Friday, May 22, 2020

CAFC affirms ED Va in Odyssey case

This case presents three Administrative Procedure Act
challenges involving the United States Patent and Trademark Office. Odyssey challenges procedural actions taken
by the PTO in two patent applications and makes a third
facial challenge to certain PTO procedural rules governing
practice before the Patent Trial and Appeal Board in ex
parte appeals. The Eastern District of Virginia dismissed
the former two challenges for lack of subject matter jurisdiction because the PTO had not taken final agency action.
It dismissed the latter challenge as barred by 28 U.S.C.
§ 2401, the six-year statute of limitations for challenges to
agency action. Because we agree with the district court
that the first two challenges concern non-final agency action and the latter challenge is barred by § 2401, we affirm.

Wednesday, May 20, 2020

Bandai wins on non-infringement but not invalidity at the CAFC

Of the indefinite articles a or an:

McRO offers two arguments that this specification evidence should be interpreted differently. The first argument, which relies on the key definitional sentence,
misreads our precedent and ignores most of the language
in that sentence. According to McRO, the phrase “a vector
from each vertex n on the reference” implies that each vertex on the reference can have multiple corresponding vectors because “it is a well settled rule that the article ‘a’
means one or more and not ‘a single.’” Brief for Appellant
at 24 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed. Cir. 2000)). The patent would have used
the phrase “a single vector,” McRO argues, if it had meant
to require one-to-one correspondence. Id. But McRO misreads KCJ Corp., which explains that “an indefinite article
‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or
more’ in open-ended claims containing the transitional
phrase ‘comprising.’” 223 F.3d at 1356 (emphasis added).
This specific canon of claim construction has no bearing
here. And as discussed, the word “a” is hardly the only relevant textual evidence of meaning.

As to invalidity, the district court's reasoning was conclusory:

McRO offers two arguments that this specification evidence should be interpreted differently. The first argument, which relies on the key definitional sentence,
misreads our precedent and ignores most of the language
in that sentence. According to McRO, the phrase “a vector
from each vertex n on the reference” implies that each vertex on the reference can have multiple corresponding vectors because “it is a well settled rule that the article ‘a’
means one or more and not ‘a single.’” Brief for Appellant
at 24 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d
1351, 1356 (Fed. Cir. 2000)). The patent would have used
the phrase “a single vector,” McRO argues, if it had meant
to require one-to-one correspondence. Id. But McRO misreads KCJ Corp., which explains that “an indefinite article
‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or
more’ in open-ended claims containing the transitional
phrase ‘comprising.’” 223 F.3d at 1356 (emphasis added).
This specific canon of claim construction has no bearing
here. And as discussed, the word “a” is hardly the only relevant textual evidence of meaning.

Juicy Whip vs. Orange Bang appears in footnote 4:

We deny McRO’s request to direct that the case be
assigned to a different district judge on remand. See Juicy
Whip, Inc. v. Orange Bang, Inc., 382 F.3d 1367, 1371, 1373–
74 (Fed. Cir. 2004).

Tuesday, May 19, 2020

ESIP Series 2, LLC loses appeal at CAFC

The appellant did not fare well:

ESIP Series 2, LLC, appeals a decision of the Patent
Trial and Appeal Board that certain claims of ESIP’s patent are invalid as obvious. ESIP also contends that the
Board should not have instituted inter partes review because appellee Puzhen failed to identify “all real parties in
interest” as required by 35 U.S.C. § 312. We find no error
in the Board’s obviousness determination, and the Board’s
decision to institute inter partes review is final and nonappealable. We affirm.

Monday, May 18, 2020


From the dissent of Judge Newman in Cochlear:

In finding the ’040 patent’s system obvious, the court
employs an improper analytic technique. The court first
removes major limitations from the claims, and then applies
selected pieces of prior art to the residue. This is
achieved by holding that the opening clause of all the
claims is “not limiting,” whereby the claims are freed of
critical limitations and are then held to embrace prior art
that is excluded from the ’040 system by the introductory
statement. My colleagues dispose of these limitations by
designating the introductory clause as a mere “preamble”
that does not limit the claims—although the clause states
limitations fundamental to the ’040 invention. It is incorrect
to remove such claim limitations when they describe
substantive aspects of the invention, and the error is compounded when,
as here, the court then broadens the residue of the claim into obviousness over prior art that is
disavowed by the preamble.


The opinion distorts the ’040 patent’s invention by stating: “Because the preamble is not limiting, [] there is therefore no limitation on the type of hearing loss to be treated
by the claimed hearing aid.” Maj. Op. at 16. It is, however,
stated throughout the patent documents that the ’040 invention is directed to unilateral hearing loss. See, e.g., ’040
patent, Abstract (“A hearing aid apparatus is intended
for . . . rehabilitation of patients with unilateral hearing
loss.”); ’040 patent, col. 1, ll. 5–11 (“The present invention
relates to a hearing aid . . . for rehabilitation of patients
with unilateral hearing loss.”). This is the invention for
which patentability is determined. See Jansen v. Rexall
Sundown, Inc., 342 F.3d 1329, 1333–34 (Fed. Cir. 2003)
(the preamble is a statement of the purpose of the invention).

The question of obviousness includes determining
whether the prior art suggests producing the claimed combination and with a reasonable expectation of success.
Here, no prior art suggests the combination that is described and claimed in the ’040 patent. It appears undisputed that at the time of this invention, transcranial
attenuation was not even considered in bone-anchored
hearing devices

SANDBOX LOGISTICS loses appeal at CAFC over the meaning of "bottom"

Of acquiescence as disclaimer:

As the Examiner explained, he “considered [the bottom wall] essential because the specification does not describe a means to connect the hatch to
the container without the bottom wall.” J.A. 1007. Sandbox did not challenge the Examiner’s understanding; instead, in response, SandBox amended the claims of the ’518
patent to recite a “bottom[,]” J.A. 575, with SandBox explaining that although the claims “were rejected on the basis [that] they lack essential elements[,]” the claims were
“being amended to include a bottom, and that the hatch is
positioned closely adjacent to the bottom[,]” J.A. 580. The
Examiner allowed the ’518 patent, based at least in part on
his understanding that the claims of the ’518 patent were
amended to include a “bottom wall on which the hatch is
mounted.” J.A. 1007; see J.A. 1025 (Notice of Allowability)
(the Examiner explaining that the prior art “fails to teach
or suggest . . . a bottom[] and a hatch closely adjacent to the
bottom”). SandBox’s failure to challenge the Examiner’s
understanding amounts to a disclaimer. See Biogen Idec,
Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed.
Cir. 2013) (“If an applicant chooses, she can challenge an
examiner’s characterization in order to avoid any chance
for disclaimer, but the applicants in this case did not directly challenge the examiner’s characterization.”); TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330
(Fed. Cir. 2003) (“[I]n ascertaining the scope of an issued
patent, the public is entitled to equate an inventor’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such
acquiescence may be found where the patentee narrows his
or her claims by amendment[.]” (internal citation omitted)).
Thus, the prosecution history confirms that “bottom” refers
to a “bottom wall.” Accordingly, the District Court properly
construed the term “bottom” as recited in the ’518, ’626, and
’929 patents.1

CAFC vacates ND Ga entry of summary judgment in ROTHSCHILD CONNECTED DEVICES v. Coca Cola

RCDI won its appeal at the CAFC:

For the foregoing reasons, we
reverse the district court’s claim construction of “user interface module,”
vacate the district court’s entry of summary judgment of noninfringement, and remand for
further proceedings.3 RCDI raised a number of discovery related issues on appeal.
On remand, we expect that the
district court will hold a new case management conference
concerning discovery

Of the "inherent authority" argument:

RCDI argues that the district court abused its discretion in exercising its inherent authority to dismiss the case
as to the dependent claims. We agree.

The district court’s analysis rests on a faulty premise:
that RCDI consistently refused to identify the dependent
claims it was asserting. In fact, on March 17, 2016—fewer
than five months into the case and before the case was
transferred from the Southern District of Florida to the
Northern District of Georgia—RCDI disclosed the asserted
dependent claims in its proposed amended complaint. J.A.
356; see also J.A. 348–58; J.A. 131–44. Although this motion was not ruled on for many months, that delay was
through no fault of RCDI.

Sunday, May 17, 2020

At the Copa on May 17, 1957

On 17 May 2020, "Pinstripe Alley" had the following post about a celebration of Billy Martin's 29th birthday in 1957:

Billy Martin, Mickey Mantle, Yogi Berra, Whitey Ford, and Hank Bauer go to the Copacabana night club to celebrate Martin’s birthday in a night that ends in a brawl.

The players and their wives went out to the club to see Sammy Davis Jr. when they encountered some other patrons heckling Davis. After a back-and-forth, a fight broke out, leaving one person with a concussion and broken jaw. The Yankees’ players were fined and a lawsuit was brought against Bauer, but later dropped for lack of evidence.

The incident would become one of the main reasons the Yankees would trade Martin later that season.


The post omits mention of the presence of Johnny Kucks (and wife) [Martin was not married]. The account in the New York Daily News is somewhat different and includes the text:

In the nightclub rhubarb, a 40-year-old delicatessen man — and a Yankee rooter to boot — got slugged in the jaw, giving him visions of a $250,000 damage suit against the Copa and the Yanks' burly Hank Bauer, whom he blamed for the blow.

Even angrier than the battle's only casualty, Edwin Jones of 602 W. 188th St., was Yankee manager Casey Stengel.


"I won't pitch Ford because the whole world knows he was out until 2 in the morning," snapped Casey. "He knew days in advance that he was supposed to pitch this game. He had no right to be out after hours. If I pitched him and he was hit hard, people would wonder what I was doing.

"Berr has been around long enough to know better. The way he's been hitting he could use a rest instead of being out late. Anyway, with a lefthander pitching against us I think he can stand a night off."

Casey dropped Bauer to eighth place in the batting order. Mickey Mantle, another of the night clubbers, also stayed in the lineup.

[Jones noted] "My bowling club was celebrating at the Copa. We saw the Yankee players, Bauer, Martin, Mickey Mantle, Whitey Ford, Yogi Berra, Johnny Kucks and their wives come and take a table near us.


About two years after the 1957 incident, on May 26, 1959 Kucks was traded to the Kansas City Athletics, together with Jerry Lumpe and Tom Sturdivant, for Ralph Terry and Héctor López
Later, on December 11, 1959, Bauer with Don Larsen, Norm Siebern and Marv Throneberry was traded to Kansas City Athletics in exchange for Roger Maris, Joe DeMaestri and Kent Hadley

In the 7th game of the 1960 World Series, lost by Terry, Maris was 0 for 5, with an error.
There were no strike outs on either side in Game 7.

CBS Sunday Morning on May 17, 2020.

The opening CBS trumpet fanfare came via an "isolated" guest located in Lancaster, PA. Jane Pauley, dressed in dark (black?) introduced stories without news or weather.

The cover story, The Stuff of Dreams, was reported by Susan Spencer. Metaphors fill a "dream journal." Dreams are more vivid. Economic desparation. Huge cases of toilet paper. Tidal waves. Quick comments by Steven Colbert. A dream about Oprah's audience; Oprah comes at audience with a chain saw. Michael Naidorf of Mississippi State University on manufacturing dreams.

Up next, Seth Doane on performances from balconies.

Rita Braver on the class of 2020. Abby Bannon from Crawfordsville, Indiana (the home of Civil War General and Ben-Hur author Lew Wallace) did a song. Rebecca Blank, chancellor of UWisconsin (the alma mater of Rita Braver) was interviewed. James Patterson on persistence and resilience. Job hunting in a bleak market. Hiring freeze. Jada Thompson in Belleville, Wisconsin.

Anthony Mason interviews Graham Nash. Garden of Saint Mark's Church in the Bowery in New York City. At the time of Covid, Nash was five shows into a sold out tour. Nash is currently 78. Founded the Hollies. Best part of being 78: I don't care about unimportant details.

Lee Cowan on the effects of isolation. Analogy to baby birds, waiting for food to be delivered. Dinosaur brain: isolation is a threat. Isolation allows one to get rid of clutter. Thoreau: constructive solitude. But: Feeling robbed and feeling trapped. Go back to first principles and decide what really matters.

Luke Burbank on Mount St. Helens eruption. May 17, 1980. Mount St. Helens blows up at 8:32am. Book: Eruption. Trees flattened for 220 square miles. 57 people died. Lives vs. livelihoods. Governor Dixie Lee Ray. A stone hurricane. David Johnston died. The eruption was on a Sunday.

Steve Hartman on "determined seniors." Graduation done on a podium in a driveway at home. Graduation done at Indianapolis Speedway.

Conor Nighton on Faroe Islands, between Iceland and Norway (owned by Kingdom of Denmark). Opportunity to direct "guides" remotely as a virtual tourist.

Tracy Smith interviews Jerry Seinfeld.

A fluff piece on Tony Dokoupil Jr. and Katy Tur. Doing nothing and going nowhere summarizes this one.

Moment of nature. Beqa Lagoon in Fiji, where sharks are enjoying a quick bite.
See also

Thursday, May 14, 2020

Electronic Communication Technologies loses appeal of 101 decision at the CAFC

The appellant lost at the CAFC:

Electronic Communication Technologies, LLC (“ECT”)
sued, LLC (“ShoppersChoice”), alleging that ShoppersChoice infringed claim 11 of U.S. Patent
No. 9,373,261 (“the ’261 patent”). The district court
granted ShoppersChoice’s motion for judgment on the
pleadings that claim 11 was invalid under 35 U.S.C. § 101.
ECT appeals. We have jurisdiction over this appeal under 28 U.S.C. § 1295(a)(1). For the reasons stated below,
we affirm.

The Berkheimer case is cited:

Patent eligibility under § 101 is an issue of law that
sometimes contains underlying issues of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018).
The Supreme Court has laid out a two-step framework for
evaluating patent eligibility. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–73 (2012). First, we
determine whether a patent claim is directed to an unpatentable law of nature, natural phenomena, or abstract
idea. Alice, 573 U.S. at 217. If so, we then determine
whether the claim nonetheless includes an “inventive concept” sufficient to “‘transform the nature of the claim’ into
a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 72, 78).

A 1927 legal paper is also cited:

Claims, like claim 11, that are directed to longstanding
commercial practices do not pass step one of the two-part
§ 101 test. See, e.g., Alice, 573 U.S. at 219–20 (concluding
claims “drawn to the concept of intermediated settlement”
were directed to an abstract idea at step one because intermediated settlement is “a longstanding commercial practice”); Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(concluding claims drawn to “the basic concept of hedging”
were directed to an abstract idea because “[h]edging is a
fundamental economic practice long prevalent in our system of commerce” (internal citations and quotation marks
omitted)); see also, e.g., Intellectual Ventures I LLC v. Erie
Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017) (concluding claims were directed to an abstract idea because the
claimed “activity, i.e., organizing and accessing records
through the creation of an index-searchable database, includes longstanding conduct that existed well before the
advent of computers and the Internet”); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369–70 (Fed. Cir. 2015) (concluding claims related to tailoring advertisements according to the time of day were directed to an abstract idea because that practice had been
“long-practiced in our society”); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (concluding
claims were directed to an abstract idea because the claims
were “squarely about creating a contractual relationship—
a ‘transaction performance guaranty’—that is beyond question of ancient lineage” (quoting Willis D. Morgan, The History and Economics of Suretyship, 12 Cornell L.Q. 153 (1927))).

The CAFC affirms MD FL in design patent case

The outcome:

Lanard Toys Limited (“Lanard”) appeals from the decision of the United States District Court for the Middle District of Florida granting summary judgment in favor of
Dolgencorp LLC, Ja-Ru, Inc., and Toys “R” Us–Delaware,
Inc. (collectively, “Appellees”) with respect to Lanard’s
claims for design patent infringement, copyright infringement, trade dress infringement, and statutory and common
law unfair competition. Lanard Toys Ltd. v. Toys “R” UsDelaware, Inc., No. 3:15-cv-849-J-34PDB, 2019 WL
1304290 (M.D. Fla. Mar. 21, 2019) (“Decision”). For the
reasons described below, we affirm

The law

We begin, as the district court did, with Lanard’s claim
for design patent infringement. Determining whether a design patent has been infringed is a two-part test: (1) the
court first construes the claim to determine its meaning
and scope; (2) the fact finder then compares the properly
construed claim to the accused design. Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). In comparing the patented and accused design, the “ordinary
observer” test is applied—i.e., infringement is found “[i]f,
in the eye of an ordinary observer, giving such attention as
a purchaser usually gives, two designs are substantially
the same, if the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it to be
the other.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d
665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham Mfg.
Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871)). The infringement analysis must compare the accused product to
the patented design, not to a commercial embodiment. See
Payless Shoesource, Inc. v. Reebok Int’l, Ltd., 998 F.2d 985,
990 (Fed. Cir. 1993); see also High Point Design LLC v.
Buyer’s Direct, Inc., 621 F. App’x 632, 642 (Fed. Cir. 2015)
(“We have long-cautioned that it is generally improper to
determine infringement by comparing an accused product
with the patentee’s purported commercial embodiment.”
(citing Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48
F.3d 1193, 1196 (Fed. Cir. 1995), abrogated on other
grounds by Egyptian Goddess, 543 F.3d at 672–79)).


To be clear, the “ordinary observer” test for design patent infringement requires the fact finder to “compar[e]
similarities in overall designs, not similarities of ornamental features in isolation.” Ethicon Endo-Surgery, Inc. v.
Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015) (citing
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295
(Fed. Cir. 2010); Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d
1294, 1303–04 (Fed. Cir. 2010)). But, while the “ordinary
observer” test is not an element-by-element comparison, it
also does not ignore the reality that designs can, and often
do, have both functional and ornamental aspects. See
Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d
1365, 1372 (Fed. Cir. 2006) (“The trial court is correct to
factor out the functional aspects of various design
elements, but that discounting of functional elements must
not convert the overall infringement test to an element-byelement comparison.”). Under the “ordinary observer” test,
a court must consider the ornamental features and analyze
how they impact the overall design. See Richardson, 597
F.3d at 1295 (“We looked to ornamental elements . . . [and
w]e concluded that both the claimed design and the accused
designs contained those overall ornamental effects, thereby
allowing for market confusion.” (citing Crocs, 598 F.3d at
1303–07)). That is what the district court did in this case.

Kate Snow story on Covid19 on NBC on May 14, 2020: the issue of false negatives

The story by Kate Snow on May 14, 2020 on the NBC Nightly News (Lester Holt) suggested that the PCR test, especially when administered on patients with recent symptoms, can give false negatives (38% ?)

But, recall also


From Face the Nation on 10 May 2020


MARGARET BRENNAN: The president seems to be doubting the value of testing in the workplace. What's your view?

DR. GOTTLIEB: Well, look, I think testing has value in a workplace, especially when you're dealing with places where there's people who are at higher risk of getting infected. So you think about people who work on a shop floor or in a grocery store. The machine- the antigen-based tests that we're talking about here that was just approved is actually less sensitive than a machine that the White House is using. They're using an Abbott platform. But that flat- platform also has false negatives, meaning that sometimes patients- people are going to have the virus. But the test is going to say they don't. There's machines that are more accurate than that Abbott machine, like the GeneXpert. They take a little longer to perform the test. The reason why the White House prefers the Abbott machine is it gives a result in five to 15 minutes. GeneXpert takes about 45 minutes. And so I think that's why they prefer that platform. But this is why we need to have testing out in the community. This is why we need very accurate tests if we're going to be testing asymptomatic people. In the setting of a doctor's office where someone is symptomatic, using a test that doesn't have very high sensitivity might be OK because the doctor's going to run a confirmatory test anyway. But in the setting of where you're testing people who are asymptomatic, as the White House is doing, and you're trying to catch that- those people who don't have any symptoms, you want a very sensitive test for that kind of a purpose. And that's what we should be using out in the employment setting as well.


Hmmm, the tests in the White House are not the same as in the states?

Note also


DR. GOTTLIEB: Well, it helps solve the challenges. I mean, every test paradigm is a little bit different, has pros and cons. The PCR-based tests, where the states have struggled to get the testing supplies, those are more accurate, but they also take more time and they cost more to perform. The reimbursement is about a hundred dollars. Maybe if you do that at scale, you can get the cost down to fifty dollars. There is point-of-care-based systems like the Abbott machine that the White House is using or the GeneXpert, which is very reliable. Those take a little longer to get a result. Their sensitivity isn't as good as the PCR-based machines, with the exception of the GeneXpert, which is very accurate. These antigen based tests aren't as reliable, meaning they're not as sensitive. So they're going to miss some patients who have COVID. But in the hands of a doctor who already has a high index of suspicion that the patient may have the disease, and if they get a negative test and they still think the patient may be infected, they'll send off a PCR-based test. They allow you to dramatically expand testing. And they're very cheap. They're very easy to perform. And again, most doctors have these machines already in their offices. They're using them for strep throat and flu. The challenge is going to be what the guidance is from the CDC and public health agencies about how doctors test in their offices. If turning over a positive case in your medical office means that you have to do a deep cleaning and quarantine your nursing staff and close your office, doctors aren't going to be testing. And that would be unfortunate because there's a big, installed base of these tests already in place. So CDC has to come out with flexible guidelines on how doctors can protect their offices and protect their staff and also be testing in the community. Because if we can't do that, then we're not going to have access to tests. And the challenge won't be the platforms. There'll be plenty of capacity to perform tests. The challenge will become where can you go get the test?


See also the story about Dr. Salerno in Orange, New Jersey. It suggests that many of the people who should be tested have had difficulties in obtaining tests, a problem Dr. Salerno is trying to rectify. Also, notes that Dr. Salerno refers to the level of testing in New Jersey as 7000 per day.

Wednesday, May 13, 2020

PTAB's claim construction in Sprint Spectrum vacated by CAFC

The CAFC determined that PTAB erred in claim construction:

Sprint Spectrum L.P. appeals the final written decision
of the Patent Trial and Appeal Board declining to hold certain claims of
U.S. Patent No. 7,230,931 unpatentable on
anticipation and obviousness grounds. Sprint specifically
challenges the Board’s construction of a claim term that
appears in most of the challenged claims. Sprint also challenges the
Board’s determinations relating to the scope of
Sprint’s reply and the scope and content of the asserted
prior art. Because we agree that the Board erred in construing the claim term at issue,
we vacate the Board’s decision as to the applicable claims and remand for
consideration of certain grounds under the proper claim
construction. We affirm the Board’s decision in all other

Note footnote 7:

Per recent regulation, the Board applies the Phillips claim construction standard to IPR petitions filed on or
after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
§ 42.100(b)). Because Sprint filed its IPR petition before
November 13, 2018, we apply the broadest reasonable interpretation standard

Of limitation of invention scope to that of the preferred embodiment:

As we have explained, the scope of an invention
may only be properly limited to the preferred embodiment
“if the patentee uses words that manifest a clear intention
to restrict the scope of the claims to that embodiment.”
Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d
1262, 1267 (Fed. Cir. 2015) (citing Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
The Board identified no manifestation of a clear intention to restrict the scope of the claims to the embodiment
illustrated by Figure 14.

PTAB erred:

We conclude that the Board erred in its overly narrow
construction of the “scanning beam information” limitations in claims 2, 11, and 20. Absent any lexicography or
manifestation of clear intent to limit the scope of “scanning
beam information” to any particular embodiment, the plain
language must control.

Of motivation to combine

Whether there is a
reason to combine is a factual determination that we review for substantial evidence. Rambus Inc. v. Rea,
731 F.3d 1248, 1251–52 (Fed. Cir. 2013). The Board’s finding is supported by substantial evidence because a reasonable factfinder could find no reason to combine based on the
limited argument and evidence presented by Sprint. The
portion of Sprint’s petition addressing claim 2 merely refers back to an earlier analysis for claim element 1[a], as
does the supporting expert declaration. We agree with the
Board that Sprint’s reason to combine analysis for claim
element 1[a]—a different claim limitation covering different subject matter—is “insufficient to explain why one of
ordinary skill would have incorporated Ahy’s disclosure of
[certain parameters relevant to claim 2] into Newman.”
Decision, 2019 WL 1096544, at *13. Sprint complains that
the Board overlooked certain pages of its petition, but the
pages that Sprint identifies on appeal—which address
claim element 1[c]—are not the pages that Sprint identified to the Board. We can hardly fault the Board for focusing on the pages that Sprint actually referenced in its

More on Arthrex in CAFC order of May 13, 2020 in Virnetx v. Cisco

In the matter, Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,679, the CAFC
further expounded on Arthrex.

The order given on 13 May 2020 is for further explanation:

The Director of the United States Patent and Trademark Office and Cisco Systems, Inc. have petitioned for rehearing to argue that we erred in extending Arthrex, Inc.
v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019)
beyond the context of inter partes reviews to this appeal
from a decision of the Patent Trial and Appeal Board in an
inter partes reexamination. Specifically, they assert that
administrative patent judges (“APJs”) should be deemed
constitutionally appointed officers at least when it comes
to their duties reviewing appeals of inter partes reexaminations. We issue this order for the purpose of more fully
explaining our rationale for rejecting this argument.

Uniloc loses in Cisco v. Uniloc at CAFC

The outcome

Uniloc 2017 LLC appeals from the Northern District of
California’s Rule 12(c) dismissal holding claim 6 of U.S. Patent No. 6,980,522 ineligible under 35 U.S.C. § 101. Because claim 6 is directed to an abstract idea and fails to
recite an inventive concept that would otherwise render the
claim eligible, we affirm.

The law

We review a Rule 12(c) dismissal under the law of the
regional circuit, here the Ninth Circuit. OIP Techs., Inc. v., Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015).
The Ninth Circuit reviews Rule 12(c) judgments de novo,
and construes all allegations of material fact in the light
most favorable to the nonmoving party. Lyon v. Chase
Bank USA, N.A., 656 F.3d 877, 883 (9th Cir. 2011); Turner
v. Cook, 362 F.3d 1219, 1225 (9th Cir. 2004). Patent eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying factual findings. SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). It may be resolved on a motion to dismiss “when there are no factual
allegations that, taken as true, prevent resolving the eligibility as a matter of law.” Aatrix Software, Inc. v. Green
Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir.

Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof,” may obtain a patent. 35 U.S.C. § 101. “Laws of
nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Assoc. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)). Under the Supreme Court’s two-step framework for determining patent
eligibility under § 101, we first determine whether the
claims are directed to a “patent-ineligible concept,” such as
an abstract idea. Id. at 217. If so, we “consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)).

Conclusory arguments failed

Uniloc argues factual allegations in the complaint
should have precluded granting a motion to dismiss. We
do not agree. The district court correctly recognized that
Uniloc’s purported factual allegations were conclusory
statements regarding eligibility. J.A. 5. Uniloc’s counterclaim made only general allegations, such as, “the patent’s
disclosure and claims are drawn to solving a specific, technical problem arising from the evolution of ad-hoc radio
communication systems” or that “the inventions of the ’522
patent were not well-understood, routine or conventional
at the time of the invention.” These are not factual allegations; they are sweeping conclusory statements and the district court properly concluded that they did not preclude
dismissal. See In re Gilead Scis. Sec. Litig., 536 F.3d 1049,
1055 (9th Cir. 2008).

All appellants lose in CAFC Arkwright case

Of legal background

When the district court entered the judgment at issue
in this appeal, it did not have the benefit of our recent precedential decision in Lone Star Silicon Innovations LLC v.
Nanya Tech. Corp., 925 F.3d 1225, 1299 (Fed. Cir. 2019).
Nor did the parties when they filed their appellate briefs.
In Lone Star, we made clear that whether one qualifies as
a patentee under 35 U.S.C. § 281 is a statutory prerequisite
to the right to relief in a patent infringement action, but
does not implicate the district court’s subject matter jurisdiction. There, we recognized that intervening Supreme
Court precedent made clear that our earlier decisions
treating the prerequisites of the Patent Act as jurisdictional were wrong. We expressly held that “[w]e therefore
firmly bring ourselves into accord with Lexmark [Int’l, Inc.
v. Static Control Components, Inc., 572 U.S. 118 (2014)]
and our sister circuits by concluding that whether a party
possesses all substantial rights in a patent does not implicate standing or subject-matter jurisdiction.” Lone Star,
925 F.3d at 1235–36. As long as a plaintiff alleges facts
that support an arguable case or controversy under the Patent Act, the court has both the statutory and
constitutional authority to adjudicate the matter. Id. at
1235 (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128 n.4 (2014)). Because Ms.
Schwendimann’s Complaint contained such allegations—
that she is the owner by assignment of the ’845 patent and
Appellants infringed that patent—there is no “standing” issue to be decided in this appeal.6

The questions decided:

Thus, despite the way the parties have framed the issue in their briefing, the only questions we must decide are
whether Ms. Schwendimann was a patentee at the time her
action was filed and, if that status was conferred upon her
by assignment, whether that assignment is reflected in a
written instrument within the meaning of 35 U.S.C. § 261.
We answer both questions in the affirmative.

Of Arkwright's arguments

[Arkwright] argues that the District Court lacked the
authority to reform the writing after the fact to reflect the
parties’ understanding as of 2002 and that, if it did have
that authority, the assignment would not be effective until
the reformation actually occurred and the writing requirement was satisfied. We disagree on both points.

Tuesday, May 12, 2020

Pro se appellant Amit Agarwal loses at the CAFC

Some background on the patent:

Agarwal is the owner of the ’398 patent, which is directed to a method of playing a point-scoring golfing game
at a driving range. Golfers take aim at various target
greens and receive points when the balls land on the
greens. The greens are sloped downward towards a hole in
the green so that a ball landing in the green will roll into
the hole. The balls each have a barcode or color code to
identify which tee the ball came from and the ball is
scanned after entering the hole to identify which target the
ball landed on. After the ball is scanned, the golfer’s score
is updated and displayed on computers at the tee.


The Board instituted review of both asserted claims. In
the Final Written Decision, the Board determined that
TopGolf demonstrated that the claims were unpatentable
as obvious by a preponderance of the evidence. The Board
declined to construe the claims, noting the only dispute
need not be resolved because the “significantly lower” limitation was taught by Bertoncino, even under Agarwal’s
proposed construction. The Board agreed with TopGolf
that the “significantly lower” limitation was taught by Bertoncino.


The Board also considered Agarwal’s takings challenge to the constitutionality of
inter partes review and concluded the proceeding was
constitutional because the ’389 patent was always subject
to ex parte reexamination.


Agarwal’s appeal presents four issues: (1) whether the
Board committed a legal error by relying on obviousness
theories not raised by TopGolf in its Petition, (2) whether
the Board’s determination that the “significantly lower”
limitation was met was supported by substantial evidence,
(3) whether the Board provided adequate analysis of the
“indexing” limitation, and (4) whether an IPR is an unconstitutional taking
where a patent application was filed before 1999 and the creation of inter partes reexamination.
We address these issues in turn.

Of substantial evidence:

Agarwal objects that other evidence contradicted the
Board’s finding. However, “[i]f two inconsistent conclusions
may reasonably be drawn from the evidence in record, the
PTAB’s decision to favor one conclusion over the other is
the epitome of a decision that must be sustained upon review for substantial evidence.” Elbit Sys. of Am., LLC v.
Thales Visionix, Inc., 881 F.3d 1354, 1357 (Fed. Cir. 2018)
(internal quotations and alterations omitted). The simple
fact that some contradictory evidence exists in the record
does not demonstrate that the Board’s findings are unsupported by substantial evidence. Id. The Board’s finding
that Bertoncino taught the “significantly lower” limitation
is supported by substantial evidence.

Of an explanation of reasoning:

Agarwal contends that the Board made only cursory
findings regarding the “indexing” claim limitation and did
not fully explain its reasoning. The Board must do more
than summarize and summarily reject arguments made by
the parties. In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed.
Cir. 2016). The Board is required to explain its reasoning
for accepting or rejecting arguments raised by the parties.
Id. In this case, the Board considered several pieces of evidence that TopGolf pointed to in its Petition. The Board’s
Final Written Decision addressed the arguments made by
TopGolf and Agarwal and acknowledged the evidence cited
by TopGolf in its Petition and Reply.

Celgene is cited:

This court has already
held that “the retroactive application of IPR proceedings to
pre-[America Invents Act] patents is not an unconstitutional taking under the Fifth Amendment” because patent
owners “had the expectation that the PTO could reconsider
the validity of issued patents” in inter partes reexaminations and ex parte reexaminations. Celgene Corp. v. Peter,
931 F.3d 1342, 1362–63 (Fed. Cir. 2019).

Appellant Nomula loses at CAFC

The outcome:

Jagadeshwar Reddy Nomula filed U.S. Patent Application Nos. 13/908,992 and 13/089,772,
which claim systems and methods for recommending gifts using Internet-based
information of the gift recipient. The examiner rejected all
pending claims as unpatentable for obviousness, and the
Board upheld the examiner’s obviousness rejections. We

The Ariosa case is cited:

“We review the Board’s ultimate obviousness determination de novo and
underlying factual findings for substantial evidence.” In re Varma, 816 F.3d 1352, 1359 (Fed. Cir.
2016). Among the factual determinations in an obviousness analysis are “findings as to the scope and content of
the prior art.” Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359, 1364 (Fed. Cir. 2015)

This is a case wherein a prior 101 rejection had been reversed:

The examiner also rejected the same claims under
35 U.S.C. § 101, but the Board reversed those rejections.
No § 101 issue is before us.

Sunday, May 10, 2020

CBS Sunday Morning on May 10, 2020

The "Moment of Nature" re-visited Keukenhof Gardens in Holland.

See also The Most Beautiful Flower Garden In The World Has No Visitors For The First Time In 71 Years And I Got To Capture It at

Previously in May 2017 on CBS Sunday Morning:

Ted Koppel did a piece on the President as "communicator in chief." He did bring up the Kennedy/Nixon debates, but did not mention that those listening on radio (as distinct from television) thought Nixon won the debate.

link for CBS Sunday Morning:

Friday, May 08, 2020

Pro se appellant Jobin loses at the CAFC: "conclusory statements unmoored from specific claim language"

Of conclusory arguments:

Despite its expansive language and its recitation of
servers and databases, claim 221 of Jobin’s application is,
at bottom, directed to the collection, organization, grouping, and storage of data using techniques such as conducting a survey or crowdsourcing. As the Board correctly
concluded, this claim is directed to a method of organizing
human activity—a hallmark of claims directed to abstract
ideas. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (“[W]e have treated analyzing
information by steps people go through in their minds . . .
without more, as essentially mental processes within the
abstract-idea category.”). The server and database recited
in the claim are merely tools used for organizing human
activity, and are not an improvement to computer technology. Thus, the claim does not present any specific asserted
improvement in computer capabilities. We reject Jobin’s
arguments to the contrary, which amount to nothing more
than conclusory statements unmoored from specific claim

CAFC reviews "disclosed, not claimed, dedicated" in Eagle Pharmaceuticals; D. Delaware affirmed

The outcome was that appellant lost:

Eagle Pharmaceuticals appeals a district court judgment of non-infringement on the pleadings. Eagle sued
Slayback Pharma LLC for infringing four patents covering
Eagle’s brand name bendamustine pharmaceutical product. Eagle argues that the district court committed two errors when it concluded that the dedication-disclosure
doctrine barred Eagle’s claim of infringement under the
doctrine of equivalents. First, Eagle contends that the district court erred when it concluded that the asserted patents disclose, but do not claim, ethanol—and therefore
dedicated ethanol to the public. Second, Eagle contends
that the district court improperly applied the dedicationdisclosure doctrine at the pleadings stage, in the presence
of factual disputes and without drawing all inferences in
Eagle’s favor. Because we find no error in the district
court’s judgment on the pleadings, we affirm.

Of the relevant law of the Third Circuit:

We review the district court’s judgment on the pleadings under the law of the regional circuit, which in this case
is the Third Circuit. Data Engine Techs. LLC v. Google
LLC, 906 F.3d 999, 1007 (Fed. Cir. 2018). The Third Circuit reviews the grant of judgment on the pleadings de
novo, “accept[ing] all of the allegations in the pleadings of
the party against whom the motion is addressed as true
and draw[ing] all reasonable inferences in favor of the nonmoving party.” Id. (quoting Allstate Prop. & Cas. Ins. Co.
v. Squires, 667 F.3d 388, 390 (3d Cir. 2012)). In doing so,
we “disregard rote recitals of the elements of a cause of action, legal conclusions, and mere conclusory statements.”
James v. City of Wilkes-Barre, 700 F.3d 675, 679 (3d Cir.
2012). Rule 12(c) judgment is appropriate when the moving party clearly establishes that there are “no material
issues of fact, and that he or she is entitled to judgment as
a matter of law.” DiCarlo v. St. Mary Hospital, 530 F.3d
255, 259 (3d Cir. 2008); see FED. R. CIV. P. 12(c).

Johnson & Johnston is cited as to the concept of disclosure without claiming creating dedication to
the public:

The disclosure-dedication doctrine bars application of
the doctrine of equivalents. Johnson & Johnston Assoc. v.
R.E. Servs., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc).
It states that “when a patent drafter discloses but declines
to claim subject matter, . . . this action dedicates the unclaimed subject matter to the public.” Id. By preventing a
patentee from recapturing unclaimed subject matter, the
disclosure-dedication doctrine reinforces “the primacy of
the claims in defining the scope of the patentee’s exclusive
right.” Id. To determine whether the disclosure-dedication
doctrine applies in a given case, we ask whether the specification discloses unclaimed subject matter with “such
specificity that one of ordinary skill in the art could identify
the subject matter that had been disclosed and not
claimed.” PSC Comput. Prods., Inc. v. Foxconn Int’l, Inc.,
355 F.3d 1353, 1360 (Fed. Cir. 2004). If the court concludes
that the inventor dedicated an alleged equivalent to the
public, the patent owner cannot prevail on its doctrine of
equivalents infringement claim based on that equivalent.
Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108 (Fed. Cir.

This appeal centers on Eagle’s challenge to the merits
and procedural aspects of the district court’s application of
the disclosure-dedication doctrine.

Of the first of the contested points:

Instead, we have held that the disclosurededication doctrine requires only that the specification disclose the unclaimed matter “as an alternative to the relevant claim limitation.” Pfizer, Inc. v. Teva Pharm. USA,
Inc., 429 F.3d 1364, 1378 (Fed. Cir. 2005).
We conclude that the asserted patents disclose ethanol
as an alternative to PG in the “pharmaceutically acceptable fluid” claim limitation. The specification repeatedly
identifies—without qualification—ethanol as an alternative pharmaceutically acceptable fluid.

Of the second:

Eagle also challenges the district court’s judgment on
procedural grounds. Eagle asserts that, at the time the district court entered judgment of non-infringement on the
pleadings, a factual dispute existed: whether a skilled artisan would understand the specification to disclose ethanol as an alternative to PG in the claimed invention. Eagle
argues that the district court erred by resolving that factual dispute at the pleadings stage without drawing all reasonable inferences in Eagle’s favor. Appellant Br. 46
(citing Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1349
(Fed. Cir. 2018)). Specifically, Eagle argues that the district court was required to infer that a “skilled artisan
would not have understood that ethanol was an alternative
to PG in the claimed ‘PEG/PG/Antioxidant’ category of formulations.” Id. at 44.


As a preliminary matter, when ruling on a Rule 12(c)
motion, district courts have discretion to consider evidence
outside the complaint for purposes of deciding whether to
accept that evidence and convert the motion into one for
summary judgment. Kulwicki v. Dawson, 969 F.2d 1454,
1462 (3d Cir. 1992); see also 5C WRIGHT & MILLER, FED.
PRAC. & PROC. CIV. § 1371 (3d ed.) (“As is true of practice
under Rule 12(b)(6), it is well-settled that it is within the
district court’s discretion whether to accept extra-pleading
matter on a motion for judgment on the pleadings and treat
it as one for summary judgment or to reject it and maintain
the character of the motion as one under Rule 12(c).”). We
conclude that the district court did not abuse its discretion
when it set aside Dr. Amiji’s declaration. The district court
reviewed Dr. Amiji’s declaration and determined that it
was merely an “attempt[] to manufacture a factual dispute.” Eagle, 382 F. Supp. 3d at 346. The district court
also found that the patents themselves provided “sufficient
context to decide” the legal issue at hand. Id. Eagle has
not persuaded us otherwise. In opposing Slayback’s motion
to dismiss, Eagle conceded that the district court’s “reliance
on expert testimony would be improper at this preliminary
[pleadings] stage.” J.A. 233.

We find no error in the district court’s decision to grant
judgment of non-infringement on the pleadings. The application of the disclosure-dedication doctrine is a question of
law. Pfizer, 429 F.3d at 1378. Here the district court concluded that the patents themselves provided “sufficient
context to decide a question of law, i.e., that the disclosurededication doctrine applies to bar Eagle’s claims for infringement under the doctrine of equivalents.” Eagle, 382
F. Supp. 3d at 346.


in Amgen Inc. v. Coherus
BioSciences Inc., we held that expert testimony was not
necessary to understand whether a patent owner “clearly
and unmistakably surrendered unclaimed [disclosure] during prosecution.” 931 F.3d 1154, 1160 (Fed. Cir. 2019) (affirming judgment of non-infringement on the pleadings
because prosecution history precluded Amgen’s infringement allegations based on the doctrine of equivalents). We
explained that “Amgen’s statements during prosecution,”
on their face, showed that “a competitor would reasonably
believe that Amgen surrendered unclaimed salt combinations” as a matter of law. Id. (internal quotations omitted).
Here, we conclude that the only reasonable inference
that can be made from the patent disclosures is that a
skilled artisan would understand the patents to disclose
ethanol as an alternative to the claimed PG. Nothing in
the record permits us to infer that a skilled artisan “would
have understood that the patent specification describes distinct categories of formulations that contain different ingredients and work in different ways.” Appellant Br. 44.
As a result, even when viewing the pleadings in the light
most favorable to Eagle, we conclude there is no material
issue of fact to resolve and Slayback is entitled to judgment
in its favor as a matter of law.

Thursday, May 07, 2020

CAFC limits scope of Arthrex in Caterpillar

The decision:

At the behest of Wirtgen America, Inc., the Director of
the United States Patent and Trademark Office, acting
through the Patent Trial and Appeal Board, instituted inter partes review of Caterpillar Paving Products Inc.’s patent. The Board held a hearing on July 30, 2019 and issued
its final written decision on November 13, 2019. Caterpillar has appealed and now moves to vacate and remand for
a new hearing before a differently constituted panel in light
of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320
(Fed. Cir. 2019) issued on October 31, 2019.
The court concludes that Caterpillar has not demonstrated that Arthrex compels a remand. Unlike in prior
cases in which this court has recently vacated and remanded, Arthrex issued before the Board’s final written decision in this case. The Director and Wirtgen argue that
the Board judges were constitutionally appointed as of the
date that this court issued its decision in Arthrex and that
no remand is required. Caterpillar contends that even if
the panel members became constitutional immediately
prior to issuing the final written decision, that “does not
cure a year’s worth of constitutional violations influencing
the Board’s thinking and conclusions.” The court in Arthrex considered and rejected that argument, expressly
limiting its holding “to those cases where final written decisions were issued.” 941 F.3d at 1340. See also Arthrex,
Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir.
2020) (Moore, J., concurring in denial of rehearing) (“Because the APJs were constitutionally appointed as of the
implementation of the severance, inter partes review decisions going forward were no longer rendered by unconstitutional panels.”).

Tuesday, May 05, 2020

Uber prevails on appeal

The outcome:

Uber Technologies, Inc. (“Uber”) appeals from a final
written decision of the Patent Trial and Appeal Board
(“Board”) finding claims 1, 2, 5, 6, 9, and 19 of U.S. Patent
No. 8,798,593 (“the ’593 patent”) not unpatentable as obvious. Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255,
Paper No. 41 (PTAB Oct. 12, 2018) (“Final Written Decision”). The Board’s conclusion was based on its determination that the asserted prior art does not render obvious the
limitation “software . . . to transmit the map with plotted
locations to the first individual.” Because the Board’s decision incorrectly applied the relevant legal principles, we reverse the Board’s non-obviousness determination as to this
limitation, and remand for the Board to analyze the remaining limitations of the challenged claims in the first instance.

The presence of a finite number of solutions:

The record reflects only two possible methods of achieving this: server-side plotting and terminal-side plotting.
Both were undisputedly known in the prior art. As the
Board found, Konishi expressly discloses server-side plotting and Okubo discloses terminal-side plotting. Final
Written Decision, at 15–16; see J.A. 1144. And as Uber argues, a person of ordinary skill in the art would have recognized server-side plotting and terminal-side plotting as
the two available methods for displaying a map with plotted locations. J.A. 2751–52; see J.A. 1068–69.2 The parties
have identified only these two methods of transmitting location information to a mobile device. See Appellant’s Br.
32; Appellee’s Br. 28; J.A. 2751–52; J.A. 2278–93. Accordingly, server-side plotting and terminal-side plotting represent “a finite number of identified, predictable solutions”
to a design need that existed at the relevant time, which a
person of ordinary skill in the art “ha[d] good reason to pursue.” KSR, 550 U.S. at 421.


because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art,
and were the only two identified, predictable solutions for
transmitting a map and plotting locations, it would have
been obvious to substitute server-side plotting for terminal-side plotting in a combination of Okubo and Konishi.
See KSR, 550 U.S. at 421. The combination of Okubo with
Konishi’s known server-side plotting is obvious because it
would have been a “predictable variation” of Okubo’s system as written, using a technique that was known to one of
ordinary skill in the art. Id. at 417.

[obvious design choices]

The conclusion:

For the reasons stated above, we reverse the Board’s
determination as to the obviousness of the limitation “software . . . to transmit the map with plotted locations to the
first individual” in view of Okubo and Konishi. We therefore remand for the Board to evaluate in the first instance
the remaining limitations of the claims challenged in
grounds 1 and 2 of Uber’s petition.

Monday, May 04, 2020

Is the concept of "doubling time" meaningful in the context of Covid19?

There has been much discussion of "doubling time" in the context of Covid19. Whether or not this application of a concept derived from exponential growth is applicable in the Covid19 context might be questioned. As wikipedia points out:

In practice eventually other constraints become important, exponential growth stops and the doubling time changes or becomes inapplicable.
(...) While using doubling times is convenient and simple, we should not apply the idea without considering factors which may affect future growth.


Back on 20 April 2020, New Jersey Governor Murphy tweeted:

LOOK: The rates by which the numbers of new #COVID19 cases are doubling have significantly SLOWED.

Just a few weeks ago, in some areas of the state cases were doubling in a matter of days.
Now we’re seeing those rates slow to where we can measure them in the numbers of weeks.



But four days later on April 24, the "doubling rate" was up [meaning "doubling time" was shorter]:

Murphy says the time it takes for the number of positive cases also got shorter, particularly in the southern part of the state. Murphy wants to see the so-called doubling rate moving in the other direction.


On 3 May 2020, Scott Gottlieb talked about "doubling rate" on Face the Nation:

MARGARET BRENNAN: So these federal social distancing guidelines expire this week. It's a-- a different story state to state over what's opening up. But you tweeted this week that you saw some worrying-- worrisome signals, specifically, when it comes to hospitalization rates. What is the direction of the epidemic?

SCOTT GOTTLIEB: Well, when you look across the country, it's really a mixed bag. Certainly cases are falling in the Tri-State region around New York City. But when you back out what's happening in New York, and New York is really driving a lot of the national statistics because it was such a large outbreak, around the nation, hospitalizations and new cases continue to rise. So there's about twenty states where you see a rising number of new cases: Illinois, Texas, Maryland, Indiana, Virginia, North Carolina, Tennessee have a lot of new cases on a daily basis. And so while mitigation didn't fail, I think it's fair to say that it didn't work as well as we expected. We expected that we would start seeing more significant declines in new cases and deaths around the nation at this point. And we're just not seeing that.

MARGARET BRENNAN: This morning Doctor Deborah Birx was on another network, and she said our projections were always that we would see between a hundred thousand and two hundred and forty thousand Americans' lives lost due to the virus. On Monday of this week, the President said it's probably sixty to seven-- seventy thousand dead. The week before, he said fifty to sixty thousand. Are these White House numbers reliable at all?

SCOTT GOTTLIEB: Well, the White House was looking at the IHME model out of Washington State. And that model initially showed at the high end two hundred and fifty thousand deaths and a base case of a hundred thousand. But it's come down since then to about seventy thousand. It's starting to creep back up when you look at the updates of that model over the last two weeks. I think we have to look out to what's going to happen by the end of June. It's really hard to predict beyond June where this goes because we could have large outbreaks or it could become quiescent in the summer. But I think when you look out to the end of June, it's probably the case that we're going to get above a hundred thousand deaths nationally. I think the concerning thing here is that we're looking at the prospect that this may be a persistent spread, that while the doubling time has come down dramatically to about twenty-five days. So the amount of days it takes for the epidemic to double in size is about twenty-five now, from day-- days or less than a week at the outset of this epidemic. We may be facing the prospect that twenty thousand, thirty thousand new cases a day diagnosed becomes a new normal and a thousand or more deaths becomes a new normal as well. Right now we're seeing, for about thirty days now, about thirty thousand cases a day and two thousand deaths a day. And if you factor in that we're probably diagnosing only one in ten infections

Apart from whether New Jersey COVID19 data fits models such as the logistic function, one might question whether or not incomplete data from symptomatic patients gives an accurate picture if at least some asymptomatic patients can transmit the disease to others.

Sunday, May 03, 2020

The meaning of "options" in New Jersey Covid19 response

One item that is not getting a lot of press in New Jersey is the property tax deadline of May 1, which may be extended to May 10. On Tuesday, April 28, 2020, Governor Murphy gave municipalities the OPTION of extending the deadline to June:

Murphy approves delay in property-tax deadline

New Jersey municipalities have the option of extending the payment deadline for second-quarter property taxes from May 1 to June 1 under an executive order that Gov. Phil Murphy signed Tuesday.

The move comes as more than 850,000 residents have applied for unemployment benefits during a coronavirus-induced economic downturn.

The executive order temporarily supersedes existing law, which allows towns to offer a grace period of up to 10 days.

As of May 4, a number of municipalities have not given residents a firm statement of whether or not they are exercising their option to extend the deadline.

Separately, counties had the option of opening county parks at sunrise on May 2, 2020. One park that was not opened was the Der Goot Rose Garden in Somerset County:



From :

Somerset County's reopening followed Gov. Phil Murphy's announcement on Tuesday saying he is reopening state parks and allowing golf courses to reopen with statewide restrictions.

However, he left it up to the local counties' discretion whether they plan to reopen.

Of the garden itself


Of New Jersey's fiscal health generally

See New Jersey losing billions

AND from the Newark Star-Ledger on 3 May 2020

Friday, May 01, 2020

The CAFC vacates PTAB decision in Grit v. Oren

The CAFC vacated the decision of PTAB:

Grit Energy Solutions, LLC (“Grit Energy”) appeals the
decision of the Patent Trial and Appeal Board (“Board”) in
an inter partes review of claims 1–7 of U.S. Patent
No. 8,585,341 (“the ’341 patent), in which the Board found
that Grit Energy had not met its burden of showing that
the challenged claims were unpatentable as obvious. Grit
Energy appealed. For the reasons below, we vacate and
remand for further proceedings.

Of the standing issue

Grit Energy contends that it has standing because
Oren previously sued Grit Energy for infringement of one
or more claims of the ’341 patent, and Oren is free to reassert those infringement claims. We agree. Grit Energy has
engaged in acts that not only could give rise to a possible
infringement suit, but did give rise to an infringement suit.
Although that lawsuit has since been dismissed, the dismissal was without prejudice and the statute of limitations
has yet to run, leaving Oren free to pursue its previous
claims of infringement in the future. See, e.g., Semtek Int’l
Inc. v. Lockheed Martin Corp., 531 U.S. 497, 505 (2001)
(“The primary meaning of ‘dismissal without prejudice’ . . .
is dismissal without barring the plaintiff from returning
later, to the same court, with the same underlying claim.”).

Furthermore, although Grit Energy transferred ownership
of the products accused of infringement in that suit, that
does not absolve Grit Energy of liability for actions it took
before the transfer.3 Under these circumstances, Grit Energy has shown that there exists a controversy of sufficient
immediacy and reality to warrant the requested judicial relief.

Of obviousness:

Grit Energy contends that the Board’s determination
that Constantin does not disclose the ’341 configuration is
unsupported by substantial evidence. We agree.
In particular, we conclude that the Board’s finding
rests on an erroneous reading of Constantin’s claim 5.
Claim 5 recites in relevant part that “the means for mechanical connection of the shutters are constituted by at
least one stud (15) provided on one of the shutter blades (8)
that lodges in a corresponding orifice (16) of the blade of
the other shutter.” J.A. 177. Claim 5 of Constantin expressly discloses that the stud is “provided on one of the
shutter blades” and the orifice is provided on “the blade of
the other shutter.” Thus, claim 5 plainly teaches that the
stud and orifice can be either in the ’341 configuration or
the opposite of the ’341 configuration.

Judge Newman dissented as to obviousness

However, I respectfully dissent from the court’s treatment of the Constantin reference—French Patent Application No. 2,640,598 A1, published June 22, 1990—with
agreed upon translation (“Constantin translation”). The
Patent Trial and Appeal Board (“PTAB” or “Board”)
correctly viewed the Constantin reference.1 It is improper
for the reviewing court to change the text of a reference to
enlarge its disclosure by removing explicit limitations, and
then apply the new enlarged content as prior art.


The court removes the reference numerals from claim 5 to remove the tie to the structure in Figure 3 of Constantin. With this exercise, the
court holds that Constantin is not limited to the structure
as disclosed in the specification.


My threshold concern is the court’s treatment of the
content of the Constantin reference. The proper analysis
is, whether the prior art in appropriate combination,
guided by law and precedent, renders obvious the ’341 patent’s subject matter. It is inappropriate to edit a reference
to remove its explicit limitations, and then to apply the judicially-enlarged disclosure as prior art.2 I respectfully dissent.