Thursday, April 28, 2022

Mixed decision in Nichia vs. Document Security Systems

From the Nichia case:

Here, it was Nichia’s burden to demonstrate Takenaka disclosed the required electrical connection. See, e.g., Harmonic, 815 F.3d at 1363; Ariosa Diagnostics, 805 F.3d at 1367. Unlike with the plastic phrase, Nichia’s petition specifically stated that Takenaka disclosed an electrical connection. In discussing claim 15, the petition cites to Section VI.D.1., which discusses grounds for unpatentability of claim 1 based on Takenaka. J.A. 177–79. The petition quotes Takenaka’s description of how the leads are connected. “LED chip 4 is mounted on first lead frame 1 with Ag paste 7 therebetween. Bonding wire 5 is attached to second lead frame 2. Accordingly, second lead frame 2 is mechanically and electrically connected to LED chip 4.” J.A. 163–64 (emphasis added). This shows Takenaka discloses an LED die electrically connected to a conductive lead. Thus, Nichia demonstrated with particularity that this claim limitation is disclosed in the prior art. The Board’s conclusion to the contrary demonstrates a clearly erroneous fact finding qualifying as an abuse of discretion.

Wednesday, April 20, 2022


The outcome did not go well for the Board

This is a patent case involving lighted artificial trees. Polygroup Limited MCO appeals from the final written decision of the Patent Trial and Appeal Board in an inter partes review upholding the patentability of claims 7, 10, 11, 16, 18–22, 25, 26, and 28 of U.S. Patent No. 8,454,186 and claims 1–3, 5–9, 11, 12, 14, and 15 of U.S. Patent No. 8,454,187. With respect to every claim except claim 7 of the ’186 patent, we reverse the Board’s determination that Polygroup failed to establish the unpatentability of the challenged claims. We conclude that the Board applied erroneous claim constructions and that, under the proper constructions, Miller teaches every limitation of claims 10, 11, 16, 18–22, 25, 26, and 28 of the ’186 patent and claims 1–3, 5–9, 11, 12, 14, and 15 of the ’187 patent. Polygroup has, therefore, established that these claims are unpatentable. For claim 7 of the ’186 patent, the Board exceeded the scope of our remand when it considered a combination of Miller and Lessner. We therefore vacate and remand its decision with regard to claim 7 of the ’186 patent.

Tuesday, April 19, 2022

Rovi prevails over Comcast

The outcome was reversal:

Rovi appeals from an inter partes review final written decision. See Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., No. IPR2019-00231, 2020 WL 2305288, (P.T.A.B. May 8, 2020) (Board Decision). In that decision, the Patent Trial and Appeal Board held that all claims of U.S. Patent No. 9,369,741 would have been obvious over Sie1 alone or in combination with other references. For the following reasons, we reverse.

Of the prior art [Sie]

That step occurs, if at all, before the system determines whether subscription playback is authorized for a user (step 744), whether to provide a user with promotional access (step 748), and whether to provide a user with free access (step 752). Put simply, the notification service precedes any determination of availability to a specific user. But the claim language requires the indication (i.e., the notification) to be based on a determination of availability to a specific user. Thus, no reasonable finder of fact could find Sie teaches the available-to-a-user limitation. And the Board erred in holding claim 1 would have been obvious based on a finding to the contrary.

Intel loses at CAFC

The short decision:

Intel Corporation appeals from an inter partes review final written decision. See Intel Corp. v. XMTT, Inc., No. IPR2020-00145, 2021 WL 1895938 (P.T.A.B. May 11, 2021) (Board Decision). In that decision, the Patent Trial and Appeal Board held that no claim of U.S. Patent No. 7,707,388 would have been obvious over Nakaya1 in combination with other references. For the following reasons, we affirm.

Intel is judicially estopped from raising its claim construction argument. The Board adopted the claim construction for which Intel advocated. Board Decision, 2021 WL 1895938, at *4–5. Yet, Intel now changes its position and advocates for a claim construction that is clearly inconsistent with its position before the Board. Compare Appellant’s Br. 36–37, with J.A. 685–86. Intel is judicially estopped from raising this argument. We need not consider Intel’s argument that Nakaya discloses the disputed claim limitations under its new construction. Further, the Board did not violate Intel’s due process rights. Even if Intel was entitled to an opportunity to respond to the Board’s claim construction, the Board provided one. It allowed supplemental briefing for the express purpose of addressing its proposed claim construction. J.A. 591–95. Thus, there was no due process violation.

WWikipedia notes of "judicial estoppel:"

it is generally agreed that it can only be cited if the party in question successfully maintained its position in the earlier proceedings and benefited from it.

CAFC does personal jurisdiction in a reprise of "The Good, the Bad. and the Ugly, with Apple as Tuco and Zipit as the one armed man

In the Good, the Bad and Ugly:

One Armed Man: I've been looking for you for 8 months. Whenever I should have had a gun in my right hand, I thought of you. Now I find you in exactly the position that suits me. I had lots of time to learn to shoot with my left. [Tuco, in s bath tub with lots of bubbles, kills him with the gun he has hidden in the foam.]

Tuco: When you have to shoot, shoot, don't talk.

In the background of this CAFC case. Zipit talked and talked with Apple, but it was Apple who "shot" Zipit with a declaratory judgment action. The case:

Apple Inc. appeals from a judgment of the U.S. District Court for the Northern District of California dismissing its complaint for declaratory judgment of noninfringement against Zipit Wireless, Inc. for lack of personal jurisdiction. The district court held that it would be unreasonable to exercise personal jurisdiction over Zipit based on the nature of Zipit’s communications with Apple in the Northern District. Specifically, the district court read our precedent as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction. We agree with Apple that the district court erred in this regard. Guided by the Supreme Court and our own precedent, we conclude, as the district court likely would have absent its erroneous interpretation of our precedent, that Zipit is subject to specific personal jurisdiction in the Northern District of California for purposes of Apple’s declaratory judgment action. We therefore reverse the judgment dismissing Apple’s declaratory judgment complaint and remand for further proceedings. Background Zipit is a Delaware corporation with a principal place of business in Greenville, South Carolina, and with each of its fourteen employees located in South Carolina. Zipit is the assignee of U.S. Patent Nos. 7,292,870 and 7,894,837 (collectively, the “patents-in-suit”), which are generally directed to wireless instant messaging devices that use Wi-Fi to send and receive instant messages. (...) Zipit moved to dismiss Apple’s complaint for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). On February 12, 2021, the district court granted Zipit’s motion, holding that it lacked specific personal jurisdiction over Zipit (general jurisdiction was not asserted). Apple Inc. v. Zipit Wireless, Inc., Case No. 5:20- cv-04448-EJD, 2021 WL 533754 (N.D. Cal. Feb. 12, 2021) (Judgment Op.). The court concluded that Apple had established the requisite minimum contacts, highlighting that Zipit sent “multiple letters and claim charts accusing Apple of patent infringement” and in fact had “travel[ed] to Apple’s offices in California to discuss these accusations.” Id. at *3. This, the court determined, made the exercise of specific personal jurisdiction over Zipit “presumptively reasonable.” Id. (quoting Xilinx, Inc. v. Papst Licensing GmbH & Co., 848 F.3d 1346, 1356 (Fed. Cir. 2017)). The court then analyzed whether Zipit had established a “compelling case” that the exercise of jurisdiction would be unreasonable. After analyzing each of the factors set forth in Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475–77 (1985), the court concluded that Zipit had not done so. Judgment Op., 2021 WL 533754, at *3–4. Specifically, the court found that “the majority of [the] reasonableness factors weigh in favor of adjudicating in California or, at the least, do not weigh significantly in favor of either party,” and therefore jurisdiction over Zipit would not be unreasonable. Id. at *4. The court went on to explain, however, that the Federal Circuit has held that “the exercise of personal jurisdiction . . . would be unconstitutional when ‘[a]ll of the contacts were for the purpose of warning against infringement or negotiating license agreements, and [the defendant] lacked a binding obligation in the forum.’” Id. (alterations in original) (quoting Levita Magnetics Int’l Corp. v. Attractive Surgical, LLC, Case No. 19-cv-04065-JSW, 2020 WL 4580504, at *6 (N.D. Cal. Apr. 1, 2020), which in turn quotes Breckenridge Pharm., Inc. v. Metabolite Lab’ys, Inc., 444 F.3d 1356, 1364 (Fed. Cir. 2006)). The court thus determined that the exercise of jurisdiction over Zipit would be unreasonable because of “Zipit’s lack of binding obligations tying it to California and because Zipit’s contacts with California all related to the attempted resolution of the status of” the patents-in-suit, i.e., “for the purpose of warning against infringement.” Id. at *4. Accordingly, despite determining that Apple had established that minimum contacts existed with the Northern District of California and that Zipit had not shown the exercise of jurisdiction would be unreasonable under Supreme Court precedent, the district court dismissed Apple’s declaratory judgment action for lack of jurisdiction. Apple appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). The sole issue in this case is whether the district court erred in dismissing Apple’s declaratory judgment action for lack of specific personal jurisdiction over Zipit. “Personal jurisdiction is a question of law that we review de novo.” Xilinx, 848 F.3d at 1352 (quoting Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009)). In reviewing a Rule 12(b)(2) dismissal for lack of personal jurisdiction, we “accept the uncontroverted allegations in [Apple’s] complaint as true and resolve any factual conflicts in the affidavits in [Apple’s] favor.” Id. (quoting Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1329 (Fed. Cir. 2008)); see also Marvix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011). “[F]oreseeability . . . is critical to due process analysis,” and the Supreme Court has made clear that the focus is on whether a given defendant’s “conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there.” Burger King, 471 U.S. at 474 (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)). The Supreme Court has outlined three factors relevant to specific personal jurisdiction. In ascertaining whether the exercise of specific personal jurisdiction is appropriate in a given case, we consider: (1) whether the defendant “purposefully directed” its activities at residents of the forum; and (2) whether the claim “arise[s] out of or relate[s] to” the defendant’s activities within the forum. Id. at 472–73 (first quoting Keeton v. Hustler Mag., Inc., 465 U.S. 770, 774 (1984); and then quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 (1984)); see also Jack Henry & Assocs., Inc. v. Plano Encryption Techs. LLC, 910 F.3d 1199, 1204 (Fed. Cir. 2018). We also consider (3) whether assertion of personal jurisdiction is reasonable and fair. World-Wide Volkswagen, 444 U.S. at 291–92; see also Burger King, 471 U.S. at 476–78; Jack Henry, 910 F.3d at 1204. (...) Having determined that Zipit purposefully directed its activities at California, we now consider whether Zipit has “present[ed] a compelling case that the presence of some other considerations would render jurisdiction unreasonable.” Burger King, 471 U.S. at 477. For the reasons below, we conclude that Zipit has not done so. We begin by addressing an error in the district court’s determination that the exercise of jurisdiction would be unreasonable. After analyzing and weighing each of the Burger King factors, the court initially determined that Zipit had not shown that the exercise of jurisdiction would be unreasonable. It went on, however, to conclude that it would be unreasonable to exercise jurisdiction over Zipit under our court’s precedent solely because “Zipit’s contacts with California all related to the attempted resolution of the status of” the patents-in-suit, i.e., “for the purpose of warning against infringement.” Judgment Op., 2021 WL 533754, at *4. This was error. As we explained most recently in Trimble, “there is no general rule that demand letters can never create specific personal jurisdiction.” 997 F.3d at 1156. (...) In this case, the district court, not having the benefit of our recent decision in Trimble, erred by not considering the settlement-promoting policy underlying Red Wing Shoe as but one of many considerations in its overall analysis of the Burger King factors. See Trimble, 997 F.3d at 1157–59 (considering this policy alongside the other Burger King factors). Specifically, the district court erred in reading our precedent as creating a bright-line rule that communications directed to “the attempted resolution” of the parties’ dispute regarding the patents-in-suit trumps all other considerations of fairness and reasonableness. Although some of our earlier precedent relying on Red Wing Shoe suggests that there is such a bright-line rule, see, e.g., Avocent, 552 F.3d at 1340; Breckenridge, 444 F.3d at 1362; Silent Drive, 326 F.3d at 1206, Supreme Court precedent (both pre- and post-Red Wing Shoe) has made clear that jurisdictional inquiries cannot rest on such bright-line rules— there are no “talismanic jurisdictional formulas.” Burger King, 471 U.S. at 485. Rather, “‘the facts of each case must [always] be weighed’ in determining whether personal jurisdiction would comport with ‘fair play and substantial justice.’” Id. at 485–86 (alteration in original) (quoting Kulko v. Superior Ct. of Cal., 436 U.S. 84, 92 (1978)); Bristol-Myers Squibb, 137 S. Ct. at 1780 (“In determining whether personal jurisdiction is present, a court must consider a variety of interests.”). (...) Finally, Zipit suggests in its appeal brief that it could not have foreseen being haled into court in California because four years lapsed between its last contact with Apple in California (2016) and Apple’s filing of its declaratory judgment action (2020). See Appellee’s Br. 2–3, 25–26. But Zipit’s argument skips over an important point—it is Zipit who reignited the parties’ contacts by filing suit for patent infringement in Georgia in 2020. After moving to dismiss its action in Georgia without prejudice, Zipit cannot credibly assert that it could not have reasonably foreseen that Apple would respond in kind by filing a declaratory judgment claim, and that it would do so in its home state of California given Zipit’s earlier contacts with the forum state. However stale Zipit’s contacts might have become absent intervening action by Zipit, they were ripe when Apple filed its declaratory judgment action. Turning to the second factor—California’s interest in adjudicating the underlying patent infringement dispute— we have previously recognized that California has “definite and well-defined interests in commerce and scientific development,” and that it has “a substantial interest in protecting its residents from unwarranted claims of patent infringement.” Xilinx, 848 F.3d at 1356 (first quoting Viam Corp. v. Iowa Exp.-Imp. Trading Co., 84 F.3d 424, 430 (Fed. Cir. 1996); and then quoting Elecs. for Imaging, 340 F.3d at 1352)); accord Trimble, 997 F.3d at 1158; see McGee v. Int’l Life Ins. Co., 355 U.S. 220, 223 (1957) (explaining that states have “a manifest interest in providing effective means of redress for [their] residents”). Zipit does not dispute that California has such an interest. See Appellee’s Br. 34.

Monday, April 11, 2022

Florida in the Civil War

The anniversary of the Battle of Shiloh, April 6-7, 1862, has passed. Grant made a name for himself on April 7, 1862.

Meanwhile, at the time, Robert E. Lee had no field command. Starting in March 1862, Lee was advisor to President Davis.

Prior to the advisor position, on November 5, 1861, the "coasts of South Carolina, Georgia, and East Florida" were "constituted a military department." Lee was assigned to this new and undermanned command, Lee's headquarters were at Coosawatchie, SC.

In January 1862, Lee went as far as Fernandina, FL.

Another Florida connection is Lincoln conspirator Lewis Payne/Powell. He fought in a Florida infantry regiment at Gettysburg. He was captured, hospitalized, but managned to escape. His skull is buried in Lake Geneva, FL.

Coincidence in time?

On 3 April 2022, CBS Sunday Morning did a piece on Ann-Marget , including her break-out role as "Kim MacAfee" in the movie Bye Bye Birdie. On 5 April 2022, Ann-Margret's co-star in Bye Bye Birdie, Bobby Rydell ("Hugo Peabody"), died. In the movie, toward the end, as Conrad Birdie is about to kiss Kim (Ann-Marget), Hugo runs onstage and punches him out on the live telecast of the Ed Sullivan Show. Sound familiar? And don't forget Dick van Dyke ("Albert Peterson") is a chemist with a hot invention (that gets introduced on the Ed Sullivan Show). And the Russians are villains in the movie. Sound familiar?

UPDATE entered 19 April

Bye Bye Birdie still remmembered

Saturday, April 02, 2022

CAFC issues mixed decision in Microsoft vs. IPA

The outcome of Microsoft vs. IPA

Microsoft and IPA both appeal. As to Microsoft’s appeals: We affirm the Board’s determination of no proven unpatentability of claims 29–47 of the ’115 patent and claims 50–51 and 53–55 of the ’560 patent; but we reverse certain Board findings regarding claims 8–10, 63, and 86– 89 of the ’115 patent and claims 10–11 and 28 of the ’560 patent, and we remand for any further proceedings that may be necessary and appropriate to address those claims. As to IPA’s appeals (including cross-appeals): We affirm all of the Board’s determinations challenged here by IPA.

The legal standards:

Microsoft presents five arguments on appeal. We review the Board’s legal conclusions (including claim constructions based solely on intrinsic evidence) de novo and its factual findings (including those concerning the prior art’s teachings and the motivation to combine) for substantial-evidence support. Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018); Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015). Substantial evidence exists if “‘a reasonable fact finder could have arrived at the agency’s decision’” in light of the record as a whole. Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016) (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). We review the Board’s judgments concerning what arguments have been adequately presented in a petition and other pleadings for abuse of discretion. See Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018); Altaire Pharms., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274, 1284 (Fed. Cir. 2018), remand order modified by stipulation, 738 F. App’x 1017 (Fed. Cir. 2018); Intelligent Bio-Systems, 821 F.3d at 1367; see also MModal LLC v. Nuance Commc’ns, Inc., 846 F. App’x 900, 906 (Fed. Cir. 2021). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Intelligent BioSystems, 821 F.3d at 1367 (citation omitted).

First argument of Microsoft

Microsoft’s first argument on appeal is that, for claims 8–10 and 63 of the ’115 patent and for claim 28 of the ’560 patent, the Board erred in finding that Microsoft had not proven how or why Kiss and FIPA97 would have been combined by a relevant artisan. Microsoft Opening Br. 49–57. Claims 8 and 9 of the ’115 patent, which are representative for purposes of this issue, read: 8. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one trigger declaration for one active agent. 9. A computer-implemented method as recited in claim 5 wherein the agent registry data structure includes at least one task declaration, and process characteristics for each active agent. ’115 patent, col. 30, lines 10–16 (emphases added). For context, the undisputed interpretation of “trigger” adopted by the Board is “a general mechanism for requesting some action be taken when one or more conditions is met.” Microsoft Corp. v. IPA Techs. Inc., No. IPR2019-00810, 2020 WL 6110974, at *50 (P.T.A.B. Oct. 15, 2020) (IPR810 Decision)
(...) Concerning how Kiss and FIPA97’s registries would be combined, Microsoft presented evidence, with little elaboration for what Microsoft said a skilled artisan would know how to do. See, e.g., J.A. 1423–26; J.A. 7227–29, 7240 (Lieberman Decl. ¶¶ 217–19, 228). IPA’s response, which focused almost entirely on the why questionb, was at most a simple, unelaborated assertion that Microsoft’s evidence as to how was not enough, with no identification at all of what necessary details were missing. See, e.g., J.A. 1865–67 (objecting to why, not how, the combination would be made); J.A. 4846–48 (making single-sentence assertion about the how issue); J.A. 12861 (Medvidovic Decl. ¶ 261) (same). The Board, for its part, did not meaningfully address the how issue separately from the why issue. It did not identify any concrete unanswered questions about how to achieve the combination (which is not a matter of bodily incorporation, but of combining the features required to arrive at the claim). It did not even say whether the combination required more than simply adding one more field to Kiss’s registry data structure. In these circumstances, we see no basis for a reasonable determination rejecting Microsoft’s evidence of why and how the combination at issue would be made. Accordingly, we reverse the Board’s finding that Microsoft has not persuasively shown how or why Kiss and FIPA97 would have been combined to generate the subject matter of claims 8– 10 and 63 of the ’115 patent and claim 28 of the ’560 patent.

Second argument of Microsoft

Microsoft’s second argument on appeal is that, for claims 29–47 of the ’115 patent, the Board erred in finding the petition insufficient. Microsoft Opening Br. 57–64. Claim 29, which is representative for this issue, is reproduced below, as is claim 1, (...)

We affirm the Board’s determination that Microsoft insufficiently pleaded the unpatentability of claims 29–47. Microsoft’s petition did not grapple with the claim 29 language, simply stating “Kiss/FIPA97 satisfies this claim for the reasons stated in” the section pertaining to the claim 1 limitation “constructing a goal satisfaction plan.” J.A. 1464. That statement is true, however, only if there are no differences between the claims that might affect the Kiss and FIPA97 combination’s disclosure. Yet that central, necessary premise is one that Microsoft wholly failed to defend in its petition, even though there are potentially meaningful differences in claim language that warrant discussion

Of note

The Board’s failure to consider Microsoft’s discussion of the claim 86 preamble, which expressly fills the hole the Board identified in the petition, and the Board’s resulting misapprehension of the purpose of the cross-reference, was error. Although IPA relies on Microsoft Corp. v. FG SRC, LLC, to argue otherwise, see IPA Opening & Response Br. 72–74, that case does not help IPA because it involved something quite different from this case—a Board refusal to “deduce the existence of an obviousness argument from within [a petition’s] anticipation argument,” 860 F. App’x 708, 713 (Fed. Cir. 2021).

Of Microsoft's fifth argument

We affirm that determination, and thus we do not reach the parties’ dispute concerning the proper construction of “computer process.” We need not address whether Microsoft’s petition was adequate because it was readily apparent how FIPA97’s Figure 2 meets the claim requirement that each of the plurality of agent registries is resident within a separate computer process. This is so because Microsoft’s opening brief in this court provided no coherent explanation of why this part of the Board’s decision was incorrect. See Microsoft Opening Br. 76–79. Its effort to do so with a new explanation in its reply brief was too late. See Microsoft Response & Reply Br. 17–18; Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1564 (Fed. Cir. 1996) (“A reply brief, which should ‘reply to the brief of the appellee,’ is not the appropriate place to raise, for the first time, an issue for appellate review.” (quoting Fed. R. App. P. 28(c))). For those reasons, we affirm the Board’s unpatentability determinations for claims 50–51 and 53–55 of the ’560 patent in IPR2019-00836.

Friday, April 01, 2022

Anniversary of Union troops entering Richmond, Aprll 3, 1865

Note the story in the Richmond Free Press titled Marker recognizing city’s liberation by Union troops near Civil War’s end damaged in East End

The Union army that first entered was the Army of the James, under the command of Major General Weitzel, not the army of Grant or of Sherman.

Was the battle of Glendale, VA in the Civil War potentially pivotal?

In a 2017 book review entitled CWT BOOK REVIEW: BATTLE OF GLENDALE AND BATTLE OF FAIR OAKS /a>, ROBERT K. KRICK questions the idea that the Battle of Glendale was as significant as Stempel suggested.

But not only did Stempel not use Patterson’s or Cannon’s contributions, or any of the multitude of others, he didn’t even consult the Official Records. The result is a dreadfully confused account. Badly flawed maps compound the narrative’s defects. Stempel’s uncertainty in identifying the Willis Church Road as the Quaker Road, for example, vitiates the book’s breathless subtitle. The South “nearly won the war,” we are told, when Colonel Micah Jenkins’ Confederates cut the enemy in half on that road—had someone only been willing to support him. Jenkins, however, never actually occupied the road during the battle, nor did he ever claim that he did so. The colonel, in his own words (which the author apparently did not see in any detail, as he does not even cite Jenkins’ original report), notes that his men “had gained command” of the road. What that meant was his riflemen irritated enemy reinforcements by firing toward the road—a worthwhile achievement, but not nearly the decisive event you’re led to believe it was.

Brian K. Burton wrote

As the day progressed, all over the Virginia countryside Confederates were running into problems. Holmes’s small command, marching down the River Road, reached a spot within artillery range of Malvern Hill. A blast of fire from the Southerners started what proved to be a vastly unequal contest between batteries, with Union Navy gunboats adding their shells for good measure. Holmes’s infantry broke under the heavy Northern shelling, leaving whatever role Lee might have assigned him impossible for Holmes to carry out. Huger ran into different problems on the Charles City Road. Union pioneers cut trees across the road, and Brigadier General William Mahone’s men lost the “battle of the axes,”[2] slowing them down, as did Federal skirmishers. Huger also was worried about his left flank’s exposure to enemy troops that might still be near that part of White Oak Swamp. Finally he found Slocum’s men near Brackett’s field. He engaged with artillery, but no infantry from Huger’s division fought that day, and eventually Slocum became unconcerned with him. Magruder’s move from the Williamsburg Road to the Darbytown Road was accomplished with no problems, but once there someone (the record is unclear) ordered him to support Holmes, a move that made no sense. He had reached the River Road with part of his force when he was ordered to march to Glendale; none of his men fought at all on June 30.

(...) It was what happened away from Glendale that made the fighting at the crossroads purposeless. Jackson’s inactivity at White Oak Swamp let 10,000 Northerners move from that area to Glendale. Huger’s inactivity let another full brigade move from the Charles City Road to Glendale. And confusing orders kept Magruder from adding his men to the fight on the Southern side. In total, 80,000 men were within range of Glendale on June 30 but did not fight there. On the Union side, that was because they were not needed. On the Confederate side, however, that was because some commanders did not perform. If they had, Glendale itself and the outcome of the campaign might have been very different.


And then there is the viewpoint of monodisperse at

The idea that McClellan intended to continue from Glendale is wrong. McClellan intended to remain there, resupply his army from Carter’s and Haxall’s Landings, and counterattack once he’d resupplied. The quartermasters set up landing points and depots at those two places (which they wouldn’t do if the intent was Harrison’s), only for the Navy to state they couldn’t protect transports that far upriver. The Navy wanted for the army to retreat all the way to Dancing Point (i.e. the mouth of the Chickahominy). Tactically, the reason for the withdrawal from the Glendale position is that Baldy Smith suffered a complete mental breakdown, and marched his division away from the White Oak towards Charles City without telling anyone, and Franklin followed him. The rebels never intended to attack the crossroads, at least not on the 30th. Like the attacks at Malvern Hill the following day, it was an unco-ordinated snowballing attack. Jenkins’ unordered charge at about 1645 caused a shocked Longstreet to order a general attack at 1700. Since no-one expects to make an attack that day, the response is ragged; only Kemper advanced promptly. It was about 2 hours after Jenkins’ first charge that Pryor and Featherstone advanced. The reason for the disruption was simple – no-one expected there to be a battle. Longstreet’s ill-considered order for a general attack failed to account for the fact that most of his men had gone into routine and were busy cooking their dinners. Hence he lost 3 casualties for every two inflicted (ca. 4,349 received vs ca. 2,813 inflicted) to gain 100 yards of ground. The guns were not in rebel possession at the end of the battle, but rather between the lines. Baldy Smith’s psychosis covers up Longstreet’s mistake, because Jackson crossed the White Oak in the dark, and unzipped the whole Federal position.

Copyright and Disney, twenty years later

A friend sent me a link to a post by "E.C. Knight" titled Drain the Disney Copyright Swamp and Make the Public Domain Great Again .

Supposedly, is on the conservative side, and "E. C. Knight" happens to be a party in a famous Supreme Court case (156 U.S. 1 (1895))

Merely "looking backward," one notes

Title: Deciding Cases the Old Fashioned Way

Author: Lawrence B. Ebert Journal: Intellectual Property Today, page 12 ff, April 2002 [Twenty years ago this month)

LENGTH: 2360 words

(...) On the copyright front, on February 18, the Supreme Court granted cert in Eldred v. Ashcroft (99-5430) to review the holding by the U.S. Court of Appeals for the D.C. Circuit that the 1998 Sonny Bono Copyright Term Extension Act is constitutional. Eldred's case has been spear-headed by Professor Lawrence Lessig, who recently came under attack in an article by Edward Samuels n6 who wrote of Lessig: "He doesn't even consider the international context in which Congress acted. Lessig suggests that the United States adopt a short copyright term, subject to renewal every five years. This proposal, or indeed any proposal for a term of less than life of the author plus 50 years, would be in violation of our treaty obligations under Berne." On the flip side, many point to a law review article by Justice Breyer, "The Uneasy Case for Copyright," 84 Harv. L. Rev. 281 (1970), and point to various special interests who benefit (opponents call the law "the Mickey Mouse Protection Act."). Somewhat lost in all of this is the idea that copyright law is to encourage authors, and ultimately create a public domain of works of authorship. Although copyright law, unlike patent law, has a work-for-hire provision, at some point the public, if not lawyers, has an expectation that the creator of the work should be rewarded. n6 Edward Samuels, In Step With the World, National Law Journal, March 7, 2002. For example, on the television show "Law and Order" on March 10, 2002, part of the story line was the purloining, by a state judge, of law review articles, actually written by his clerk, who was subsequently murdered. One of these was on intellectual property for the new millennium. n7 Although the drafting of documents by clerks (or by associates) for their superiors is not unusual, the show hammered away at the complete absence of knowledge, by the judge, of any substantive understanding of the issues within the law review articles, nominally under his name. n8 In the make-believe world of television, not only does one have the right to information but the right to know and to credit the entity who actually created it.


The outcome:

Genuine Enabling Technology LLC sued Nintendo Co., Ltd. and Nintendo of America, Inc. accusing five products of infringing certain claims of U.S. Patent No. 6,219,730. The U.S. District Court for the Western District of Washington construed the term “input signal,” which appears in all the asserted claims, consistent with the defendants’ proposed construction, and on that basis granted summary judgment of non-infringement in favor of the defendants. Genuine appeals, arguing that the district court erred in construing the limitation by improperly relying on extrinsic evidence and by improperly finding that the inventor, Mr. Nguyen, disclaimed certain claim scope during prosecution. We conclude that the district court erred in its construction of “input signal” and construe the term to mean “a signal having an audio or higher frequency.” Accordingly, we reverse the district court’s grant of summary judgment and remand for further proceedings consistent with this opinion.

The inventor's argument

Mr. Nguyen then reiterated that distinction between Yollin and his inventions: [Yollin] utilizes . . . a controller to receive positional change information, user selection information and physiological change information to generate . . . a composite signal but does not anticipate its use with signals containing audio or higher frequencies. Using a controller to generate the composite control signal out of the information changes, which are slow-varying, is standard and not worth [being] mentioned in Yollin’s description. Difficulties will arise when one signal runs asynchronously relative to another signal and fast. Yollin’s patent does not teach or suggest any method for the controller to receive and recover such signals. In contrast, this invention describes, in its representative embodiments, how to combine the data from a UID (mouse) and from a high-frequency signal, via a framer, which is unique and novel. J.A. 1785 (emphasis added). Mr. Nguyen made this essential argument a third time: Yollin’s method of using the controller to generate a composite signal only works for slow varying signals. In contrast, this invention teaches the artisan the ways of synchronizing and encoding two sources of signals into a combined data, via a framer, before sending onto a communication link, and of recovering from the received combined data the original information of the respective signals.

There was a matter of expert opinion

see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996) (“[E]xpert testimony . . . may not be used to vary or contradict the claim language. Nor may it contradict the import of other parts of the specification.” (citation omitted)); Aqua-Aerobic Sys., Inc. v. Aerators Inc., 211 F.3d 1241, 1245 (Fed. Cir. 2000) (stating that expert testimony “may not correct errors or erase limitations or otherwise diverge from the description of the invention as contained in the patent documents”); Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003) (“Yet, Omega submits its expert declarations not to shed light on this field of art, but to rewrite the patent’s specification and explicitly provide for the laser splitting device, lenses, and prisms to strike the center of the energy zone. That we cannot accept.”); U.S. Indus. Chems. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 678 (1942) (“It is inadmissible to enlarge the scope of the original patent by recourse to expert testimony to the effect that a process described and claimed in the reissue, different from that described and claimed in the original patent, is, because equally efficacious, in substance that claimed originally.”). (...) Accordingly, the intrinsic record “must be considered and where clear must be followed.” See Mantech Env’t Corp. v. Hudson Env’t Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998); see also Vitronics, 90 F.3d at 1584 (“[W]here the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”). “Any other rule would be unfair to competitors who must be able to rely on the patent documents themselves, without consideration of expert opinion that then does not even exist, in ascertaining the scope of a patentee’s right to exclude.” Vitronics, 90 F.3d at 1584.

Of prosecution disclaimer

The doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega, 334 F.3d at 1323. “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Id. at 1324. For a statement during prosecution to qualify as a disavowal of claim scope, it must be “so clear as to show reasonable clarity and deliberateness,” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted); see also Tech. Props. Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1358 (Fed. Cir. 2017) (“The patentee’s disclaimer may not have been necessary, but its statements made to overcome Magar were clear and unmistakable.”). If the challenged statements are ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established. See Tech. Props., 849 F.3d at 1358 (citing Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)). “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Shire, 839 F.3d at 1119 (citation and quotation marks omitted).


We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum. Omega, 334 F.3d at 1325–26 (prosecution history disclaimer must be clear and unmistakable). Mr. Nguyen repeatedly distinguished his inventions from Yollin on the grounds that Yollin taught “slow-varying signals” whereas his inventions involved “audio or higher frequency” signals. See J.A. 1784–85. The examiner’s acceptance of that distinction and resulting decision to allow the claims suggest that Mr. Nguyen and the examiner reached an understanding on that point.

The result

We hold that the district court erred in construing the term “input signal.” In particular, the district court erred in finding that Mr. Nguyen disclaimed subject matter other than signals below the audio frequency spectrum during prosecution, and it further erred in relying on extrinsic evidence to limit the claim scope to signals above 500 Hz. We therefore conclude that the proper construction of “input signal” is “a signal having an audio or higher frequency.” Accordingly, we reverse the district court’s grant of summary judgment of non-infringement and remand for further proceedings consistent with this opinion.