Tuesday, October 25, 2022

Trend Micro v. CUPP

Trend Inc. filed petitions in the Patent and Trademark Office seeking inter partes reviews (IPRs) under 35 U.S.C. §§ 311–19 of certain claims of two patents owned by CUPP Computing AS—claims 1, 7, and 16 of U.S. Patent No. 8,365,272 and claims 1, 6, and 7 of U.S. Patent No. 9,756,079. The PTO’s Patent Trial and Appeal Board, after instituting and conducting the requested reviews, issued final written decisions holding each claim 1 to be unpatentable but rejecting Trend Micro’s challenges to claims 7 and 16 of the ’272 patent and claims 6 and 7 of the ’079 patent. Trend Micro Inc. v. CUPP Computing AS, No. IPR2019-00561, 2020 WL 3709007, at *1 (P.T.A.B. July 6, 2020) (IPR561 Decision); Trend Micro Inc. v. CUPP Computing AS, No. IPR2019-00641, 2020 WL 3697863, at *1 (P.T.A.B. July 6, 2020) (IPR641 Decision). Trend Micro appeals the Board’s holding regarding claims 7 and 16 of the ’272 patent and claim 7 of the ’079 patent. We vacate the Board’s final written decisions on each appealed claim and remand.

IBM loses in Zillow case

The outcome:

International Business Machines Corporation sued Zillow Group, Inc. and Zillow, Inc. for infringement of several patents related to graphical display technology. The district court granted Zillow’s motion for judgment on the pleadings, concluding that two of the asserted patents claimed ineligible subject matter under 35 U.S.C. § 101. Because we agree that the patents are directed to abstract ideas and lack an inventive concept, we affirm.

We agree that the claims here fail to “recite any assertedly inventive technology for improving computers as tools,” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed. Cir. 2018), and are instead directed to “an abstract idea for which computers are invoked merely as a tool,” TecSec, 978 F.3d at 1293

Marjorie Taylor Greene's historical error compared to that of (former) Senator James Henry Webb Jr. of Virginia

Among others, the Daily Beast ran a story about an historical error by Congr. Greene:

Marjorie Taylor Greene Tries to Take a Stand for ‘Confederate Soldiers’ Using Monument to Union Troops

link: https://www.thedailybeast.com/marjorie-taylor-greene-steps-on-a-rake-in-defending-confederate-soldiers

The post included text related to Union Colonel Wilder

Rep. Marjorie Taylor Greene tried to make a show of herself standing up for Confederate soldiers and “our nation’s history” on Tuesday night but failed spectacularly and instead revealed her own confusion about the Civil War. The MAGA representative visited the Wilder Brigade Monument in Georgia to claim that the memorial recognizes “Confederate soldiers.” But despite Greene’s apparent rush to pay her respects to what she believed was a Confederate monument, the monument actually pays tribute to Union troops that battled the Confederates. The Union Army's John T. Wilder unit — later nicknamed the Lightning Brigade— took the fight to Confederate troops during the Civil War. A Greene spokesperson didn't return The Daily Beast's request for comment. The MAGA-loving lawmaker, beloved within Trumpworld, later edited the Truth Social post, which originally read: “Tonight, I stopped at the Wilder monument in Chickamauga, GA, which honors the Confederate soldiers of the Wilder Brigade. ... I will always defend our nation's history!”

IPBiz notes that Senator Webb made an even worse historical error over 15 years ago, effectively elevating Confederate General Nathan Bedford Forrest. No one discussed this much.

From an IPBiz post in the year 2007.

**from IPBiz, March 2007 **Also note relevant text in 88 JPTOS 1068. Pertinent to a claim by Senator Webb of Virginia that Nathan Bedford Forrest was never beaten by a West Point educated commander, see footnote 28 of 88 JPTOS 1068: See also footnote 16 of Robert A. Frezza, A Pocket History of the Personnel Claims Act, 1989 Army Law. 43 (1989) ["In 1863 Colonel John T. Wilder, an Indiana industrialist commanding a brigade in Rosecrans' Union Army of the Cumberland, entered into a interesting contract with his men to buy them Spencer rifles, the best breech-loading infantry weapon available ..."]; note also James H. Wilson's cavalry raid of March 1865 employing Spencer rifles in which a successful charge was made against forces of legendary Confederate commander Nathan Bedford Forrest, even though Union forces were outnumbered 6 to 1. See http://www.bufordsboys.com/UnionCavalrymanVI.htm. James H. Wilson graduated from West Point. The fact that Wilson defeated Forrest at Selma, which contradicts Webb's assertion, is hardly a secret; from Wikipedia: In 1865, Forrest attempted, without success, to defend the state of Alabama against the destructive Wilson's Raid. His opponent, Brig. Gen. James H. Wilson, was one of the few Union generals ever to defeat Forrest in battle. The point here is not to diminish Forrest's military skills. It should be self-evident that cavalry troops armed with repeating weapons (here Spencer carbines) will have a tremendous advantage over troops with single shot weapons. Custer proved this at Gettysburg on July 3, 1863 against troops of J.E.B. Stuart, and, unfortunately for Custer, re-proved this on June 25, 1876, where he played the role of the technologically-deficient party. [see 88 JPTOS 1068, 1073] *** Also, Nathan Bedford Forrest was a character in the novel The Guns of the South (Harry Turtledove) in which time-travelers alter the path of the Civil War. One notes that, at the beginning of the Centennial period (circa 1960), a major US magazine ran a feature describing what might have happened if the South had won. In both the 1960 and 1992 stories, the South and North become separate countries. [If you are wondering, MacKinlay Kantor's Civil War Centennial piece for LOOK, "If the South Had Won the Civil War" originally appeared in the November 22, 1960 issue of LOOK, producing a deluge of correspondence from readers, leading to a related book in 1961."]

Other stories about Greene


Georgia Republican Rep. Marjorie Taylor Greene on Tuesday appeared to publicly struggle with her state's history during the Civil War. "Tonight, I stopped at the Wilder Monument in Chickamauga, GA, which honors the Confederate soldiers of the Wilder Brigade," Greene posted to Truth Social. "I will always defend our nation's history!" Union Army Colonel John T. Wilder commanded the brigade of mounted infantry armed with 7-shot Spencer repeating rifles. The Indiana War memorial states, "'From the many, one' may best describe Col. John T. Wilder's Lightning Brigade. The unit was made up of 'citizen soldiers' from the farms of Indiana and Illinois. The brigade was unique because it was created as a unit that could move with the speed of cavalry but fight with the power of infantry."

Wednesday, October 12, 2022

Issue preclusion in Glover v. Cohen

From the CAFCL

Under this doctrine, a party cannot relitigate an issue that has already been litigated. See Peloro v. United States, 488 F.3d 163, 175 (3d Cir. 2007). That is the situation here. Glover litigated the same issue – patent infringement by the Breathe Right® dilator – in the Northern District of Ohio action and cannot relitigate that issue now. The Third Circuit generally applies plenary review to determinations of issue preclusion. See Jean Alexander Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F.3d 244, 247-49 (3d Cir. 2006) (noting abuse of discretion review for nonmutual offensive collateral estoppel). In the Third Circuit, the prerequisites for applying issue preclusion are (1) the issue sought to be precluded [is] the same as that involved in the prior action; (2) that issue [was] actually litigated; (3) it [was] determined by a final and valid judgment; and (4) the determination [was] essential to the prior judgment. . . . For defensive collateral estoppel – a form of non-mutual issue preclusion – to apply, the party to be precluded must have had a “full and fair” opportunity to litigate the issue in the first action. Peloro, 488 F.3d at 174-75 (internal quotation marks omitted).

Saturday, October 08, 2022

How historically accurate was the Twilight Zone episode entitled --Long Live Walter Jameson --?

The Twilight Zone episode entitled --Long Live Walter Jameson -- first aired March 18, 1960, as events marking the Civil War Centennial were beginning.

Much is made of a diary entry dated September 11, 1864, which purports to show how evil General Sherman was. At that time Atlanta had surrendered but the burning of Atlanta (by Sherman's troops) would not occur for more than one month.

Another significant date, in November, 1864, marked a significant bettle in which Spencer rifles were employed.

From todayinGeorgiasHistory

September 2, 1864 - Atlanta

“Atlanta is ours, and fairly won”: the immortal words of General William T. Sherman when he captured Atlanta on this date in 1864. Sherman had taken the Deep South’s major manufacturing center and railroad hub, a huge loss for the Confederacy. Unwilling to attack Atlanta’s strong defenses, U.S. forces swept west and south around the city. At Jonesboro they cut the last railroad supplying Atlanta, forcing General John Bell Hood’s Confederates to abandon the city. Atlantans who remained were rudely awakened that morning by the apocalyptic explosions of Hood’s ammunition train being blown up by Confederates—a scene immortalized 75 years later in “Gone with the Wind.” Atlanta Mayor James Calhoun surrendered the city to Sherman in a formal note, saying, “The fortune of war has placed Atlanta in your hands.” The 2nd Massachusetts Regiment reached downtown first and raised the American flag over City Hall.

[The point being that the fire in September 1864 was created by Confederate general Hood and not by Union general Sherman.]

from AtlantaMagazine

The city of Atlanta, after the war is lost, is sentimentalized almost as a shrine to a lost cause and to a people’s determination never to give in. Scarlett returns to the city, which bumed 130 years ago, on Nov. 14, 1864, to find it in ruins and filled with Yankees and Negroes. ” ‘They burned you,’ she thought, ‘and they laid you flat. But they didn’t lick you. You’ll grow back just as big and sassy as you used to be!’ ” If ever a line of dialogue was written to be used through the ages by the chamber of commerce, this is one. It has ended up in prologues, poems, pamphlets, preachments and prayers and engraved in stone.

from battlefields.org

November 15, 1864 - William T. Sherman departs Atlanta on the March to the Sea, leaving Atlanta in ruins

As to the battle in November 1864, note

“Harvest of Death”: The Battle of Griswoldville

During the entire march [Sherman's march to the sea], there were only two set battles: the Battle of Griswoldville, and, at the end of the march, the capture of Ft. McAllister. The first of those battles, Griswoldville, occurred 150 years ago, Nov. 22, about ten miles away from Macon, Georgia. (...) By this point in the war, many Federal soldiers had saved their money and bought their own, non-regulation repeating rifles. The Spencer Rifle was in plenty of Federal hands at Griswoldville and those rifles would even the playing field.(...) As the Union soldiers policed the battlefield, they were horrified at the results. These men were veterans of many of Sherman’s campaigns, and they had seen their fair share of battlegrounds, but Griswoldville was different. One account wrote, “Old grey-haired and weakly looking men and little boys not over fifteen years old, lay dead or writhing in pain.” In front of the 100th Indiana, Theodore Upson wrote that “It was a terrible sight…We moved a few bodies, and there was a boy with a broken arm and leg—just a boy 14 years old; and beside him, cold in death, lay his Father, two brothers, and an Uncle. It was a harvest of death.”

link: https://emergingcivilwar.com/2014/11/22/harvest-of-death-the-battle-of-griswoldville/

An Overview of The Battle of Griswoldville, Georgia, November 22, 1864

In seven ill-fated charges Confederate forces hammered away at the Federal line on the high ground and would have probably broken the line had it not have been for the fact that this relatively inexperienced, though gallant, Southern force faced veteran Union soldiers armed with the new Spencer repeating rifle.

link: https://scvcamp1399.org/griswoldville-battle-overview.php


General Sherman and Miss Scarlett: The Historical Accuracy of the Civil War Section of GONE WITH THE WIND

by one gillianren

including text:

According to Mitchell herself, she didn’t realize until she was ten that the South had lost. (LHJ) She took the stories of her childhood and historical research and created an image of the South that has endured for over sixty years. But how much historical research is apparent in her work? Mitchell claimed once to be able to provide four historical sources for every line of nonfiction in the book, yet many historians downplay the accuracy of Gone With the Wind. Despite this, it has become nearly impossible in this country to discuss the Civil War without a mention of Mitchell’s epic. Therefore, it is important to examine the book’s Civil War passages and analyze its accuracy. Is the pooh-poohing of the critics merely snobbery? Or, rather, did Mitchell, an avid Civil War researcher, ignore and alter those facts that did not suit her story? This paper will attempt to make a judgement. While Gone With the Wind also covers Reconstruction, this paper will not. For one thing, the Battle of Atlanta is a bulky enough topic on its own, and for another, Mitchell’s writing was biased by the historians of the time, most of whom used the facts their own way. One cannot expect a book written by a Southerner, published in 1936, to be an entirely accurate portrayal of Reconstruction, an event twisted by Southern historians almost as soon as it was over. The Civil War will do nicely, and Reconstruction will be left for another time. (...)

After Kennesaw Mountain, Johnston is replaced with John Bell hood. Here, another of Mitchell’s errors is easily attributable to the scholars of her time. She claims that the army cried out for “Old Joe,” but in reality, equal numbers trusted Hood as a commander. However, many works of “real” historians claimed the same thing in the 1920s, the time during which Mitchell was researching her book. (It is also probable that Johnston never said, “I can hold Atlanta forever!” as Mitchell has him saying twice.) (WST, 343) In direct agreement with Mitchell’s stance is that taken by an early Civil War historian, William Swinton, who in 1867, just three years after the events of the Battle of Atlanta, published The Twelve Decisive Battles of the War: a history of the Eastern and Western campaigns, in relation to the actions that decided their issue. In it, he writes one of the most poetic condemnations of Hood possible. “One such mysterious blow to the Confederacy was that by which Johnston was removed from its Western army at the moment when he was most needful for its salvation, kept from command till an intervening general had ruined and disintegrated it and then gravely restored to the leadership of its pitiful fragments.” (405) Now, with Georgia being sliced apart by Sherman’s invading army, rumours begin to fly about the Home Guard, Georgia’s state militia, being called out to aid the failing army of Hood. In fact, it is possible that Hood relied on this hope, the hope of “Joe Brown’s Pets.” The Home Guard was made up of men too old and boys too young to fight, as well as those just cowardly enough to want an excuse to avoid active duty but just patriotic enough to want a uniform. It was a well-established fact that Brown had all but promised his militia that it would never fight. (...) he last able-bodied man in town able to help Scarlett, it seems, is Rhett Butler. Rhett’s horse and carriage have been taken by the army as an ambulance. It is almost certain that such a thing would happen. Rhett steals an army horse from the corral, as well as a wagon, and hurries to Scarlett. As they flee Atlanta, they see the last of the Confederate army in full retreat. They see the burning of the cars of ammunition. “‘Have a good look at them,’ came Rhett’s gibing voice, ‘so you can tell your grandchildren you saw the rear guard of the Glorious Cause in retreat.'”

Saturday, October 01, 2022

Cooperative Entertainment wins appeal

The outcome

Cooperative Entertainment, Inc. (Cooperative) appeals the United States District Court for the Northern District of California’s dismissal of its amended complaint under Rule 12(b)(6), which held all claims of U.S. Patent No. 9,432,452 ineligible under 35 U.S.C. § 101. We reverse the district court’s dismissal and remand for further proceedings.

As to 101

There are at least two alleged inventive concepts in claim 1 which should have precluded the district court’s holding on ineligibility. The first is the required dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDNs. ’452 patent at claim 1 (“at least one peer-to-peer (P2P) dynamic network including a multiplicity of peer nodes, wherein the multiplicity of peer nodes consume the same content within a predetermined time, . . . wherein the multiplicity of peer nodes is distributed outside controlled networks and/or content distribution networks (CDNs)”). The second requires trace routes be used in content segmentation. Id. at claim 1 (“wherein content segmentation is based on CDN address resolution, trace route to CDN and P2P server manager, dynamic feedback from peers reporting traffic rates between individual peer and its neighbors, round-robin and other server side scheduling/resource allocation techniques”).


Contrary to the district court’s conclusion, Kollective, 544 F. Supp. 3d at 897, Cooperative’s allegations related to system capacity are plausibly tethered to claim 1’s distribution of content within its P2P network outside the control of a CDN. ’452 patent at 9:54–60 (“The systems and methods of the present invention provide for harnessing the content recipient devices to aggregate or assemble intelligent functionality of the devices unassociated with the content receipt, including but not limited to computational storage and processing capacity of the content recipient devices in the P2P dynamic network . . . .” (emphasis added)); see also J.A. 48 ¶ 19 (“Claim 1, like all the claims, covers the virtual layer outside the control of the prior art distribution scheme pushed from the CDN.”). Drawing all inferences in favor of Cooperative, as we must on a motion to dismiss, we conclude that claim 1 recites a specific technical solution that is an inventive concept: it recites a particular arrangement of peer nodes for distributing content “outside controlled networks and/or [CDNs],” ’452 patent at claim 1, which did not exist in the prior art, ’452 patent at 3:35–36. This is not an “abstract idea implemented on a generic computer,” and it is alleged to improve the performance of the content delivery network with reductions in costs and improvements in several aspects of system performance.

Mylan loses appeal Sitagliptin DHP case

The outcome:

Mylan Pharmaceuticals Inc. (“Mylan”) appeals from the final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) holding that it failed to show that claims 1–4, 17, 19, and 21–23 of U.S. Patent 7,326,708 (the “’708 patent”) were anticipated or would have been obvious over the cited prior art at the time the alleged invention was made. See Mylan Pharms. Inc. v. Merck Sharp & Dohme Corp., No. IPR2020- 00040, 2021 WL 1833325 (P.T.A.B. May 7, 2021) (“Decision”). For the reasons provided below, we affirm

The issues:

Mylan raises three challenges on appeal. First, Mylan contends that the Board erred in determining that a 1:1 stoichiometry of sitagliptin DHP was not anticipated, either expressly or inherently, by Edmondson. Second, Mylan contends that the Board erred in determining that the ’708 patent antedates Edmondson.4 Third, Mylan contends that the Board erred in determining that it failed to prove that claims 3 and 4 of the ’708 patent would have been obvious over Edmondson, Brittain, and Bastin. We address each argument in turn.

We review the Board’s legal determinations de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review the Board’s 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). And “[i]f two ‘inconsistent conclusions may reasonably be drawn from the evidence in the record, [the PTAB]’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence.’” Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed. Cir. 2018) (alteration in original) (quoting In re Cree, Inc., 818 F.3d 694, 701 (Fed. Cir. 2016)).

The opposition:

Merck responds that the Board’s holding that the claims are not anticipated by Edmondson was supported by substantial evidence. Merck asserts that a skilled artisan would not “at once envisage” all members of the entire genus of DP-IV-inhibitor salts disclosed in Edmondson. Merck further contends that the combined list of 33 compounds and eight preferred salts, taking into account various stoichiometric possibilities, would result in 957 salts, some of which may not even form under experimental conditions. That, Merck asserts, does not meet the standard set by the “at once envisage” theory. Merck argues that Mylan seeks to expand the theory inappropriately, improperly focusing on whether skilled artisans could have envisaged 1:1 sitagliptin DHP among the members of the class instead of envisaging each member of the disclosed class.


We agree with Merck that the Board’s decision was supported by substantial evidence. The Board did not err in determining that Edmondson does not expressly disclose a 1:1 sitagliptin DHP salt. The Board grounded its finding in the testimony from Mylan’s own expert, Dr. Chorghade, stating that nothing in Edmondson directs a skilled artisan to sitagliptin from among the 33 listed DP-IV inhibitors. J.A. 2342, 2373–74; Chorghade Dep. 61:7–62:9, 188:6– 189:8. Further, nothing in Edmondson singles out phosphoric acid or any phosphate salt of any DP-IV inhibitor, and the list of “pharmaceutically preferred” salts comes 44 pages earlier in the specification. The Board reasonably concluded that Edmondson does not expressly disclose the 1:1 sitagliptin DHP salt.


Merck responds that the Board did not err in finding that Merck’s work on the subject matter in claims 1, 2, 17, 19, and 21–23 of the ’708 patent antedated Edmondson. Merck argues that it had reduced to practice the subject matter of these claims before Edmondson had been published on January 16, 2003. As a result, Merck asserts, Edmondson could not serve as 35 U.S.C. § 102(a) prior art and would merely be a 35 U.S.C. § 102(e) reference. Because it is undisputed that the invention claimed in the ’708 patent and the subject matter of Edmondson were commonly owned by Merck at the time of the invention, the exception in § 103(c)(1) applies. Section 103(c)(1) (pre-AIA) provides that “[s]ubject matter developed by another person, which qualifies as prior art only under one or more subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.” Merck therefore argues that Edmondson cannot serve as an obviousness reference for claims 1, 2, 17, 19, and 21–23. Without Edmondson, the obviousness challenge to these claims fails. Decision, 2021 WL 1833325, at *20. We agree with Merck that the Board’s antedation determination was supported by substantial evidence.


Merck argues that the Board did not err in holding that claim 3 would not have been obvious, and that the Board’s underlying factual findings were supported by substantial evidence. As the Board considered, Bastin does not provide a specific motivation, including any screening or optimization protocol that, combined with Edmondson, would lead to 1:1 sitagliptin DHP, the (S)-configuration, or even a racemic mixture. Merck also argues that the Board did not err in holding that claim 4 would not have been obvious, and that the Board’s underlying factual findings were supported by substantial evidence. Merck argues that the Board was correct in finding that Mylan did not provide a persuasive motivation for making the crystalline monohydrate form of sitagliptin. Merck asserts evidence that skilled artisans would avoid making hydrates due to solubility and stability challenges during the drug-production process. Merck also contends that the monohydrate has unexpectedly favorable properties, and that these properties are objective indicia of nonobviousness. We agree with Merck