Friday, January 31, 2020

Kingston Technology "arthrexed"

The outcome:

In its opening brief, Polaris Innovations Limited argues that the final written decision at issue in this appeal
exceeds the scope of the Patent Trial and Appeal Board’s
authority and violates the Constitution’s Appointments
Clause. See Appellant’s Br. 52 (citing U.S. Const. art. II,
§ 2, cl. 2). This court recently decided this issue in Arthrex,
Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir.
2019). Accordingly, the Board’s decision in No. IPR2016-
01621 is vacated, and the case is remanded to the Board for
proceedings consistent with this court’s decision in Arthrex.

Thursday, January 30, 2020

Koninklijke Philips loses at CAFC

The outcome was that the appellant Koninklijke Philips lost:

Koninklijke Philips N.V. (“Philips”) appeals the decision of the Patent Trial and Appeal Board (“Board”) in an
inter partes review of U.S. Patent No. 7,529,806 (“the ’806
patent”), in which the Board found that claims 1–11 were
unpatentable as obvious. For the reasons below, we affirm

The arguments of appellant:

First, Philips argues that the Board erred by instituting inter
partes review on the ground that the claims would have
been obvious over SMIL 1.0 in light of Hua because Google
did not advance that combination of prior art in its petition.

Second, Philips contends that the Board erred in finding
that the claims would have been obvious in view of SMIL
1.0 because the Board impermissibly relied on “general
knowledge” to supply a missing claim limitation.

Third, Philips argues that even if we reject one or both of Philips’s
first two arguments, the Board’s obviousness findings are
nevertheless unsupported by substantial evidence.

Of the first argument:

We hold that the Board erred by instituting inter
partes review based on a combination of prior art references not advanced in Google’s petition. Under 35 U.S.C.
§ 311(a), a party may seek inter partes review by filing “a
petition to institute an inter partes review.” The Supreme
Court has explained that this language does not “contemplate a petition that asks the Director to initiate whatever
kind of inter partes review he might choose.” SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1355 (2018). Rather, “[f]rom the
outset, we see that Congress chose to structure a process in
which it’s the petitioner, not the Director, who gets to define the contours of the proceeding.” Id. More specifically,
“the statute envisions that a petitioner will seek an inter
partes review of a particular kind—one guided by a petition
describing ‘each claim challenged’ and ‘the grounds on
which the challenge to each claim is based.’” Id. (quoting
35 U.S.C. § 312(a)(3)); see also id. (“[R]ather than create
(another) agency-led, inquisitorial process for reconsidering patents, Congress opted for a party-directed, adversarial process.”)
In sum, we conclude that the Board erred by instituting
inter partes review of claims 1–11 of the ’806 patent based
on obviousness over SMIL 1.0 and Hua because Google did
not advance such a combination of references in its petition

Of the second argument:

Although the prior art that can be considered in inter
partes reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s
knowledge when determining whether it would have been
obvious to modify the prior art. Indeed, under 35 U.S.C.
§ 103, the obviousness inquiry turns not only on the prior
art, but whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person
having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103. Regardless of the tribunal,
the inquiry into whether any “differences” between the invention and the prior art would have rendered the invention obvious to a skilled artisan necessarily depends on
such artisan’s knowledge. Dow Jones & Co. v. Ablaise Ltd.,
606 F.3d 1338, 1349, 1353 (Fed. Cir. 2010) (affirming the
district court’s grant of summary judgment of invalidity on
“grounds of obviousness under [a single prior art reference]
in view of general knowledge in the field,” in part because
the obviousness “analysis requires an assessment of the ‘. . .
background knowledge possessed by a person having ordinary skill in the art’” (emphasis added) (quoting KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007))); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir.
2016) (in an inter partes review, acknowledging that common sense and common knowledge can, under certain circumstances, be used to supply a missing limitation);
Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir.
2013) (in an ex parte reexamination, in which the applicable prior art is similarly limited to patents and printed publications, determining that “[a]s KSR established, the
knowledge of such an artisan is part of the store of public
knowledge that must be consulted when considering
whether a claimed invention would have been obvious”).


Philips argues that even if the Board is permitted to rely on general knowledge to supply a missing claim
limitation in an inter partes review, doing so in this case
violates Arendi. In Arendi, we cautioned that although
“common sense and common knowledge have their proper
place in the obviousness inquiry,” (a) invoking “common
sense . . . to supply a limitation that was admittedly missing from the prior art” should generally only be done when
“the [missing] limitation in question [is] unusually simple
and the technology particularly straightforward;” and
(b) references to common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support.” 832 F.3d at 1361–62. We concluded in Arendi that
the Board erred in relying on common sense because such
reliance was based merely upon “conclusory statements
and unspecific expert testimony.” Id. at 1366.
Philips argues that this case is analogous to Arendi.
We disagree. In Arendi, the Board relied on nothing more
than “conclusory statements and unspecific expert testimony” in finding that it would have been “common
sense . . . to supply a limitation that was admittedly missing from the prior art,” id. at 1362, 1366 (emphasis added).
Conversely, here the Board relied on expert evidence,
which was corroborated by Hua, in concluding that pipelining was not only in the prior art, but also within the general
knowledge of a skilled artisan. M

Of the third argument:

The Board’s reliance on the ’806 patent’s disclosure was
proper. As an initial matter, it is appropriate to rely on
admissions in a patent’s specification when assessing
whether that patent’s claims would have been obvious.
See, e.g., PharmaStem Therapeutics, Inc. v. ViaCell, Inc.,
491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in the
specification regarding the prior art are binding on the patentee for purposes of a later inquiry into obviousness.”).
What matters is that substantial evidence supports the
findings and inferences made based on those admissions.
Here, the Board properly relied on this disclosure as evidence that it would have been within a skilled artisan’s
abilities to take advantage of multithreaded environments
to develop a simultaneous download and playback application. See J.A. 202–203. The Board supported its additional
findings—including that a skilled artisan would have been
motivated to combine SMIL 1.0 with pipelining to achieve
the claimed invention and would have had a reasonable expectation of success in doing so—with, for example, citations to an expert declaration as well as the Hua reference.
See, e.g., Final Written Decision, at 22–23; see also J.A. 315;
J.A. 199–200 (¶ 202).
Accordingly, we determine that the Board’s factual
findings underlying its obviousness determination are supported by substantial evidence

Friday, January 24, 2020

Impeachment and the Civil War

Greg Jarrett has a piece titled Under Dems’ Trump impeachment justification, Lincoln would’ve been impeached which includes a reference to Doris Kearns-Goodwin's book "A Team of Rivals":

I recently read historian Doris Kearns Goodwin’s brilliant book “Team of Rivals.” In Chapter 24, she recounts how Republican President Lincoln utilized the powers of his office to ensure that Union soldiers in the field, who vigorously supported Lincoln’s reelection in 1864, were given the chance to cast their ballots for him. Most states permitted absentee ballots for troops. But the crucial state of Indiana did not.

So Lincoln wrote General William T. Sherman encouraging him to grant his men leave to return briefly to the northern state of Indiana. “Any thing you can safely do to let … soldiers, or any part of them, go home and vote at the State election, will be greatly in point,” wrote the president. Despite the risk that this might compromise his troop strength, Sherman consented.

That issue goes to obtaining political benefit from an action.

However, the more interesting Civil War era impeachment issue was the impeachment in February 1868 of Andrew Johnson, a Democrat, for, among other things, violating the Tenure in Office Act, which prohibited the President from removing from office, without the concurrence of the Senate, those officials whose appointment required Senate approval.

See also

the post by JONATHAN TURLEY at

The Tenure in Office Act was repealed about twenty years later, and effectively declared unconstitutional in the Myers case.

As to allowing soldiers to vote, one might want to know "why" active soldiers would vote Union/Republican. The Union/Republican platform included a plank for soldier benefits, which was later somewhat adopted by the Democrats, almost as an afterthought. In the pre-August 1864 time period, Lincoln thought he was going to lose, because of the apparent candidacy of Fremont and the horrific Union casualties. Lincoln removed Blair from the cabinet, facilitating the withdrawal of Fremont. And Sherman took Atlanta. Curiously, Lincoln did not carry his birth state of Kentucky in either 1860 or 1864 (and Kentucky soldiers (unlike those of other states) voted Democrat. The governor of Kentucky backed McClellan in 1864.

See also the article by L. Ebert, Benjamin Curtis, Equivalents, And Impeachment, Intellectual Property Today, page 33 (March 1999) [available LEXIS], which includes the text:

Andrew Johnson, a Democrat and former Senator and war-time governor from Tennessee, was elected Vice-President to Abraham Lincoln on the Union ticket in 1864. Assuming the presidency only six weeks after inauguration, Johnson ultimately clashed in policy with Radical Republicans in Congress. In 1867, Congress passed the Tenure in Office Act, which although intended primarily to protect lower level patronage functionaries, barred the removal, without Senate approval, of Cabinet members during the term of the President who had appointed them.
Secretary of War Stanton, formerly a successful lawyer in Washington, D.C. n3, was serving as a conduit of infor-mation to the Radical Republicans, and Johnson wanted to remove him. Taking advantage of a provision in the Ten-ure in Office Act that allowed suspension of Stanton while Congress was not in session, Johnson replaced Stanton with Grant. However, on reconvening, the Senate refused to concur in Stanton's removal, and Johnson, on February 21, 1868, removed Stanton n4, at least on paper. Congress was quick to act.

n3 Stanton was a lead defense attorney in the trial of Congressman Daniel Sickles, accused of murdering his wife's lover. Stanton successfully utilized a defense of temporary insanity. Sickles was later a corps commander at Gettysburg (making an un-fortunate decision to advance downhill toward the Peach Orchard), and later would be involved in Reconstruction as a district military commander.
n4 Ironically, Johnson was encouraged to do this by the FAILURE of a vote on impeachment introduced by Ohio Congressman James M. Ashley. The next vote on impeachment would succeed. Separately, Grant returned the keys to the office to Stanton, and Stanton, to ensure his permanence in office, barricaded himself in the war department office. In literally living at his work-place, Stanton became the prototype for New York associates. See also, "New Lures for Burned-Out Lawyers," Wall St. Jour. (Feb. 2, 1999), B1).

In response to Andrew Johnson's impeachment on February 22, 1868 n5, a team of defense attorneys including Ben-jamin Curtis, Attorney General Stanbery, Jeremiah Black, William Evarts, and T. A. R. Nelson was formed.

n5 Congress stopped the clock to ensure the impeachment would be on Washington's birthday.

The actual trial began on March 30, 1868, with Ben Butler announcing that impeachment was a political, not a legal, proceeding. Curtis opened the case for the defense on April 9, and narrowed the eleven charges down to two: John-son's removal of Stanton and an omnibus grouping of other charges. Curtis argued that Stanton was not covered by the Tenure of Office Act, because he was appointed by Lincoln before the act was passed. If the law did apply to Stanton, then Johnson had tried and failed. In any event Johnson was within his rights because the act was certainly unconstitutional (as the Supreme Court did later find n6 ). If the act were constitutional, the House would still have to present proof that Johnson willfully intended to misconstrue and violate the act.

n6 This sub-plot is in itself interesting. The Tenure in Office Act was repealed, at the request of President Cleveland, on March 3, 1887. During the lifetime of the Tenure in Office Act, a law was passed in 1876 which covered postmasters. This law was at issue in Myers v. United States, 272 U.S. 52 (1926). The majority opinion of Chief Justice Taft discussed the Tenure in Office Act (272 US at 166-177) and found that the Tenure in Office Act of 1867 was invalid (272 US at 176). Both Justices Holmes and Brandeis dissented in Myers. An issue at stake in Myers was the general acquiescence by the Executive in the power of Congress to forbid the president alone to remove executive officers. The pending Zurko case has an issue of acquiescence by the PTO in the "clearly erroneous" standard of review.
A historian, reviewing the legal arguments, seemed uncomfortable with the concept of "argument in the alternative:"
The defense case, however, had its own weaknesses, notably that its arguments seemed patently contradictory. On the one hand, Johnson's attorneys argued that since the Tenure of Office Act did not apply to Stanton, his removal was perfectly legal, although in that case it was hard to explain why in 1867 the President had followed the letter of the law by suspending the Secretary and informing the Senate of his reasons. On the other hand, they contended that Johnson had violated the statute in order to allow the Supreme Court to rule on its constitutionality, an argument that would have allowed the President to determine which laws he was required to obey. n7

n7 Eric Foner, Reconstruction: America's Unfinished Revolution, Harper & Row, 1988, pp. 335-336.
The final vote came in mid-May, with only 35 senators voting for conviction, one short of the required two-thirds ma-jority. Seven Republicans voted for Johnson, although it was understood that a number of others would have voted for Johnson if necessary to secure acquittal. A number of these senators, as well as certain northern financial interests, were distrustful of Johnson's would-be successor, Senator Ben Wade, Senate President protem. n8 Much has been said of the vote of Kansas Republican Edmund G. Ross. However, it should be noted that there seem to be varying opin-ions on this matter, n9 with the possibility raised that Ross secured patronage posts for his friends. n10

n8 In spite of the conflict of interest, Wade voted on Johnson's impeachment.
n9 Note that there are a number of articles, of varying positions, on the Johnson impeachment, available through the internet. This observation underscores the reality that the internet features diversity as distinct from the uniformity of television. Trade-mark practitioners seeking to attract Generation Y should note this well.
n10 Mark A. Plummer, "Profile in Courage? Edmund G. Ross and the Impeachment Trial," Midwest Quarterly, (Autumn 1985), 27, 39-46; Ralph J. Roske, "The Seven Martyrs?" AHR, (January 1959), 66, 323-329.

What happened next? Johnson got the second highest number of votes in the first two rounds of the Democratic convention. Seymour was nominated by the Democrats, but lost to Grant. Johnson was later elected to the U.S. Senate from Tennessee. Stanton resigned as Secretary of War in 1868 and returned to private practice; he got the U.S. Supreme Court position he coveted, but died before serving.

Explosion rocks Houston

In covering the large explosion in Houston which happened on 24 January 2020, click2 reported:

Authorities gave an update Friday morning and said that the chemical that is coming from the explosion site is called polypropylene, which is lighter than air and will dissipate. Officials said they have been monitoring air quality and have not picked up any hazards.

Houston Police Chief Art Acevedo said that one employee is unaccounted for. The family is on the scene, but crews cannot focus on searching for the person until they have closed the valves that are still feeding the chemical compound into the damaged area.


According to Meteorologist with the Harris County Flood Control District, Jeff Lindner, the explosion was so strong it was caught on radar.

Explosion in NW Houston...radar picked up a return near the location at the same time #houwx #hounews

1 employee unaccounted for following massive explosion, chief says

keywords: Watson Grinding, Gessner Road

Thursday, January 23, 2020

Warren gets ripped in Iowa over student loan forgiveness; a need to re-do a law review article?

From the post Elizabeth Warren clashes with Iowa father who calls her student loan policy unfair :

Having waited patiently in line for a photo, he said:
“I just wanted to ask one question. My daughter is getting out of school.
I've saved all my money. She doesn't have any student loans. Am I going to get my money back?”

“Of course not,” Senator Warren replied.

“So you're going to pay for people who didn't save any money and those of us
who did the right thing get screwed,” replied the man in an infuriated tone.

Recall the debate between Biden and Warren about bankruptcy. Then compare comments made
concerning the above yahoo post such as

[Warren] does not realize that there are more people that worked hard through
college or their parents worked hard so they have no student loans than
the people that just went to party and now can not pay their debts.
Also it is part time professors like her teaching 1 class a semester while making 350K that are the problem with high tuition

with the text about the Biden/Warren debate:

To Warren, bankruptcy is fundamentally about bad luck rather than irresponsible behavior. The changes were mostly unnecessary additional burdens for struggling families that would enrich powerful special interests. Supporters of the changes, like Biden, believed that too many people were filing for bankruptcy — often people with more ability to repay their debts — a problem that was costly not just to creditors but to ordinary nonbankrupt consumers.


See also

UPDATE on 26 Jan 2020:

From CBS News

Party rules make 15% the typical cutoff for awarding delegates, and supporters can shift to other candidates if they don't reach this threshold. So, it's critical to look at voters' second choices and who else they're considering, too.

Joe Biden [25%] could get a boost from his status as the second choice of those backing Amy Klobuchar [7%], as well as from those polling lower. If they move to him on caucus night, he could see gains. Meanwhile, Warren [15%] is right on the line, and her backers' second choice is Sanders [26%], more so than Biden or Buttigieg [22%]. That would mean Sanders could stand to pick up even more delegates if Warren backers don't make the cut in some places. If Warren holds at her current level or gains, this race will remain tight. All told, the caucuses look like they might very likely be decided by these kinds of local-level movements.


Separately, the Des Moines Register endorsed Warren.

The "deliverance" theory of Northern motivation in the American Civil War

From the post Varon: Union Forces Sought South’s Salvation in U.S. Civil War :

Varon shares the modern scholarly consensus that the Confederacy was formed to defend slavery. At the same time, she wanted to explain why the Union forces fought. Scholars have disagreed on Northern war aims, with some emphasizing that Northerners wanted to preserve the nation, while other scholars assert that the North fought to abolish slavery. Varon notes that U.S. President Abraham Lincoln, a Republican, was able to mobilize a broad coalition of Northerners and anti-Confederate Southerners, including African Americans, around a theme of “deliverance.”

“‘Deliverance’ was a key word in 19th-century Northern wartime discourse that you find appearing again and again, in all these firsthand sources,” Varon said. “Northerners believed they were fighting a war to deliver the Southern masses from the dominance of an elite slaveholding oligarchy – a ‘slave power conspiracy’ as Northerners put it, that had retarded the South’s moral and material progress.”

According to this Northern theory, elite slaveholders – who were a tiny minority of the Southern population, but held the overwhelming balance of power and wealth – terrorized, seduced and duped Southerners into seceding against their best interests.

Varon points out that Northerners underestimated how deeply white Southerners were invested in slavery, how deeply even non-slaveholders had bought into the idea that slavery was a system of social control and of economic gain that was central to their way of life.

“My challenge in the book became to explain in a sense why Northerners bought in so tenaciously to the idea that they could save the South even in the face of massive evidence that the Confederates didn’t want to be saved,” Varon said. “In a sense, the book is about a war of ideas and ideologies. I tried to explain how deliverance rhetoric fulfilled political needs, spiritual needs and emotional needs, and thereby helped Northerners sustain their morale and momentum.”


William & Mary archaeologists find Civil War-era jug believed to be rare ‘witch bottle’ on I-64

CAFC reverses SDNY in Mirror Worlds v. Facebook

The outcome in Mirror Worlds v. Facebook was that Facebook lost:

We agree with Mirror Worlds that the district court’s
judgment must be reversed. The district court relied for its
decision on an erroneous conclusion that there is no genuine dispute about certain facts.
Facebook defends the summary judgment on alternative grounds. We will not affirm
on those alternative grounds. We reverse the court’s judgment and remand for further proceedings.

As to Facebook:

Facebook provides a popular social networking service.
Several features of Facebook’s service are relevant to this
appeal. According to Facebook’s description in this case,
the “News Feed” for a Facebook user displays a variety of
items that Facebook has “deemed to be relevant” to that
user. J.A. 1104. “Timeline,” Facebook says, “focuse[s] on a
particular Facebook user,” showing “basic information
about that user, as well as actions taken on Facebook by or
directed toward that user.” Id. And “Activity Log” provides
“a list of activities that occurred on Facebook that pertain
to a particular user.” J.A. 1106.2

Generally, the content Facebook users see is an amalgamation of “objects” and “associations,” which are two
classes of data. Users, pictures, and comments are types of
objects, while associations describe the relationship between objects. For example, if user “Alice” posts a comment
on Facebook, an “authorship” association would connect Alice and the comment.

In providing content to users, both News Feed and
Timeline rely on certain “front-end” hardware and software. The evidence—when understood most favorably to
Mirror Worlds, as required when considering summary
judgment—indicates that these front-end components
include a user’s desktop computer, smartphone, or comparable device and its resident software, together with certain “web” technologies, including a PHP layer. See, e.g.,
J.A. 1483–85, 1488, 1550, 2117–18, 2132, 2422, 2599. The
two services also rely on certain “back-end” computing
equipment and associated software to which the user’s device is connected over a network such as the Internet. The
back-end infrastructure for News Feed is called “Multifeed.” The “Timeline back-end system” supports both the
Timeline and Activity Log features. In the summary-judgment proceedings, Mirror Worlds asserted that those two
back-end systems were the “computer system[s]” for purposes of the claims.


Fact discovery was not due to close until September
2018. See J.A. 1045–46, 1057, 1061. But in April 2018,
after completion of the briefing on claim construction—but
before significant expert or other factual discovery had occurred—Facebook filed a letter with the court, asking permission to file a motion for summary judgment. J.A. 1015–
17. At a status conference, Facebook argued that it had a
simple, case-ending point to make, while Mirror Worlds asserted that contention interrogatories cannot be filed under
local rules until the close of fact discovery, that it was not
accusing Facebook as a whole but had identified the two
back-end systems separately from TAO, and that the record did not even include expert disclosures or depositions.
The court granted Facebook leave to file a motion for summary judgment and set out a schedule for responses, while
allowing discovery to continue. J.A. 1065–66.

The error by the district court:

We conclude that, on the current record evidence, the
district court erred in concluding that a reasonable jury
would have to find that the Multifeed Aggregator receives
data from TAO that is not in Leaves. That erroneous conclusion was the sole basis
for the grant of summary judgment as to News Feed.

Of other matters:

First, citing Celotex Corp. v. Catrett, 477 U.S. 317
(1986), Facebook argues that it is entitled to summary
judgment under Federal Rule of Civil Procedure 56 on the
ground that Mirror Worlds failed to provide evidence that
would permit a jury to find that Leaves or TimelineDB contains every data unit received or generated by, respectively,
Multifeed or the Timeline back-end system. The Second
Circuit has explained that “when a defendant moves for
summary judgment, it is the defendant who must show entitlement to judgment, notwithstanding that, at trial, the
plaintiff will have the burden of proving every element of
its claim.” Nick’s Garage, Inc. v. Progressive Casualty Ins.
Co., 875 F.3d 107, 115 (2d Cir. 2017). “The mere assertion
by a defendant moving for summary judgment that the
plaintiff ‘has not produced any evidence’ to support an essential element of the plaintiff’s claim does not satisfy the
burden that Rule 56(a) imposes.” Id. “[U]nless the moving
defendant cites portions of the record that show its entitlement to judgment, an assertion by the defendant that the
plaintiff ‘has not produced any evidence,’ without more,
does not show that the plaintiff has insufficient evidence.”
Id. at 115–16.

Facebook, in its summary-judgment motion, did not
show that Mirror Worlds “cannot produce admissible evidence to carry
its burden” to show that Leaves or TimelineDB contains every data unit. Fed. R. Civ. P. 56(c)
advisory committee’s note to 2010 amendment. “A plaintiff
is under no obligation to ‘produce’ its evidence prior to trial,
unless such an obligation arose in response to a discovery
demand (or a court order) requiring the plaintiff to set forth
the evidence supporting its claim.” Nick’s Garage, 875 F.3d
at 115. As far as we have been shown, Facebook has not
made a discovery demand that Mirror Worlds identify all
its evidence for the “every data unit” limitation. Given that
discovery is still open, Mirror Worlds may still muster evidence to prove its claim. Facebook has not otherwise
shown that sufficient evidence cannot be produced.

Tuesday, January 21, 2020

Another list of best Civil War films

Around 19 Jan 2020, Jordan Light posted The Nine Greatest Civil War Movies of All-Time , with the movie "Glory" being number 1.

Yes, "The Good, the Bad, and the Ugly" makes number 8, just ahead of "Gone with the Wind," (7) and "The Horse Soldiers" (5).

Missing from the list was Buster Keaton's 1926 film "The General," considered by some to be Buster Keaton's best film. Also missing was "The Great Locomotive Chase" (1956), with Fess Parker as James Andrews. Also missing is "Lincoln," with Daniel Day Lewis, as well as two other Eastwood movies, The Beguiled and The Outlaw Josey Wales. Yes, The Birth of a Nation (1915) was also missing.

Algentech's U.S. patent number 10457950 related to homologous recombination


Algentech's invention optimizes the cellular process known as homologous recombination. In order to precisely insert or modify a genetic sequence, existing technologies use nucleases that introduce specific breaks in the target DNA and then rely on the cellular machinery to complete the editing process. The mechanism is simple: the DNA fragment (donor DNA) carrying the genetic modification or sequence to be inserted has at its ends sequences homologous to the DNA strand to be modified. This similarity around the cutting site is recognized by the cellular machinery: the strands assemble. The natural DNA repair process then repairs the cut zone, using the donor DNA fragment as a matrix, inserting it into the target DNA. However, the effectiveness of homologous recombination repair remains low.


ALGENTECH's invention significantly increases the efficiency of the homologous recombination process by producing two modules: (1) a multi-domain protein capable of binding to the fragment to be inserted and to the target DNA; (2) a donor DNA amplification vector that relies on a viral replication system. The technique produces a large amount of donor DNA strands, thus multiplying the efficiency of modifications introduced: a technological leap that finds applications in crop improvement, gene therapy and synthetic biology.

Virnetx loses appeal on Jan. 21, 2020 in 2019-1043 via Rule 36 Judgment

Virnetx lost its Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,746.


Sunday, January 19, 2020

The Vicksburg Campaign of the Civil War in January 1863

On Jan. 20, 1863, the 69th Indiana regiment of the Union Army that trained in Richmond, Indiana first laid siege to Vicksburg in the Civil War.

From the diary of Private John C. Kitselman :

"The latter part of the winter of 1862 and 1863 may truthfully be called the ‘winter of our discontent.’ Rebellion and treason were running at the high-water mark. From the 20th of January to the 31st of March, the 69th passed through what was in my opinion the most soul-trying experience of its history, though during that time we never fired a shot at the enemy. But there were other battles to be fought rather than those of musketry and canon. Each of us had to fight a battle within his own breast against discouragement, and I might say death, for death was sure to come, and soon, if one gave up to the influences which at that time surrounded and imperiled us.

Disease was a bigger problem than the Confederates:

The 69th Indiana, one of six regiments formed in Richmond and composed mostly of Wayne County volunteers, by war’s end had casualties of three officers and 77 enlisted men killed and mortally wounded, and three officers and 248 enlisted men dead from disease. This was one-third of total initial enlistment.)


Strictly speaking, the siege of Vicksburg, as distinct from other military operations, did not begin until May 25, 1863 when Lt. Col. John A. Rawlins issued Special Orders No. 140 for Grant. writes

On May 25th, Grant decided to besiege the city. With no reinforcements coming, food and supplies nearly gone, and after holding out for more than forty days, Pemberton finally surrendered on July 4th. Grant's Vicksburg campaign was one of the most brilliant of the war.

When was the first crossover in live action television?

In a 9 Jan 2020 post on Style Our Life titled Fun Facts About the 1960s "Batman" Series You Probably Didn't Know, there is an assertion that the first "live action" crossover involved the Green Hornet appearing in an episode of Batman:

Crossovers in the film industry usually include putting two or more fictional characters,
universes, or contexts into one story. This can be presented and organized in many ways.

But what’s really cool is that the Batman TV series was the first time this had been done in the
history of live-action television shows.

The episode in question was "The Spell of Tut," which had cameos from Van Williams and
Bruce Lee as the Green Hornet and Kato from the '60s TV show Green Hornet.

This assertion is untrue.

First, as to a definition of "live action" : Live action is a form of cinematography or videography that uses photography instead of animation.

Second, as to "fictional" characters, one must distinguish a cross-over in which there is an appearance of an actor, who plays a fictional character, in his identity as an actor, rather than in his identity as the fictional character. An example of the former is the appearance by George Reeves, as the actor who plays Superman, in Lucy and Superman, which first aired on January 14, 1957. Another example is "The Kookie Caper" episode of "77 Sunset Strip," which first aired October 9, 1959, in which Will Hutchens ("Sugarfoot") appears as the actor who plays Sugarfoot.

In the Batman episode referenced by "style our life," which is "The Spell of Tut" [first aired Sept. 28, 1966] the Green Hornet and Kato appear as fictional characters. The real star of the Tut episodes was the over-the-top acting of Victor Buono. As to "The Spell of Tut," one reviewer wrote:

The episode's Batclimb is a surprising twofer, Van Williams as The Green Hornet and Bruce Lee as Kato, eventually to receive an entire two part crossover, "A Piece of the Action"/"Batman's Satisfaction," but best of all is Robin's reaction to seeing such odd looking characters in Gotham City: "gosh Batman, what are they dressed like that for?"

However, cross-overs of fictional characters in live action TV had appeared long before 1966. In an episode of The Bob Cummings Show which aired March 21, 1957 titled "Bob Meets the Mortons," fictional character Bob Collins meets fictional character Blanche Morton of The Burns and Allen Show. [In fact, Bob deals with Gracie Allen and Blanche Morton; on June 3, 1958, in the episode Colonel Goldbrick, the fictional Bob Collins meets the real person Clarence Shoop, who portrays a major general, even though at the time Shoop was a one star general. Fictional or real character?]

Someone named joe_538 had compiled a list on imdb
TV Crossovers

These include, but are not limited to:

"Lucy makes room for Danny" (1958)
"Price on his head" (1958 episode of "Sugarfoot" with the character "Bart Maverick")
"Malihini Holiday" (1959 episode of "Hawaiian Eye" with the character "Stu Bailey" of "77 Sunset Strip.")
"Hadley's Hunters" (1960 episode of "Maverick" with both Cheyenne and Sugarfoot)

"Four Feet in the Morning" (1963 "double" cross-over between "Dr. Kildare and "The Eleventh Hour"). Of "The Eleventh Hour," the two seasons [1962-1964] featured Jack Ging as Dr. Paul Graham, a younger psychologist, working under the direction of elder psychiatrists - first played by Wendell Corey, and later Ralph Bellamy. The first year focused on Dr. Theodore Bassett [Corey] and court cases. A darker "Eleventh Hour" appeared on television in 2008-2009, with Dr. Jacob Hood (played by Rufus Sewell) saving the world from deadly scientific experiments, poisoners, rare diseases, and environmental hazards. One notes the differences in focus between 1963 and 2008.

IPBiz had commented on one episode of the Sewell series
"Eleventh Hour" depicts evil university/industry cabal in biotech

Of relevance to that episode, note the headlines at The Tampa Bay Times on 19 January 2020:

Report: Moffitt doctors failed to disclose ties

The "Thousand Talents Program" deposited money into their personal accounts in China


[researchers] would steal ideas from peer-reviewed proposals that originated in the U.S. and were
funded by U.S. agencies.


[a quote by Daniel Sullivan]: "Lawyers make you anxious. That is their job."


Thursday, January 16, 2020

The TODAY show of NBC began on January 14, 1952

The Today show on NBC, hosted by Dave Garroway, first was shown on television on Monday, January 14, 1952.
The first variant had poor ratings, but on February 3, 1953, Garroway's "co-host" became a chimpanzee named
J. Fred Muggs.

MAD Magazine in issue No. 26, published November 1955, did a parody, in which the Garroway character [ "Garrowunway" ] is
finally replaced by the chimpanzee character ["Gluggs"]. Muggs literally painted the cover of Mad No. 38 published March 1958.

In terms of legal issues, when the contract of Muggs was terminated, his handlers, Mennella and Waldron, sued an employee of NBC, for ruining the chimps career. As to the appellate disposition of this case, see: Muggs Associates v. Auerbach, Appellate Division of the Supreme Court of New York, First Department, Feb 6, 1962 15 A.D.2d 743 (N.Y. App. Div. 1962)

The problem between Muggs Associates and Auerbach arose because Auerbach was warning potential investors in Muggs Associates that NBC/Auerbach held a copyright and proprietary interest in certain works involving J. Fred Muggs.

Procedurally, Muggs Associates filed a complaint in New York Supreme Court, New York County, Special Term, part I, seeking among other things, a declaratory judgment that Auerbach had no intellectual property interest in certain (proposed) films involving J. Fred Muggs. Auerbach moved to dismiss the complaint but the Special Term judge denied the motion and scheduled trial. Auerbach appealed.

The appellate brief for Auerbach/NBC, done by Albert Brodkin in December 1961, reveals some interesting intellectual property issues. The copyright matters in this case were under common law, not under federal statutory copyright law. Brodkin relied heavily on Palmer v. DeWitt, 47 N.Y. 532. There is a quote of Justice Holmes and a reference to a Mark Twain case. An important factual issue was that the complaint never stated, as a matter of fact, that Brodkin had no intellectual property interest.

Auerbach prevailed on appeal. The reported decision states:

However, there is no allegation that the defendant [Auerbach] does not have such a copyright and proprietary interest.
While the complaint does allege that the plaintiff is the "owner" of the proposed series of shows,
such allegation is not the equivalent of an allegation that the defendant has no "copyright or proprietary interest" therein.
Absent such an allegation the complaint must fall.

By the time of the appellate decision, both Muggs and Garroway (who left TODAY on June 16, 1961) were no longer on TODAY. Garroway did appear on the 30th anniversary show of TODAY, on January 14, 1982

As to the time period, on Tuesday, February 6, 1962, the national news slots for both Cronkite and Huntley/Brinkley were 15 minutes long, beginning at 7:15pm. CBS ruled Tuesday night television, with Red Skelton, Jack Benny, and Gary Moore. ["The Beverly Hillbillies" was the number one show.] John Glenn would become the first US astronaut to orbit the earth, two weeks later, on February 20, 1962.

Also, the classic episode of The Twilight Zone "The Shelter" first aired on September 29, 1961. Construction of the Berlin Wall began August 13, 1961.

See also 7 AD2d 633:

Carmine Mennella et al., as Copartners Doing Business under the Name of J. Fred Muggs Enterprises, Respondents, v. Dave Garroway et al., Appellants

Appellate Division of the Supreme Court of the State of New York, First Department.

November 25, 1958

Order unanimously affirmed, with $20 costs and disbursements to the respondents.

No opinion.

AND 8 A.D.2d 800 (1959)

****Recall back in May 2019

“Alfred E. Neuman cannot become president of the United States,” the president told POLITICO in a 15-minute telephone interview, when asked what he thought of the South Bend, Ind., mayor. Neuman’s freckled, gap-toothed face and oversized ears have for decades graced the cover of the humor magazine Mad.


"I’ll be honest. I had to Google that," he said. "I guess it’s just a generational thing. I didn’t get the reference. It's kind of funny, I guess. But he’s also the president of the United States and I’m surprised he’s not spending more time trying to salvage this China deal." (Trade talks between the U.S. and China in Washington ended Friday without an agreement, raising the prospect of an extended tariff war.)



Mad took advantage of the exchange on Twitter, retweeting posts from fans saying they would never vote for a person who doesn’t know who Alfred E. Neuman is.


for humor:

Mixed outcome in Lego v. Zuru

The result:

We find that the district court did not abuse its discretion in entering a preliminary injunction with respect to
the ZURU Action Figures for their alleged infringement of
LEGO’s Minifigure Copyrights. However, we find that the
district court abused its discretion in entering preliminary
injunctions with respect to the Max Build More Bricks and
MAYKA Toy Tape after incorrectly determining, on the record before it, that LEGO would likely suffer irreparable
harm. Accordingly, the order granting a preliminary injunction is


Of the problematic decision by the district court:, which was
vacated by the CAFC:

ZURU alleges that the district court abused its discretion
in finding that LEGO would likely suffer irreparable
harm because: (1) there is no evidence that the MAYKA
Toy Tape is lacking in quality or in any way inferior to
LEGO products; (2) the LEGO witness testimony and one
customer comment on which the court relied was not directed
to the MAYKA Toy Tape; and (3) LEGO does not sell
a product similar to the MAYKA Toy Tape. We agree.

Monday, January 13, 2020

Judge Newman issues stirring dissent in Biodelivery Sciences

On 13 January 2020, the CAFC denied a petition for en banc review in Biodelivery v. Aquestive:

The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
The mandate of the court will be issued on January 21,

From the beginning of Judge Newman's dissent:

The court has declined to rehear this appeal en banc. I
write because of the significance of the balance of agency
and judicial authority, and the rules of procedural law in
the administrative state.

From the end of Judge Newman's dissent:

Of further concern is the PTAB’s contravention of the
purpose of the America Invents Act, to provide agency expertise
to resolution of patentability issues. See H.R. Rep.
No. 112–98, pt. 1, at 48 (2011) (“[T]he purpose of the [postgrant
review proceedings is to] provid[e] quick and cost effective alternatives to litigation.”); 157 Cong. Rec. S1352
(daily ed. Mar. 8, 2011) (statement of Sen. Udall) (“These
proceedings are intended to serve as a less-expensive alternative to courtroom litigation and provide additional access
to the expertise of the Patent Office on questions of patentability.”). On this background, the PTAB’s explanation of
agency efficiency and cost is curious, as litigation cost was
a primary concern of the America Invents Act.

ARM loses at the CAFC; judicial disagreement over imputation of a negative claim limitation


This case involved each party suing the other for infringement of the patent of the party.

On one side, ARM owns "the ’320 patent [US 8,720,320], which describes an adaptor
device for use with Keurig® single-brew coffee machines or
similar brewers. The ’320 patent describes single-brew coffee machines
as generally accepting one of two cartridge
formats: “pods,” which are “small, flattened disk-shaped filter packages of beverage extract” and “larger cup-shaped
beverage filter cartridges.” ’320 patent, col. 1, ll. 17–21. "

The jury found that claims 8 and 19
of the ’320 patent were invalid for obviousness, and the CAFC,
by a 2-1 vote, affirmed.

The key point in the split vote was over the construction of the term "passageway," and, within this,
was the adoption by the majority of a negative limitation.

Judge Reyna began his partial dissent:

The district court erred in its construction of “passageway”
by rewriting the claims, including adding a negative
limitation that is unsupported by the specification
. The
district court further erred when it granted summary
judgement of noninfringement and an award of attorney’s
fees based on its erroneous construction. I would vacate
the district court’s grant of summary judgement, reverse
the award of attorney’s fees, and remand for further proceedings.

Judge Reyna:

The district court construed the term “passageway” as
“a narrow space of some depth or length connecting one
place to another.” J.A. 12. This construction is not supported by the specification.
The district court also interpreted “passageway” to exclude a receptacle “that utilized
a broad, thin mesh.” Id. This exclusion was raised sua
sponte by the court and not argued by either party. As
shown below, the district court relied on its construction of
passageway to base, erroneously, its grant of summary
judgment and attorney’s fees.
To properly determine the meaning of a claim limitation, a court must consider the claim term in view of the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc) (quoting Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (1996)). A claim term
carries its ordinary meaning “unless the patentee unequivocally imparted” a new or different meaning or “expressly
relinquished claim scope during prosecution.” Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1322-23 (Fed.
Cir. 2003) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1325–26, 63 USPQ2d 1374, 1380–81 (Fed.
Cir. 2002)).

Here, the district court’s construction of “passageway”
to mean a “narrow space of some depth or length connecting one place to another” is
not supported by the specification. Unlike other portions of its claim construction order
where the district court refers to the claims, written description, figures, and prosecution
history to support it construction (see, e.g., J.A. 7-8, 9-11), the district court fails to
identify any support for its construction of “passageway.”
Instead, the district court construed “passageway” “in light
of the intrinsic evidence.” J.A. 12. Neither the claims nor
the written description, however, impose dimensional limitations (i.e., narrowness, length, or depth)
on “passageway.” While the specification describes a “passageway” on
sixteen occasions, it only twice describes exemplary diameter and length parameters. ’320 patent col. 4 ll. 37-39,
col. 5 ll. 28-30. Those examples alone cannot limit the
claimed invention as a whole. See, e.g., ScriptPro LLC v.
Innovation Assocs., Inc., 833 F.3d 1336, 1341 (Fed. Cir.
2016) (“[A] specification’s focus on one particular embodiment or purpose cannot limit the described invention
where that specification expressly contemplates other embodiments or purposes.”). On this basis alone, the district
court’s construction of “passageway” is erroneous.

Of the "negative limitation" issue:

The district court also erred by interpreting “passageway” to exclude a receptacle
“that utilized a broad, thin mesh.” This
aspect of the district court’s construction constitutes a negative claim limitation
that is unsupported by the specification.
Negative limitations added during claim construction
must find support either in the specification or the prosecution history.
Omega Eng’g, Inc., 334 F.3d at 1322-23. A
specification adequately supports the addition of a negative
limitation where the limitation is expressly disclaimed or
where “independent lexicography in the written description” justifies adding it. Id.
In Omega Eng’g, Inc., the district court construed “periphery” to mean “projection of the
laser light toward the surface,” but the court added that
periphery “does not encompass light striking the center or
interior portion of the energy zone.” Id. at 1321. On appeal, we rejected that negative limitation, reasoning that
there was no “express disclaimer or independent lexicography in the written description that would justify adding
[it].” Id. at 1322-23. We concluded that the negative limitation was not inherent to the claim term by relying on its
dictionary definition. Id. at 1322. We also concluded that
the negative limitation had no support in the prosecution
history. Id.; see also id. at 1327. In Linear Tech. Corp. v.
Int’l Trade Comm’n, we similarly reversed a claim construction that
incorporated an unsupported negative limitation. 566 F.3d 1049, 1059-60 (Fed. Cir. 2009).
The Administrative Judge (“AJ”) construed the phrase
“monitoring the current” to exclude “monitoring voltage.” See id.
at 1059. We found that the AJ erred by adding the negative
limitation because the specification provided no support for
it. Id. at 1060 (citing Omega Eng’g, Inc., 334 F.3d at 1323).

Here, the district court’s exclusion of “a broad, thin
mesh” from the meaning of “passageway” writes into the
claim an unsupported negative limitation. Neither the
claims nor the written description of the ’320 patent mention a mesh, let alone a broad, thin mesh, and there is no
express disclaimer supporting the negative limitation.
There also is no independent lexicography in the written
description upholding the negative limitation. The ’320 patent includes
no definition of “passageway.” And the dictionary definition of “passage”—“a way of exit or entrance:
a road, path, channel, or course by which something
passes”1—does not inherently require the exclusion of a
broad, thin mesh. Nor is there any record evidence to suggest that
the prosecution history supports the exclusion.
The only record evidence, or mention of “broad, thin mesh”
is in relation to Eko Brands’ accused product.

Footnote 1 of the dissent:

See Merriam-Webster’s Collegiate Dictionary
(11th ed. 2003) (defining “passageway” as “a way that allows passage”).

Footnote 6 of the majority:

We note that a legally erroneous jury instruction
can only be harmless error if it “could not have changed the
result.” Verizon, 503 F.3d at 1307 n.7 (quoting Ecolab, Inc.
v. Paraclipse, Inc., 285 F.3d 1362, 1374 (Fed. Cir. 2002)).

Friday, January 10, 2020

Personal Audio loses at the CAFC

The outcome:

Personal Audio appeals. To the extent that Personal
Audio challenges the Board’s final written decision, the district court lacked jurisdiction to consider the challenges,
and we have no jurisdiction to review them on appeal from
the district court’s judgment. The exclusive avenue for review was a direct appeal from the final written decision.
To the extent that Personal Audio challenges the district
court’s determination of the consequences of the affirmed
final written decision for the proper disposition of this case,
Personal Audio conceded that governing precedent required judgment for CBS. We therefore affirm the district
court’s judgment.

Of note:

Personal Audio does not challenge the IPR scheme or
even a particular provision of that scheme, or regulation
under the scheme, on its face. It alleges injury only from
the particular final written decision of the Board that ruled
claims 31−35 of its ’504 patent unpatentable. Personal Audio presents challenges of two types involving the Board
decision, while invoking four constitutional bases and one
non-constitutional basis. First, Personal Audio presents
various challenges to the lawfulness of the Board’s final
written decision itself. Second, Personal Audio challenges
the district court’s ruling on the consequence of the
affirmed Board decision for this case—namely, that termination of Personal Audio’s assertion of the patent claims in
this still-live patent case is a required result of the affirmed
Board decision, even though the jury rendered a verdict in
Personal Audio’s favor.

We do not have jurisdiction to hear challenges of the
first type, which squarely attack the validity of the Board’s
final written decision. The exclusive vehicle for bringing
such challenges is a direct appeal to this court from the final written decision. As to challenges of the second type,
Personal Audio forfeited any argument that existing precedent allows this panel to do anything but reject them. We
therefore affirm the district court’s judgment for CBS.

Thursday, January 09, 2020

Hospira loses appeal at CAFC. Concept of "harmless error".

Hospira lost its appeal at the CAFC:

Hospira Inc. (“Hospira”) appeals from the judgment of
the United States District Court for the Northern District
of Illinois that claim 6 of U.S. Patent 8,648,106 (“the ’106
patent”) is invalid as obvious. Hospira, Inc. v. Fresenius
Kabi USA, LLC, 343 F. Supp. 3d 823 (N.D. Ill. 2018)
(“Opinion”). Because we find that the district court’s
factual findings were not clearly erroneous and that those
findings support a conclusion of obviousness, we affirm.

At the district court level:

The district court held a five-day bench trial on Fresenius’s defense that claim 6 of the ’106 patent is invalid as
obvious over the prior art combinations of Precedex Concentrate in combination with the knowledge of a person of
ordinary skill in the art and Precedex Concentrate in combination with Dexdomitor. After the parties submitted
their post-trial briefs, the court issued its findings of fact
and conclusions of law, holding that Fresenius had proven
by clear and convincing evidence that claim 6 would have
been obvious over the prior art.
The district court determined that “to prove that a
claim covering multiple alternative embodiments is invalid,
a defendant need only prove that one of the embodiments is invalid.”
Opinion, 343 F. Supp. 3d at 845–46
(citing In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1281
(Fed. Cir. 2015)). Thus, the court focused on one allegedly
obvious embodiment of claim 6, namely, “a ready-to-use,
sealed glass container—made from Type I glass and a
coated rubber stopper—with 4 µg/mL dexmedetomidine
HCl,” which the court referred to as the “4 µg/mL preferred

As to review of findings of fact:

On appeal from a bench trial, we review a district
court’s conclusions of law de novo and its findings of fact
for clear error. Braintree Labs., Inc. v. Novel Labs., Inc.,
749 F.3d 1349, 1358 (Fed. Cir. 2014) (citing Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120,
1123 (Fed. Cir. 2000)). “A factual finding is clearly erroneous when, despite some supporting evidence, we are left
with a definite and firm conviction that the district court
was in error.” Alcon Research Ltd. v. Barr Labs., Inc., 745
F.3d 1180, 1186 (Fed. Cir. 2014) (citing Alza Corp. v. Mylan
Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006)). “The
burden of overcoming the district court’s factual findings
is, as it should be, a heavy one.” Polaroid Corp. v. Eastman
Kodak Co., 789 F.2d 1556, 1559 (Fed. Cir. 1986). “Where
there are two permissible views of the evidence, the factfinder’s choice between them cannot be clearly erroneous.”
Anderson v. Bessemer City, 470 U.S. 564, 574 (1985) (citing
United States v. Yellow Cab Co., 338 U.S. 338, 342 (1949)).

As to the use of later-discovered information:

As a threshold matter, we agree with Fresenius that
the district court did not err in relying on data obtained
after the priority date of the ’106 patent in its inherency
analysis. Extrinsic evidence can be used to demonstrate
what is “necessarily present” in a prior art embodiment
even if the extrinsic evidence is not itself prior art. See
Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co.,
878 F.3d 1336, 1345 (Fed. Cir. 2018) (allowing “non-prior
art data” to be used to support inherency); Schering Corp.
v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003) (finding that the prior art need not recognize the inherent property).
Moreover, the work of the inventor or the
patentee can be used as the evidence of inherency. See, e.g.,
Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369
(Fed. Cir. 2012) (analyzing inherency based on the disclosure of the “patent itself”);
Telemac Cellular Corp. v. Topp
Telecom, Inc., 247 F.3d 1316, 1327–28 (Fed. Cir. 2001)
(finding that features were inherent “as evidenced by [the
patentee]’s own documents”). The later evidence is not itself prior art;
it only helps to elucidate what the prior art
consisted of. Therefore, it was not legally incorrect for the
district court to rely on non-prior art data from Hospira’s
NDA and Fresenius’s ANDA as evidence of the inherent
stability of the 4 µg/mL preferred embodiment.

Of error by the district court:

The court thus conflated the
standards for inherency and reasonable expectation of success. However,
that was harmless error that did not infect
its inherency analysis and findings. See Vanderbilt Univ.
v. ICOS Corp., 601 F.3d 1297, 1308 (Fed. Cir. 2010) (“The
district court’s findings demonstrate that under the correct
legal test, [the plaintiff] did not carry its burden. Thus, any
erroneous interpretations of our case law were harmless
error.”); see also Environ Prods. v. Furon Co., 215 F.3d
1261, 1266 (Fed. Cir. 2000) (“When the error as to the
weight of proof could not have changed the result, the erroneous instruction is harmless.”
(citing 11 CHARLES ALAN
PROCEDURE § 2886 (2d ed. 1995))). If a property of a composition is in fact inherent,
there is no question of a reasonable expectation of success in achieving it. The claimed
dexmedetomidine formulation already is, as the evidence
in this case shows, possessed of the about 2% limitation.

Of obviousness:

It is well-settled that the inclusion of an inherent, but
undisclosed, property of a composition does not render a
claim to the composition nonobvious. Atlas Powder Co. v.
Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999) (“[T]he discovery of a
previously unappreciated property of a prior art
composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the discoverer.”
(citing Titanium Metals Corp. v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985))). A patent can
be invalid based on inherency when the patent itself makes
clear that a limitation is “not an additional requirement
imposed by the claims . . . , but rather a property necessarily present.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009); see also Persion Pharm. LLC v. Alvogen Malta Operations Ltd., Case No. 18-2361, slip op. at 13 (Fed. Cir. Dec.
27, 2019) (“[T]he district court did not err by finding that
the pharmacokinetic limitations of the asserted claims
were inherent and added no patentable weight to the pharmacokinetic claims.”); Alcon Research, 687 F.3d at 1369
(“[T]his claim language does not impose any additional requirement because the ’805 patent itself defines mast cell
stabilization as a property that is necessarily present at
those concentrations.”); In re Kao, 639 F.3d 1057, 1070
(Fed. Cir. 2011) (“Substantial evidence supports the
Board’s finding, based upon the specification, which confirms that the claimed ‘food effect’ is an inherent property
of oxymorphone itself . . . .”).

Tuesday, January 07, 2020

Were these four Union generals better than more famous Civil War generals?

we are the mighty has a post titled
4 Union generals that were better than any of the 'famous' ones
that begins with a contemporary “workplace” theme:

Every workplace has them: the loudest, most boisterous employees, constantly talking about how much work they're doing and how good they are at their jobs or making a scene with their after-work activities. Meanwhile, quietly plugging away somewhere, there are the employees who really are good at their job, their performance going unnoticed because they simply just want to finish up and go home.

There is a different workplace theme underlying some of these stories, unmentioned in the set-up: getting along with your superior.

The fourth general on the list, Union Major General George “Rock of Chickamauga” Thomas is not unknown to students of the Civil War and not underrated by many. A problem Thomas had was not getting along with Ulysses Grant, a problem shared by Major General Lew Wallace.

The full story of Nathan Kimball, the second general on the list, also illustrates the issue, although not as to Kimball himself. The wearethemighty post points out that Kimball defeated Thomas J. "Stonewall" Jackson at Kernstown on March 23, 1862. Unmentioned in the post is that Jackson never accepted the blame for defeat at Kernstown, and instead charged the then-leader of the Stonewall Brigade, Richard Brooke Garnett, with disobeying orders. Jackson ordered Garnett to be arrested for "neglect of duty" on April 1, 1862 and relieved him of command. Garnett's court-martial started in August 1862. Robert E. Lee ordered Garnett released and Garnett, desparately seeking redemption, died in Pickett’s Charge at Gettysburg. As to the underlying facts, Jackson, misinformed of the size of the Union force under General Shields, ordered Garnett to attack, even though the Union forces outnumbered Confederates two to one. In the fighting, Shields was wounded and Kimball took over. At the time of the Confederate withdrawal, Garnett’s troops were low on ammunition and facing attack on multiple fronts. As to Jackson’s prowess in this time period, recall at the Battle of Glendale on June 30, 1862 during the Seven Days, Jackson executed poorly, which led to a serious loss at the Battle of Malvern Hill on July 1, 1862.

The third general on the list, August Willich, has an interesting backstory. He was an avowed communist, and considered Karl Marx too conservative. He commanded the 32nd Indiana at Shiloh, and on the second day [April 7, 1862], ordered the regimental band to play "La Marseillaise." The high point of Willich’s Civil War career came when the 32nd stormed up Missionary Ridge. Whether they were initially given such a command from Willich, or did so merely motivated by self-preservation, this was a key turning point in the battle, and ultimately paved the way for the Atlanta campaign.

As a footnote, Grant held Lew Wallace responsible for the bad showing by Union forces on the first day of Shiloh, and Wallace would never have a significant field command for the remainder of the war. Even when Lew Wallace arguably saved Washington DC by his stand at the Battle of Monocacy, Grant was slow to give credit, and Grant did little dispel the issue of Wallace's performance at Shiloh. Although Wallace's Ben Hur is generally viewed as a story about the power of Jesus Christ, in many ways it is the story of Lew Wallace's seeking a righting of a wrong done to Wallace.

Returning to the workplace theme of wearethemighty, the stories of Thomas, Wallace, and Garnett (the loser to Kimball at Kernstown) illustrate what happens if your superior is willing to throw you under the bus. Separately, if the un-ordered charge up Missionary Ridge had failed, Willich could have been an easy scapegoat.

As to who was better, most people recognize what Thomas achieved. Could he have master-minded the Vicksburg campaign? Probably not. Did he save Rosecrans from terrible defeat at Chickamauga? Yes.
Kimball beat Jackson at Kernstown, but Union forces had a two-to-one advantage. Separately, although Kernstown was a tactical defeat for the Confederacy, it was a strategic victory for the Confederacy, because it tied up Union troops McClellan could have used in the Seven Days. As to "better," Kimball was a competent divisional commander through the Civil War, but not much evidence he performed significantly better than others. Although Willich had an unusual style, similar comments could be made about Willich.

Further, as to Willich, note that the Union Army (of the United States of America) had no reservation to having an avowed communist as a general. Shortly thereafter, the Germans (Prussians) declined Willich's offer to serve in the Franco-Prussian War.

Monday, January 06, 2020

Google wins appeal at CAFC

The outcome of Google v. KONINKLIJKE PHILIPS at the CAFC was a victory for Google:

We conclude, on the record of this case, that the Philips invention
would have been obvious in light of the prior art. We therefore reverse the
Board’s decision.

KSR is invoked:

In one formulation [of KSR] that is key to
this case, the Court explained that when “there is a design
need or market pressure to solve a problem and there are
a finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known
options within his or her technical grasp.” Id. at 421. If
such an option is in that way “obvious to try,” and the “anticipated success” results,
a conclusion of obviousness may
follow. Id. That formulation is related to, and its application must be informed by,
other explanations the Court set
forth about “predictab[ility]” and “known” options and their
effect on obviousness determinations. Id. at 416 (precedent
established that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable result”); id.
at 417 (“a court must ask whether the improvement is more
than the predictable use of prior art elements according to
their established functions”; referring to “simple substitution of one known element
for another” as basis for obviousness).

Invoking the obvious-to-try formulation, Google argues
that a relevant artisan presented with Sakata II would
have realized that there are only “two options following entry of a secondary character: (1) either substitute the key
with the last selected secondary character,” i.e., character
substitution, or “(2) simply return the key to the default
state without substituting the secondary character.” Appellant’s Br. at 50. The Board did not disagree with that
characterization of options. Nor does Philips, which instead shifts the inquiry away from the question of what options are available at the last step—after a secondary
character is selected—of the Sakata II process involving
presentation of secondary characters in a drag menu for
possible selection after an extended hold of a key. Philips
asserts that there is a wide variety of keypad techniques in
general. Appellee’s Br. at 51–52 (citing J.A. 2583–85).

The problem with this response is not that it lacks record support
as a factual matter but that it shifts the inquiry
improperly as a legal matter.
Philips’s wide-scope inquiry
into all keypad possibilities does not fairly reflect the point
of KSR’s relevant discussion as it applies to a case, like this
one, in which it is not disputed that a relevant artisan
would in fact be studying a particular piece of prior art in
thinking about the artisan’s own possible further work. In
that situation, the Court’s declarations about “mere substitution of one element for another known in the field,” with
“predictable results,” KSR, 550 at 416, indicate that the obvious-to-try inquiry at least sometimes must focus on
known options at what is undisputedly the sole point of
novelty in the claim at issue. Moreover, that is the inquiry
we conducted in Perfect Web, where we asked if the sole
contested step of the claim at issue was obvious to try, taking the remaining steps as a given. 587 F.3d at 1331; see
also In re Copaxone Consolidated Cases, 906 F.3d 1013,
1025–27 (Fed. Cir. 2018) (determining that dosage and frequency limitations in method of treatment claim were obvious to try, while taking remaining limitations as a given).
The same focus is appropriate in this case.

Sunday, January 05, 2020

More on Gates telling Gumble about his "Confederate" ancestor

Following up on an earlier post on the Gates/Gumble/Confederacy issue, one notes that the webpage for WETA still maintains the text

[Gumble] also learns that on a different line of his father’s family, his second great grandfather was a manumitted slave who signed up for the Confederate army in New Orleans, then changed sides when the Union arrived in his city.


Kevin Levin at cwmemory had immediately challenged this idea that Gumble's relative was in the "Confederate Army." A few additional thoughts are included here.

In the 2017 episode of Gates' "Finding Your Roots," Gumble had responded to Gates' finding by suggesting that a gun had been placed to the head of his ancestor [Martin Lamotte] to force him to enlist in the Confederate army. More likely, Lamotte voluntarily joined the state Louisiana Native Guard to show his loyalty to the state, and thereby avoid adverse actions from his neighboring Louisiana inhabitants. When New Orleans was captured by Union forces, he did switch to the government in effect at that time, which did remain in effect for the duration of the war.

Apart from Lamotte's motivations, the idea that Lamotte was in the Confederate army presupposes that the Confederate government wanted armed African Americans in the Army. As the fallout from the Cleburne letter of January 2, 1864 abundantly proves, the leaders not only did not want armed African Americans in the Confederate Army but also did not want any public discussion of such a proposal.

See Steve Davis, "That Extraordinary Document," which appeared at page 14 of the December 1977 issue of Civil War Times Illustrated


On this particular point of history, Levin is right and Gates is wrong.

Ironically, the concept of African American Confederate soldiers has been used to propagate the idea that life for African Americans in the Confederacy wasn't really so bad. They were willing to fight to defend it.

Friday, January 03, 2020

The United Methodist Church announces a plan to divide

Earlier in 2019, there was a controversial vote within the United Methodist Church ["UMC"], wherein conservative US members combined with members outside the U.S. to "outvote" more liberal UMC members.

Of numbers

The United Methodist Church has more than 12.5 million members worldwide. About 58 percent of the delegates to the General Conference were from the U.S., where the United Methodist Church claims nearly 7 million members. Nearly 41 percent were from central conferences outside the U.S., including growing churches in African countries and in the Philippines.


On February 26, 2019, the General Conference of the UMC passed "The Traditional Plan (as amended)" by a vote of 53% to 47% [a 438-384 vote]. The Traditional Plan reinforced the church's prohibitions on same-sex marriage and LGBT clergy.

An unusual resolution of the divide has been proposed, wherein the United Methodist church will split up. The New York Times covered this plan in an article titled United Methodist Church Announces Plan to Split Over Same-Sex Marriage . Curiously, the "minority" of February 26, 2019 will carry on as United Methodists, and the "majority" will take a new name. Yes, lawyers were involved. The Times reported that Church leaders from Africa, Europe, the Philippines and the U.S. drew up the separation plan during three two-day mediation sessions held at law offices in Washington.

The [reformulated] United Methodist Church will remove language and policies “that treat LGBTQ persons as second-class Christians in the church,” Church of the Resurrection Pastor Adam Hamilton said in a statement posted on the church’s website.

LBE had contemplated several analogies of the Methodist split to those of the American Civil War, but this particular outcome was not one of them. As a point of history, the antecedents of the UMC had split up into southern and northern contingents long before the start of the Civil War, so splitting up has some precedents within the Methodist religion.

See also:

UPDATE on 5 Jan 2020. An article in the Wall Street Journal suggests that the (perceived) unwillingness of some of the progressives to leave the UMC caused the traditionalists to be willing to leave (even though they were in the "majority" in the vote of February 2019):

Some opponents of same-sex marriage and gay clergy have been openly considering a split for years. Their agreement to form their own denomination as part of the proposed deal comes after supporters of LGBT rights said following last year's conference that they wouldn't leave the church.

"Quite frankly, there's no way to force anybody to leave absent a very expensive trial, person by person," Mr. Boyette said.

Wednesday, January 01, 2020

Persion Pharma loses at the CAFC; district court's analysis of obviousness/written description not inconsistent

At the district court for Delaware:

The district court next determined that the asserted
claims are invalid as obvious over Devane in view of Jain,
the state of the prior art at the time of invention, and the
Vicodin and Lortab labels. Id. at 595–96, 610. Specifically,
the district court found that in light of the teachings of Jain
and the Vicodin and Lortab labels, a person of ordinary
skill in the art would have been motivated to administer
the extended-release hydrocodone bitartrate formulation
disclosed in Devane to patients with mild or moderate hepatic
impairment at an unadjusted dose and would have
had a reasonable expectation of success in so doing. Id. at
609–10, 615. The district court further found that the
pharmacokinetic limitations in the pharmacokinetic claims
are “inherent in any obviousness combination that contains
the Devane formulation” because the recited pharmacokinetic parameters
were “necessarily present” in the Zohydro
ER formulation described in both Devane and the asserted
patents. Id. at 607. Finally, the district court found that
the objective factors of unexpected results, long-felt but unmet need,
and failure of others did not weigh in favor of
finding nonobviousness.

Of procedure:

In an appeal from a bench trial, we review the district
court’s factual findings for clear error and the district
court’s legal conclusion on obviousness de novo. Novo
Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346,
1354 (Fed. Cir. 2013). Under the clearly erroneous standard of review,
we defer to the district court’s factual findings unless, considering
the totality of the evidence, we are
“left with the definite and firm conviction that a mistake
has been committed.” Zenith Radio Corp. v. Hazeltine Research, Inc.,
395 U.S. 100, 123 (1969) (quoting United
States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948)).

As to inherency in an obviousness context:

It is long
settled that in the context of obviousness, the “mere recitation of a newly discovered function or property, inherently
possessed by things in the prior art, does not distinguish a
claim drawn to those things from the prior art.” In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981). The Supreme
Court explained long ago that “[i]t is not invention to perceive that the product which others had discovered had
qualities they failed to detect.” Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945).
Our predecessor court similarly concluded
that it “is not the law” that “a structure suggested by the
prior art, and, hence, potentially in the possession of the
public, is patentable . . . because it also possesses an
[i]nherent, but hitherto unknown, function which [the patentees] claim to have discovered.” In re Wiseman, 596
F.2d 1019, 1023 (C.C.P.A. 1979).

Of motivation:

However, as the district court explained, “[t]he standard to find a motivation to combine is far below what is sufficient to prove
safety and efficacy to the FDA,” and therefore, “[t]he fact
that the FDA found the comparison [between Vicoprofen
and Zohydro ER] insufficient to satisfy its safety and efficacy standards does not speak to the issue of obviousness.”
Pernix, 323 F. Supp. 3d at 611. We find no clear error in
the district court’s conclusion that the FDA’s approval requirements do not undermine the force of the evidence as
to obviousness. Id. In light of the record as a whole, we
find no clear error in the district court’s findings on the relevance of combination product data to a person of ordinary
skill considering the administration of a hydrocodone-only

As to the factual findings:

In sum, after reviewing the entire evidentiary record,
we are not left with any conviction that the district court
has made a mistake. See Zenith, 395 U.S. at 123. We
therefore reject Persion’s challenge to the district court’s
factual findings, which are not clearly erroneous.

Of the tension between obviousness and written description:

Lastly, Persion argues that the district court’s obviousness decision must be reversed because its obviousness
findings are at odds with its findings concerning the written description issue. Persion states that, for example, in
finding a lack of written description support for the asserted claims, the district court “found [that] ‘nothing in
the state of the art as of July 2012 . . . would have provided
guidance as to which [ER hydrocodone-only] formulations
would [achieve the claimed PK profile] and which would
not[.]’” Appellant’s Br. 22 (quoting Pernix, 323 F. Supp. 3d
at 627) (emphasis omitted). Persion asserts this statement
contradicts the district court’s finding that a person of ordinary skill in the art “would ‘look to Jain and to the Vicodin and Lortab labels for [] guidance as to the
appropriate dosing levels of Devane’s formulation for patients with mild or moderate [hepatic impairment].’” Id.
(quoting Pernix, 323 F. Supp. 3d at 612) (emphasis omitted). We reject this argument as we see no inconsistency
in the district court’s findings.

The CAFC pointed to a problem of incomplete quotations:

Persion’s entire argument with respect to this issue is
based on incomplete quotations from the district court’s
opinion. For example, a complete reading of the district
court’s statement above belies Persion’s assertion that the
district court’s findings are inconsistent. The district court
stated that “there was nothing in the state of the art as of
July 2012 that would have provided guidance as to which
of the broadly claimed formulations would work and which
would not, with the exception of the single embodiment described in Example 8.” Pernix, 323 F. Supp. 3d at 627 (emphasis added). The embodiment described in Example 8 of
the common written description of the ’760 and ’499 patents is the Devane formulation, which formed the basis for
the district court’s obviousness findings. Id. at 575, 619.
In contrast to the “essentially limitless number of formulation species” covered by the claims of the ’760 and ’499 patents, the district court found that the prior art provided adequate guidance with respect to the sole formulation described in Example 8: the Devane formulation. Id. at 618–19, 622–23. Thus, there is no inconsistency between the
statement Persion quotes and the district court’s conclusion that a person of ordinary skill in the art would have
been motivated to combine Devane with Jain and the Vicodin and Lortab labels to arrive at the claimed invention.

For the same reason, we reject Persion’s argument that
the district court’s findings with respect to reasonable expectation of success are inconsistent with its findings concerning the lack of written description. Persion asserts
that the district court “found that there was no ‘way of predicting which formulations would work and which would
not[,]’ stating that ‘testing results would be fundamental to
determining which formulations would satisfy the asserted
claims[.]’” Appellant’s Br. 20 (quoting Pernix, 323 F. Supp.
3d at 624, 628). According to Persion, this necessity for experimentation contradicts the district court’s finding that
a person of ordinary skill would have had a reasonable expectation of success in combining Devane with Jain and the
Vicodin and Lortab labels. Id. at 20–21. Once again, however, Persion omits critical context from its quote that
demonstrates the district court was addressing formulations other than the one described in Example 8. See
Pernix, 323 F. Supp. 3d at 623 (declining to credit expert
testimony that “the specification would provide guidance to
a person of skill in the art regarding how to make a formulation that would satisfy the limitations of the asserted
claims, except for the Devane formulation set forth in Example 8 or compositions closely similar to that one”) (emphasis added). In context, there is no inconsistency
between the district court’s findings underlying its obviousness and lack of written description determinations, and
we will not reverse the district court on this basis.

Were there African American soldiers for the Confederacy?

LBE just viewed the 2017 episode of Gates' "Finding Your Roots" which involved the assertion that an ancestor of Bryant Gumble fought for the Confederacy.

There was some pushback on the blog cwmemory by Kevin Levin in the posts

Henry Louis Gates and PBS Fall For Black Confederate Myth…Again including the text "[Gumble's] family’s roots in New Orleans led to the revelation that Gumbel’s great-grandfather, Martin Lamotte, who was freed in 1840, served in the Louisiana Native Guard. Gates concludes from this that Lamotte was a Confederate soldier. Of course, anyone who knows anything about the Louisiana Native Guard knows that this unit was never accepted into Confederate service."

Henry Louis Gates’s Betrayal of Bryant Gumbel and History

Of note, the 1st Louisiana Native Guard (which included Gumble's relative) was a Louisiana state militia unit comprised of free blacks. It had ceased to exist by the time the Union captured New Orleans in April 1862. Some of its members (including Gumble's relative) became part of the The 1st Louisiana Native Guard (of the Union Army, which later became the 73rd Regiment Infantry U.S. Colored Troops). These troops definitely served in the Port Hudson campaign.

Of interest to LBE, Gates seemed to say that Gumble's ancestor was involved in the New Market battle, which was in 1864 in the Eastern theater around Richmond and Petersburg. There were African American troops there (under the command of Ben Butler) but not clear how a Louisiana person got there.

Battle of Chaffin's Farm and New Market Heights :

Once again hoping to distract Robert E. Lee and draw Confederate troops north of the river, Grant ordered the Army of the James under Maj. Gen. Benjamin F. Butler to attack toward Richmond. (...) In a two-pronged attack, the right wing (Birney's X Corps, augmented by a United States Colored Troops division under Brig. Gen. Charles J. Paine from the XVIII Corps) would assault the Confederate lines at New Market Road and drive on to capture the artillery positions behind it on New Market Heights. (...) Three Medal of Honor recipients from the 6th U.S. Colored Infantry Regiment are depicted in a painting, Three Medals of Honor by artist Don Troiani. The painting was unveiled June 24, 2013 at the Union League of Philadelphia. Portrayed in the painting are Nathan H. Edgerton, Thomas R. Hawkins, and Alexander Kelly

Also of some relevance to the issue raised by Kevin Levin is the article by Steve Davis, "That Extraordinary Document," which appeared at page 14 of the December 1977 issue of Civil War Times Illustrated and discusses the Cleburne letter of 2 January 1864. The political cartoons on page 19 are of interest, especially that from Harpers of 5 November 1864.


And, yes, tomorrow January 2, is the anniversary of the Cleburne proposal to use slaves as Confederate soldiers. And, yes, the Cleburne proposal was made one year after the Emancipation Proclamation took effect on January 1, 1863. In between those dates, the Union was using African American soldiers, notably in the siege of Port Hudson in May-July 1863.