Sunday, November 28, 2021

The future of customer service at "brick and mortar" stores???

Your next "customer service" representative????

Separately, IPBiz on blawgsearch on November 28, 2021:

Saturday, November 27, 2021


The outcome

The Trademark Trial and Appeal Board denied a petition to cancel two trademark registrations. Brittex Financial, Inc. v. Dollar Financial Group, Inc., Cancellation No. 92060888 (TTAB Sep. 30, 2020) (Board Op.). We reverse the Board’s priority determination, which formed the sole basis for its denial of the petition, and remand for further proceedings. I In March 2013, Dollar Financial Group filed two applications to register MONEY MART (one in standard characters, one with a design) as a trademark for several listed services, including “pawn brokerage and pawn shops.” See Board Op. at 1–2; J.A. 88, 218. Only the year before, i.e., 2012, had Dollar “beg[u]n offering pawn brokerage and pawn shop services to the public,” having “beg[u]n taking steps” to do so in 2010. Dollar Response Br. at 8–9; see Board Op. at 12. In May 2014, the Patent and Trademark Office (PTO) issued the requested Principal Register registrations—Nos. 4,524,540 and 4,532,073—under Lanham Act § 1(a), 15 U.S.C. § 1051(a).1

(...) The Board did not reach the natural-expansion issue (or the likely-confusion issue) because it found that pawn brokerage and pawn shop services are “covered or encompassed by loan financing.” The Board recited evidence that clearly establishes the fact that pawn brokerage and pawn shop services have two features: one is the making of collateralized loans; the second is the retail sale of the collateral when forfeited under the terms of the loan. Id. at 17– 23. The Board then reached its conclusion by introducing Dollar’s ’120 registration of MONEY MART for “loan financing” (from 2007) into the analysis, noting its incontestable and unchallenged character:

(...) More specifically still, the Board provided no support for its priority conclusion in the distinctive circumstance present here. The evidence makes clear that pawn brokerage and pawn shop services integrate two different components, only one of which can be labeled “loan financing”— the lending, but not the retail sale of collateral. If the Board is understood to have found as a factual matter that the entirety of this mixed-character business is “covered or encompassed by loan financing,” Board Op. at 17, that finding is unreasonable and therefore unsupported by substantial evidence. The Board invoked Dollar’s ’120 registration, with its express description “loan financing,” to fill the gap between its findings and the ultimate conclusion it reached. See id. at 23–24. But the Board set forth no basis on which that registration supplies an answer to the question presented in this case—which is whether two different, later registrations of Dollar’s are invalid under § 2(d) because they expressly cover services as to which Brittex, not Dollar, was first to use the mark being registered (or one so resembling it so that confusion is likely).


That is enough to reject Dollar’s cross-appeal challenge. The Morehouse defense, we have said, “require[s] that the prior and proposed marks be essentially the same,” i.e., “legal equivalents.” O-M Bread, 65 F.3d at 938, 939. The Board reasonably determined that Brittex challenged the registrations at issue for, among other things, services related to, e.g., prepaid debit cards, gift cards, and gold and silver, that are not “essentially the same” as loan financing services. Id. Although the Board struck the defense sua sponte, Dollar has shown no prejudicial error from that process given the substantive inapplicability of the Morehouse defense.

(...) For the forgoing reasons, we reverse the Board’s priority determination (and therefore its denial of the petition for cancellation) and remand for further proceedings consistent with this opinion.


The outcome:

Dr. Reddy’s Laboratories S.A. and Dr. Reddy’s Laboratories, Inc. (collectively, “DRL”) petitioned for inter partes review of U.S. Patent 9,687,454 (the “’454 patent”), owned by Indivior UK Limited (“Indivior”). The United States Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) held that claims 1–5, 7, and 9–14 are unpatentable as anticipated, but that DRL failed to demonstrate that claim 8 is anticipated. See Dr. Reddy’s Lab’ys S.A. v. Indivior UK Ltd., No. IPR2019-00329, 2020 WL 2891968 (P.T.A.B. June 2, 2020) (“Decision”). Indivior appeals from the Board’s decision holding that claims 1–5, 7, and 9–14 are unpatentable, and DRL cross-appeals the Board’s decision holding that DRL failed to demonstrate unpatentability of claim 8. For the reasons detailed below, we affirm.

The law

We review the Board’s legal determinations de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review its factual findings underlying those determinations for substantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Whether a claim satisfies the written description requirement is a question of fact. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Anticipation is also a question of fact. In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014).

Dr. Reddy's cross-appeal

DRL argues that the Board erred in finding that the ’571 application contains written description support for claim 8. DRL asserts that a person of ordinary skill in the art would not have immediately discerned that the ’571 application discloses a polymer component comprising 48.2 wt % of a film because the tables do not state the total polymer weight of various formulations. Indivior contends that the Board’s determination was supported by substantial evidence. Indivior states that the Board’s finding was based on Tables 1 and 5 but also supported by admissions of DRL and its expert. The Board upheld the validity of claim 8, which recites “about 48.2 wt %” as the amount of polymer. We affirm that determination, even though, as DRL argues, the number “48.2 wt %” is not explicitly set forth in the ’571 application. We do so out of deference to the Board’s factfinding, even though one might see some inconsistency between this result and our above holding concerning the principal appeal. But, given that claim 8 does not recite a range, but only a specific amount, which can be derived by selection and addition of the amounts of selected, but identified, components, we accept that there is substantial evidence to support the Board’s decision concerning claim 8. Accordingly, we affirm the Board’s decision that the ’571 application provides written description support for claim 8 and that, since claim 8 is entitled to the ’571 application’s filing date, DRL failed to demonstrate that Myers anticipates claim 8.

National Covid death rate is 2.1 per 100,000 per week as of November 24, 2021

The "bad" states:

Montana 8.6 Idaho 5.5 West Virginia 5.3 Oregon 5 Arizona 4.5 Maine 4.5 Colorado 4.4 New Mexico 4.1 Pennsylvania 4.1 North Dakota 3.9 Georgia 3.7 Oklahoma 3.4 Alaska 3.3 Indiana 3.3 Minnesota 3.2 Ohio 3.2 Michigan 3 New Hampshire 2.9 Iowa 2.7 South Dakota 2.7 Nevada 2.6 Tennessee 2.6 Nebraska 2.4 Wisconsin 2.3 Utah 2.2

CDC | Data as of: November 24, 2021 5:18 PM ET. Posted: November 24, 2021 8:30 PM ET


Sunday, November 21, 2021

National Covid death rate remains at 2.2 per 100K per week as per CDC | Data as of: November 20, 2021 3:54 PM ET. Posted: November 20, 2021 5:37 PM ET

The CDC reported CDC | Data as of: November 20, 2021 3:54 PM ET. Posted: November 20, 2021 5:37 PM ET that the death rate was

CDC | Data as of: November 20, 2021 3:54 PM ET. Posted: November 20, 2021 5:37 PM ET


Friday, November 19, 2021

CDC reports national Covid death rate at 2.2 per 100K per week as of November 18, 2021

The CDC reported:

7 DAY DEATH RATE PER 100,000 2.2

The "bad" states were

Wyoming 8.5 Montana 6.7 West Virginia 5.9 Kentucky 5.6 Idaho 5.5 North Dakota 4.5 Ohio 4.5 Colorado 4 Pennsylvania 3.5 Oregon 3.4 Texas 3.4 Iowa 3.2 New Mexico 3.2 Arizona 3.1 Minnesota 3 Indiana 2.9 Maine 2.8 Nevada 2.8 Georgia 2.6 Washington 2.6 Nebraska 2.5 South Carolina 2.5 Guam 2.4 Arkansas 2.3 New Hampshire 2.3 South Dakota 2.3 Tennessee 2.3 Utah 2.3 Wisconsin 2.3

CDC | Data as of: November 18, 2021 10:18 PM ET. Posted: November 19, 2021 2:35 PM ET


Thursday, November 18, 2021

Wagner fails to corroborate inventorship claim in Ashline case

The outcome

Julie G. Wagner appeals the United States District Court for the Western District of North Carolina’s summary judgment denying Ms. Wagner’s claim to be added as a joint inventor of U.S. Patent No. 8,272,074 under 35 U.S.C. § 256, as well as her related state law claims of unjust enrichment, fraud, and constructive trust. Because we agree with the district court that Ms. Wagner presented insufficient evidence to corroborate her claim of joint inventorship as a matter of law, we affirm.

Of interest

An alleged co-inventor’s contribution to the conception of the claim must be proven by clear and convincing evidence. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998). It is well established in our case law that a party claiming joint inventorship must proffer evidence corroborating her own testimony. This is because oral testimony of the alleged co-inventor on its own will generally not suffice as “clear and convincing” evidence of joint inventorship. Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). Rather, the purported inventor has the burden of providing “some evidence of independent corroboration” of their contribution to the conception of the invention as claimed. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). The corroboration requirement “prevent[s] fraud, by providing independent confirmation of the [alleged] inventor’s testimony” and “provides an additional safeguard against courts being deceived by [alleged] inventors who may be tempted to mischaracterize the events of the past through their testimony.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171 (Fed. Cir. 2006); see also Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). This requirement is applied as a “rule-of-reason” demand for independent evidence, and there is “no single formula that must be followed in proving corroboration.” Price, 988 F.2d at 1195 (quoting Berry v. Webb, 412 F.2d 261, 266 (C.C.P.A. 1969)). The issue of whether an inventorship claim is sufficiently corroborated is a “question of fact, with the district court’s determination subject to review for clear error.” Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014). The district court granted summary judgment of no joint inventorship after concluding that the evidence Ms. Wagner relied on as corroboration was not, as a matter of law, sufficient to corroborate her testimony. Judgment Op., 2021 WL 411144, at *6–7. We have affirmed a district court’s summary judgment of no joint inventorship when no reasonable fact finder could find that the record contained sufficient evidence to corroborate the alleged joint inventor’s claim. See, e.g., Stern v. Trs. Of Columbia Univ., 434 F.3d 1375, 1378 (Fed. Cir. 2006) (granting summary judgment where evidence was “insufficient to corroborate [a] claim of co-inventorship”). For the reasons below, we conclude that even when viewing all reasonable inferences in Ms. Wagner’s favor, Ms. Wagner did not present sufficient evidence of corroboration to support her claim of coinventorship as a matter of law

In this regard, this case is similar to Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279 (Fed. Cir. 2008), where we affirmed the district court’s summary judgment that an alleged co-inventor failed to establish a genuine issue of material fact that he was a coinventor. In Symantec, the district court found that the allegedly corroborating evidence, a day planner, at most showed that the alleged co-inventor and the inventor spoke about the then-current state of the prior art. Id. at 1296. The court emphasized that this evidence “[did] not establish that [the purported co-inventor] contributed to the idea.” Id. Likewise, the allegedly corroborating evidence here does not support that Ms. Wagner contributed to Mr. Ashline’s patent application strategy or device design.

Covid 7 day death rate 2.2 per 100,000 per week on November 17, 2021

The CDC reported:

7 DAY DEATH RATE PER 100,000 2.2

CDC | Data as of: November 17, 2021 3:19 PM ET. Posted: November 17, 2021 4:50 PM ET

The "bad" states:

Wyoming 8.5 Montana 7.1 West Virginia 6 Idaho 5.8 Kentucky 5.7 Oregon 4.7 Ohio 4.5 Colorado 4.1 North Dakota 3.8 Pennsylvania 3.8 Arizona 3.4 Iowa 3.2 New Mexico 3.2 Nevada 3.1 Texas 3 Kansas 2.9 Minnesota 2.9 South Dakota 2.7 Alaska 2.5 Indiana 2.5 South Carolina 2.5 Georgia 2.4 Wisconsin 2.4 Arkansas 2.3 Utah 2.3 Washington 2.3

The data is similar to that of November 16, 2021

7 DAY DEATH RATE PER 100,000 2.2 ** CDC | Data as of: November 16, 2021 12:36 PM ET. Posted: November 16, 2021 1:52 PM ET ** Wyoming 9.5 Montana 6.3 Alaska 5.3 Kentucky 4.9 Ohio 4.9 West Virginia 4.9 Oregon 4.3 Idaho 4.1 Pennsylvania 3.9 Georgia 3.7 Colorado 3.5 North Dakota 3.5 Arizona 3.4 New Mexico 3.2 Iowa 3.1 Guam 3 Texas 3 Kansas 2.9 Indiana 2.8 Nevada 2.8 Alabama 2.5 South Dakota 2.5 Arkansas 2.4 Minnesota 2.4 Delaware 2.3 New Hampshire 2.3 Utah 2.3 Virginia 2.3

Facebook achieves victory in cross-appeal in Uniloc 2017 case

The CAFC states that the PTAB "misunderstood" the petition of Facebook:

Uniloc 2017 LLC (Uniloc) owns U.S. Patent No. 8,724,622, which addresses instant voice messaging by use of voice-over-internet-protocol (VoIP) communications. Facebook, Inc. and WhatsApp, Inc. (collectively, Facebook) challenged various claims of the ’622 patent in two inter partes reviews in the Patent and Trademark Office. The Office’s Patent Trial and Appeal Board held all challenged claims unpatentable for obviousness, except for dependent claims 4 and 5. Facebook, Inc. v. Uniloc 2017 LLC, IPR2017-01668, Paper No. 35, at 111–12 (P.T.A.B. Jan. 16, 2019) (Final Written Decision). Both Uniloc and Facebook appeal. We reject Uniloc’s challenges to the Board’s decision. But on Facebook’s cross-appeal, we hold that the Board misunderstood Facebook’s petition regarding claims 4 and 5, and we therefore vacate the Board’s decision as to those claims and remand for any further proceedings as may be necessary and appropriate regarding those claims.

Of the issue

In short, Facebook’s petition together with the reinforcing reply statement put the Board on notice that Facebook was alleging that the HTTP message, not the Zydney voice container, was the “instant voice message” of claims 4 and 5. By overlooking those statements and instead basing its findings on the mistaken assumption that Facebook was treating only Zydney’s voice container as teaching the instant voice message, Final Written Decision at 102–03, the Board abused its discretion. Because the Board’s misunderstanding of Facebook’s submissions infected its assessment of claims 4 and 5, we must set aside the Board’s determination regarding those claims. See, e.g., Singh v. Brake, 222 F.3d 1362, 1370 (Fed. Cir. 2000). Failing to appreciate what Facebook had contended, the Board did not determine the correctness of the contention that the HTTP message meets claim 4’s requirements. At least for that reason, it is not clear to us whether, once Facebook’s contention is properly appreciated, Facebook is entitled to a determination of unpatentability of claims 4 or 5 or whether Uniloc may have properly preserved arguments that remain open after our decisions here (concerning, e.g., claim 24) and in Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018, 1031–33 (Fed. Cir. 2021), and that could affect the bottom-line determination concerning claims 4 or 5. In these circumstances, we think it advisable to vacate the Board decision regarding claims 4 and 5 and to remand for any further proceedings that may be warranted.

Tuesday, November 16, 2021

Horizon Medicines loses appeal at CAFC

The outcome

Horizon Medicines LLC (“Horizon”) is the owner of U.S. Patent Nos. 8,067,033 (“the ’033 patent”) and 8,067,451 (“the ’451 patent”). In response to Abbreviated New Drug Application (“ANDA”) No. 211890 submitted by Alkem Laboratories LTD. (“Alkem”), Horizon filed suit in the United States District Court for the District of Delaware alleging that Alkem’s ANDA infringed Horizon’s patents. After a bench trial, the district court found that claims 1, 8, 11, and 14 of the ’033 patent were invalid for obviousness and not infringed, and that claims 1–3 and 8–10 of the ’451 patent were not infringed. We affirm the district court’s findings that the asserted claims of the ’033 patent were invalid for obviousness and that the asserted claims of the ’451 patent were not infringed.

Friday, November 12, 2021

PTAB decision vacated in Galperti

The outcome


Galperti-USA, a Texas corporation, and Galperti-Italy, an Italian limited liability company, are legally unrelated companies, both of which manufacture and sell metal flanges and related products.

Galperti-USA contends that the Board’s analysis of falsity includes two legally incorrect premises. One is that Galperti-USA had to have trademark-protected rights in its use of the mark at issue (in 2002–2007)—specifically, secondary meaning (i.e., acquired distinctiveness)—in order for that use to count as significant in assessing the falsity of Galperti-Italy’s assertion of “substantially exclusive use.” The other is that uses by third parties do not count in the substantially-exclusive-use assessment unless the third parties were in privity with Galperti-USA. We agree that both premises are found in the Board’s analysis and that both premises are incorrect as a matter of law—a matter we decide de novo. In re, 866 F.3d. 1315, 1322 (Fed. Cir. 2017). Because we cannot be confident that the Board’s bottom-line finding of no significant nonGalperti-Italy use was unaffected by the two legal errors, we vacate and remand. We do not reach the intent aspect of fraud.

ROHM Semiconductor loses appeal at CAFC

The outcome

ROHM Semiconductor USA, LLC (“ROHM USA”) appeals from the U.S. District Court for the Northern District of California’s decision compelling arbitration and dismissing ROHM USA’s declaratory judgment action without prejudice. ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., No. 20-CV-06686-VC, 2021 WL 822932, at *1 (N.D. Cal. Feb. 4, 2021). Because we agree that an arbitrator must determine arbitrability of the dispute between ROHM USA and MaxPower Semiconductor, Inc. (“MaxPower”), we affirm

The issue

The Ninth Circuit reviews a district court’s order compelling arbitration de novo and reviews underlying findings of fact for clear error. Bradley v. Harris Rsch., Inc., 275 F.3d 884, 888 (9th Cir. 2001), abrogated in part on other grounds by Sakkab v. Luxottica Retail N. Am., Inc., 803 F.3d 425 (9th Cir. 2015). The district court decision on appeal here rested entirely on legal determinations concerning whether the parties agreed to arbitrate arbitrability. We, therefore, review the entirety of that decision de novo.

(...)ROHM USA argues that its TLA with MaxPower lacks clear and unmistakable evidence of an agreement to arbitrate arbitrability. None of its arguments are convincing.1 Indeed, some border on the frivolous.

ROHM USA argues that its TLA with MaxPower lacks clear and unmistakable evidence of an agreement to arbitrate arbitrability. None of its arguments are convincing.1 Indeed, some border on the frivolous.


No matter how ROHM USA tries to pigeonhole this action into its “domestic action” moniker, moreover, this case is merely one aspect of a sprawling international dispute. MaxPower first raised its concerns about royalties allegedly owed under the TLA with ROHM Japan, ROHM USA’s parent company. It was only after MaxPower told ROHM Japan of its intent to take the dispute to arbitration under the very TLA at issue before us that ROHM USA brought this declaratory judgment action seeking a declaration of noninfringement for the products on which MaxPower seeks royalties from ROHM Japan. And ROHM USA has also challenged MaxPower patents in Korea and China.


Virtually all courts to consider the question, including this court, have concluded that, in contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate arbitrability to an arbitrator. See, e.g., id. at 1075 (interpreting a contract incorporating the 2010 UNCITRAL rules); Republic of Argentina, 665 F.3d at 1371 (1976 UNCITRAL rules); Schneider, 688 F.3d at 73–74 (1976 UNCITRAL rules); Petrofac, Inc. v. DynMcDermott Petroleum Operations Co., 687 F.3d 671, 675 (5th Cir. 2012) (AAA rules); Fallo v. HighTech Inst., 559 F.3d 874, 878 (8th Cir. 2009) (AAA rules); Qualcomm Inc. v. Nokia Corp., 466 F.3d 1366, 1373 (Fed. Cir. 2006) (applying Ninth Circuit law and interpreting a contract incorporating the AAA rules), abrogated on other grounds by Henry Schein, Inc. v. Archer & White Sales, Inc., 139 S. Ct. 524 (2019); Terminix Int’l Co., LP v. Palmer Ranch Ltd. P’ship, 432 F.3d 1327, 1332 (11th Cir. 2005) (AAA rules).

Florida court gets roasted

The only case ROHM USA has located that has held to the contrary in the context of bilateral arbitration is a Florida state court decision, Doe v. Natt, 299 So. 3d 599 (Fla. Dist. Ct. App. 2020), review granted sub nom. Airbnb, Inc. v. Doe, No. SC20-1167, 2021 WL 798838 (Fla. Mar. 2, 2021). The state court criticized Oracle and other circuit court decisions we have identified, stating that: “none of these cases have ever examined how or why the mere ‘incorporation’ of an arbitration rule such as the one before us . . . satisfies the heightened standard the Supreme Court set in First Options, nor how it overcomes the ‘strong procourt presumption’ that is supposed to attend this inquiry.” Id. at 608. We decline to adopt the view of a single Florida state court, which itself is currently under review by the Florida Supreme Court, and reaffirm our agreement with the prevailing view of our sister circuits. See Qualcomm, 466 F.3d at 1373.

Wednesday, November 10, 2021

National Covid death rate remains at 2.3 per 100K per week on November 10, 2021

The CDC reported:

7 DAY DEATH RATE PER 100,000 2.3

CDC | Data as of: November 10, 2021 12:52 PM ET. Posted: November 10, 2021 2:52 PM ET

The "bad" states:

Alaska 11.5 Wyoming 9.5 Guam 7.7 Oregon 5.9 Idaho 5.8 Montana 5.3 West Virginia 5.2 Alabama 5 Arizona 4.6 Ohio 4.4 Colorado 4 Georgia 3.8 Kansas 3.8 Arkansas 3.7 Nevada 3.6 Pennsylvania 3.6 Hawaii 3.1 Iowa 3.1 Delaware 3 New Hampshire 3 New Mexico 3 North Dakota 3 Indiana 2.9 Minnesota 2.9 Maine 2.8 Nebraska 2.8 Tennessee 2.8 South Carolina 2.7 Oklahoma 2.6 Texas 2.5 Virginia 2.5 South Dakota 2.4

Note "highly vaccinated" Maine is at 2.8 and Vermont is at 2.2.


Apple loses in Qualcomm case. Issue of standing. Judge Newman dissents.

The outcome:

Apple Inc. (“Apple”) appeals four decisions of the Patent Trial and Appeal Board (“Board”) determining that claims of patents owned by Qualcomm Inc. (“Qualcomm”) weren’t proven unpatentable. This is the second such dispute to reach us since these parties settled all their patentinfringement litigation worldwide and entered a global patent license agreement. In the first, we dismissed because Apple lacked Article III standing before this court. Apple Inc. v. Qualcomm Inc., 992 F.3d 1378, 1385 (Fed. Cir. 2021) (“Apple I”). Along the way, Apple I foresaw that the standing issue “impacts . . . other appeals.” Id. at 1382. Confronted here with identical operative facts, we do no more than follow in the wake of Apple I. We dismiss

Cosnumer Watchdog appears:

The Constitution limits federal judicial power to deciding “Cases” or “Controversies.” U.S. CONST. art. III, § 2. Constitutional standing doctrine, which “limits the category of litigants empowered to maintain a lawsuit in federal court,” flows from this requirement. Spokeo, Inc. v. Robins, 578 U.S. 330, 338 (2016). To establish standing, the party invoking federal jurisdiction must demonstrate (1) an “injury in fact” that is (2) “fairly traceable” to the defendant’s challenged conduct and is (3) “likely to be redressed by a favorable judicial decision.” Id. That’s the “irreducible constitutional minimum.” Id. (quoting Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992)). Article III standing “is not necessarily a requirement to appear before an administrative agency.” Consumer Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014). IPR petitioners, for example, “may lack constitutional standing.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016) (first citing 35 U.S.C. § 311(a); and then citing Consumer Watchdog, 753 F.3d at 1261–62). But the standing requirement “‘kicks in’” when “a party seeks review in a federal court.” Consumer Watchdog, 753 F.3d at 1261 (quoting Sierra Club v. EPA, 292 F.3d 895, 899 (D.C. Cir. 2002)). Indeed, the “requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute.” Id. (quoting Summers v. Earth Island Inst., 555 U.S. 488, 497 (2009)). Such injury must be “concrete and particularized and actual or imminent, not conjectural or hypothetical.” Spokeo, 578 U.S. at 339 (cleaned up). For example, it’s generally enough for an IPR petitioner to show that “it has engaged in, is engaging in, or will likely engage in ‘activity that would give rise to a possible infringement suit.’” Grit Energy Sols., LLC v. Oren Techs., LLC, 957 F.3d 1309, 1319 (Fed. Cir. 2020) (quoting Consumer Watchdog, 753 F.3d at 1262).


We can’t defy Apple I by dealing differently with its double. And as Apple acknowledges, this “nuance” was at the heart of its denied en banc petition in Apple I. Oral Arg. at 5:40–6:18. Per Apple I, therefore, we dismiss for lack of standing.
Next we consider Apple’s request that, if we lack jurisdiction, we should vacate the Board’s decisions “to eliminate any doubt about the applicability of estoppel.” Reply Br. 25–26. In support, Apple cites United States v. Munsingwear, Inc., which directs courts to vacate the underlying decision in certain appeals that have become moot during their pendency, “clear[ing] the path for future relitigation.” 340 U.S. 36, 40 (1950).5 We see no good reason why, in view of the settlement and our directive to address standing in the merits briefs, Apple made this request only in its last-filed reply brief and at oral argument instead of in its opening brief

Judge Newman dissented

I respectfully dissent. The Federal Circuit is not divested of its statutory jurisdiction to receive appeals of decisions of the Patent Trial and Appeal Board when the parties to an inter partes review have entered into a license agreement. Precedent is clear that a patent licensee may challenge the patent’s validity in federal court without loss of Article III standing due to the existence of a license.


This right of appeal is integral to the AIA’s post-grant system for determinations of patent validity, for the decision resolves certain validity issues and is binding in the district court and the International Trade Commission; the decision cannot be reviewed in a civil action or by the ITC. These consequences of themselves establish Article III standing. See Amerigen Pharms. Ltd. v. UCB Pharma GmBH, 913 F.3d 1076, 1084 (Fed. Cir. 2019) (standing to appeal exists where invalidation of patent would allow petitioner “to launch its competing product substantially earlier than it otherwise could upon the patent’s expiration.”); the court stated that “‘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.’” Id. at 1082 n.11 (quoting Consumer Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014)).

The estoppel issue

The statutory estoppel of post-grant decisions is integral to the America Invents Act’s purpose of expeditious and economical final resolution of certain validity issues: 35 U.S.C. § 325(e) – Estoppel. (2) Civil actions and other proceedings.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), . . . may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that postgrant review. This estoppel provision is a novel change from previous validity procedures. As stated in PPG Industries, Inc. v. Valspar Sourcing, Inc., 679 F. App’x 1002, 1005 (Fed. Cir. 2017), the appellant’s “stake is enhanced by the ‘estoppel provisions contained within the inter partes reexamination statute.’” (quoting Consumer Watchdog, 753 F.3d at 1262). It cannot have been the legislative intent that a PTAB decision would achieve estoppel in district court if appeal of that decision were barred. Rather, the statutory structure includes appeal of the PTAB decisions to the Federal Circuit, as codified at 35 U.S.C. § 329 and § 141. Apple was sued for infringement, leading to this sixyear license. This unresolved controversy of itself suffices to establish standing to challenge validity of the licensed patents, for Apple’s “risk of liability is not ‘conjectural’ or ‘hypothetical.’” See Adidas AG v. Nike, Inc., 963 F.3d 1355, 1357 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 1376 (2021) (“In Dupont . . . [w]e determined that the patent owner’s refusal to grant appellant a covenant not to sue further confirmed that appellant’s risk of injury was not ‘conjectural’ or ‘hypothetical’”) (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1005 (Fed. Cir. 2018)); Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1342 (Fed. Cir. 2020) (finding standing where challenger’s “specific investment in continued development of a geared turbofan engine design, its avowed preference to offer this design for sale, and its informal offer of this engine to [patentee] in an ongoing bidding process together establish that [challenger] will likely engage in the sale of this geared turbofan engine design to customers.”) (emphasis in original).

Monday, November 08, 2021

National Covid death rate 2.3 per 100K per week as of November 7, 2021

The CDC reported

7 DAY DEATH RATE PER 100,000 2.3

CDC | Data as of: November 7, 2021 12:43 PM ET. Posted: November 7, 2021 1:58 PM ET

The "bad" states

Wyoming 11.9 Montana 6.5 Idaho 6.2 Guam 5.9 Alabama 5.3 West Virginia 5.1 Ohio 4.6 Oregon 4.5 Oklahoma 4.4 Arkansas 3.9 Georgia 3.9 Kentucky 3.9 Colorado 3.8 North Dakota 3.8 Pennsylvania 3.7 South Dakota 3.6 Arizona 3.5 Vermont 3.5 Hawaii 3.3 Iowa 3.3 Indiana 3.2 Maine 3.2 New Mexico 3.1 Kansas 2.8 Minnesota 2.8 Missouri 2.8 Delaware 2.7 Nevada 2.7 South Carolina 2.5 Texas 2.5 New Hampshire 2.4 Utah 2.4 Virginia 2.4


Friday, November 05, 2021


The outcome:

Celgene filed that suit in New Jersey. Celgene is headquartered there, but none of the defendants are. Rather, MPI is based in West Virginia, Mylan Inc. in Pennsylvania, and Mylan N.V. in Pennsylvania and the Netherlands. The district court ultimately dismissed this case for improper venue (as to MPI and Mylan Inc.) and for failure to state a claim (as to Mylan N.V.). Celgene appeals. For the reasons below, we agree with the district court that venue was improper in New Jersey for the domesticcorporation defendants, MPI and Mylan Inc. That is, Celgene did not show that those defendants committed acts of infringement in New Jersey and have a regular and established place of business there. We also agree that, as to the foreign-corporation defendant, Mylan N.V., Celgene’s pleadings failed to state a claim upon which relief could be granted. We therefore affirm.

The crux:

Celgene argues that the defendants have committed acts of infringement in New Jersey. Here, the alleged infringing act is the submission of the ANDA. See 35 U.S.C. § 271(e)(2); Valeant, 978 F.3d at 1381. The question is where the submission occurred and what acts it includes. First, Celgene argues that the “artificial act of infringement stemming from the ANDA submission extends nationwide” (i.e., wherever the generic drug will be marketed and sold). Relatedly, it contends that the effects of the ANDA submission will be “felt” in New Jersey. But Valeant squarely forecloses Celgene’s position. Venue must be “predicated on past acts of infringement.” Valeant, 978 F.3d at 1381. For Hatch-Waxman cases, this means venue is proper “where an ANDA-filer submits its ANDA to the FDA,” not “wherever future distribution of the generic is contemplated.” Id. at 1378–79; see also id. at 1384
Under § 271(e)(2), submitting an ANDA is the act of infringement. And although the ANDA applicant must later send a notice letter and inform the FDA of the letter’s receipt, that all happens after the infringing submission. Sending a paragraph IV notice letter does not fall within “submitting” the ANDA under the meaning of Valeant. Accordingly, we conclude that Celgene did not establish that the defendants-appellees committed an act of infringement in New Jersey.

LinkedIn is mentioned:

Celgene instead points to a roster of employees who live in the state, a handful of business cards with employee names and New Jersey home addresses, and two LinkedIn profiles mentioning New Jersey. Without more, this is all too speculative to show ratification of those addresses as MPI’s or Mylan Inc.’s places of business (much less that the employees themselves regularly conducted business specifically at their homes). Indeed, it is not enough “that there exists within the district a physical location where an employee of the defendant carries on certain work for his employer.” Id. at 1366.

Cray arises

Cray, 871 F.3d at 1363.

At bottom, this case is like Cray. There, the defendant did not rent or own an office or any property in the district, but it allowed two employees to work remotely from their homes there. Cray, 871 F.3d at 1357. The company identified the employees’ home numbers in business communications, and they worked as local territory managers and sales executives in the region. See id. But the company did not maintain products at their homes, the company did not pay for their homes, and no one advertised their homes as the company’s place of business. Id. Similarly, MPI and Mylan Inc. “allowed” its employees to work from the district. But there was “no indication” that MPI or Mylan Inc. “own[], lease[], or rent[]” their homes, that they “played a part in selecting the [homes’] location, stored inventory or conducted demonstrations there, or conditioned . . . employment or support on the maintaining of” a home in New Jersey. See id. at 1365. And even if evidence here might suggest that MPI or Mylan “believed a location within [New Jersey] to be important to the business performed,” there is no evidence that MPI or Mylan Inc. “had any intention to maintain some place of business in that district” if the employees were to “decide[] to terminate their residences.” Id. In view of the specific evidence here, the employee homes here are not places “of the defendant.”7

Service of process arises in footnote 7

The patent service provision, 28 U.S.C. § 1694, states that an agent “conducting” the defendant’s business can accept service in a district in which the defendant “has a regular and established place of business.” But courts considering the question have held that § 1694 is not the exclusive basis for service of process in a patent-infringement action. Rule 4 of the Federal Rules of Civil Procedure provides for service of process not necessarily predicated on a regular and established place of business of the defendant. See, e.g., Welch Sci. Co. v. Human Eng’g Inst., Inc., 416 F.2d 32, 34 (7th Cir. 1969); 14D Wright & Miller, Federal Practice & Procedure § 3823 (4th ed., Apr. 2021 update). We therefore tend to agree with the appellees that, although the presence of a defendant’s regular and established place of business in a district implies that service is proper on agents there, the presence of employees who can accept service does not by itself establish the existence of the defendant’s regular and established place of business at those employees’ location. Regardless, given Celgene’s argument forfeiture and evidentiary failures, we need not decide the issue

Corporate separateness

Venue may be imputed under an alter-ego or veil-piercing theory. See Andra, 6 F.4th at 1289; Minn. Min. & Mfg. Co. v. Eco Chem, Inc., 757 F.2d 1256, 1265 (Fed. Cir. 1985) (“3M”). But “where related companies have maintained corporate separateness, the place of business of one corporation is not imputed to the other for venue purposes.” Andra, 6 F.4th at 1289. Corporate separateness is an issue of regional-circuit law. See Wechsler v. Macke Int’l Trade, Inc., 486 F.3d 1286, 1295 (Fed. Cir. 2007). The relevant veil-piercing theory in the Third Circuit is called the “alter ego” doctrine, among other names. See Pearson v. Component Tech. Corp., 247 F.3d 471, 484 & n.2 (3d Cir. 2001). Under that doctrine, courts will disregard the corporate form to “prevent fraud, illegality, or injustice,” “when recognition of the corporate entity would defeat public policy or shield someone from liability for a crime,” or “when the parent so dominated the subsidiary that it had no separate existence.” Id. at 484 (first quoting Zubik v. Zubik, 384 F.2d 267, 272 (3d Cir. 1967); and then quoting N.J. Dep’t of Env’t Prot. v. Ventron Corp., 468 A.2d 150, 164 (N.J. 1983)).8 Among other possible considerations, the Third Circuit looks at “gross undercapitalization, failure to observe corporate formalities, nonpayment of dividends, insolvency of the [subsidiary] corporation, siphoning of funds from the [subsidiary] corporation by the dominant stockholder, nonfunctioning of officers and directors, absence of corporate records, and whether the corporation is merely a facade for the operations of the dominant stockholder.” Id. at 484–85 & n.2; see also Trinity Indus., Inc. v. Greenlease Holding Co., 903 F.3d 333, 365 (3d Cir. 2018). In the end, this is an inquiry into whether the entities’ separateness “is little more than a legal fiction”—a “notoriously difficult” burden. Pearson, 247 F.3d at 485. Plaintiffs “must essentially demonstrate that in all aspects of the business, the two corporations actually functioned as a single entity.” Id. A court “consider[s] whether veil piercing is appropriate in light of the totality of the circumstances.” Trinity Indus., 903 F.3d at 365.

Thursday, November 04, 2021

CAFC reverses PTAB in Strathclyde case

The outcome

University of Strathclyde appeals from a final written decision of the Patent Trial and Appeal Board holding claims 1–4 of U.S. Patent No. 9,839,706 unpatentable as obvious. Because neither the Board’s finding that the prior art disclosed all claim limitations nor its finding of a reasonable expectation of success is supported by substantial evidence, we reverse the Board’s obviousness determination.

CDC reports Covid national death rate as 2.4 per 100k per week as of November 3, 2021

The CDC noted:

7 DAY DEATH RATE PER 100,000 2.4

The "bad" states

Wyoming 11.9 West Virginia 8.9 Guam 7.7 Iowa 7 Montana 7 Kansas 6.2 Idaho 5.8 Ohio 5.1 Alabama 5 Georgia 4.7 Oklahoma 4.5 North Dakota 4.3 South Carolina 3.9 Kentucky 3.8 Pennsylvania 3.7 Arkansas 3.5 Colorado 3.2 Missouri 3.2 Nevada 3 Texas 3 New Mexico 2.9 Arizona 2.8 Delaware 2.8 Utah 2.8 Alaska 2.7 Vermont 2.6 Virginia 2.6 Minnesota 2.4 South Dakota 2.4 Tennessee 2.4 Washington 2.4

CDC | Data as of: November 3, 2021 3:34 PM ET. Posted: November 3, 2021 5:00 PM ET


Wednesday, November 03, 2021

CAFC invokes 101 to defeat CardioNet

CardioNet loses at CAFC, but for different reasons:

CardioNet, LLC and Braemar Manufacturing, LLC (collectively, “CardioNet”) appeal from the decision of the United States District Court for the District of Massachusetts granting summary judgment that InfoBionic did not infringe claims 1–2, 8, 11–12, and 20–21 of U.S. Patent 7,099,715 (“the ’715 patent”). CardioNet, LLC v. InfoBionic, Inc., No. 1:15-CV-11803-IT, 2020 WL 4559934 (D. Mass. June 22, 2020) (“Summary Judgment Decision”). InfoBionic cross-appeals from the district court’s decision that the asserted claims of CardioNet’s ’715 patent are not ineligible for patent under 35 U.S.C. § 101. CardioNet, LLC v. InfoBionic, Inc., No. 1:15-CV-11803-IT, 2017 WL 1788650 (D. Mass. May 4, 2017) (“Validity Decision”). Because we conclude that the ’715 patent claims subject matter ineligible for patent, we vacate the district court’s decision granting summary judgment of noninfringement. We remand for the entry of judgment of no liability on the ground that the district court should have granted InfoBionic’s motion for judgment on the pleadings as to unpatentability.

Of 101:

At step one, InfoBionic argues that claim 20 is directed to the abstract idea of filtering data. It further asserts that the T wave filter performs a simple mathematical function—reducing the T wave’s amplitude—which cannot confer eligibility. CardioNet responds that claim 20 is not directed to an abstract idea, but, rather, to an improvement in cardiac monitoring technology. We agree with InfoBionic. As the claim language and the specification make clear, the invention is directed to the abstract idea of filtering patient heartbeat signals to increase accuracy. ’715 patent at col. 3 ll. 58–60, col. 4 ll. 35–36. Specifically, claim 20 focuses on selectively “activat[ing]” the “T wave filter” to “preprocess[] a cardiac signal.” Id. at col. 7 ll. 45–53. Similarly, the specification explains that the very purpose of the invention centers on using the T wave filter to filter data. See id. at Abstract, col. 3 ll. 52–col. 4 ll. 67. But, at bottom, filtering the data requires only basic mathematical calculations, such as “decompos[ing] a T wave into its constituent frequencies and multipl[ying] them by a filter frequency response.” Appellant’s Reply and Resp. Br. 49 (citing ’715 patent at col. 4 ll. 19–36). And such calculations, even if “[g]roundbreaking,” are still directed to an abstract idea. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)). CardioNet makes several additional arguments in support of its assertion that claim 20 is not directed to an abstract idea. Those arguments are all unpersuasive. First, CardioNet contends that claim 20 is necessarily tied to a “specific improvement” in cardiac monitoring technology because, without the claimed T wave filter, the ECG may mistakenly classify the T waves as R waves. Appellant’s Reply and Resp. Br. 42–43. We are unpersuaded by that argument. To qualify as “a patent-eligible improvement,” the invention must be directed to a specific improvement in the computer’s functionality, not simply to use of the computer “as a tool” to implement an abstract idea. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1363–1364 (Fed. Cir. 2020). Here, the invention falls into the latter category. It focuses on using a general-purpose computer to carry out the abstract idea of filtering data. See ’715 patent at col. 3 ll. 52–60, col. 4 ll. 19–36, col. 5, ll. 34–38.

In addition, claim 20 supplies no specific way to collect and process the data or to implement the T wave filter. Nor does it specify how to determine when to activate the T wave filter. Rather, it leaves that decision to the operator. See id. at col. 4 ll. 61–65. Indeed, even the district court recognized that the claim language was problematic for CardioNet’s eligibility argument. Specifically, when analyzing the parties’ dispute regarding infringement, the court briefly revisited its earlier conclusion that the asserted claims are not ineligible under § 101. Summary Judgment Decision, 2020 WL 4559934, at *9–10. It observed that, when making its infringement argument, CardioNet had emphasized the operator’s role in activating the T wave filter, but that, problematically, when making its eligibility argument (at an earlier stage in the proceedings), it had downplayed that aspect of the claim. Id. The court strongly hinted that, had it been aware of the significance of the operator’s mental process to the claimed invention at the pleadings stage, it would have considered holding the claims ineligible under § 101. J.A. 8963–72, 8985 (oral argument proceedings). The district court’s subsequent analysis regarding § 101 supports our ultimate conclusion here.

Tuesday, November 02, 2021

Brooklyn Brewery case as to standing

One notes that two different issues on standing were presented in the Brooklyn Brewery case:

BBS argues that Brewery lacks both Article III and statutory standing to appeal the Board’s decision dismissing the Opposition as to the Class 5 goods (sanitizing preparations). Although we have not yet had occasion to address Article III standing in a trademark case, our cases in the patent context have made clear that the statute does not set forth the exclusive test for standing when a decision of an administrative agency is appealed in federal court. The appellant must also satisfy the requirements of Article III. See, e.g., Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168 (Fed. Cir. 2017); see also Consumer Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014) (“[A]lthough Article III standing is not necessarily a requirement to appear before an administrative agency [such as the TTAB], once a party seeks review in a federal court, ‘the constitutional requirement that it have standing kicks in.’” (quoting Sierra Club v. EPA, 292 F.3d 895, 899 (D.C. Cir. 2002))). This is because Article III of the U.S. Constitution limits federal courts to hearing “Cases” or “Controversies,” U.S. Const. art. III, § 2, cl. 1, and “Congress cannot erase Article III’s standing requirements by statutorily granting the right to sue to [an appellant] who could not otherwise have standing,” Phigenix, 845 F.3d at 1175 (quoting Raines v. Byrd, 521 U.S. 811, 820 n.3 (1997)). Accordingly, we must address Article III standing.

“To meet the constitutional minimum for standing, the party seeking to invoke federal jurisdiction must satisfy three requirements.” Consumer Watchdog, 753 F.3d at 1260–61 (citing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992)). First, the party must show that it has suffered an “injury in fact” that is both “concrete and particularized” and “actual or imminent.” Lujan, 504 U.S. at 560–61 (internal quotation marks omitted). Second, it must show that the injury is fairly traceable to the challenged action. Id at 560. And third, the party must show that it is “likely,” rather than “merely speculative,” that a favorable judicial decision will redress the injury. Id. at 561 (internal quotation marks omitted). Although certain of these requirements, “namely immediacy and redressability,” may be relaxed “where Congress has accorded a procedural right to a litigant,” Consumer Watchdog, 753 F.3d at 1261 (citing Massachusetts v. EPA, 549 U.S. 497, 517–18 (2007)), the “requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute,” id. (quoting Summers v. Earth Island Inst., 555 U.S. 488, 497 (2009)).

See also The issue of standing, as discussed by CA9 in Washington v. Trump

In Florida, 28 October 2021

CDC reports national Covid death rate as 2.4 per 100K per week on November 1, 2021

The CDC reported a weekly death rate, per 100,000 population on November 1, 2021:

7 DAY DEATH RATE PER 100,000 2.4

The "bad" states are

ontana 9.3 Guam 9.1 West Virginia 9.1 Idaho 7 Kansas 7 North Dakota 5.8 Georgia 5.1 Ohio 4.9 Oklahoma 4.5 Wyoming 4.3 Arizona 4.2 Pennsylvania 3.8 Iowa 3.7 Alaska 3.6 Nevada 3.5 Alabama 3.4 Maine 3.4 South Carolina 3.3 Arkansas 3.2 Texas 3.1 Virgin Islands 2.9 Delaware 2.8 Tennessee 2.8 Virginia 2.8 Colorado 2.7 North Carolina 2.7 Wisconsin 2.7 Utah 2.5

One notes that Maine, one of the most highly vaccinated states in the nation, is well above average for Covid deaths.

Data as of: November 1, 2021 2:20 PM ET. Posted: November 1, 2021 3:33 PM ET


Monday, November 01, 2021

National Covid death rate at 2.3 per 100K per week

The CDC reported

7 DAY DEATH RATE PER 100,000 2.3

The "bad" states

Montana 9.3 West Virginia 9.1 Idaho 7.3 Kansas 7 Guam 6.6 North Dakota 5.8 Georgia 5.1 Ohio 4.9 Delaware 4.5 Oklahoma 4.5 Wyoming 4.3 Arizona 3.9 Iowa 3.7 Pennsylvania 3.7 Alaska 3.6 Texas 3.6 Nevada 3.5 Alabama 3.4 Arkansas 3.3 Maine 3.2 Virgin Islands 2.9 Tennessee 2.8 Virginia 2.8 Colorado 2.7 North Carolina 2.7 Wisconsin 2.7 Utah 2.5 Kentucky 2.4

CDC | Data as of: October 31, 2021 2:40 PM ET. Posted: October 31, 2021 4:04 PM ET

Qiagen loses PCR case at the CAFC

Aiagen lost its appeal at the CAFC

Qiagen North American Holdings, Inc. (“Qiagen Holdings”) and NeuMoDx Molecular, Inc. (“NeuMoDx”) (collectively, “Qiagen”) appeal from the Final Written Decisions of the Patent Trial and Appeal Board (“Board”) holding that the challenged claims of U.S. Patent No. 7,998,708 (“the ’708 Patent”) and U.S. Patent No. 8,323,900 (“the ’900 Patent”) would have been non-obvious. See Qiagen N. Am. Holdings, Inc. v. HandyLab, Inc., No. IPR2019-00488 (P.T.A.B. July 14, 2020); NeuMoDx Molecular, Inc. v. HandyLab, Inc., No. IPR2019-01493 (P.T.A.B. July 14, 2020); Qiagen N. Am. Holdings, Inc. v. HandyLab, Inc., No. IPR2019-00490 (P.T.A.B. July 14, 2020); NeuMoDx Molecular, Inc. v. HandyLab, Inc., No. IPR2019-01494 (P.T.A.B. July 14, 2020). This appeal focuses specifically on the challenged independent claims of the two patents. For the reasons set forth below, we affirm.

The tecnology

These microfluidic devices “carry out PCR on nucleotides of interest within microfluidic channels, and detect those nucleotides.” Id. col. 2 ll. 10–14. The PCR reactions, which occur on a microfluidic cartridge, can be performed on a plurality of samples, as the microfluidic cartridge “has a plurality of PCR reaction chambers configured to permit thermal cycling of the plurality of samples independently of one another.”

Of evidentiary issues

Because Qiagen contends that the Board erred in declining to consider Exhibit 1030, our review of the Board’s finding of no reasonable expectation of success begins with the scope of the evidence considered by the Board. We review the Board’s evidentiary rulings for abuse of discretion, VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1064 (Fed. Cir. 2020), and we disagree with Qiagen that the Board abused its discretion in declining to consider Exhibit 1030. Per the standard, we only disturb the Board’s evidentiary rulings if the Board’s decision: “(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) follows from a record that contains no evidence on which the Board could rationally base its decision.” Id. (quoting Shu-Hui Chen v. Bouchard, 347 F.3d 1299, 1307 (Fed. Cir. 2003)). The statutes and regulations governing IPRs set forth the required contents of petition-stage filings and of replystage filings: First, they generally require a petitioner to provide in the petition itself an understandable explanation of the element-by-element specifics of its unpatentability contentions, identifying supporting parts of the relied-on prior art. Second, reinforcing that requirement for what must be in the petition is a regulatory limit on permissible reply material. AMC Multi-Cinema, Inc. v. Fall Line Pats., LLC, No. 2021- 1051, 2021 WL 4470062, at *5 (Fed. Cir. Sept. 30, 2021) (internal citations omitted; emphasis in original).


We have “applied those rules [governing filing content in IPRs] in a number of decisions that restrict use of certain reply material in forming the record.” AMC, 2021 WL 4470062, at *6 (collecting cases); see also Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1285–87 (Fed. Cir. 2017) (affirming Board’s ruling that an obviousness challenge was “insufficiently precise and underdeveloped” where the petitioner “did not make out its obviousness case in its petition,” which “offered only a conclusory and sweeping allegation,” while the reply argued that a relevant artisan would have looked to a different passage and would have modified the prior art). The Board reasonably concluded that this case presents no exception. This is not an instance where the later-submitted material (Exhibit 1030) can be tied to a non-conclusory assertion in the original Petition: As noted above, Exhibit 1030 was only submitted with Qiagen’s Reply, not with the original Petition, and Qiagen’s Petition did not include any argument or evidence that using a microfluidic PCR chip with a cartridge was routine and predictable as of the priority date. Cf. AMC, 2021 WL 4470062, at *6 (“[W]e have made clear that if the petition asserts that a claim requirement is met, provides a reason that the assertion is true, and cites evidentiary support for that reason, then reply material that fairly adds confirmation that the initially presented material does in fact support the assertion is not prohibited new material, but a proper part of the record.” (collecting cases)). Because the Board did not abuse its discretion by excluding Exhibit 1030, our analysis on reasonable expectation of success centers on the evidence considered by the Board—primarily, the testimony of the parties’ experts

Whether a skilled artisan would have had a reasonable expectation of success in combining the prior art is a question of fact that we review for substantial evidence. Intelligent Bio-Sys., 821 F.3d at 1366. A factual finding is supported by substantial evidence “if a reasonable mind might accept the evidence as sufficient to support the finding.” HP Inc. v. MPHJ Tech. Invs., LLC, 817 F.3d 1339, 1343–44 (Fed. Cir. 2016) (citing Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)).