesday, November 20, 2019

Did the CAFC err in footnote 4 of the Sanofi case, sinking the Schooner Peggy?

At issue in Sanofi v. Mylan:

Sanofi challenges the Board’s finding of a motivation to
combine the prior-art references to arrive at the claimed
glargine formulation with certain surfactants. Sanofi argues that
(1) KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007), required the Board to find that the prior
art disclosed an aggregation problem for glargine specifically (not just insulins in general);
(2) the Board improperly
relied on each patent’s own (shared) specification in finding
a motivation to combine; and
(3) substantial evidence does
not support the Board’s finding because key evidence cited
by the Board concerned insulins in general rather than
glargine specifically. The first two contentions assert legal
errors, the third evidentiary insufficiency. We address the
contentions in turn. We find each one unpersuasive.

Of interest is the Board's use of information in the
"background of invention" section:

Sanofi challenges the Board’s reliance on this material
as legally improper, invoking our longstanding recognition
that a tribunal should not “look[] to knowledge taught by
the inventor . . . and then use[] that knowledge against its
teacher.” Panduit Corp. v. Dennison Mfg. Co., 774 F.2d
1082, 1092 (Fed. Cir. 1985), vacated on other grounds, 475
U.S. 809 (1986); see also InTouch Techs., Inc. v. VGO
Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014). But
the Board did not violate that principle, because it did not
use the specification for its teachings about the inventor’s
discovery. Rather, it used the specification for its teachings
about prior-art knowledge, and that use of a specification
is not just common, given patent drafters’ standard practice of reciting prior art
in setting out the background of
the invention, but permissible. E.g., Smith & Nephew, Inc.
v. Rea, 721 F.3d 1371, 1378–79 (Fed. Cir. 2013); PharmaStem Therapeutics,
Inc. v. ViaCell, Inc., 491 F.3d 1342,
1362 (Fed. Cir. 2007); cf. WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308,
1329–30 (Fed. Cir. 2018) (specification confirmed Board’s understanding of prior art in
anticipation context).

Of motivation to combine:

We further conclude that the Board’s finding of a motivation to combine
is supported by substantial evidence.
While the Board must provide “a reasoned basis” for its actions, “‘we will
uphold a decision of less than ideal clarity if
the agency’s path may reasonably be discerned.’” In re
NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (quoting Bowman Transp., Inc. v. Ark.–Best Freight System,
Inc., 419 U.S. 281, 285, 286 (1974)). The Board “must articulate a reason why a [relevant artisan] would combine
the prior art references.” Id. at 1382. And the finding of
such a reason must be supported by substantial evidence,
which is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Id. at
1380 (citation and internal quotation marks omitted); see
also Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (explaining that
review for substantial evidence “requires examination of
the record as a whole, taking into account evidence that
both justifies and detracts from an agency’s decision”) (citation and internal quotation marks omitted).
The Board’s findings with respect to the motivation to
combine are detailed and well supported. The Board found
that insulins “had a known tendency to aggregate in the
presence of hydrophobic surfaces” and at air-water interfaces and that a relevant artisan would have expected
glargine to behave similarly to other insulins when in contact with hydrophobic surfaces and at air-water interfaces.
Decision at *14. The Board also found that nonionic surfactants, including the claimed ones, were well known and
had been used successfully to stabilize insulin formulations, and so would have been looked to by a relevant artisan concerned about aggregation in glargine. Id. at *11–
12, *17. The record contains substantial evidence to support those findings.

Note footnote 4:

On November 5, 2019, Sanofi filed a letter with the
court asking the court to vacate the Board’s decision and
remand for reconsideration by a different Board panel under this court’s decision regarding the Appointments
Clause in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-
2140, ––– F.3d –––, 2019 WL 5616010 (Fed. Cir. Oct. 31,
2019). We reject the request. Sanofi did not raise an Appointments Clause issue in its opening brief in this court
(or its reply brief). Our precedent holds that failure to raise
the Arthrex Appointments Clause issue in the opening brief
forfeits the challenge. Customedia Technologies, LLC v.
Dish Network Corp., Nos. 2018-2239, -2240, -2310, 2019-
1000, -1002, -1003, -1027, -1029, ––– F.3d –––, 2019 WL
5677703 (Fed. Cir. Nov. 1, 2019); Customedia Technologies,
LLC v. Dish Network Corp., No. 2019-1001, ––– F.3d –––,
2019 WL 5677704 (Fed. Cir. Nov. 1, 2019).

Judge Newman dissented, and discussed the use, by the Board,
of the patent specification:

The court holds that “The Board’s use of the patent
specification, we conclude, did not rest on legal error.” Maj.
Op. at 10. This is incorrect. The court’s ratification of reliance on
the inventor’s specification to invalidate the invention disclosed therein, is plain error. A patent
specification may be edifying and must be descriptive and
enabling, but it is not prior art. See Graham v. John Deere
Co., 383 U.S. 1, 36 (1966) (avoid the “temptation to read
into the prior art the teachings of the invention at issue.”).

Before even reading Judge Newman's dissent, IPBiz found "footnote 4" to be
problematic. Judge Newman cited Schooner Peggy, which case was covered
at UChicagoLaw:

My colleagues deny the motion, ruling that our recent
Customedia rulings establish that the Arthrex ruling cannot be applied to pending appeals, unless the appellant had
raised an Appointments Clause challenge in its principal
brief on appeal. Maj. Op. at 20 n.4. However, at the time
these appeals were filed, there was no holding of illegality
of appointments of the PTAB’s Administrative Patent
Judges. It is well established that when the law changes
while a case is on appeal, the changed law applies.
v. Hous. Auth. of Durham, 393 U.S. 268, 282 (1969). “[I]n
great national concerns . . . the court must decide according to existing laws, and if it be necessary to set aside a
judgment, rightful when rendered, but which cannot be affirmed but in violation of law, the judgment must be set
aside.” United States v. Schooner Peggy, 1 Cranch 103, 110

Judge Newman wrote:

Thus, Sanofi is entitled to the same benefit of the Arthrex decision as are the Arthrex parties. The foundation
of a nation ruled by law is that the same rules, as well as
the same law, will be applied in the same way to parties in
pending litigation.

[Footnote 4 was later corrected so that "decision" became "decisions."]

Piccone case at CAFC: not completing CLE can be hazardous to your legal health

The outcome:

Louis Piccone appeals a decision of the United States
District Court for the Eastern District of Virginia dismissing his
petition for review of the final decision of the Director of the United States Patent and Trademark Office
(PTO) suspending Mr. Piccone from practice before the
PTO for three years. See Piccone v. United States Patent &
Trademark Office, No. 18-CV-00307, 2018 WL 5929631
(E.D. Va. Nov. 13, 2018). Because the PTO’s decision to
suspend Mr. Piccone was not arbitrary, capricious or an
abuse of discretion, or otherwise not in accordance with
law, we affirm.

There was a CLE issue:

Between 2007 and 2014, Mr. Piccone’s Pennsylvania
bar license was thrice suspended: September 1, 2011 to October 11, 2011, for failure to comply with continuing legal
education requirements (CLE); October 19, 2012 to December 21, 2012, for failing to pay bar membership fees; and
September 20, 2013 to August 13, 2014, again for failure to
comply with CLE requirements.

There was a delegation issue:

Mr. Piccone argues that the disciplinary action against
him was not properly authorized because Deputy OED Director William Griffin signed the Complaint initiating the
action rather than OED Director William Covey. Appellant’s Br. 18–22. The controlling regulation provides that
the signature of the OED Director is a required component
of a disciplinary complaint. 37 C.F.R. § 11.34(a)(5) (“A complaint instituting a disciplinary proceeding shall . . . [b]e
signed by the OED Director.”). It is, however, well established that delegation of duties
is presumptively permissible. See Ethicon Endo-Surgery, Inc. v. Covidien LP, 812
F.3d 1023, 1031–32 (Fed. Cir. 2016); U.S. Telecom Ass’n v.
F.C.C., 359 F.3d 554, 565 (D.C. Cir. 2004).

There was a constructive notice issue:

Mr. Piccone further argues that the PTO had constructive notice of his
misconduct when his Pennsylvania bar license was suspended because the Pennsylvania Supreme
Court published notices of his suspensions in 2011 and
2012. Appellant’s Br. 40. The one-year limitations period
runs from the date misconduct “is made known to an officer
or employee of the Office as prescribed in the regulations,”
which state that the relevant date is “the date on which the
OED Director receives a grievance.” 35 U.S.C. § 32; 37
C.F.R. § 11.34(d). Under this framework, contrary to Mr.
Piccone’s position, constructive notice is not enough. Thus,
the PTO’s determination that the disciplinary complaint
was brought within the statute of limitations was not arbitrary, capricious,
or otherwise not in accordance with law.

There was a due process issue:

Second, there is no right to the full scope of discovery
permitted under the Federal Rules of Civil Procedure in a
PTO disciplinary action. Mr. Piccone’s reliance on 35
U.S.C. § 24 as establishing such a right is misplaced. Section 24,
relating to witnesses and subpoenas, states, “[t]he
provisions of the Federal Rules of Civil Procedure relating
to the attendance of witnesses and to the production of documents and
things shall apply to contested cases in the Patent and Trademark Office.” 35 U.S.C. § 24. But it is well
established that Section 24 relates only to the handling of
witnesses and does not afford a party any right to discovery
beyond what is allowed by PTO discovery rules. Abbott
Labs. v. Cordis Corp., 710 F.3d 1318, 1325–26 (Fed. Cir.
Third, the record reflects that Mr. Piccone was given
much of the discovery he requested once he complied with
the ALJ’s scheduling order and PTO regulations. The ALJ
authorized written discovery requests to OED and allowed
Mr. Piccone to depose the executive director of the Massachusetts Board of Bar Examiners.
Mr. Piccone’s argument
that he was denied all “reasonable attempts” at discovery
is, thus, unsupported. We find no due process violation in
the disciplinary proceeding.

Tuesday, November 19, 2019

Game and Technology loses appeal at CAFC

The outcome was affirmance:

Game and Technology Co. (GAT) appeals the final written decision of the
Patent Trial and Appeal Board, ruling
that institution of inter partes review was not barred under
35 U.S.C. § 315(b) and that claims 1–7 of U.S. Patent
No. 7,682,243 would have been obvious over the asserted
prior art. Under the facts of this case, and as argued by the
parties, the Board did not err in holding that petitioner
Wargaming Group Ltd. was not properly “served with a
complaint alleging infringement of the [’243] patent” more
than one year before it filed its IPR petition. Accordingly,
the IPR was not barred under § 315(b). Because substantial evidence
supports the Board’s determination that
claims 1–7 of the ’243 patent would have been obvious over
the asserted prior art, we affirm.

As to the time-bar issue:

We review the Board’s legal conclusions de novo
and its fact findings for substantial evidence. Bennett Regulator
Guards, Inc. v. Atlanta Gas Light Co., 905 F.3d 1311,
1314 (Fed. Cir. 2018). With respect to the Board’s procedural or
administrative decisions, our review is limited to
ensuring that they are not “arbitrary, capricious, an abuse
of discretion . . . otherwise not in accordance with law . . .
[or] unsupported by substantial evidence.” Personal Web
Techs., LLC v. Apple, Inc., 848 F.3d 987, 992 (Fed. Cir.
2017) (quoting 5 U.S.C. § 706(2)(A), (E)). The IPR petitioner bears the
burden of persuasion to demonstrate that
its petitions are not time-barred under § 315(b). Worlds
Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).


The Board cannot strictly rely on a district court’s determination of
proper service because district courts rarely make such determinations. Indeed, where the parties do not challenge
service, a district court might never determine whether
service was proper or whether the defendant waived its defense of improper service.
Section 315(b) does not itself define what it means to
be “served with a complaint.” As we indicated in Click-ToCall, the Board can look to multiple sources to discern the
meaning of “served.” 899 F.3d at 1330. Rule 4 of the Federal Rules of
Civil Procedure establishes the basic requirements for service in a federal court. See generally Fed. R.
Civ. P. 4. Other sources include the ordinary meaning of
“served,” as well as common law interpreting Rule 4. See,
(noting that “[t]he general attitude of the federal courts is
that the provisions of Federal Rule 4 should be liberally
construed”); King v. Taylor, 694 F.3d 650, 655 (6th Cir.
2012) (explaining that the service requirement is satisfied
by proper service of process, consent, waiver, or forfeiture
by the defendant (first citing Murphy Bros., Inc. v. Michetti
Pipe Stringing, Inc., 526 U.S. 344, 350 (1999), then citing
Omni Capital Int’l, Ltd. v. Rudolf Wolff & Co., 484 U.S. 97,
104 (1987))).


In its interpretation of § 315(b), the Board properly
looked to Rule 4 as a starting point for its analysis of
whether GAT’s complaint had been served. However, it is
presumed that Congress knows the universe of common
law interpreting a statutory term and that, absent any indication to the contrary, Congress intends to adopt the
common law interpretation of the term when using identical language in later-enacted statute. See Cannon v. Univ.
of Chi., 441 U.S. 677, 696–98 (1979). We therefore agree
with GAT that the Board’s conclusion that it lacked authority to consider the propriety of service under Rule 4 and
common law interpreting Rule 4 was incorrect. Aside from
the Board’s general statement, however, we see no error in
the Board’s analysis, particularly given GAT’s failure to
raise certain arguments on appeal.
GAT’s opening brief devotes seven pages to the timebar issue. Of those pages, almost six address GAT’s principal argument that “[c]ompliance with the time-bar requirement is a condition precedent to institution of an IPR,
and thus a decision should have been rendered before institution of the IPR requested by Wargaming.” Appellant’s
Br. 21. While we agree with GAT that issues related to the
time bar should ordinarily be decided prior to institution,
we note that GAT would only have been harmed by the
Board’s decision to institute if the IPR was in fact timebarred. The gravity of this purported error is thus entirely
dependent on the merits of GAT’s substantive time-bar arguments. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2153 (2016) (noting that courts need not “throw out
an inter partes review decision whenever there is some
technical deficiency in the . . . Patent Office’s institution
decision” and that “errors that do not cause a patent owner
prejudice may not warrant relief.” (citing 5 U.S.C. § 706)).
For at least this reason, we decline GAT’s invitation to find
error in the Board’s process.

Of note:

certain shapeshifting characters in Dungeons & Dragons,
GAT’s evolving arguments are difficult to track. Indeed, at
oral argument, counsel for GAT appeared to retract its reliance on Rule 4(d),
explaining that GAT was merely contending that the UK service and Cyprus service complied
with the Hague convention. See Oral Arg. at 1:38–6:36. As
noted above, however, GAT did not develop these arguments in its opening brief. Because GAT did not preserve
its specific arguments for why service was proper, we cannot conclude that the Board erred in its determination that
Wargaming’s petition was not barred by § 315(b).

Saturday, November 16, 2019

CAFC finds claims 2-4 of KPN's US '662 not abstract idea under Alice step 1; D. Delaware reversed

The outcome was that D. Delaware (J. Stark) was reversed:

The ’662 patent solves this problem by varying the way
check data is generated by varying the permutation applied to different
data blocks. Varying the permutation for
each data block reduces the chances that the same systematic error will
produce the same defective check data across
different data blocks. Claims 2–4 thus replace the prior art
check data generator with an improved, dynamic check
data generator that enables increased detection of systematic errors
that recur across a series of transmitted data
blocks. As with other claims we have found to be patenteligible in prior cases,
the appealed claims represent a nonabstract improvement in the functionality of an existing
technological process and not simply an abstract idea of
manipulating data. Accordingly, we reverse the district
court’s grant of Appellees’ Rule 12(c) motion that claims 2–
4 are ineligible on the pleadings.

As to "improved result":

An improved result, without more stated in the claim,
is not enough to confer eligibility to an otherwise abstract
idea. Finjan, 879 F.3d at 1305 (stating that as a “foundational patent law principle,”
“a result, even an innovative
result, is not itself patentable”). To be patent-eligible, the
claims must recite a specific means or method that solves
a problem in an existing technological process. Compare
Affinity Labs, 838 F.3d at 1258 (finding claims related to
wirelessly communicating regional broadcast content were
directed to an ineligible abstract idea because “nothing in
claim 1 . . . is directed to how to implement out-of-region
broadcasting on a cellular telephone”), and Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316
(Fed. Cir. 2016) (finding claims related to email filtering
were directed to an ineligible abstract idea where there was
“no restriction on how the result is accomplished” and the
“mechanism . . . is not described”), with McRO, 837 F.3d at
1307, 1313–14 (finding claims to be directed to a patenteligible
non-abstract improvement in an existing technological process because the claims recited “specific” rules
that allowed automation of a previously manual process of
lip synching three-dimensional animated characters).
In accordance with the above precedents, we conclude
that appealed claims 2–4 of the ’662 patent are patent-
eligible because they are directed to a non-abstract improvement in
an existing technological process (i.e., error
checking in data transmissions). By requiring that the permutation applied
to original data be modified “in time,”
claim 2, which is incorporated into all appealed claims, recites a specific
implementation of varying the way check
data is generated that improves the ability of prior art error detection systems
to detect systematic errors. See ’662
patent at col. 2, ll. 51–53.


Rather, to determine whether the claims
here are non-abstract, the more relevant inquiry is
“whether the claims in th[is] patent[ ] focus on a specific
means or method that improves the relevant technology or
are instead directed to a result or effect that itself is the
abstract idea and merely invoke processes and machinery.”
McRO, 837 F.3d at 1314; cf. Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding
claims to be directed to a patent-ineligible abstract idea because
“the focus of the claims [wa]s not on such an improvement in computers as tools,
but on certain independently
abstract ideas that use computers as tools”).
In the present case, the appealed claims recite a sufficiently specific implementation
(i.e., modifying the permutation applied to the original data “in time”) of an existing
tool (i.e., check data generating device) that improves the
functioning of the overall technological process of detecting
systematic errors in data transmissions.

The bottom line

For the foregoing reasons, we hold that claims 2–4 are
not directed to an abstract idea at step one of Alice. We
have considered Appellees’ remaining arguments and find
them unpersuasive. Accordingly, we reverse the district
court’s grant of Appellees’ Rule 12(c) motion finding that
claims 2–4 are ineligible on the pleadings.

Thursday, November 14, 2019

The "Courts, Intellectual Property and the Internet subcommittee" to hold hearing on the CAFC decision in Arthrex

BloombergLaw writes of Congressional response to the Arthrex decision of the CAFC:

A House Judiciary panel will examine a recent Federal Circuit decision that Patent and Trademark Office
administrative judges were unconstitutionally appointed.

The committee’s Courts, Intellectual Property and the Internet subcommittee is planning a Nov. 19
hearing to discuss how the ruling in Arthrex v. Smith & Nephew affects litigants and attorneys filing challenges at the Patent Trial and Appeal Board.


Arthrex “threatens to inject an enormous amount of uncertainty into the patent system,”
U.S. Rep. Hank Johnson (D-Ga.) said in an emailed statement. Johnson has been working with his
Senate Judiciary counterparts to rewrite federal patent eligibility law.

The U.S. Court of Appeals for the Federal Circuit said PTAB judges should have been appointed by the president
and confirmed by the Senate because of the power they had. The Commerce Department secretary has been appointing
the judges since Congress passed a 2011 law that created the administrative patent review process.

The court addressed the issue by severing part of the law barring PTAB judges from being fired without cause.
Johnson questioned that move.

“I am concerned that the Arthrex court’s remedy of removing civil service protections for administrative patent judges means
that there may not be enough transparency into when political pressure may have affected a case, to say nothing of being unfair to the
civil servants who signed up for a different position than they now have,” Johnson said.

The Federal Circuit panel said its ruling only applies to cases where litigants have presented an appointments clause challenge on appeal.
The court ordered a new hearing before a new panel of PTAB judges, in a challenge filed by Smith & Nephew Plc over an Arthrex Inc. patent for a surgical device.


The CAFC wrote in Arthrex on 31 October 2019:

Arthrex, Inc. appeals from the final written decision of
the Patent Trial and Appeal Board holding claims 1, 4, 8,
10–12, 16, 18, and 25–28 of U.S. Patent No. 9,179,907 unpatentable as anticipated.
Arthrex appeals this decision
and contends that the appointment of the Board’s Administrative Patent Judges (“APJs”)
by the Secretary of Commerce, as currently set forth in Title 35, violates the
Appointments Clause, U.S. Const., art. II, § 2, cl. 2. We
agree and conclude that the statute as currently constructed makes the APJs principal officers.
To remedy the violation, we follow the approach set forth by the Supreme
Court in Free Enterprise Fund v. Public Company Accounting Oversight Board, 561 U.S. 477 (2010) and followed by
the D.C. Circuit in Intercollegiate Broadcasting System,
Inc. v. Copyright Royalty Board, 684 F.3d 1332 (2012). As
the Supreme Court instructs, “‘[g]enerally speaking, when
confronting a constitutional flaw in a statute, we try to
limit the solution to the problem,’ severing any ‘problematic portions
while leaving the remainder intact.’” Free Enterprise Fund, 561 U.S. at 508 (quoting Ayotte v. Planned
Parenthood of Northern New Eng., 546 U.S. 320, 328–29
(2006)). We conclude that severing the portion of the Patent Act restricting
removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional
appointment problem.
As the final written decision on
appeal issued while there was an Appointments Clause violation, we vacate and remand. Following Lucia v. S.E.C.,
138 S. Ct. 2044 (2018), the appropriate course of action is
for this case to be remanded to a new panel of APJs to
which Arthrex is entitled.

Of a waiver issue:

Appellees and the government argue that Arthrex forfeited its
Appointments Clause challenge by not raising the
issue before the Board. Although “[i]t is the general
rule . . . that a federal appellate court does not consider an
issue not passed upon below,” we have discretion to decide
when to deviate from that general rule. Singleton v. Wulff,
428 U.S. 106, 120–21 (1976). The Supreme Court has included Appointments
Clause objections to officers as a
challenge which could be considered on appeal even if not
raised below. Freytag v. Commissioner of Internal Revenue,
501 U.S. 868, 878–79 (1991); Glidden Co. v. Zdanok,
370 U.S. 530, 535–36 (1962).


Because the Secretary continues to have the power to appoint APJs and those APJs continue to decide patentability
in inter partes review, we conclude that it is appropriate for
this court to exercise its discretion to decide the Appointments Clause challenge here.
This is an issue of exceptional importance, and we conclude it is an appropriate use
of our discretion to decide the issue over a challenge of

The big issue:

The issue, therefore, is
whether APJs are “Officers of the United States” and if so,
whether they are inferior officers or principal officers; the
latter requiring appointment by the President as opposed
to the Secretary of Commerce. We hold that in light of the
rights and responsibilities in Title 35, APJs are principal


The only two presidentially-appointed officers
that provide direction to the USPTO are the Secretary of
Commerce and the Director. Neither of those officers individually
nor combined exercises sufficient direction and supervision over APJs to render them inferior officers.


Having considered the issues presented, we conclude
that APJs are principal officers. The lack of any presidentially-appointed officer who can review, vacate, or correct
decisions by the APJs combined with the limited removal
power lead us to conclude, like our sister circuit in Intercollegiate, which dealt with the similarly situated CRJs, that
these are principal officers. While the Director does exercise oversight authority that guides the APJs procedurally
and substantively, and even if he has the authority to dedesignate an APJ from inter partes reviews, we conclude
that the control and supervision of the APJs is not sufficient to render them inferior officers. The lack of control
over APJ decisions does not allow the President to ensure
the laws are faithfully executed because “he cannot oversee
the faithfulness of the officers who execute them.” Free Enterprise Fund, 561 U.S. at 484. These factors, considered
together, confirm that APJs are principal officers under Title 35 as currently constituted.

Separately, from Blawgsearch on 14 November 2019:

Wednesday, November 13, 2019

Mina Chang matter, deja vu all over again?

Back in the year 2006, IPBiz had a post
Resume of Trump's E.J. Ridings questioned

Fast forward to 2019, and one had the following text:

NBC News claims that Mina Chang, a deputy assistant secretary in the State Department's Bureau of Conflict and Stability Operations, also faked an issue of Time magazine with her face on the cover and made false claims about graduating from Harvard University and her appointment to a nonexistent position with the United Nations, among other misleading lines in her State Department biography and LinkedIn experience.


CAFC finds error in SD Cal analysis of design patent infringement in Columbia Sportswear case; also discusses "false testimony" issue

The outcome in Columbia Sportswear :

Because we conclude that the court did not err in holding claims 2
and 23 of the ’270 patent invalid but that it did err in granting summary
judgment of infringement for the ’093 patent [D657,093],
we affirm-in-part, reverse-in-part, and remand for further

Of the issue of false testimony within the case:

Second, Columbia submits that Dr. Block’s testimony
regarding Fottinger entitles it to a new trial. Specifically,
Dr. Block testified at trial that Fottinger’s use of a “25
mesh” with half-millimeter spots yielded an embodiment
with 36% coverage. Both Seirus and Columbia agree that
this testimony was incorrect. Appellant’s Br. 68; Appellee’s
Br. 64. Seirus characterizes Dr. Block’s testimony as an
error in interpreting how the dot pattern in Fottinger repeated, Appellee’s Br. 67, while Columbia characterizes it
as intentionally introduced false testimony, Appellant’s Br.

We have considered the issue of false testimony in at
least two cases
, Fraige v. American-National Watermattress Corp.,
996 F.2d 295 (Fed. Cir. 1993), and Rembrandt
Vision Technologies, L.P. v. Johnson & Johnson Vision
Care, Inc., 818 F.3d 1320 (Fed. Cir. 2016). Both came to us
after denials of motions under Rule 60(b), which specifically provides for relief from a judgment in the case of
fraud. Even putting aside this procedural difference, however, the facts here—
a few lines of mistaken expert testimony—are in stark contrast to the facts in those cases. For
example, in Fraige, the defendant’s fraudulent conduct was
so significant that the court imposed sanctions against the
defendant under Fed. R. Civ. P. 11 and referred the matter
of misconduct to the United States Attorney. 996 F. 2d at
296–97. In Rembrandt, an expert falsely testified about
performing experiments material to the issues in the case
and withheld data that would have undermined his opinions. 818 F.3d at 1323–24. Such conduct infects the
proceedings and can result in an unfair trial, but the record
here is not comparable. Even if Dr. Block purposefully misrepresented the contents of Fottinger, Fottinger itself was
in the record for the jury to consider. The jury could have
easily verified any representations about the reference.
Moreover, Columbia had ample opportunity to cross-examine Dr. Block on his incorrect understanding of Fottinger’s
disclosure. Under these circumstances and given the uncomplicated nature of the evidence, we cannot conclude
that Dr. Block’s misstatements warrant a new trial

Of the infringement matter:

Given the record in this case, we are persuaded that
the district court erred in granting summary judgment of
infringement for two reasons: (1) the court improperly declined to consider the effect of Seirus’s logo in its infringement analysis and (2) the court resolved a series of
disputed fact issues, in some instances relying on an incorrect standard, that should have been tried to a jury.
The district court relied on one precedent from this
court—L.A. Gear—for the proposition that logos should be
wholly disregarded in the design-infringement analysis. In
that case, the parties did not dispute that the patented and
accused designs were substantially similar. L.A. Gear, 988
F.2d at 1125. In fact, “copying [was] admitted.” Id. In
evaluating infringement there, we explained that design
infringement is not avoided “by labelling.” Id. at 1126. A
would-be infringer should not escape liability for design patent infringement if a design is copied but labeled with its
name. But L.A. Gear does not prohibit the fact finder from
considering an ornamental logo, its placement, and its appearance as one among other potential differences between
a patented design and an accused one. Indeed, the fact
finder is tasked with determining whether an ordinary observer would find the “effect of the whole design substantially the same.” Gorham, 81 U.S. at 530. It would be
inconsistent with this mandate to ignore elements of the
accused design entirely, simply because those elements included the name of the defendant.

Monday, November 04, 2019

CAFC tackles meaning of "travel trailer"

The outcome:

Because we hold the
Board erred in concluding “travel trailer” does not limit the
scope of the claims, we reverse and remand for further proceedings consistent with this opinion.

Of the "structure" of a claim preamble, the CAFC noted

The parties dispute whether the preamble phrase
“travel trailer” limits the claims. Appellants begin by arguing that the claims have no preamble at all. They argue
that “[a] travel trailer having . . .” is not a preamble and
does not use a transition word. Appellants’ Br. 23. We do
not agree. Though this claim does not use the typical claim
language (comprising) which denotes the transition between the preamble and the body, the word “having” performs the same role here.

As to traval trailer:

To the extent that the Board determined that “travel
trailer” is simply a statement of intended use and not a
structural limitation, we do not agree. Appellants relied on
two pieces of extrinsic evidence, Miller and Woodall’s, to
support their assertion that “travel trailer” is a specific
type of recreational vehicle that includes a living quarters.

Life in Washington DC in winter 1863/1864

Further to an earlier IPBiz post

one notes a post by the book's author titled

The year Washington, D.C. trembled (and danced) behind its barricades which appeared on November 3, 2019.

Talking about the winter of 1863-1864, the text mentions "the great U.S. Patent Office Ball":

The season had begun as always with a New Year’s reception at the Executive Mansion,
hosted by the Lincolns, then had launched itself into a frenzy whose outward manifestation
was the city’s newest obsession: dancing. Washingtonians were crazy about it.
They were seen spinning through quadrilles, waltzes, and polkas at the great U.S. Patent Office Ball,
the Enlistment Fund Ball, and at “monster hops” at Willard’s hotel and the National.

Colfax, later to be Vice-President, is mentioned:

Politicians such as Secretary of State William Seward and Congressman Schuyler “Smiler” Colfax threw musical soirees.

See an earlier IPBiz post which noted:

Related to "Mayor Pete" of South Bend, U.S. Grant's first vice-president was
Schuyler Colfax of South Bend, Indiana, who was the first person to have served as Vice-President and Speaker of the House of Representatives.

[Query: Is "Mayor Pete" Smiler2?]

Of the fortifications surrounding Washington D.C.:

For in the winter of 1863-64, Washington was the most heavily defended city on earth.
Beyond its houses and public buildings stood 37 miles of elaborate trenches and fortifications
that included 60 separate forts, manned by 50,000 soldiers. Along this armored front bristled some
900 cannons, many of large caliber, enough to blast entire armies from the face of the earth.

Of the XXII Corps, wikipedia notes

XXII Corps was a corps in the Union Army during the American Civil War.
It was created on February 2, 1863, to consist of all troops garrisoned in Washington, D.C.,[2] and
included three infantry divisions and one of cavalry (under Judson Kilpatrick, which left
to join the Army of the Potomac during the Gettysburg Campaign). Many of its units were transferred to the Army of the Potomac during Grant's Overland Campaign.[2]

Friday, November 01, 2019

Twilight Zone "I am the Night - Color Me Black," a message for 2019?

In " I am the Night - Color Me Black," the 26th episode of the fifth (and final) season of the initial Twilight Zone (airing March 27, 1964), one has a story of relevance to the year 2019.

One Jagger is about to be hung in the town square, supervised by the sheriff, for the murder of a cross-burning psychopathic bully. The date is squarely set as May 25, 1964. In the real world of 1964, executions were not by hanging (except maybe in Utah, and this location was referenced as a "remote little midwestern village) and they were not conducted by local authorities. But this is the Twilight Zone, and this is a symbolic lynching of a white man who killed a man who was hostile to blacks.

The attending clergyman is black (played by Ivan Dixon) who gives interesting final comments:

Now, you and i are a different faith, and obviously a different color, but you stood up for me and mine.
You spoke for us, and god help us, you killed for us.
And i feel you deserve some measure of peace.


When he came at you, Jagger did it feel good to you then? What difference? When you aimed that gun at his head, that wasn't such a bad moment, was it? Good, bad, who cares? When you killed him, Jagger, when you blew his head off, there were no regrets then, were there? You enjoyed that, didn't you? You know it! Yes, yes, i i know it now.
Now i know it too well.
You're guilty


Do you know why it's dark? Do you know why it is night all around us? Do you know what the blackness is? It's the hate he felt, the hate you felt, the hate all of us feel, and there's too much of it.
There's just too much.

Of an interchange of Jagger to the clergyman:

Jagger: It's important to get with the majority, isn't it? That's that's a big thing nowadays, isn't it, reverend? That's all there is, is the majority.
The minority must have died on the cross 2,000 years ago.
You seen the light, reverend.
You really seen the light.

As to omissions of fact:

But there's just a few disturbing facets about this case.

One the murdered man was not a decent man.
He was a cross-burning, psychopathic bully who attacked the man in there.
And two, Deputy Pierce here saw it happen and then perjured himself.
Now, wait a minute! Perjured is the word, deputy.
Now, you said jagger shot him from across the room.
No such thing.
The murdered man had powder burns all over him.

This might not have proven self-defense but it would've pointed to it and maybe helped it.
And you, sheriff koch, you saw the body.
But i didn't hear any comments on those powder burns when you gave your testimony.
And your courageous editor here in covering the trial didn't see fit to include this insignificant
addendum though he also knew at the time he was being very selective about what truths he was writing about, what truths he wasn't.

You're right, deputy.
Justice is being served on a platter with its tongue cut out just like the carcass of any dead animal.

One can have judicial opinions which are very selective about the facts they mention, and those they don't mention.

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