Wednesday, April 29, 2020

Bedgear IPR2017-00524 decision is vacated over Arthrex

Bedgear, LLC petitions the court for panel rehearing
on the basis that it raised an Appointments Clause challenge in its opening brief.
In view of this court’s decision
in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019), and this court’s precedential order
denying the petitions for rehearing in Arthrex, Inc. v.
Smith & Nephew, Inc., 953 F.3d 760 (Fed. Cir. 2020),
1) Bedgear LLC’s petition for panel rehearing is
2) The court’s decision affirming the decision of the Patent Trial and Appeal Board is vacated.
3) The Patent Trial and Appeal Board’s decision in
No. IPR2017-00524 is vacated and the case is remanded to the Board for proceedings consistent
with this court’s decisions in Arthrex.

Monday, April 27, 2020

"Consumer Watchdog" case cited in Pfizer v. Chugai

From the case

To establish Article III standing, an appellant must
show that it has “(1) suffered an injury in fact, (2) that is
fairly traceable to the challenged conduct of the defendant,
and (3) that is likely to be redressed by a favorable judicial
decision.” Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547
(2016). “That said, where Congress has accorded a procedural right to a litigant,
such as the right to appeal an administrative decision, certain requirements of standing—
namely immediacy and redressability, as well as prudential aspects that are not part of
Article III—may be relaxed.” Consumer Watchdog, 753 F.3d at 1261 (citing
Massachusetts v. EPA, 549 U.S. 497, 517–18 (2007)). Nonetheless, a “party invoking federal jurisdiction must have ‘a
personal stake in the outcome’” in order to meet the injury
in fact requirement. Consumer Watchdog, 753 F.3d at 1261
(quoting City of Los Angeles v. Lyons, 461 U.S. 95, 101

Pfizer loses

Because Pfizer has failed to establish that it was suffering a cognizable injury at all
stages of these appeals sufficient to give Pfizer Article III standing to seek relief in
this court, we dismiss the appeals.

A party that appeals to this court
from a decision of the Board, however, must have Article
III standing in order for this court to consider the merits of
the appeal. Consumer Watchdog v. Wis. Alumni Research
Found. [WARF], 753 F.3d 1258, 1261 (Fed. Cir. 2014); JTEKT, 898
F.3d at 1219.

Sunday, April 26, 2020

Is Maryland still having a problem with Covid19 infections?

There was an interesting exchange on NBC's "Face the Nation" on 26 April 2020:

MARGARET BRENNAN to Maryland Governor Hogan: I want to ask you about this region of the country. Doctor Birx said that the D.C. metro area, Maryland, obviously being part of that, is still having a problem with infections. Why? What is-- what is driving this?

Governor Hogan: (...) the whole talk we've been hearing about for more than a month now is about trying to flatten and lengthen that curve so you don't have the big spikes. That's exactly what we've been really successful in doing here in this region. That's why we're about a couple of weeks behind places like New York and New Orleans and other places. We have dramatically flattened and lengthened that curve and lowered the numbers. But unfortunately, that means-- that means we're also a little bit behind, and now those numbers are coming up. We can't stop the virus, but we've at least up till now, stopped the overflow of our health care system, the overburdening of the ICU beds and ventilators and things like that. But yes, we're-- [interrupted by Brennan]

At this point, without acknowledging the accuracy of Hogan's response, Brennan switched to testing. One recalls that the [initial] rationale for social isolation, termed "flattening the curve," was to lessen the burden of a high number of cases arriving at the hospitals, so that the finite hospital capacity was better matched to the input. Hogan's response was on point. The initial theory did not say that the number of infections would be lowered. The theory was that they would be spread out in time.i

Brennan also alluded to statements by Governor Murphy of New Jersey on April 26:

I-- I also want to ask you, New Jersey's governor said today that his state is going to have to gut the living daylights out of educators and first responders if Congress and Republican leaders, who were reluctant to do it, don't provide aid.

This episode of Face the Nation included Diller's "witch doctor" remark:

Absolutely. I-- look the thing is, we're going to have to go through a-- a different-- a new kind of-- kind of let's call it risk calculation. And that's going to be based upon levels of what we believe is safe and not safe. And we're going to have to be told. Now, unfortunately, we have a witchdoctor as a President and he ain't going to tell us. But the science part of it, I-- I think that has to be translated into more practical solutions. So somebody is going to have to say, yes, you must wear masks, period, or no, take your chances. But the chances are pretty good. There'll be a teething period where we'll kind of get used to this.

The transcript of Face the Nation for April 26 does not include the word "antibody" (or antibodies).


Earlier, on April 24, 2020, the Wall Street Journal had an opinion piece by Allysia Finley titled:

The Bearer of Good Coronavirus News
Stanford scientist John Ioannidis finds himself under attack for questioning the prevailing
wisdom about lockdowns.

Based on antibody tests of a population in Santa Clara County, California Ionnidis and co-workers presented evidence
that between 2.49% and 4.16% of the county population had been infected (ie, blood tests showed antibodies for Covid19).
That’s 50 to 85 times the number of confirmed cases and implies
a fatality rate between 0.12% and 0.2%, consistent with that of the Diamond Princess.

Ioannidis had previously written " “locking down the world with potentially tremendous social
and financial consequences may be totally irrational."


Abbott and BD have announced work on tests under FDA's diagnostic test policy unique to the COVID-19 public health emergency. Abbott has discussed an IgG-detecting test.

In antibody testing, one is concerned with sensitivity, or how many people are correctly labeled as having antibodies, and specificity, or how many people are correctly told they lack them.


Each party loses in Verinata v. Ariosa

The outcome was that each party lost its appeal:

We conclude that substantial evidence supports the district court’s denial of Ariosa’s motion for judgment as a matter of law on
noninfringement and invalidity. We also conclude that the
district court did not abuse its discretion by denying Verinata and Illumina’s motion for a permanent injunction,
supplemental damages, an accounting, and pre-judgment
interest. We affirm.

Of the law of JMOL:

We review denials of JMOL under the law of the relevant regional circuit, in this case, the Ninth Circuit. A
TEN Int’l Co., Ltd. v. Uniclass Tech. Co., Ltd., 932 F.3d
1364, 1367 (Fed. Cir. 2019). The Ninth Circuit reviews a
denial of JMOL de novo. Harper v. City of Los Angeles, 533
F.3d 1010, 1021 (9th Cir. 2008). JMOL is proper when the
evidence permits only one reasonable conclusion that itself
is contrary to the jury’s verdict.
Id. But the jury’s verdict
must be upheld if it is supported by substantial evidence.
Id. Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” TVIIM, LLC v. McAfee, Inc., 851 F.3d 1356,
1362 (Fed. Cir. 2017) (citation and quotation omitted).

Of interest:

Ariosa appeals the district court’s holding of assignor
estoppel—that Ariosa is barred from challenging the validity of the ’794 patent because Drs. Stuelpnagel and Oliphant are inventors of the ’794 patent, they assigned their
rights to the patent to Illumina, and they are in privity
with Ariosa. See Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 329 F. Supp. 3d 1070, 1113-18 (N.D. Cal. 2018).
Despite its finding of assignor estoppel, the district court
analyzed anticipation of the ’794 patent and found it invalid. Because we affirm the jury verdict of no invalidity, we
need not reach the issue of assignor estoppel.

Of expert witnesses:

Ariosa’s arguments are unavailing. Ariosa asks this
court to reweigh the credibility of the parties’ respective expert witnesses. This court does not engage in fact finding,
nor does it weigh the credibility of expert testimony. See
Impax Labs. Inc. v. Lannett Holdings Inc., 893 F.3d 1372,
1382 (Fed. Cir. 2018). Our task is to review whether the
jury’s verdict is supported by substantial evidence.
Here, the jury heard conflicting expert testimony on
whether Straus discloses a single universal primer. The
jury was free to adopt Dr. Cooper’s testimony over that of
Dr. Cantor’s in concluding that Straus did not disclose a
single universal primer. See i4i Ltd. P’ship v. Microsoft
Corp., 598 F.3d 831, 848 (Fed. Cir. 2010), aff’d, 564 U.S. 91
(2011). We conclude that the jury verdict on invalidity is
supported by substantial evidence.

The CAFC does fishing and 101 in In re Rudy

Of note in In re Rudy, decided adversely to patent applicant, appellant Rudy:

Mr. Rudy argues that the Office Guidance “simplistically represent[s] patent-eligible subject matter law,” and
is used by the Patent Office as a “shortcut to ease Mayo/Alice test application, with no force or effect of law.” Appellant’s Arg. 33; Reply Br. 7–8. We agree with Mr. Rudy that
the Office Guidance is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding in our
patent eligibility analysis.


We are not, however, bound by the Office Guidance,
which cannot modify or supplant the Supreme Court’s law
regarding patent eligibility, or our interpretation and application thereof.


To the extent the Office Guidance contradicts or does not fully accord with our
caselaw, it is our caselaw, and the Supreme Court precedent it is based upon,
that must control. See id. at 1021
(holding claims ineligible, despite Office Guidance suggesting otherwise,
where statements and examples in the
Guidance were inconsistent with Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015)).

But Appellant Rudy loses:

Turning to Mr. Rudy’s case, we conclude that although
a portion of the Board’s analysis is framed as a recitation
of the Office Guidance, in this particular case the Board’s
reasoning and conclusion are nevertheless fully in accord
with the relevant caselaw.

As to claim preambles:

We are not persuaded by Mr. Rudy’s arguments otherwise. Mr. Rudy
contends that claim 34’s preamble, “a
method for fishing,” is a substantive claim limitation such
that each claim requires actually attempting to catch a fish
by placing the selected fishing hook in the water. Appellant’s Arg. 8–9.
Even if that were true, which we need not
decide, such an “additional limitation” would not alter our
conclusion because the “character of claim [34], as a whole,
remains directed to [an] abstract idea.” Chargepoint, Inc.
v. SemaConnect, Inc., 920 F.3d 759, 770 (Fed. Cir. 2019).

Of note:

While the machine-or-transformation test remains “a useful and important clue” for determining eligibility under
§ 101, Bilski v. Kappos, 561 U.S. 593, 604 (2010), we need
not decide in this case whether the transformation from
free fish to hooked fish is the type of transformation discussed in Bilski and its predecessor cases. As Mr. Rudy
explains elsewhere in his brief, even if claim 34 was read
to require the act of fishing, “landing a fish is never a sure
thing. Many an angler has gone fishing and returned
empty handed.” Appellant’s Arg. at 18. Claim 34 therefore
does not actually recite or require the purported transformation that Mr. Rudy relies upon.

Opinion by CJ Prost

Friday, April 24, 2020

Perry Mason does patents in "The Case of the Baffling Bug"

Many Perry Mason episodes involve plotlines that are timeless. "The Case of the Baffling Bug," first broadcast December 12, 1965, is not one of them, and is more in line with the "ripped from the headlines" approach of the later-in-time "Law and Order."

The "baffling bug" title relates to electronic surveillance, and captures the industrial espionage component of this case, which pertains to theft of secrets (from the Tryon company) related to technology for water desalination. Although in the year 2020, one worries about China stealing technology (e.g., the Lieber/Harvard case), back in 1965 the bogeymen were Italy and Japan, each of which is represented by a character in baffling bug (Dr. Nina Revelli played by the actress Aliza Gur; Dr. Maseo Tachikawa played by Teru Shimada).

Apart from the espionage, one has a murder of Horace Lehigh, an investigator hired by the head of of the company Tryon to look into possible industrial espionage against Tryon.

Although the episode does not mention the words "trade secrets," the episode does mention patents, and patents turn out to be critical in identifying the murderer, although not the secret stealer. In another "how it was in 1965" moment, the difficulty in obtaining patent copies in 1965 (but certainly not now) was pivotal.

For good measure, the episode has a "Mark Lemley" moment.

IMDB link:

Argentum's arguments for standing rejected by the CAFC in Gilenya case

Gilenya (generic name fingolimod) is a sphingosine-1-phosphate receptor modulator, used mainly in the treatment of multiple sclerosis.
On April 23, 2020, the CAFC decided a case related to Gilenya, which related to the issue of standing of the company Argentum to challenge US 9,187,405 in IPR proceedings.

On February 3, 2017, Apotex Inc. and Apotex Corp.
(collectively, Apotex) filed a petition for inter partes review
of Novartis Pharmaceuticals Corporation’s U.S. Patent No.
9,187,405. The Board instituted proceedings on July 18,
2017, and granted Sun Pharmaceutical Industries, Ltd.,
Sun Pharmaceutical Industries, Inc., and Sun Pharma
Global FZE’s (collectively, Sun); Teva Pharmaceuticals
USA, Inc. and Actavis Elizabeth LLC’s; and Argentum
Pharmaceuticals LLC’s requests for joinder under 35
U.S.C. § 315(c). After institution, Patent Owner, Novartis,
filed a contingent motion to amend. On July 11, 2018, the
Board concluded that Apotex, Sun, Teva, Actavis, and Argentum (collectively,
Petitioners) had not demonstrated
unpatentability of the claims and denied the motion to
amend as moot. Petitioners appealed the Board’s findings.
During the appeal process, all Petitioners other than Argentum settled their respective appeal with Novartis

In a rather lengthy analysis of three arguments for standing, the CAFC concluded
that Argentum did not have standing, and this particular challenge to the
Gilenya patent has gone away.

The meaning of "significantly flat," in patents and for Covid19

US Patent 10,610,035 titled "Spreading device" to Champions of Butter, Inc contains the words "significantly flat" in the following text:

The spreading device of the present disclosure may, in whole or in part, be provided in different shapes. FIGS. 1-6 depict a spreading device having a concave dispensing surface (i.e., the bottom of the spreading device, including the filter, is concave). Such a concave dispensing surface may be advantageous for applying a spreadable surface to a rounded surface, such as a cob of corn (as depicted in FIG. 6). Additionally or alternatively, the shape of the spreading device or the dispensing surface thereof may be provided as flat, convex, bent or some combination of the foregoing. For example, above-noted FIGS. 7-13 depict a substantially flat dispensing surface. Moreover, FIGS. 14-19, which are described as follows, also depict a substantially flat dispensing surface. Such a flat dispensing surface may be advantageous for applying a spreadable substance to a flat or significantly flat surface, such as bread/toast, meats or pastries.

US Patent 10,605,805 attempts to quantify the meaning of "significantly flat":

In some embodiments, significantly flat is determined relative to the final sample thickness, and has, depending upon on embodiments and applications, a ratio of to the sample thickness of less than 0.1%, less than 0.5%, less than 1%, less than 2%, less than 5%, or less than 10%, or a range between any two of these values

One could envision (hypothetically) a patent litigation over a claim involving the term "significantly flat." US Patent 7,752,986 does include "significantly flat" in its first claim [ A boat having a shallow draft hull, the hull comprising: a significantly flat bottom extending along a substantial length of the hull (...)]

On April 23, 2020, in the context of Covid19, Governor Murphy of New Jersey made the following statement:

"We continue to see the curve of new COVID-19 cases remain significantly flat, but we cannot ease up one bit on our social distancing. I am not in a position yet to begin reopening our state and jump starting our economy."


As we map the outbreak across the state, we continue to see a slowing in the rate of spread.


New Jersey publishes a Covid19 tracker, which presents the total number of identified cases (per nasal swab; not antibody testing) on each day.
This is available at IPBiz leaves it to the reader to judge whether there is a flattening or slowing of the rate of spread in New Jersey.

The frequently published "flattening the curve" argument presents two curves, which represent the derivatives (with respect to time) of plots of total number of cases on a given day. By measures such as social distancing, the rate of new cases is slowed, as illustrated by the curve peaking at longer times. These curves are based on an assumption that the total number of cases can be displayed as a sigmoidal curve, ultimately reaching a plateau value, wherein there are no new cases in the limit of a long time (for example, contemplate the logistic curve).

The first reported Covid19 case in New Jersey was on March 4, 2020. The stay at home order came on March 21, 2020. For reference, selected datapoints from the New Jersey Covid19 tracker are reproduced below.

New Jersey Stay at home order started 21 March 2020

Reported cases delta average delta

March 21: 1327
March 22: 1914
March 23: 2844
March 24: 3675


April 1: 22,255
April 2: 25,590
April 3: 29,895
April 4: 34,124
April 5: 37,505
April 6: 44,416



April 20: 88,806
April 21: 92,387
April 22: 95,865
April 23: 99,989


Thursday, April 23, 2020

The Supreme Court in Romag v. Fossil: showing of willfulness not mandated to recover lost profits under the Lanham Act

The Supreme Court decision of Romag v. Fossil held that plaintiffs do not need to show willful infringement as a prerequisite for an award of an infringer’s profits under the Lanham Act. Intent is a significant factor but a showing of willful intent is not required. The previous decision of the CAFC was vacated and remanded. The Supreme Court decision was 9-0, with concurring opinions expressed. The opinion of Justice Gorsuch ended with the text:

With little to work with in the statute’s language, structure, and history,
Fossil ultimately rests on an appeal to
policy. The company tells us that stouter restraints on profits awards are needed to deter “baseless” trademark suits.
Meanwhile, Romag insists that its reading of the statute
will promote greater respect for trademarks in the “modern
global economy.” As these things go, amici amplify
both sides’ policy arguments. Maybe, too, each side has a
point. But the place for reconciling competing and incommensurable policy
goals like these is before policymakers.
This Court’s limited role is to read and apply the law those
policymakers have ordained, and here our task is clear.
The judgment of the court of appeals is vacated, and the
case is remanded for further proceedings consistent with
this opinion.

The concurring opinion of Justice Alito was brief:

We took this case to decide whether willful infringement
is a prerequisite to an award of profits under 15 U. S. C.
§1117(a). The decision below held that willfulness is such
a prerequisite. App. to Pet. for Cert. 32a. That is incorrect.
The relevant authorities, particularly pre-Lanham Act case
law, show that willfulness is a highly important consideration
in awarding profits under §1117(a), but not an absolute
precondition. I would so hold and concur on that ground.

A separate case Ramos v. Louisiana concerned the incorporation of the requirement of unanimous juries under the Bill of Rights onto the states via the 14th Amendment. A ticklish question was the overruling of prior Supreme Court precedent, which issue will likely materialize in other subject areas.

Wednesday, April 22, 2020

Biogen loses Tecfidera case at CAFC

The case concerns Tecfidera, a drug used to treat multiple sclerosis [MS]:

Biogen holds the New Drug Application (“NDA”) for the
active ingredient dimethyl fumarate (“DMF”), which was
approved by the Food and Drug Administration (“FDA”) in
2013 as Tecfidera®, a twice-daily pill indicated “for the
treatment of patients with relapsing forms of multiple sclerosis”
at a daily dose of 480 mg. J.A. 1123. DMF is the
dimethyl ester of fumaric acid. An ester is a compound derived from
the combination of a carboxylic acid and an alcohol, minus a molecule of water.

The dispute:

In December 2018, Biogen asserted the ’001 patent in
an infringement action against Banner in the District of
Delaware. Banner immediately moved for a judgment of
noninfringement, arguing that § 156(b)(2) limits the scope
of the ’001 patent’s extension to methods of using the approved product as defined in § 156(f)—in this case, DMF,
its salts, or its esters—and that MMF is none of those
things. Biogen responded that § 156(b)(2) does not limit
extension of a method of treatment patent to uses of the
approved product, but instead only to uses of any product
within the original scope of the claims. Biogen further argued that, in any event, “product” in § 156 has a broader
meaning encompassing any compound that shares with the
approved product an “active moiety.”

Banner had prevailed at the district court level:

The district court agreed with Banner’s interpretation
of § 156 in both respects and rendered a judgment of noninfringement. It rejected Biogen’s argument that extension
of a method of treatment patent under § 156(b)(2) is not
limited to uses of the approved product. Decision, 2020 WL
109499, at *4–5. The district court also reasoned that this
court’s interpretation of “product” in § 156 forecloses Biogen’s argument that MMF is the same product as Tecfidera®. Id. at *9–10 (citing Glaxo Ops. UK Ltd. v. Quigg, 894
F.2d 392, 395 (Fed. Cir. 1990)).

As far as legal argument:

We agree with Banner that the extended portion of Biogen’s patent does not encompass its MMF product.
The parties here argue that either Glaxo or Pfizer helps
their case. But this case is neither a Glaxo case nor a Pfizer
case. It is governed by the statute.

The nub of the issue:

All these precedents, and now this case, rest on the
same holding: the term “product,” defined in § 156(f) as the
“active ingredient . . . including any salt or ester of the active ingredient,” has a plain and ordinary meaning that is
not coextensive with “active moiety.”
It encompasses the
active ingredient that exists in the product as administered
and as approved—as specified by the FDA and designated
on the product’s label—or changes to that active ingredient
which serve only to make it a salt or an ester.
It does not
encompass a metabolite of the active ingredient or its deesterified form. This case is unlike Glaxo or Pfizer in that
it concerns a de-esterified compound, not an ester or salt.

The ruling against Biogen was affirmed.

CAFC tackles assignor estoppel in Hologic

The outcome

These appeals require us to grapple with the doctrine
of assignor estoppel, an equitable doctrine that prevents a
party who assigned a patent to another from later challenging
the validity of the assigned patent in district court.
There are two patents-in-suit and each presents a different
assignor estoppel issue. For the first patent, we consider
whether the district court erred in holding that assignor
estoppel does not bar the assignor from relying on our
court’s affirmance of the Patent Trial and Appeal Board’s
final decision invalidating the asserted patent claims in an
inter partes review proceeding. For the second patent, we
review the district court’s summary judgment that assignor estoppel
bars the assignor from asserting invalidity
of the assigned second patent in district court. Based on
our precedent, which we are bound to follow, we conclude
that the district court did not err in either respect.

The CAFC observed

Based on our precedent and the limits it places on the
assignor estoppel doctrine, we conclude that assignor estoppel
does not preclude Minerva from relying on the Hologic decision to argue that the ’183 patent claims are void
ab initio.

We are mindful of the seeming unfairness to Hologic in
this situation. Although Minerva would have been estopped from challenging the validity of the ’183 patent
claims in district court, it was able to challenge their validity in an IPR proceeding and,
hence, circumvent the assignor estoppel doctrine. Minerva had the right to do so
under the AIA and this court’s precedent. This court has
held that the doctrine of assignor estoppel does not bar an
assignor from filing a petition for IPR. Arista Networks,
Inc. v. Cisco Sys., Inc., 908 F.3d 792, 804 (Fed. Cir. 2018).
In Arista, the patent owner argued that assignor estoppel
barred the assignor-petitioner’s IPR challenge to the patent’s validity. Id. at 798.


Generally, “when a [patent] claim is cancelled, the patentee loses any cause of action based
on that claim, and any pending litigation in
which the claims are asserted becomes moot.” Fresenius
USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1340
(Fed. Cir. 2013). Because the ’183 patent claims are invalid, Hologic cannot assert
those claims or seek ongoing
monetary or injunctive relief based on infringement. Our
affirmance of the Board’s invalidity decision in Hologic is
dispositive of the validity of the ’183 patent claims, regardless of how the validity question came to this court, and
regardless of whether assignor estoppel bars Minerva from
challenging the patent’s validity in this district court case.

Of the '348 patent

Although we recognize that assignor estoppel is not a
“broad equitable device susceptible of automatic application,” Diamond Sci., 848 F.2d at 1225–26, we agree with
the district court that the equities weigh in favor of its application in this case. The facts here are analogous to those
in Diamond Scientific, Shamrock, and other cases in which
an inventor executes broad assignments to his employer,
leaves his employer, founds or takes on a controlling role
at a competing company, and is directly involved in the
alleged infringement. Minerva disputed none of the pertinent facts below or on appeal. Mr. Truckai “executed a
broad assignment of his patent rights to NovaCept and
later sold NovaCept to Hologic’s predecessor for $325 million.” Summary Judgment Op., 325 F. Supp. 3d at 524.
Thus, NovaCept “received appreciable value” for the patents at issue. Mentor Graphics, 150 F.3d at 1378.
Mr. Truckai then “founded Minerva” and “used his expertise to research, develop, test, manufacture, and obtain regulatory approval for the Minerva EAS.” Summary
Judgment Op., 325 F. Supp. 3d at 523. Mr. Truckai’s “job
responsibilities as Minerva’s President and CEO included
bringing the accused product to market to directly compete
with Hologic.” Id.

Monday, April 20, 2020

Perry Mason does a plagiarism case (sort of) in The Case of the Promoter's Pillbox

In this 1962 episode, one Herbert Simms (played by Linden Chiles) is a pharmacist who aspires to be a screenwriter. He conveys a script for "Mr. Nobody" to producer Charlie Corby, who takes it, without crediting Simms, to use as a TV pilot. A clear case of plagiarism. However, in this plotline, the plagiarism is an afterthought to Corby's plans. Corby is funneling production money from "Mr. Nobody" to his own company, to make a European film, and has no intention of finishing Mr. Nobody. Assuming the 1975 copyright law applied to this 1962 episode, can one make out a case of copyright infringement (rather than merely asserting plagiarism)?

The episode is notable for the fictional Perry Mason proclaiming to know the real Rod Serling, who will help the fictional Simms. Separately, one gets a glimpse into Perry Mason's law school life, wherein he was helped by the mother of Herbert Simms.

Supreme Court vacates CAFC decision in Thryv, Inc. v. Click-To-Call Technologies, thereby killing off Wi-Fi One, LLC v. Broadcom Corp

As the Supreme Court majority noted:

Thereafter, in another case, the en banc Federal Circuit held that “time-bar determinations under §315(b) are appealable” notwithstanding §314(d). Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1367 (2018). The majority opinion construed §314(d)’s reference to the determination whether to institute inter partes review “under this section” as trained on the likelihood-of-success requirement stated in §314(a). Id., at 1372. The §315(b) timeliness determination, the majority concluded, “is not ‘closely related’ to the institution decision addressed in §314(a).” Id., at 1374 (quoting Cuozzo, 579 U. S., at ___ (slip op., at 12)). The majority therefore held that for §315(b) appeals, §314(d) does not displace the usual presumption favoring judicial review of agency action. Wi-Fi One, 878 F. 3d, at 1374–1375. In a concurring opinion, Judge O’Malley emphasized a “simpler” basis for the same conclusion. Id., at 1375. In her view, §314(d) shields from review only the agency’s assessment of a petition’s “substantive adequacy,” not questions about the agency’s “authority to act.” Id., at 1376.

The ending text of the Supreme Court decision:

Click-to-Call homes in on a single sentence from SAS Institute’s reviewability discussion: “Cuozzo concluded that §314(d) precludes judicial review only of the Director’s ‘initial determination’ under §314(a) that ‘there is a “reason- able likelihood” that the claims are unpatentable on the grounds asserted’ and review is therefore justified.” Id., at ___ (slip op., at 13) (quoting Cuozzo, 579 U. S., at ___ (slip op., at 9)). But that sentence’s account of Cuozzo is incomplete. Recall that Cuozzo itself applied §314(d)’s appeal bar to a challenge on grounds other than §314(a). See supra, at 10. To understand how far beyond §314(a) the bar on judicial review extends, we look to the statute and Cuozzo; for the reasons stated above, they establish that §314(d) bars challenges resting on §315(b).[8]


Click-to-Call presses an alternative reason why the Board’s ruling on its §315(b) objection is appealable. The Board’s final written decision addressed the §315(b) issue, so Click-to-Call argues that it may appeal under §319, which authorizes appeal from the final written decision. But even labeled as an appeal from the final written decision, Click-to-Call’s attempt to overturn the Board’s §315(b) ruling is still barred by §314(d). Because §315(b)’s sole office is to govern institution, Click-to-Call’s contention remains, essentially, that the agency should have refused to institute inter partes review. As explained, §314(d) makes that contention unreviewable.

*  *  *

For the reasons stated, we vacate the judgment of the United States Court of Appeals for the Federal Circuit and remand the case with instructions to dismiss for lack of appellate jurisdiction.

Justice Gorsuch, who dissented, has become the strongest supporter of patent rights on the Supreme Court. In his part V (not joined by Justice Sotomayor), one has the text:

The abdication of our judicial duty comes with a price. The Director of the Patent and Trademark Office is a political appointee. The AIA vests him with unreviewable authority to institute (or not) inter partes review. Nothing would prevent him, it seems, from insulating his favorite firms and industries from this process entirely. Those who are not so fortunate proceed to an administrative “trial” before a panel of agency employees that the Director also has the means to control. The AIA gives the Director the power to select which employees, and how many of them, will hear any particular inter partes challenge. It also gives him the power to decide how much they are paid. And if a panel reaches a result he doesn’t like, the Director claims he may order rehearing before a new panel, of any size, and including even himself.

No one can doubt that this regime favors those with political clout, the powerful and the popular. But what about those who lack the resources or means to influence and maybe even capture a politically guided agency? Consider Mr. DuVal, who 25 years ago, came up with something the Patent Office agreed was novel and useful. His patent survived not only that initial review but a subsequent administrative ex parte review, a lawsuit, and the initiation of another. Yet, now, after the patent has expired, it is challenged in still another administrative proceeding and retroactively expunged by an agency that has, by its own admission, acted unlawfully. That is what happens when power is not balanced against power and executive action goes unchecked by judicial review. Rather than securing incentives to invent, the regime creates incentives to curry favor with officials in Washington.


Two years ago, this Court sanctioned a departure from the constitutional plan, one in which the Executive Branch assumed responsibilities long reserved to the Judiciary. In so doing, we denied inventors the right to have their claims tried before independent judges and juries. Today we compound that error, not only requiring patent owners to try their disputes before employees of a political branch, but limiting their ability to obtain judicial review when those same employees fail or refuse to comply with the law. Nothing in the statue commands this result, and nothing in the Constitution permits it. Respectfully, I dissent.

link to dissent:

link to Ginsburg opinion:

CAFC reverses summary judgment ruling of CD California in Spigen case

The outcome was reversal of CD California:

Spigen Korea Co., Ltd., appeals the decision of the
United States District Court for the Central District of California
granting summary judgment of invalidity of three
asserted design patents. Ultraproof, Inc., cross-appeals the
district court’s denial of its motion for attorneys’ fees. Because the
district court improperly resolved a genuine dispute of material fact at summary judgment, we reverse the
district court’s decision and remand for further proceedings. We dismiss the cross-appeal as moot.

As to the factual dispute:

Spigen raises several grounds for reversing the district
court’s grant of summary judgment. First, Spigen argues
that there is a material factual dispute over whether the
’218 patent is a proper primary reference that precludes
summary judgment. We agree.


Here, the district court found that despite “slight differences,”
the ’218 patent undisputedly was “basically the
same” as the Spigen Design Patents, and, thus, a proper
primary reference. J.A. 27. This determination was error
because, based on the competing evidence before the district court, a reasonable factfinder could find otherwise.

A “primary reference” is “a single reference that creates
‘basically the same’ visual impression” as the claimed design.
High Point Design, 730 F.3d at 1312
(quoting Durling, 101 F.3d at 103). To be “basically the same,” the
designs at issue cannot have “substantial differences in
the[ir] overall visual appearance[s].” Apple, 678 F.3d at
1330. Additionally, if “major modifications” would be required to make a design look like the claimed design, then
the two designs are not “basically the same.” In re Harvey,
12 F.3d 1061, 1063 (Fed. Cir. 1993). “[S]light differences”
in design, however, do not necessarily preclude a “basically
the same” finding. MRC Innovations, 747 F.3d at 1333.


In the light of the competing evidence in the record, a
reasonable factfinder could conclude that the ’218 patent
and the Spigen Design Patents have substantial differences, and, thus, are not basically the same. See Fed. R.
Civ. P. 56(c). Accordingly, the district court’s grant of summary judgment of obviousness was in error and must be
reversed. See Durling, 101 F.3d at 105 (“Without . . . a primary reference, it is improper to invalidate a design patent
on grounds of obviousness.”);

Tuesday, April 14, 2020

Appellant Stratus loses trademark case at the CAFC

The case involved analysis of the DuPont factors

The Board considers the so-called “DuPont factors”
when assessing the likelihood of confusion. In re E.I.
DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.
1973). In the present case, the Board concluded that six of
the thirteen DuPont factors were relevant to UBTA’s opposition. J.A. 10.2 In sum, the Board determined that two
factors “weigh heavily in favor” of finding a likelihood of
confusion, one factor “weighs in favor” of finding a likelihood of confusion, two factors are neutral, and one factor
weighs “slightly” against finding a likelihood of confusion.
Id. at 3–27. We discuss the Board’s finding on each factor
in turn.

The dissent of Judge Newman raises significant issues in ERICSSON INC. v. TCL COMMUNICATION TECHNOLOGY

Part of Judge Newman's dissent addresses preservation of issues:

Contrary to the panel majority’s theory, the Section
101 issue was not preserved for appeal. The Fifth Circuit
is explicit that an “interlocutory order denying summary
judgment is not to be reviewed,” even after “full trial on the
merits” and even for “purely legal issues,” unless “it is sufficiently preserved in a Rule 50 motion.” Feld Motor
Sports, Inc. v. Traxxas, L.P., 861 F.3d 591, 595–96 & n.4
(5th Cir. 2017); Puga v. RCX Sols., Inc., 922 F.3d 285, 291
n.2 (5th Cir. 2019). The Fifth Circuit stresses that appellate review is available only for issues preserved in a Rule
50 motion. Feld, 861 F.3d at 596.

Other circuits are in accord. See, e.g., Ji v. Bose Corp.,
626 F.3d 116, 127 (1st Cir. 2010) (a party “must restate its
objection” in order “to preserve its challenge for appeal”);
Elm Ridge Expl. Co., LLC v. Engle, 721 F.3d 1199, 1219
(10th Cir. 2013) (a party cannot appeal the denial of its
Rule 50 motion “when it did not renew the motion under
Rule 50(b) after the jury’s verdict”); Duban v. Waverly Sales
Co., 760 F.3d 832, 835 (8th Cir. 2014) (“Litigants must renew summary judgment arguments in Rule 50 motions to
preserve their arguments for appeal.”); Luxottica Grp.,
S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303, 1310 n.1
(11th Cir. 2019) (“[T]he only way to preserve a Rule 50(a)
motion is to renew it under Rule 50(b).”). Although courts
have allowed a few departures in extraordinary circumstances, the case at bar is not asserted to present extraordinary circumstances.


The Federal Circuit has recognized that “[d]enials of
summary judgment are not appealable.” Novo Nordisk
A/S v. Becton Dickinson & Co., 304 F.3d 1216, 1221 (Fed.
Cir. 2002). Our departure today defies this classical procedural rule.
Here, TCL’s pre-trial motion for summary judgment was denied by the district court, no post-trial motion
was filed, and Section 101 was not mentioned in the district
court’s final decision or requested for reconsideration. Yet
the majority accepts this untried and undecided issue for
our appellate decision, and decides it, overriding the judgment entered on the jury verdict. That is not fair and reasonable judicial process.

Of the 101 issue itself, Judge Newman wrote:

The majority appears to require that all of the technologic information in the specification must be recited in the
claims in order to avoid abstractness of the claims. This is
a new requirement for claims, and not only conflicts with
the opportunity to present claims of varying scope, but also
conflicts with the principle that claims are intended to be
concise statements of the patented invention as distinguished from the prior art. See 35 U.S.C. § 112. It is not
the law and is not the practice that every descriptive and
distinguishing detail from the specification must be stated
in the claims.

Section 101 does not impose claim requirements beyond those of Sections 102, 103, 112, and the rest of patent
law. The majority’s new law of claim content brings fresh
uncertainty to an already strained innovation incentive.

Of interest to patent draftsmen, Judge Newman observed:

My colleagues also hold that, despite the technologically detailed claim limitations,
the claims are for an abstract idea because of the final paragraph of the ’510 patent
specification, the terminal boiler-plate beloved of patent
draftsmen. This paragraph concludes the specification as

While what has been described constitute exemplary embodiments of the invention, it should be
understood that the invention can be varied in
many ways without departing from the scope
thereof. For example, although the present invention has been described primarily in connection
with a platform for a mobile terminal for a wireless
telecommunications system, the invention can also
be used in connection with platforms for other
products. Because the invention can be varied in
many ways, it should be recognized that the invention should be limited only insofar as is required by
the scope of the following claims.

Monday, April 13, 2020

Pro se appellant GOPALAN only claimed a result, and loses at the CAFC

Claiming a result:

The claims only generically recite “a metric,” “an optimization technique,” an “optimization parameter,” “a value
of a number of independent measures,” and “a value for a
confidence measure.” None of these variables are defined,
and the claims do not concretely limit these variables such
that the claims do not merely claim the result of obtaining
a “substantially optimal combination of true positives and
false positives” in the data set.
Thus, the claims do not “embody a concrete solution to
a problem” because they lack “the specificity required to
transform a claim from one claiming only a result to one
claiming a way of achieving it.” Interval Licensing, 896
F.3d at 1343 (citing SAP Am., Inc. v. InvestPic, LLC, 890
F.3d 1016, 1021–22 (Fed. Cir. 2018) (collecting cases)).
Indeed, the claims provide result-oriented limitations like
others we have held to be directed to abstract ideas.

CAFC addresses 285 attorney's fees in Mossberg; no court decision --> no fees

The outcome:

This is an attorney’s fees case involving a voluntary
dismissal without prejudice under Rule 41(a)(1)(A)(i) of the
Federal Rules of Civil Procedure. Appellee O.F. Mossberg
& Sons, Inc. sued appellants Timney Triggers, LLC and
Timney Manufacturing, Inc. (collectively, Timney) for patent infringement.
Timney pursued invalidation of Mossberg’s patent through post-grant proceedings for over five
years. The district court proceedings were stayed during
this time. Timney ultimately succeeded; the United States
Patent and Trademark Office invalidated Mossberg’s patent for obviousness.
Mossberg then voluntarily dismissed
its suit under Rule 41(a)(1)(A)(i) and Timney applied for attorney’s fees under 35 U.S.C. § 285.
The district court denied Timney’s motion because, without a court decision
with the necessary judicial imprimatur, Timney was not a
prevailing party. We agree and therefore affirm.

Saturday, April 11, 2020

CAFC addressed notice issue in Nike v. Adidas

The outcome:

This case requires this court to once again consider the
notice provisions of the Administrative Procedure Act.
Nike, Inc. appeals the Patent Trial and Appeal Board’s decision on remand denying its request to enter substitute
claims 47–50 of U.S. Patent No. 7,347,011 on the ground
that those claims are unpatentable under 35 U.S.C. § 103.
Specifically, Nike asserts that the Board violated the notice
provisions of the APA by finding that a limitation of substitute claim 49 was well-known in the art based on a prior
art reference that, while in the record, was never cited by
adidas AG (“Adidas”) for disclosing that limitation. Nike
also challenges the Board’s finding that Nike’s evidence of
long-felt but unmet need was insufficient to establish the
nonobviousness of substitute claims 47–50. We conclude
that substantial evidence supports the Board’s finding that
Nike failed to establish a long-felt need for substitute
claims 47–50. Because no notice was provided for the
Board’s theory of unpatentability for substitute claim 49,
however, we vacate the Board’s decision as to substitute
claim 49 and remand for the Board to determine whether
that claim is unpatentable as obvious after providing the
parties with an opportunity to respond.

Nike lost on long felt but unmet need:

Accordingly, we affirm the Board’s determination that
Nike’s arguments and evidence failed to demonstrate a
long-felt but unmet need for substitute claims 47–50.

CAFC reverses ND Cal in Nevro

Of error:

Accordingly, we hold the district court erred in holding
invalid as indefinite the “paresthesia-free” system and device terms,
and we construe “paresthesia-free” in accordance with the plain language of the claims and
specification to mean that the therapy or therapy signal
“does not produce a sensation usually described as
tingling, pins and needles, or numbness.” See, e.g., ’472
patent at 1:62–66.


Accordingly, we conclude the district court erred
in holding indefinite the claims reciting the term “configured to”
and we construe “configured to” to mean “programmed to.”


We hold that the district court erred in holding
indefinite claims 18, 34 and 55 of the ’125 patent. We construe the
claim term “means for generating” as a meansplus-function term, having a function of “generating” and a
structure of “a signal/pulse generator configured to generate” the claimed signals.

The outcome:

We have considered the parties remaining arguments
and find them unpersuasive. For the foregoing reasons, we
vacate and remand the district court’s judgment of invalidity as to claims 7, 12, 35, 37 and 58 of the ’533 patent,
claims 18, 34 and 55 of the ’125 patent, claims 5 and 34 of
the ’357 patent and claims 1 and 22 of the ’842 patent.

CAFC determines banks are "persons" under AIA in Bozeman Financial

The outcome was that Appellant lost:

Bozeman challenges the Board’s authority to
decide the petitions because it argues the Banks2 are not
“persons” under the America Invents Act (AIA). It further
challenges the Board’s eligibility decisions.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
For the reasons set forth below, we hold that the Banks
are “persons” who may petition for post-issuance review
under the AIA. We further hold that claims 21–24 of the
’640 patent and 1–20 of the ’840 patent are ineligible under
§ 101. Accordingly, the Board’s decisions are affirmed.

As to the 101 matter:

The Banks petitioned for CBM review of claims 1–26 of
the ’640 patent and claims 1–20 of the ’840 patent. The
Board determined that the ’640 patent’s claims are directed
to the abstract idea of “collecting, displaying, and analyzing information
to reconcile check information against a
ledger.” No. 2019-1018 at J.A. 34. The Board further found
that the claims do not contain an inventive concept to render them eligible under § 101.
The Board noted, and rejected, Bozeman’s attempt to incorporate by reference
arguments related to the ’840 patent’s CBM rather than
offer any argument in its Patent Owner Response. The
Board also found that claims 1–20, 25, and 26 are unpatentable under § 112.

The Board determined that the ’840 patent claims are
directed to the abstract idea of “collecting and analyzing
information for financial transaction fraud or error detection.” No. 2019-1020 at J.A. 33. The Board found that the
claims do not contain an inventive concept to render them
eligible under § 101. It found that the claims recite generic
computer technology and that the claim elements considered individually and as an ordered combination merely
“apply the abstract concept of collecting, storing, analyzing,
and communicating information to reconcile financial information.” Id. at J.A. 47. The Board concluded that
claims 1–20 of the ’840 patent are ineligible under § 101.

Thursday, April 02, 2020

CAFC affirms ED Texas in Enerpol case

The outcome of Enerpol:

These appeals arise from an action for patent infringement. EnerPol, LLC accused Schlumberger Technology
Corporation of infringing certain claims of U.S. Patent
No. 6,949,491 directed to hydraulic fracturing methods.
Following claim construction proceedings, the district court
entered a stipulated judgment of noninfringement in favor
of Schlumberger. EnerPol challenges the district court’s
construction of two disputed claim terms on which the
judgment is based. Schlumberger cross-appeals, requesting dismissal of EnerPol’s
appeal for lack of appellate jurisdiction. We conclude that we have jurisdiction over
EnerPol’s appeal. Because we discern no reversible error
in the district court’s claim constructions, we affirm the
judgment of noninfringement.