Monday, May 30, 2022

Memorial Day, then Decoration Day, did arise from the Civil War

Decordation Day was pushed by General John ("Black Jack") Logan after the Civil War concluded. Logan, then a Democrat, was a "political" general, who was engaged in the Western theater, including Vicksburg. Logan would become a Rupublican, and was James Blaine's running mate in an election lost by the Republicans. The interplay of the Gettysburg Address and Thanksgiving is a story for later.

Did Dr. David Ho test positive for Covid?

CBS nightly news on May 30, 2022 reported that well-known rsearcher David Ho tested positve for Covid. Bad test or real? See also:

May 30, 2022: 100th anniversary of the dedication of the Lincoln Memorial

Harding and Taft were there at the dedication.

Friday, May 27, 2022

More Arthrex!

The outcome:

Arthrex, Inc. appeals a Patent Trial and Appeal Board final written decision finding claims 1, 4, 8, 10–12, 16, 18, and 25–28 of U.S. Patent No. 9,179,907 unpatentable as anticipated. It also challenges a decision by the Commissioner for Patents denying Arthrex’s request for the Director of the Patent and Trademark Office (PTO) to review the Board’s decision and grant rehearing. We affirm.

And remember

Arthrex appealed. It primarily challenged the Board’s decision on the merits, but it also argued that the Board lacked constitutional authority to issue the agency’s final decision. Arthrex reasoned that the Board could not issue final decisions because its Administrative Patent Judges (APJs) were not nominated by the President and confirmed by the Senate, as the Appointments Clause requires for principal officers. We agreed with Arthrex’s constitutional challenge and held that the appropriate remedy was to (1) sever the statutory limitations on the removal of APJs and (2) remand for rehearing by a new panel of APJs. Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1338, 1340 (Fed. Cir. 2019). We did not reach the merits of the Board’s decision.

The Supreme Court vacated and remanded. United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021) (Arthrex). It agreed that because APJs are appointed by the Secretary of Commerce, rather than the President with the advice and consent of the Senate, they could not issue any “final decision binding the Executive Branch.” Id. at 1985. The Court held, however, that the appropriate remedy was to (1) exempt the Director from 35 U.S.C. § 6(c), which precludes anyone but the Board from granting rehearing of a Board decision, and (2) “remand to the Acting Director for him to decide whether to rehear” the case. Id. at 1987.

What was happening after remand?

On remand, Arthrex requested “rehearing by the Director.” Smith & Nephew, Inc. v. Arthrex, Inc., IPR2017- 00275, Paper 39 at 1 (P.T.A.B. Aug. 27, 2021). The office of the Director was, however, vacant. As was the office of Deputy Director, which is “vested with the authority to act in the capacity of the Director in the event of [his] absence or incapacity.” 35 U.S.C. § 3(b)(1). The responsibility of addressing Arthrex’s request thus fell to the Commissioner under a standing directive known as Agency Organization Order 45-1.

The CAFC went back to 1898:

Although an inferior officer generally cannot issue a final agency decision, he may perform the functions and duties of an absent PAS officer on a temporary, acting basis. United States v. Eaton is instructive. 169 U.S. 331 (1898). After falling ill, the consul general to Siam, Sempronius Boyd, a PAS officer, unilaterally appointed Lewis Eaton, then a missionary, to the position of vice consul general. Id. at 331–32. Mr. Boyd then took a leave of absence, returning to his home in Missouri, where he later died. Id. at 332–33. In the period between Mr. Boyd’s departure and his replacement’s arrival, Mr. Eaton was required by law to “temporarily . . . fill the place[ ] of consul[ ] general,” which he did. Id. at 336 (quoting Revised Statutes § 1674). The government, however, refused to pay Mr. Eaton for his services. It argued that Congress violated the Appointments Clause by authorizing the President to promulgate the consular regulations Mr. Boyd invoked to appoint Mr. Eaton. See id. at 343.

This case is indistinguishable from Eaton.

Tuesday, May 10, 2022

The Konda case: availability of provisional applications

From the CAFC

The Board subsequently denied Mr. Konda’s requests for rehearing. It reiterated that under 37 C.F.R. § 1.14(a)(1)(vi), a person who makes a written request and pays the appropriate fee “may be provided” “[a] copy of the application as originally filed” of a provisional application like the ’394 provisional. SAppx. 39 (quoting 37 C.F.R. § 1.14(a)(1)(vi)). The Board also noted that the Manual of Patent Examining Procedure (MPEP) reflected this principle. Id. (quoting MPEP § 103(III) (8th ed., Rev. 7, July 2008)). The Board concluded that a copy of the ’394 provisional “as originally filed” became available as of the publication of the ’756 PCT, regardless of Mr. Konda’s personal consent. SAppx. 39–40.

(...) We review the Board’s legal conclusions de novo and its factual determinations for substantial-evidence support. In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “Whether an asserted anticipatory document qualifies as a ‘printed publication’ under [35 U.S.C.] § 102 is a legal conclusion based on underlying factual determinations.” Id. (quoting Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002)). A “printed publication” under the applicable version of § 102(b) must have been publicly available at the pertinent time, and that requirement is met if the document was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, [could have] locate[d] it.” Kyocera Wireless Corp. v. Int’l. Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).

Section 1.14(a) of 37 C.F.R., quoted above, provides that a person may, upon written request and payment of a fee, have access to a copy of an unpublished pending application “as originally filed” if that unpublished pending application was incorporated by reference into an international patent application published in accordance with PCT Article 21(2). It is undisputed that the ’756 PCT was such an international patent application and that it incorporated the ’394 provisional by reference. That language clearly supports the Board’s conclusion here that the ’394 provisional was publicly accessible. And a contrary result is not supported by the next sentence of the regulation (on which Mr. Konda relies). That sentence provides that an inventor’s written authorization is required for provision of access to the “paper file,” but the regulation clearly distinguishes the “paper file” (i.e., the whole file history) from the “application as originally filed.” Under the language of § 1.14(a)(1)(vi), therefore, the ’394 provisional as originally filed was accessible without Mr. Konda’s written authorization in the incorporation-by-reference circumstance delineated, while the complete file history was not.

Monday, May 02, 2022

Antiviral Covid drugs hard to obtain in New Jersey as of May 2, 2022

Somewhat evoking the New Jersey problems with distributing vaccine, the Courier-News on 2 May 2022 noted that antiviral druges are hard to obtain in New Jersey:

As Blondie (as covid) would sing:

One way, or another, I'm gonna find ya, I'm gonna get ya get ya get ya get ya

CAFC tackles "industry skepticism" in "motivation to combine" case in Auris v. Intuitive Surgical

In an IP battle between "heavy-weight" law firms Sidley Austin LLP, (for appellant) and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (for appellee), the appellant Auris Health prevailed against patentee in a "motivation to combine" case. The outcome:

Auris Health, Inc. (“Auris”) petitioned for inter partes review of all five claims of Intuitive Surgical Operations, Inc.’s (“Intuitive”) U.S. Patent No. 8,142,447 (“the ’447 patent”). In its final written decision, the Patent Trial and Appeal Board (“Board”) determined that Auris failed to demonstrate that the claims were unpatentable as obvious. Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. IPR2019-01533, Paper 45, 2021 WL 826396 (P.T.A.B. Mar. 3, 2021) (“Final Written Decision”). Although the Board agreed with Auris that its combination of two references disclosed every limitation of the challenged claims, the Board concluded that a skilled artisan wouldn’t have been motivated to combine those references. Auris appeals. Because the Board impermissibly rested its motivation-to-combine finding on evidence of general skepticism about the field of invention, we vacate and remand.

The CAFC framed the issue:

Before the Board, Auris argued that a skilled artisan would be motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by roboticizing some of their tasks. Intuitive responded that a skilled artisan wouldn’t have been motivated to combine the references because “surgeons were skeptical about performing robotic surgery in the first place, [so] there would have been no reason to further complicate Smith’s already complex robotic surgical system with [Faraz’s] roboticized surgical stand.” Final Written Decision, 2021 WL 826396, at *7–8. The Board agreed with Intuitive and concluded that “the evidence . . . supports the position [that] there is no motivation to complicate Smith’s system when there is skepticism at the time of the invention for using robotic systems during surgery in the first place.” Id. at *9. On appeal, Auris challenges the Board’s reliance on general skepticism about the field of robotic surgery to find a lack of motivation to combine. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

The majority of two made short work of the argument

The motivation-to-combine inquiry asks whether a skilled artisan “not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted). As to the “would have” question, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). It follows that generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.

To be sure, evidence of industry skepticism may play a role in an obviousness inquiry—but as a secondary consideration in a significantly different context. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1335–36 (Fed. Cir. 2016). Yet even then, the evidence of skepticism must be specific to the invention, not generic to the field. Id. Although Intuitive suggests that the Board may consider generic industry skepticism in a motivation-to-combine analysis to “place [itself] in the minds of” skilled artisans, Appellee’s Br. 40–41 (citing Interconnect Plan. Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)), it offers no case law to suggest that the Board can rely on generic industry skepticism to find a lack of motivation to combine. And while specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine, that’s not what we have here.

Judge Reyna in dissent, in effect, raises the issue that the facts underlying "motivation to combine" are evaluated by a "substantial evidence" standard, and that, here, a reasonable mind could accept that general industry skepticism foreclosed motivation to combine. The "negative pressure" wound healing case of Kinetic Concepts was cited by Judge Reyna. The question remains: is motivation to combine a legal issue or a factual issue?

Judge Reyna writes:

I respectfully dissent. In my view, the Board’s determination that Auris failed to show a motivation to combine is adequately supported by substantial evidence and was not contrary to our law on obviousness. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“We review the Board’s legal conclusion of obviousness de novo, and underlying factual findings for substantial evidence.”); Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938) (Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”).

I am also concerned that the majority opinion may reasonably be understood to announce an inflexible and rigid rule, namely that it is “impermissible” for the Board to consider evidence of artisans’ skepticism toward robotic surgery in determining motivation to combine. I find no authority for this assertion, and indeed it appears in tension, at a minimum, with the central thrust of KSR. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (rejecting the “rigid approach of the Court of Appeals” and articulating an “expansive and flexible approach” of determining obviousness). This is particularly true when considering art in fields of endeavor that are inherently dangerous or risky. Indeed, in past cases, this court has accounted for the attitudes of medical professionals toward certain types of procedures when determining whether a motivation to combine has been adequately demonstrated. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (finding no motivation to combine where “doctors were not using the disclosed devices and methods to heal wounds with negative pressure because they did not believe that these devices were capable of such healing”).
(...) I recognize that the majority states that skepticism “may play a role in an obviousness inquiry—but as a secondary consideration.” Maj. Op. 5. But this assertion suggests, to some extent, that objective indicia are less important or less probative of obviousness or non-obviousness than the other Graham factors. The majority cites no case in which this court has endorsed that view, and in fact that view appears inconsistent with a number of our opinions. See, e.g., Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en banc) (“A determination of whether a patent claim is invalid as obvious under § 103 requires consideration of all four Graham factors, and it is error to reach a conclusion of obviousness until all those factors are considered.”); Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573 (Fed. Cir. 1996) (“It is the secondary considerations that are often most probative and determinative of the ultimate conclusion of obviousness or nonobviousness. The district court did not provide reasons for apparently discounting Pro-Mold’s evidence of secondary considerations; that was error as a matter of law.”); Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1378 (Fed. Cir. 2012) (“These objective guideposts are powerful tools for courts faced with the difficult task of avoiding subconscious reliance on hindsight.”). In sum, the majority overlooks multiple reasons why the Board found the proffered motivation to combine insufficient. It also announces a new legal principle that I believe conflicts with KSR and its progeny. For these reasons, I dissent.