Sunday, June 25, 2017

Invalidating patents at PTAB

An article by Rochelle Dreyfuss in SLATE included

Versata Software learned the difference between the PTAB and the courts the hard way. In court, it successfully enforced a patent
on software for determining prices. Later on, the PTAB revoked the claims that the court had just found valid.

which is a "logical" possibility, because the standard for invalidity is more
easily met at PTAB.

However, recall the Acorda / Ampyra situation, wherein patents that passed muster at PTAB
were invalidated by the District of Delaware court.

link to Dreyfuss:

CBS Sunday Morning on 25 June 2017, noting the 10th anniversary of the iPhone

Jane Pauley introduced the stories for June 25, 2017, beginning with David Pogue on the 10th anniversary (of public availability) of the iPhone, and then to Susan Spencer on John McEnroe, Erin Moriarty on Dick Gregory and Seth Doane on Murano glass and Lee Cowan, and Cyndi Lauper.

The news was a landslide in Xinmo, China, oil spill/fire in Pakistan, the GOP healthcare plan and the opening of the Wilshire Grand Center in Los Angeles. A blurb on a Neopolitan Mastif winning the ugliest dog contest.

The cover story by David Pogue noted the 10th anniversary of the iPhone to the public coming up on June 29, 2017. There was a reunion of four technical writers (including Steven Levy and Pogue (then at the NY Times)) who were given iPhones to try before the public unveiling. There was discussion of the touchscreen feature being worked on in 2005. And no one supposedly knew "how big this could be." There was a question of whether or not Apple is sunsetting. And a statement/opinion on Jobs: I don't think he foresaw the hugeness [?]

See also the 29 June 2009 piece on WIRED: June 29, 2007: iPhone, You Phone, We All Wanna iPhone

Almanac: June 25, 1997. Date of death of Jacques Costeau.

The piece by Seth Doane on Murano glass included "There are no secrets anymore," suggesting glass was now all art. [Could this be said of the iPhone, which primarily borrowed known technology?] In 1291, glass blowing moved from Venice to Murano, to limit the consequences of fires from the glass kilns. From a current glass person with different ideas: I am not threatening anybody. I'm trying to bring glass to another step.
In the earlier days, glass technology was a state secret, and one could not leave Murano with the knowledge.

The piece on Dick Gregory pointed to the symbolic significance of Dick Gregory being allowed to sit on the couch next to Jack Paar.
"Turn me loose." 1989 piece on Gregory on "60 Minutes."

Moment of nature. Horseshoe crabs on New Jersey side of Delaware Bay.

Thursday, June 22, 2017

Desired qualities for next director of the USPTO?

From a post at norningconsult about qualities in the next patent office director:

The next PTO director should have served as a senior executive at a company that engages in research and development, and for which building and managing a patent portfolio is a central part of its business model. Patents and commercialization must have occupied the lion’s share of this person’s time and energy.


One contemplates the two Obama selections in comparison to the previous two Republican (Bush) selections.

National Review on Bob Dylan "copying"

From the National Review:

To use the word “plagiarism” to describe what Dylan does, then, seems incorrect, tarnished as the word is with allegations of theft and deceit. The intention, in Dylan’s case, could not be further from the truth. The works of others are not something he turns to in times of sloth-induced desperation to pass off as his own. Rather, they are wellsprings of invention and interpretation, works to pair with others to create something new and, in many cases a whole greater in quality than the sum of its parts.


**Separately from blawgsearch on 22 June 2017:

Analysis of Lemtrada data by researchers at Queen Mary University suggests issues in T/B cell repopulation dynamics

In a post titled Unpublished Data May Point to Link Between Lemtrada and Other Autoimmune Diseases in MS Patients , Multiple Sclerosis News Today began with text:

Previously unpublished results of clinical trials of Lemtrada (alemtuzumab) appears to contain key information as to why many multiple sclerosis patients who use it [Lemtrada] develop other autoimmune diseases.

Researchers looked at the immune cell mix after Lemtrada depleted many of those cells. They discovered that certain B-cells repopulate the body earlier than key regulatory T-cells, leading to an imbalanced immune system that is prone to turn on itself.

Although the findings pertained specifically to Lemtrada, they suggest that naturally occurring immune cell imbalance could lead to autoimmune diseases, researchers said.

This news blurb was based on a scientific paper titled Interpreting Lymphocyte Reconstitution Data From the Pivotal Phase 3 Trials of Alemtuzumab
appearing in JAMA Neurol., published online June 12, 2017. doi:10.1001/jamaneurol.2017.0676. The first named author is David Baker, Centre for Neuroscience and Trauma, Blizard Institute, Queen Mary University of London, England.

The work is summarized at Jamanetwork in the following way:

Results Alemtuzumab depleted CD4+ T cells by more than 95%, including regulatory cells (−80%) and CD8+ T cells (>80% depletion), which remained well below reference levels throughout the trials. However, although CD19+ B cells were initially also depleted (>85%), marked (180% increase) hyperrepopulation of immature B cells occurred with conversion to mature B cells over time. These lymphocyte kinetics were associated with rapid development of alemtuzumab-binding and -neutralizing antibodies and subsequent occurrence of secondary B-cell autoimmunity. Hyperrepopulation of B cells masked a marked, long-term depletion of CD19+ memory B cells that may underpin efficacy in MS.

Conclusions and Relevance Although blockade of memory T and B cells may limit MS, rapid CD19+ B-cell subset repopulation in the absence of effective T-cell regulation has implications for the safety and efficacy of alemtuzumab. Controlling B-cell proliferation until T-cell regulation recovers may limit secondary autoimmunity, which does not occur with other B-cell–depleting agents.

The multiple sclerosis news today website indicated that the data analyzed by the Queen Mary University people was obtained through a Freedom of Information request to the European Medicines Agency, thereby making this story relevant to intellectual property:

Researchers from Queen Mary University of London used a Freedom of Information request to the European Medicines Agency to obtain full results of the Phase 3 clinical trials of Lemtrada.

Scientists know that many people who take Lemtrada develop autoimmune diseases. Those who conducted the trials had presented some of the unpublished information at conferences, but had yet to submit studies involving those results to scientific journals.

“We were very surprised to find such important information on B-cell dynamics were only partially described and remained unpublished, even though they were observed and analysed several years ago following the pivotal Phase 3 trials,” Klaus Schmierer, the senior author of the study, said in a press release.

The second sentence of the press release [available at ] noted "there is an almost 50% chance of secondary autoimmune diseases..."

Separately, an article in medpagetoday by Judy George begins:

In an analysis of previously unpublished phase III data, U.K. researchers reported a massive, rapid repopulation of a subset of B cells without effective T-cell regulation in patients with multiple sclerosis (MS) treated with alemtuzumab (Lemtrada), which might have created an environment for secondary autoimmune disease.

Examining lymphocyte reconstitution data from the pivotal Comparison of Alemtuzumab and Rebif Efficacy in Multiple Sclerosis I and II (CARE-MS I and II) studies, Klaus Schmierer, PhD, FRCP, of Queen Mary University of London, and colleagues found that alemtuzumab depleted CD4 T cells by more than 95%, including regulatory cells and CD8 T cells, which remained well below reference levels throughout the trials. Although the drug also initially depleted CD19 B cells by more than 85%, immature B cells increased by 180% and converted to mature B cells over time. These changes were associated with the rapid development of alemtuzumab-binding and alemtuzumab-neutralizing antibodies and subsequent secondary B-cell autoimmunity. This B-cell hyperpopulation masked a long-term depletion of CD19 memory B cells that may underpin the efficacy of alemtuzumab in MS, the researchers reported in JAMA Neurology.


**Separately, from an editorial by Steinman about the matter

Wednesday, June 21, 2017

CAFC affirms PTAB in Storer v. Clark

The CAFC affirmed the Board in the Storer case:

We conclude that substantial evidence supports the
Board’s finding that “a high amount of experimentation is
necessary to synthesize” the target compound. The record
before the Board showed sufficient variability and unpredictability
to support the Board’s conclusion that Storer’s
provisional application did not enable the interference
subject matter. The Board’s decision is affirmed.

The opinion, written by Judge Newman, involved a patent interference
in the pharma area:

This patent interference contest involves methods of
treating hepatitis C by administering compounds having
a specific chemical and stereochemical structure

Of note:

To establish priority, Storer relied on the disclosure in
the provisional specification from which priority was
claimed for conception and constructive reduction to
practice. In its joint decision on Clark’s motion to deny
Storer the benefit of the provisional application and on
Clark’s motion to invalidate Storer’s claims on the
grounds of lack of enablement and written description,1
the Patent Trial and Appeal Board (PTAB or “Board”)
held that Storer’s provisional application was not enabling
for the count of the interference, and on that ground
the PTAB entered judgment granting priority to Clark.2
Storer appeals that judgment and the underlying decision
on Clark’s motions.

We take note that Storer initially filed in the District
of Delaware, seeking review of the Board’s decision under
35 U.S.C. § 146. The district court dismissed the case,
Idenix Pharmaceuticals. LLC v. Gilead Pharmasset LLC,
2016 WL 6804915, at *1 (D. Del. Nov. 16, 2016), based on
this court’s ruling in Biogen MA, Inc. v. Japanese Foundation
for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015),
that the America Invents Act eliminated the option of
district court review under Section 146 for interferences
declared after September 15, 2012. Although Storer says
that Biogen was incorrectly decided, that decision is
binding on this panel.

Of undue experimentation:

The Board agreed with Clark’s position, and held that
the S1 provisional’s description of the 2´-keto precursor, in
combination with the Matsuda reference, was insufficient
to enable and thereby to establish possession of the
2´F(down) methyl(up) compound of claim 1 before Clark’s
priority date. The Board stated, correctly, that for new
chemical compounds the specification must provide sufficient
guidance that undue experimentation is not required
to obtain the new compounds.


The boundary between a teaching sufficient to enable
a person of ordinary skill in the field, and the need for
undue experimentation, varies with the complexity of the
science. Knowledge of the prior art is presumed, as well
as skill in the field of the invention. The specification
need not recite textbook science, but it must be more than
an invitation for further research. Genentech, Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
In Genentech the patentee argued that the prior art
taught a method that could be used to produce a claimed
human growth hormone product, compensating for lack of
detail in the specification. The patentee argued that it
did not need to include information in the prior art. This
court agreed, but stressed the need to assure enablement
of the novel aspects of the invention:
It is true . . . that a specification need not disclose
what is well known in the art. See, e.g., Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1385 (Fed. Cir. 1986). However, . . . . [i]t is the
specification, not the knowledge of one skilled in
the art, that must supply the novel aspects of an
invention in order to constitute adequate enablement.
Genentech, 108 F.3d at 1366.
The Storer provisional specification does not describe
synthesis of the 2´F(down) target compounds.


On review, we conclude that substantial evidence
supports the Board’s findings that the synthetic schemes
in Storer’s provisional application do not teach or suggest
conversion of any precursor into the 2´F(down) structure,
and that the Matsuda synthesis of a corresponding 2´-
methyl (down), 2´-hydroxyl (up) structure does not enable
a person of ordinary skill to produce the target compounds
without undue experimentation.
Wands factor 7, the predictability or unpredictability
of the art, appears to be particularly relevant. Although
Storer states that this is predictable chemistry, and
therefore that detailed specific examples are not necessary,
the Board’s findings are in accord with the record.

Tuesday, June 20, 2017

CAFC discusses websites in personal jurisdiction case Nexlearn v. Allen

The CAFC affirmed D. Kansas on lack of personal jurisdication.

Of the law:

“Personal jurisdiction is a question of law that we review
de novo.” Autogenomics, Inc. v. Oxford Gene Tech.
Ltd., 566 F.3d 1012, 1016 (Fed. Cir. 2009). We apply
Federal Circuit law when reviewing claims “intimately
involved with the substance of the patent laws” and the
law of the regional circuit when reviewing state law
claims. Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344,
1348 (Fed. Cir. 2003). Where, as here, the district court
decided personal jurisdiction “based on affidavits and
other written materials in the absence of an evidentiary
hearing, a plaintiff need only to make a prima facie showing
that defendants are subject to personal jurisdiction.”
Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324,
1329 (Fed. Cir. 2008). We “accept the uncontroverted
allegations in the plaintiff’s complaint as true and resolve
any factual conflicts in the affidavits in the plaintiff’s
favor.” Id. To make a prima facie showing, we ask
“whether a forum state’s long-arm statute permits service
of process and whether assertion of personal jurisdiction
violates due process.” Autogenomics, 566 F.3d at 1017.
The Kansas Supreme Court has interpreted Kansas’ longarm
statute to extend jurisdiction to the fullest extent
allowed by due process. Merriman v. Crompton Corp.,
146 P.3d 162, 179 (Kan. 2006).
Pursuant to 28 U.S.C. § 1367(a), “it is well established—in
certain classes of cases—that, once a court has
original jurisdiction over some claims in the action, it may
exercise supplemental jurisdiction over additional claims
that are part of the same case or controversy.” Exxon
Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 552
(2005). To exercise supplemental jurisdiction, the district
court “must first have original jurisdiction over at least
one claim in the action.” Id. at 554.

At district court:

Drawing all reasonable inferences in favor of
NexLearn, the district court held that NexLearn failed to
allege that Allen had sufficient contacts with Kansas to
permit the exercise of specific jurisdiction. It determined
the NDA and EULA Kansas choice-of-law and forumselection
provisions were not relevant for specific jurisdiction
over NexLearn’s patent infringement claim. It held
that because five of Allen’s six emails to NexLearn employees
were sent before the ’522 patent issued on August
5, 2014, NexLearn’s patent infringement claim could
not have arisen out of or related to these emails. It held
Allen’s sole post-issuance email, as well as its offer of a
free trial of ZebraZapps to a NexLearn employee, could
not form a basis for exercising jurisdiction because these
contacts were manufactured by NexLearn’s unilateral
acts. The NexLearn employees, it reasoned, received
Allen’s emails only because they subscribed to Allen’s
mass emailing list and received a free trial of ZebraZapps
only because of a purchase attempt. Regarding Allen’s
ZebraZapps website, the district court held the website
alone, absent evidence of an actual sale, was insufficient
to confer specific jurisdiction. It held neither Allen’s
single sale of an unaccused product to a Kansas resident
nor its general advertisement in a trade publication was
relevant to NexLearn’s patent infringement claim. Because
it held it lacked personal jurisdiction over
NexLearn’s patent infringement claim, and because
NexLearn did not assert breach of contract as an independent
basis for the district court’s subject matter jurisdiction,
the district court granted Allen’s motion to

Plaintiff-appellant Nexlearn argued:

NexLearn alleges that personal jurisdiction exists for
its patent infringement claim, the only claim over which it
asserts the district court possesses original jurisdiction. A
district court can exercise personal jurisdiction over an
out-of-state defendant pursuant to either general or
specific jurisdiction. Under general jurisdiction, a district
court can “hear any and all claims against [out-of-state
defendants] when their affiliations with the State are so
‘continuous and systematic’ as to render them essentially
at home in the forum State.” Daimler AG v. Bauman, 134
S. Ct. 746, 749 (2014) (citation omitted). Specific jurisdiction
instead “focuses on the relationship among the defendant,
the forum, and the litigation.” Walden v. Fiore,
134 S. Ct. 1115, 1121 (2014) (alteration omitted). To
comport with due process, the out-of-state defendant must
have “minimum contacts” with the forum State “such that
the maintenance of the suit does not offend traditional
notions of fair play and substantial justice.” Int’l Shoe Co.
v. Washington, 326 U.S. 310, 316 (1945). At oral argument,
NexLearn stated it alleged both general and specific
jurisdiction. Oral arg. at 15:03–16:10. NexLearn did
not argue general jurisdiction in its briefing to us or below
to the district court. See NexLearn Br. 10; J.A. 7
(“NexLearn does not allege general jurisdiction but rather
that Allen had minimum contacts with Kansas based on
specific jurisdiction.”). We thus decline to address general

The CAFC stated:

We agree with the district court’s determination that
Allen’s contacts predating the issuance of the ’522 patent
are not relevant contacts for establishing specific jurisdiction
over NexLearn’s patent infringement claim.

As to a website:

Allen’s website together with its contacts with
NexLearn create only an “attenuated affiliation” with
Kansas as opposed to a “substantial connection” with the
forum State as required for specific jurisdiction. See
Burger King, 471 U.S. at 475. We thus affirm the district
court’s dismissal of NexLearn’s patent infringement claim
for lack of personal jurisdiction.

Of the supplemental (contract) claims:

While neither party
disputes that a claim for patent infringement falls within
the district court’s subject matter jurisdiction pursuant to
28 U.S.C. §§ 1331, 1338(a), the district court’s dismissal of
that claim for lack of personal jurisdiction left no remaining
claim over which the district court could exercise
original subject matter jurisdiction. See J.A. 17. A district
court cannot exercise supplemental jurisdiction over
a claim where original subject matter jurisdiction does not
exist. 28 U.S.C. § 1367(a). Because we affirm the district
court’s dismissal of NexLearn’s patent infringement claim
for lack of personal jurisdiction, we affirm the district
court’s dismissal of NexLearn’s supplemental claim for
breach of contract.

Monday, June 19, 2017

Copyright issue with Turnitin?

In an essay titled A Guide for Resisting Edtech: the Case against Turnitin in Hybrid Pedagogy, Morris and Stommel write of Turnitin:

Turnitin isn’t selling teachers and administrators a product. The marketing on their website frames the Turnitin brand less as software and more as a pedagogical lifestyle brand. In fact, the word “plagiarism” is used only twice on their home page, in spite of the fact that the tool is first and foremost a plagiarism detection service. The rest of the copy and images are smoke and mirrors. They are “your partner in education with integrity.” They are “trusted by 15,000 institutions and 30 million students.” (We feel certain they didn’t ask those 30 million students whether they “trust” Turnitin.) The “products” most prominently featured are their “revision assistant” and “feedback studio.” For the teachers and administrators using Turnitin as a plagiarism detector, these features function like carbon offsetting. When asked whether their institution uses Turnitin, they can point to all the other things Turnitin can be used for — all the other things that Turnitin is not really used for. The site even attempts to hide its core functionality behind a smokescreen; in the description for the “feedback studio,” plagiarism detection is called “similarity checking.”

BUT, Turnitiin ONLY looks for similarity. It is not checking for copying without attribution (plagiarism). In the essay, Morris/Stommel talk about intellectual property (e.g., a “product,” some of which, like Turnitin, are designed to eat our intellectual property] but the word copyright arises only in statements from turnitin.
One puzzles at what Morris/Stommel mean in the text: Even if it is true that Turnitin doesn’t assert ownership over the intellectual property it collects, their statement is misleading. They are basically saying our brand is your brand — that by helping them build their business we all simultaneously protect our own intellectual property. This is absurd.

IPBiz suggests that Turnitin is NOT saying "our brand is your brand." They are saying, by showing similarities of your presented work to past work, Turnitin enables you to weed out weak parts and strengthen your work. Turnitin is not using past student work for its original purpose (in contrast to say, an essay mill).

This key point is ignored by Morris/Stommel in the text: In a recent conversation where he tried to explain why Turnitin’s violation of student intellectual property was a problem, Sean’s argument was countered with a question about whether that intellectual property was worth protecting. After all, most student work “isn’t worth publishing.” Ignoring for a moment this flagrant disregard for the value of student work, the point to make here is that Turnitin actively profits (to the tune of $752 million) from the work of students.

One knows from Feist that copyright requires only marginal creativity. The issue of "worth protecting" is not Turnitin's point. They are not using past student essays as essays and trying to compete with students in the marketplace. The essays stay in a vault. The past essays are comparators.

TimesHigherEd pushes the IP angle:

“Plagiarism detection software, like Turnitin, has seized control of student intellectual property,” write Mr Morris and Professor Stommel [in an essay in Hybrid Pedagogy]. “While students who use Turnitin are discouraged from copying other work, the company itself can strip-mine and sell student work for profit.”

Turnitin’s practices have been ruled as being fair use in a federal court, and the company itself offers a different perspective on its operations.

“When students engage in writing and submitting assignments via Turnitin’s solutions, students retain the copyright of the submitted papers,” said Chris Harrick, vice-president of marketing. “We never redistribute student papers, or reveal student information via the service.


But to Mr Morris and Professor Stommel, the ceding of control of students’ work to a corporation is a moral issue, even if it’s legally sound. Time spent on checking plagiarism reports is time that would be better spent teaching students how to become better writers in the first place, they argue.

“This is ethical, activist work….we must ask ourselves, when we’re choosing ed tech tools, who profits and from what?” they write in the essay. “Every essay students submit – representing hours, days or even years of work – becomes part of the Turnitin database, which is then sold to universities.”

In an interview, Dr Morris and Professor Stommel said that they wrote the post with a view to rethinking on a pedagogical level how students are taught about plagiarism, and what should be emphasised when teaching students how to write.


IPBiz notes that it is hard to see how Turnitin "has seized control of student intellectual property." Turnitin does not re-publish student work. It compares a new submission to archived work.

Of course, under the (circuit) law of AGU v. Texaco, archiving itself can be problematic. But the purpose of archiving is different between Turnitin and the archived research papers at Texaco.

Sunday, June 18, 2017

CBS Sunday Morning on Fathers Day, June 18, 2017 does Monterey Pop and Custer's Last Stand

Jane Pauley introduced the stories for June 18, 2017, beginning with Ted Koppel's cover story on the increasing divide in American politics. Second mentioned was Anthony Mason on the 50th anniversary of Monterey Pop. Tony DeCappo on millenial dads, Mo Rocca on Custer's Las Stand, Seth Doane, Steve Hartman on the need to behave like a little leaguer, and DeMarco Morgan.

The news headlines were the USS Fitzgerald at Yokosuba, fires in Portugal, and the London fire. There was an image noting summer begins Wednesday, June 21, at 12:24 A.M. EDT.

Prior to the cover story, there were pieces by DeMarco Morgan on Cosby and Erin Moriarty on Michelle Carter (manslaughter because of texting).

The June 18 cover story ("The Great Divide") is related to a prior piece by Koppel, not mentioned by CBS on June 18. Within the prior March 2017 Koppel story ("The Great Divide") was text:

A Pew study finds 81% of voters say they cannot agree with the other side on basic facts, which may owe something to the president’s campaign against “fake news.”

CNN’s Jim Acosta: “Just because of the attack of fake news and attacking our network, I just want to ask you, sir …
President Trump: “I’m changing it from ‘fake news,’ though. ‘Very fake news.’”

There’s nothing new about simmering hostility between a President and the press.

There was a text from Fareed Zakaria [once accused of plagiarism; see 2012 Washington Post--Fareed Zakaria suspended by CNN, Time for plagiarism]: “I think the President is somewhat indifferent to things that are true or false. He has spent his whole life bullsh***ing. He has succeeded by bullsh***ng.”

Within the June 18, 2017 piece, Koppel spent some time with Yochai Benkler, who was referred to as an "honest academician." For clarity, Benkler is a Harvard Law grad (1994) and is a faculty co-director of the Berkman Klein Center for Internet & Society at Harvard. Whether law grads are academicians is open to question. Of relevance to intellectual property, Benkler in "Wealth of Networks" raises the possibility that a culture in which information is shared freely could prove more economically efficient than one in which innovation is encumbered by patent or copyright law. In the June 18 piece, it seemed that Benkler was saying that there was a uniformity in factual presentation by news groups (other than say by Breitbart). Pat Buchanan suggested that the great divide started with the November 1968 speech by Nixon on the silent majority and media followup thereto. Similarities between Buchanan's presidential run in 1992 and Trump's campaign were mentioned.

The Almanac piece was the creation of New Jersey's "Steel Pier" on June 19, 1898, which was attended by, among others, Annie Oakley. Yes, pictures of diving horses, and a 1938 color clip of The Three Stooges.

Next up, Daddy's home, featuring Millenial (born after 1980) fathers. A clip of a 1966 Lyndon Johnson establishing Fathers Day. Mention of the MGH "Fatherhood Project."

Seth Doane interviewed Lang Lang. Of note was a reference to classic music being the province only of professors (compare honest academicians)

Steve Hartman on the post (baseball) game handshake and how we should act more like little leaguers.

Anthony Mason on the 1967 Monterey Pop Festival, organized by John Phillips and Lou Adler. Top ticket: $6.50. Members of the governing group suggested musicians to appear. Michelle Phillips suggested Otis Redding. Paul McCartney suggested Jimi Hendrix. Competition between The Who and Hendrix. Eric Burdon there in 1967 and will be there in 2017.

The piece on Custer's Last Stand by Mo Rocca was poorly done. Presumably of news note because the "battle" was on June 25, 1876. There was mention of Custer's being "last in his class." There were two West Point Classes of 1861, one in May and one in June. Custer was indeed number 34 of 34 in June 1861. Number 1 in the class was Patrick H. O’Rorke, who was killed at Gettysburg. Number 11 was Alonzo Cushing, also killed at Gettysburg, and awarded the Medal of Honor. Number 33 (just ahead of Custer) was Frank A. Reynolds, who served in the Confederate Army. The Rocca piece mentioned economic troubles for Custer in 1876 but omitted his political troubles. Custer had to beg to be part of the expedition.
Also omitted was Custer's attack on an Indian encampment comprising mainly women and children, which provoked Custer's problems. Although there was reference to Custer's body being mutilated, Custer's was the only body of the command not scalped. No mention was made of Custer's brothers also killed at Big Horn, including the one awarded two Medals of Honor. LBE has previously noted an irony in Custer's work at East Cavalry Field (where his men were armed with repeating (Spencer) rifles) and at Little Big Horn (where only the Indians had repeating rifles)

Moment of nature: wild burros in Black Mountains of Arizona.

***Separately, from Blawgsearch on 18 June 2017

Saturday, June 17, 2017

UWashington CoMotion innovation hub cutting 15% of staff

From a post at geekwire on the UWashington CoMotion innovation hub cutting 15% of staff:

A set of well-regarded licensed UW technologies (the Hall patents) generated immense societal and economic value and funded the Washington Research Foundation which has been a great asset to our state. As a symptom of an outmoded tech transfer business model, CoMotion expectedly hit a revenue cliff from the expiration of the Hall patents. These “black swan” events need environments to come to fruition while having a realistic business model for sustainability. The layoff decisions were not determined by performance and were necessitated by budget cuts at CoMotion.

If, as is obviously true, the expiration of the Hall patents was expected, the is obviously not a black swan event. Wikipedia notes of "black swan": The black swan theory or theory of black swan events is a metaphor that describes an event that comes as a surprise, has a major effect, and is often inappropriately rationalized after the fact with the benefit of hindsight.

Link to geekwire post:

Note also:

All truth passes through three stages.
First, it is ridiculed.
Second, it is violently opposed.
Third, it is accepted as being self-evident.

Arthur Schopenhauer

Dylan/Nobel: "borrowings" as "daring and original signatures" ?

Of relevance to intellectual property are some comments made in Dylan/Nobel episode.

From the Weekly Standard:

Andrews also quotes a University of Minnesota music professor, who told the Minneapolis Star Tribune: "His [Nobel] lecture is wild and strange. It's meant to be a post-modern work of art. Any kind of a collage technique is fair game."

It's an argument as old as Dylan's plagiarism: the song-writer is a magpie, gathering influences and material from sources far and wide and making them his own through the magic of his genius. There's merit to the argument, if it's taken as a commonplace: All creative activity owes something to the creative activity of others. No less a personage than the former president of the Poetry Foundation once told Warmuth that Dylan's "borrowings" are "among the most daring and original signatures of his art." But you got to hit a limit somewhere. And I think you hit it when the act of claiming someone else's work as your own is called "original."

The classic formulation of the pro-Dylan argument was produced more than 15 years ago, during another Dylan plagiarism scandal, by a music critic for the New York Times: "The hoopla over [Dylan's plagiarism] is a symptom of a growing misunderstanding about culture's ownership and evolution, a misunderstanding that has accelerated as humanity's oral tradition migrates to the Internet. Ideas aren't meant to be carved in stone and left inviolate; they're meant to stimulate the next idea and the next."

Though wrong about everything else, this Times writer was right on the money when he mentioned the subject of "ownership." It is the nub of the matter. When Dylan takes other people's stuff for his own work, he doesn't just pass it along so that others in the "folk tradition" can then take it and claim it for their own, as part of the long glorious evolution of culture. No, he copyrights it. He makes people who want to use it pay for it. And he's got a nice big house in Malibu to prove it.


Nanoparticle delivery of leukaemia inhibitory factor (LIF), of possible use in treating multiple sclerosis

Note text within published US patent application 20150231266:

Paragraph 2: The invention is in the field of compositions for neuroprotection, particularly compositions that promote and protect neural cells in the central nervous system of a mammal such as a human. Also described are methods for repairing tissues of the central nervous system of a mammal such as a human. Neurodegenerative diseases represent the largest area of unmet clinical need in the Western world. They are characterised by a progressive loss of the structure or function of neurons in the nervous system (neurodegeneration) and include Alzheimer's Disease (AD), Parkinson's Disease (PD) and a host of other rarer conditions such as Huntington's Disease (HD), Frontotemporal dementia (FTD) and Amyotrophic Lateral Sclerosis (ALS). The process of neurodegeneration is not well understood and so the diseases that stem from it have no effective cures, nor is it possible to slow down their progression, as yet.

Paragraph 90: In the CNS, LIF is thought to act predominantly as an injury factor, optimising the pool of neural precursors available for repopulation during repair (Pitman et al 2004, Mol Cell Neuroscience). LIF promotes neural stem cell self-renewal in the adult brain, regulating the emergence of more differentiated cell types, which ultimately leads to an expansion of the neural stem cell pool (Bauer, S. et al., 2006). LIF also stimulates the proliferation of parenchymal glial progenitors, in particular oligodendrocyte progenitor cells, through the activation of gp130 receptor signaling within these cells. This effect of LIF can be used to enhance the generation of oligodendrocytes and suggests that LIF has both reparative and protective activities that makes it a suitable candidate for the treatment of CNS demyelinating disorders and injuries (Deverman, B. E. et al., 2012). Furthermore, LIF has been shown to directly prevent oligodendrocyte death in animal models of multiple sclerosis, which is a disabling inflammatory demyelinating disease of the CNS, and this effect complements endogenous LIF receptor signalling, which already serves to limit oligodendrocyte loss during immune attack (Butzkueven, H. et al., 2002). LIF has also been shown to up-regulate the re-expression of NPCs in the brain of a Parkinson's Disease mouse model (Liu, J. et al., 2009).

Paragraph 102: The link between IL6, a potent inducer of pathogenic inflammatory TH17 lymphocytes and neurodegenerative disease progression is of further relevance, since the inventors have found that LIF directly suppresses both IL6 activity and TH17 cell development and instead promotes tolerogenic T.sub.reg cells (Gao et al 2009; Park et al 2011). This correlates with the recent finding that T.sub.reg opposes TH17-driven dopaminergic neurodegeneration in a mouse model of Parkinson's Disease (Reynolds et al 2010); and that LIF opposes pathogenic TH17 cells in an experimental allergic encephalitis (EAE) model of multiple sclerosis, a demyelinating disease of the CNS (Cao et al 2011).

Claim 18: The nanoparticle of claim 11, wherein the neurodegenerative disease is selected from the group consisting of: Alzheimer's Disease (AD), Multiple Sclerosis (MS); Parkinson's Disease (PD); Huntington's Disease (HD); Frontotemporal dementia (FTD); and Amyotrophic Lateral Sclerosis (ALS).

Also of relevance to multiple sclerosis, note published US application 20150366994, titled IMMUNO-MODULATORY COMPOSITION , first inventor Susan Metcalfe.

Paragraph 34:

The compositions of the invention are suitable for the treatment of autoimmune disorders. Local parenteral or subcutaneous delivery of the nanoparticle-comprising compositions of the invention into or around an inflamed joint can assist in amelioration of the symptoms of rheumatoid arthritis. Also, topical administration of an appropriate nanoparticle composition (i.e. as a lotion or skin cream) can be effective in treatment psoriasis. Finally, the nanoparticles can be incorporated into a time release depot formulation for longer term use, suitable for treatment of auto-immune encephalopathies and multiple sclerosis.

The first claim:

A composition for promoting an immune tolerance response in a mammal comprising: a) a pharmaceutically acceptable carrier solution; and b) a plurality of biodegradable polylactidecoglycolide (PLG) polymer nanoparticles, and wherein the PLG nanoparticles further comprise: (i) leukaemia inhibitory factor (LIF), wherein the LIF is encapsulated by the PLG nanaoparticle; and (ii) the PLG nanoparticles comprise an outer surface, wherein a targeting moiety that is able to bind selectively to an antigen present on the surface of a T lymphocyte cell is linked to the outer surface of the PLG nanoparticles.

Cleveland Clinic Foundation "Ariosa'd" by CAFC

The Cleveland Clinic Foundation lost:

The Cleveland Clinic Foundation and Cleveland
Heartlab, Inc. accused True Health Diagnostics LLC of
infringement of three patents that claim methods for
testing for myeloperoxidase in a bodily sample and a
fourth patent that claims a method for treating a patient
that has cardiovascular disease. The United States
District Court for the Northern District of Ohio found that
the asserted claims of the three testing patents are not
directed to patent-eligible subject matter and that Cleveland
Clinic failed to state a claim of contributory or induced
infringement of the fourth patent. For the reasons
explained below, we affirm.

The background

In 2003, researchers at the Cleveland Clinic Foundation
developed methods for detecting the risk of cardiovascular
disease in a patient. When an artery is damaged
or inflamed, the body releases the enzyme myeloperoxidase,
or MPO, in response. MPO is an early symptom of
cardiovascular disease, and it can thus serve as an indicator
of a patient’s risk of cardiovascular disease.
The prior art taught that MPO could be detected in an
atherosclerotic plaque or lesion that required a surgically
invasive method. Another prior art method indirectly
detected for MPO in blood. Yet another known method
could detect MPO in blood but yielded results that were
not predictive of cardiovascular disease. The inventors
here purportedly discovered how to “see” MPO in blood
and correlate that to the risk of cardiovascular disease.

As to procedure, using 101 to dismiss is all right:

As to Cleveland Clinic’s second procedural challenge,
we have repeatedly affirmed § 101 rejections at the motion
to dismiss stage, before claim construction or significant
discovery has commenced. See, e.g., Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373–74 (Fed. Cir.
2016) (“We have repeatedly recognized that in many cases
it is possible and proper to determine patent eligibility
under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”); OIP
Techs, Inc. v., Inc., 788 F.3d 1359, 1362 (Fed.
Cir. 2015) (similar); Content Extraction, 776 F.3d at 1349
(similar); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (similar).

As to 101:

To determine whether a claim is invalid under § 101,
we employ the two-step Alice framework. In step one, we
ask whether the claims are directed to ineligible subject
matter, such as a law of nature. Alice, 134 S. Ct. at 2355;
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012), McRO, 837 F.3d at 1311–12; Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375
(Fed. Cir. 2015). While method claims are generally
eligible subject matter, method claims that are directed
only to natural phenomena are directed to ineligible
subject matter. Ariosa, 788 F.3d at 1376. If the claims
are directed to eligible subject matter, the inquiry ends.
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349
(Fed. Cir. 2017).
The claims of the testing patents are directed to
multistep methods for observing the law of nature that
MPO correlates to cardiovascular disease.

This case is similar to our decision in Ariosa. In Ariosa,
the ineligible claims were directed to a method of
detecting paternally inherited cell-free fetal DNA, which
is naturally occurring in maternal blood. 788 F.3d at
1376. The inventors there did not create or alter any of
the genetic information encoded in that DNA. Id. Likewise,
here, the testing patents purport to detect MPO and
other MPO-related products, which are naturally occurring
in bodily samples. The method then employs the
natural relationship between those MPO values and
predetermined or control values to predict a patient’s risk
of developing or having cardiovascular disease. Thus, just
like Ariosa, the method starts and ends with naturally
occurring phenomena with no meaningful non-routine
steps in between—the presence of MPO in a bodily sample
is correlated to its relationship to cardiovascular disease.
The claims are therefore directed to a natural law.

Friday, June 16, 2017

CAFC discusses motivation to combine; copying from a party's brief in Outdry

The appellant Outdry lost at the CAFC:

Outdry Technologies Corp. (“Outdry”) appeals from
the Patent Trial and Appeal Board’s (“Board”) inter
partes review decision holding that claims 1–15 of U.S.
Patent No. 6,855,171 (“the ’171 patent,” directed to
methods of waterproofing leather) would have been
obvious over a combination of prior art. For the reasons
discussed below, we affirm.

Of the law:

We review the Board’s legal determination of obviousness
de novo and its factual findings for substantial
evidence. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015). In IPR proceedings, the Board
gives claims their broadest reasonable interpretation
(“BRI”) consistent with the specification. In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015).
We review claim construction de novo except for subsidiary
fact findings, which we review for substantial evidence.
Id. at 1280.

Preamble significance arose:

Outdry also argues that the “process for waterproofing
leather” limitation is not disclosed in Thornton. This
language is in the preamble of the claim. And like most
preambles is simply a statement of intended use, not a
separate claim limitation. See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339,
1345 (Fed. Cir. 2003) (“[A] preamble simply stating the
intended use or purpose of the invention will usually not
limit the scope of the claim, unless the preamble provides
antecedents for ensuing claim terms and limits the claim
accordingly.”). Satisfaction of the claimed steps necessarily
results in satisfying a “process for waterproofing leather.”
This is not a separate limitation that must be
disclosed in Thornton in order to uphold the Board’s
obviousness determination.

Of motivation:

Outdry argues the Board failed to adequately articulate
why a person of ordinary skill in the art would have
been motivated to combine Thornton’s process with Scott
and Hayton’s disclosure of the density and size of the glue


The Board’s motivation to combine finding is reviewed
for substantial evidence. Belden, 805 F.3d at 1073. The
Board must support its finding that there would have
been a motivation to combine with a reasoned explanation
to enable our review for substantial evidence. In re
NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). This
necessitates that the Board “not only assure that the
requisite findings are made, based on evidence of record,
but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee,
277 F.3d 1338, 1344 (Fed. Cir. 2002). Under this framework
“we will uphold a decision of less than ideal clarity if
the agency’s path may reasonably be discerned,” but “we
may not supply a reasoned basis for the agency’s action
that the agency itself has not given.” Bowman Transp.,
Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285–86
We have criticized the Board for failing to adequately
explain its findings. Missing from those Board decisions
were citations to evidence, reasoned explanations, or
explicit findings necessary for us to review for substantial

For example, in Rovalma, we vacated the
Board’s obviousness decision where “the Board did not
cite any evidence, either in the asserted prior-art references
or elsewhere in the record, with sufficient specificity
for us to determine whether a person of ordinary skill in
the art would have been so motivated.” Rovalma, S.A. v.
Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1025–
26 (Fed. Cir. 2017). In Van Os, we held the Board’s
finding that it would have been intuitive to combine prior
art lacked the requisite reasoning because “[a]bsent some
articulated rationale, a finding that a combination of prior
art would have been ‘common sense’ or ‘intuitive’ is no
different than merely stating the combination ‘would have
been obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed.
Cir. 2017); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d
1355, 1362 (Fed. Cir. 2016) (“[R]eferences to ‘common
sense’—whether to supply a motivation to combine or a
missing limitation—cannot be used as a wholesale substitute
for reasoned analysis and evidentiary support . . . .”);
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
(Fed. Cir. 2016) (vacating the Board’s decision where the
Board summarized the parties’ arguments and rejected
the arguments of one party but did “not explain why it
accept[ed] the remaining arguments as its own analysis”).
In NuVasive, we vacated the Board’s decision because the
Board “never actually made an explanation-supported
finding” that a person of ordinary skill in the art would
have been motivated to combine the prior art. 842 F.3d
at 1384. In Icon Health, we held that the Board failed to
make requisite fact findings and provide an adequate
explanation to support its obviousness determination
where it merely agreed with arguments made in the
petitioner’s brief for which no evidence was cited. Icon
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
1042–48 (Fed. Cir. 2017) (holding that attorney argument
is not evidence and the Board’s adoption of petitioner’s
brief did not “transform [the petitioner’s] attorney argument
into factual findings or supply the requisite explanation
that must accompany such findings”).

[ BUT ]

The Board’s decision here does not suffer from similar
deficiencies. The Board clearly articulated Geox’s arguments
for why a person of ordinary skill in the art would
have been motivated to modify Thornton’s process of
adhering dots to create waterproof and breathable leather
with Hayton and Scott’s disclosed glue patterns.

The Board recited Geox’s argument that “the
discontinuous glue pattern is a matter of optimization as
taught by Scott, which teaches optimizing the amount of
glue necessary to provide sufficient adhesion to bond the
two layers while minimizing the area of blocked micropores.”

It explained Geox’s position that Scott and Hayton are from
the same field of endeavor and that both disclose fabrics
that are water impermeable and vapor permeable.

It recited Geox’s
argument for a motivation to combine based on this
evidence: “Scott provides a reason for optimizing the
amount of adhesive that Thornton and Hayton teach to
apply to a semi-permeable membrane, which is to provide
good adhesion while maintaining vapor permeability.”

It then expressly
adopted Geox’s rationale and found that this provided a
motivation to combine Thornton with Scott and Hayton.
The Board found that Geox “provided a rational underpinning
for combining the disclosures of Scott and Hayton,
which provide guidance for the density and size of
adhesive dots to adhere a semi-permeable membrane to a
porous layer.”

The Board engaged in reasoned
decisionmaking and sufficiently articulated its analysis in
its opinion to permit our review. It contains a clear and
thorough analysis.

The CAFC does not conceal that PTAB basically adopted the
position of a party.

In fact, the CAFC then stated:

The Board’s reliance on Geox’s arguments does not
undermine its otherwise adequate explanation for finding
a motivation to combine. The Board did not reject Outdry’s
positions without clarity as to why it found Geox’s
arguments persuasive. It did not incorporate Geox’s
petition by reference, leaving uncertainty as to which
positions the Board was adopting as its own. Nor is this a
situation where “a particular fact might be found somewhere
amidst the evidence submitted by the parties,
without attention being called to it,” such that it is unclear
what evidence the Board may or may not have relied
on to find a motivation to combine. See Rovalma, 856
F.3d at 1029. The Board is “permitted to credit a party’s
argument as part of its reasoned explanation of its factual
; it simply must “explain why it accepts the
prevailing argument.” Icon, 849 F.3d at 1047 (alteration
omitted). In this case, the Board articulated Geox’s
arguments with evidentiary support and expressly adopted
them to find there would have been a motivation to
combine. The Board sufficiently explained why it found
that Geox’s arguments supported finding a motivation to

Also on motivation:

The Board was not required to limit its motivation to combine
inquiry to the problem faced by the inventor of the
’171 patent. The Supreme Court expressly rejected this
argument in KSR: “the problem motivating the patentee
may be only one of many addressed by the patent’s subject
matter.” KSR Int’l Co v. Teleflex Inc., 550 U.S. 398,
420 (2007). Outdry appears to interpret KSR’s use of the
phrase “addressed by the patent” to suggest the problem
must be identified within the patent. Neither KSR nor
our post-KSR precedent limits the motivation to combine
inquiry in this manner. See, e.g., Par Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014) (“Par’s
argument, however, ignores that we are not limited to the
same motivation that may have motivated the inventors.”);
Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362,
1368 (Fed. Cir. 2012) (“We have repeatedly held that the
motivation to modify a prior art reference to arrive at the
claimed invention need not be the same motivation that
the patentee had.”). “The obviousness analysis cannot be
confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content
of issued patents.” KSR, 550 U.S. at 419. Any motivation
to combine references, whether articulated in the references
themselves or supported by evidence of the
knowledge of a skilled artisan, is sufficient to combine
those references to arrive at the claimed process. The
motivation supported by the record and found by the
Board need not be the same motivation articulated in the
patent for making the claimed combination. The Board’s
fact finding regarding motivation to combine is supported
by substantial evidence. We see no error in the Board’s
conclusion that the claims would have been obvious to a
skilled artisan based on the facts presented.

A claim at issue

1. A process for waterproofing leather (1), comprising
directly pressing on an internal surface of
the leather (1) at least one semi-permeable membrane
(2) whose surface contacting the leather (1)
is provided with a discontinuous glue pattern to
adhere the leather to the semi-permeable membrane,
wherein the glue pattern is formed of a
multiplicity of dots having a density included between
50 dots/cm2 and 200 dots/cm2.

The Board found U.S. Patent No. 5,244,716
(“Thornton”) discloses all elements of claims 1 and 9
except the density of the dots (claim 1) and the sizes of the
dots (claim 9). Thornton is directed to “waterproof but
breathable articles of clothing” including stockings,
gloves, and hats.

For disclosure of the density and sizes of the dots, the
Board relied on “Coated and Laminated Fabrics” in
Chemistry of the Textiles Industry (“Scott”) and U.S.
Patent No. 6,139,929 (“Hayton”). Scott discloses adhering
a waterproof, vapor permeable membrane to fabric for
rainwear in which there is “sufficient adhesive to bond the
hydrophobic ‘non-stick’ film to a textile fabric, but the
adhesive dot coverage has to be kept low to minimize the
area of blocked micropores.”


"Motivation to combine" is reviewed for substantial evidence.

Of something to think about-->

In Bright v. Westmoreland County, 380 F.3d 729, 731 (CA3 2004), the Third Circuit stated:
Here, however, we are not dealing with findings of fact. Instead, we are confronted
with a District Court opinion that is essentially a verbatim copy of the appellees' proposed opinion.


Judicial opinions are the core work-product of judges. They are much more than findings of fact and
conclusions of law; they constitute the logical and analytical explanations of why a judge arrived
at a specific decision. They are tangible proof to the litigants that the judge actively wrestled
with their claims and arguments and made a scholarly decision based on his or her own reason and logic.
When a court adopts a party's proposed opinion as its own, the court vitiates the vital purposes served by judicial opinions.

Also from a 2011 post on the Volokh Conspiracy about Cojocaru v. British Columbia Women’s Hospital & Health Center —>

Rather, the problem, as the B.C. Court of Appeal panel majority understood it, is that a judge is supposed to “independently and impartially considered the law and the evidence and arrived at his own conclusions on the complex issues before him,” and simply adopting hundreds of paragraphs of a party’s papers casts doubt on that. It’s of course possible, as Prof. Poser suggests, that a judge may well consider the matter thoroughly but think one party’s analysis is precise enough. But the verbatim copying gives reason to doubt that, especially since a party’s analysis — even when generally sound — will almost always be framed in the way that’s most favorable to that party, and will thus very rarely be the way that a neutral arbiter would characterize the matter. (This is also an issue in plagiarism by students, where verbatim copying suggests that the student didn’t fully confront the issue; but that’s only a part of the objection to academic plagiarism.)

Volokh quoted Bill Poser: “Judges, unlike authors of fiction, are not paid to be original. If one party states the facts or the law clearly and accurately, by all means the court should make use of the work that party’s attorneys have already done rather than spending time rephrasing it.”

But, of course, it the facts and law relied upon by the copying judge are NOT accurate, the act of copying is especially pernicious.

Sadly, citations to the Cojocaru appellate decision are likely to fall on deaf ears.

link to Volohk post:

Amazon gets US 9,665,881: Physical store online shopping control

The background section states:

A wide variety of retailers maintain physical store locations that offer items for point of sale purchase. Consumers are able to browse items within a physical store and personally evaluate the items. A consumer may also be able to obtain item information and recommendations from sales representatives at the physical store. However, with the widespread proliferation of electronic commerce, a consumer is also able to purchase many of the same items from retailers that maintain an online presence. Accordingly, a negative scenario may exist for a physical store retailer when a consumer evaluates items at the physical store, leverages physical store sales representatives, and then reviews pricing information online in order to purchase the same item from an online retailer. The physical store retailer pays for floor space, sales representative time, product inventory management, and other costs while not being able to complete a sales transaction.

The first claim recites:

A system, comprising: at least one wireless access point configured to provide Internet access to a consumer device within a retail establishment associated with a retailer, and at least one processing component configured to: identify a first uniform resource locater (URL) requested, via the wireless access point, by a browser application executing on the consumer device; determine, based upon a comparison of the first URL to stored information associated with one or more competitors of the retailer, that the first URL is associated with a competitor Web site; identify an offering of an item on the competitor Web site; identify (i) retailer information associated with an offering of the item by the retailer and (ii) competitor information associated with the offering of the item on the competitor Web site, wherein the retailer information comprises a first price for the offering of the item by the retailer and the competitor information comprises a second price for the offering of the item on the competitor Web site; determine that a difference between the first price and the second price exceeds a first threshold value or that a consumer value of a consumer associated with the consumer device does not exceed a second threshold value; determine, responsive to determining that the difference between the first price and the second price exceeds the first threshold value or that the consumer value exceeds the second threshold value, that information associated with an offering of a complementary item that is complementary to the item should be presented to the consumer in lieu of counter-competitive information that competes with the offering of the item on the competitor Web site; and redirect the browser application to a second URL different from the first URL, wherein the second URL is associated with a Web site that includes the information associated with the offering of the complementary item.

Of some interest for this case, note the non-publication request under 35 USC 122(b) filed by Amazon on May 4, 2012.
Thus there is no "published patent application" corresponding to US '881.

See also

More on copying by Dylan and McCann

Cory Franklin discusses the Bob Dylan/Nobel Prize matter in a post in the Chicago Tribune, with text including:

Critics have been divided on whether Dylan was guilty of plagiarism. In the past his defense has been that borrowing from others is how songwriting, and especially folk music, evolved. Fair enough. But a Nobel Prize lecture is a different animal.

IPBiz notes that this event was more copying an idea, rather than an exact transcription of words from SparkNotes to the Nobel Lecture. But there are two issues here. First, the "quote" from "Moby Dick" is false; the text does not exist in "Moby Dick." Second, the "quote" seems quite related to text that IS in SparkNotes.

--> The initial discussion of the "fake quote" appears on blogspot (!) on OCCASIONAL THINGS by Ben Greenman, which June 6 post includes the text:

Dylan then includes a quote from the novel, an aphoristic utterance from a Quaker priest to the third mate, Flask: “Some men who receive injuries are led to God, others are led to bitterness."

When I read this paragraph, I was intrigued, both because the insight is a compelling one and because I did not remember it from the novel. In fairness, it’s been a little while since I read the whole thing straight through, and it’s a long book at that, more than 200,000 words. I went and looked, mostly around Chapter 126, “The Life-Buoy,” which contains the falling phantom in the air. I couldn’t find it. I looked at another edition, and couldn’t find it there either. I went online, found an e-text, and searched on the relevant keywords, “injuries” (which doesn’t appear, at least not in plural form) and “bitterness” (which appears only once, in relation to the resentment experienced by men who are placed in charge of men who are superior to them “in general pride of manhood”). I searched in the Kindle edition, found nothing (though there were six occurrences of “subterranean”).

It appears, from all available evidence, that Dylan invented the quote and inserted it into his reading of Moby-Dick. Was it on purpose? Was it the result of a faulty memory? Was it an egg, left in the lawn to be discovered in case it’s Eastertime too? Answering these questions would be drilling into the American Sphinx, and beside the point anyway. As it stands, it’s very much in the spirit of his entire enterprise: to take various American masterworks and absorb and transform them. The mystery of it makes a wonderful lecture even more wonderful. And it’s worth ending with a quote from Stubb, the second mate, about the transformative power of singing and its centrality to life itself:

“But I am not a brave man; never said I was a brave man; I am a coward; and I sing to keep up my spirits. And I tell you what it is, Mr. Starbuck, there's no way to stop my singing in this world but to cut my throat. And when that's done, ten to one I sing ye the doxology for a wind-up.”

One is totally impressed that Greenman could recognize so facilely text that is NOT in Moby Dick.

--> The "quote" of Dylan does NOT appear identically in SparkNotes. As pointed out in Slate by Andrea Pitzer:

In Dylan’s recounting, a “Quaker pacifist priest” tells Flask, the third mate, “Some men who receive injuries are led to God, others are led to bitterness” (my emphasis). No such line appears anywhere in Herman Melville’s novel. However, SparkNotes’ character list describes the preacher using similar phrasing, as “someone whose trials have led him toward God rather than bitterness” (again, emphasis mine).

If one submitted such a thing in a high school paper on Moby Dick, there might be a problem. However, one suspects this little flap is NOT going to change the opinions of many on Dylan. Recall Joe Biden's paper as a 1L at Syracuse Law, wherein 5 of 15 pages were exactly copied; Biden still became Senator and Vice-President.


Franklin's post includes some "re-writes" of Dylan lyrics, including

Well it ain't no use to sit and wonder why, babe / Ifin' you don't know by now / An' it ain't no use to sit and wonder why, babe / How he wrote those words somehow / When he borrowed some phrases that were hard to find / At first the critics didn't seem to mind / Plagiarism not that easy to define / Don't think twice, it's all right

link to Franklin:

link to Greenman:

link to Pitzer:

***Separately, in other news related to copying, the Daily News reported that the Philippines tourism department fired McCann Worldgroup Philippines:

The tourism department on Thursday [June 15] cancelled its contract with McCann Worldgroup Philippines and demanded an apology, after deeming its just-launched promotion for the Southeast Asian nation was too similar to a 2014 South African campaign.

"It is not right that we will be paying for something delivered to us which is fraught with accusations of being a copycat version," assistant tourism secretary Reynaldo Ching told reporters.

The ad showed an elderly tourist enjoying his trip to the Philippines and ends with him whipping out a blind man's walking stick.

It was ridiculed in social media for what netizens described as its uncanny similarity to the "Rediscover South Africa" ad.

This was the copying of an idea, rather slavish identical copying. Did Dylan's text bear an "uncanny similarity" to the text in SparkNotes?


CAFC discusses obviousness in Navico v. ITC

The appellant Navico lost:

Navico Inc. and Navico Holding AS appeal from a Final
Determination of the United States International
Trade Commission that resulted in an exclusionary order
prohibiting importation of certain sonar imaging devices.
The Final Determination includes a finding of infringement
of U.S. Patent Nos. 8,305,840 and 8,605,550, a
determination of invalidity for some of the asserted
claims, and a finding of noninfringement of U.S. Patent
No. 8,300,499. On appeal, Navico raises several challenges
to the Commission’s Final Determination. We affirm
the Commission’s decision in these challenged aspects.

The standard of review:

Under the Administrative Procedure Act, 5 U.S.C.
§ 706(2), we review the Commission’s factual findings for
substantial evidence, and the Commission’s legal determinations
de novo. See Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1343–44, 1349 (Fed. Cir. 2010).
Under the substantial evidence standard, the court “must
affirm a Commission determination if it is reasonable and
supported by the record as a whole, even if some evidence
detracts from the Commission’s conclusion.” Spansion,
629 F.3d at 1344. This court may set aside the Commission’s
choice of remedy only if it is legally erroneous,
arbitrary and capricious, or constitutes an abuse of discretion.
Fuji Photo Film Co. v. Int’l Trade Comm’n, 386 F.3d
1095, 1106 (Fed. Cir. 2004).

Note the related case:

Our decision today in a related case, Garmin International,
Inc. v. International Trade Commission, No. 16-
1572, reverses the Commission’s finding of validity and
finds these patent claims invalid as obvious over the prior
art. Because the claims are invalid, there can be no
contributory infringement. Accordingly, we affirm the
Commission’s finding of no contributory infringement.

This is an obviousness case, and, yes, KSR is cited:

The obviousness inquiry must “guard against slipping
into use of hindsight and . . . resist the temptation to read
into the prior art the teachings of the invention in issue.”
Graham v. John Deere Co., 383 U.S. 1, 36 (1966). Further,
“when a patent claims a structure already known in
the prior art that is altered by the mere substitution of
one element for another known in the field, the combination
must do more than yield a predictable result.” KSR,
550 U.S. at 416. Similarly, § 103 usually bars patentability
when the improvement is nothing more than the
predictable use of prior art elements according to their
established functions. Id. at 417.

Obviousness is a question of law based on subsidiary
findings of fact relating to “the scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill in the pertinent art,
and any objective indicia of non-obviousness.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
Whether there would have been a motivation to combine
multiple references is also a question of fact. S. Ala. Med.
Sci. Found. v. Gnosis S.p.A., 808 F.3d 823, 826 (Fed. Cir.
2015). If all elements of the claims are found in a combination
of prior art references, as is the case here, the
factfinder should further consider whether a person of
ordinary skill in the art would be motivated to combine
those references, and whether in making that combination,
a person of ordinary skill would have a reasonable
expectation of success. Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1164 (Fed. Cir. 2006).

The arguments against obviousness:

Navico argues for reversal of the Commission’s finding
of obviousness on four grounds. First, Navico argues
that Tucker discloses sidescan, not downscan, sonar.
Thus, Navico argues, the Commission should not have
used Tucker as prior art for the downscan linear transducer
component. (...)

Second, Navico argues that the combination of Tucker
and Betts renders both references inoperable for their
intended purposes. See In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (finding that a modification which renders
the invention inoperable for its intended purpose is
not obvious because it teaches away from the invention).


Third, Navico argues that there was no motivation to
combine the Tucker and Betts references. Navico suggests
that because Betts was a simple, fixed system and
Tucker was a complex, customizable system, there would
be no motivation to combine them. It “can be important
to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements
in the way the claimed new invention does.” KSR,
550 U.S. at 418.


Fourth, Navico argues that the Commission considered
the objective indicia of non-obviousness as a mere
afterthought after making a prima facie case. We have
held that such an analysis is improper, and a fact finder
must “consider all evidence relating to obviousness before
finding a patent invalid on those grounds.” In re Cyclobenzaprine,
676 F.3d 1063, 1075 (Fed. Cir. 2012). Objective
indicia of non-obviousness are vital to an obviousness
determination and must be considered, not ignored as a
mere afterthought. See, e.g., Leo Pharm. Prods., Ltd. v.
Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“Whether
before the Board or a court, this court has emphasized
that consideration of the objective indicia is part of the
whole obviousness analysis, not just an afterthought.”); In
re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[W]hen
secondary considerations are present, though they are not
always dispositive, it is error not to consider them.”);
Stratoflex v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983); In re Depomed, Inc., No. 2016-1378, 2017 WL
676604, at *5 (Fed. Cir. Feb. 21, 2017) (Reyna, J., concurring).

Thursday, June 15, 2017

CAFC discusses APA’s requirements of notice and an opportunity to respond in Emerachem case

The caption for the "intervenor" in EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM is of interest:


The result was a mixed bag:

EmeraChem Holdings, LLC (“EmeraChem”) appeals
from a decision of the Patent Trial and Appeal Board
(“Board”) that claims 1–14 and 16–20 of U.S. Patent
No. 5,599,758 (“the ’758 patent”) would have been obvious
over U.S. Patent No. 5,451,558 (“Campbell ’558”), Japanese
Patent Application No. 62-106826 (“Saito”), and U.S.
Patent No. 5,362,463 (“Stiles”). For the reasons set forth
below, we affirm the Board’s decisions as to claims 1–2, 4–
14, and 17–19 and vacate and remand as to claims 3, 16,
and 20.

The technical area:

The ’758 patent claims methods for regenerating a
devitalized catalyst/absorber that has absorbed and
oxidized nitrates and nitrites after extended exposure to
pollutants in the combustion gases of engines.

Of inventor declaration:

The Campbell Declaration by itself fails to demonstrate
that the portions of Campbell ’558 relied upon as
prior art and the subject matter at issue in the ’758 patent
share a common inventive entity. In addition to
declaring “Eugene D. Guth and I are the sole inventors of
all inventions claimed in U.S. Patent No. 5,599,758,”
Mr. Campbell stated, “Eugen [sic] D. Guth and I solely
conceived of and invented the following subject matter
disclosed in U.S. Patent No. 5,451,558.” J.A. 1105. This
declaration amounts to a naked assertion by an inventor
that he and a co-inventor are the true inventors of the
passages cited. Nothing in the declaration itself, or in
addition to the declaration, provides any context, explanation,
or evidence to lend credence to the inventor’s bare
We do not hold that corroboration of an inventor’s declaration
is required in every case, but we recognize that
corroborating an inventor’s testimony is a wellestablished
principle in our case law. See e.g., Coleman v.
Dines, 754 F.2d 353, 359 (Fed. Cir. 1985); Price v. Symsek,
988 F.2d 1187, 1194 (Fed. Cir. 1993);


DeBaun does not stand for the proposition that a declaration
alone is always sufficient to support an inventor’s
claim to inventorship. The CCPA recognized that “it was
incumbent on appellant to provide satisfactory evidence,
in light of the total circumstances of the case, that the
reference reflected his own work.” Id. at 463. It concluded
that Mr. DeBaun had successfully done so

In re Katz is mentioned:

In holding that the publication was not prior art, the
CCPA relied on Mr. Katz’s explanation that his coauthors
were students under his direction and supervision:
“This statement is of significance since it provides a
clear alternative conclusion to the board’s inference that
their names were on the article because they were coinventors.”
Id. at 455. Based on this record and the totality
of the circumstances, it concluded Mr. Katz made a sufficient
showing that the publication disclosed his invention.
Id. at 456.

The intervenor (Matal) did not fare well:

We reject Volkswagen and PTO Intervenor’s arguments
that EmeraChem had sufficient notice because the
petition for IPR included broad, general statements
concerning obviousness that mention Stiles. Although
Volkswagen’s petition stated broadly that “[c]laims 1–14
and 16–20 are obvious under 35 U.S.C. § 103(a) over the
combination of Campbell [’558] and either Hirota or Saito,
in view of Stiles,” J.A. 81, 114, it went on in a detailed
claim chart to identify, claim-by-claim and element-byelement,
the specific portions of the prior art references it
believed supported obviousness. For claim 3, Volkswagen
cited Saito as disclosing the claim’s carbon dioxide gas
limitation. J.A. 123. For claims 16 and 20, it cited to a
different portion of Saito as disclosing the claims’ steam
limitation. J.A. 127, 129. For these dependent claims,
Saito was the only reference listed. Yet for claim 17,
Volkswagen cited to portions of Saito, Hirota, and Stiles
as disclosing the claim’s nitrogen and hydrogen gas limitations.
J.A. 128.
We likewise reject Volkswagen and PTO Intervenor’s
argument that the Institution Decision provided EmeraChem
with sufficient notice of the Board’s reliance on
We also reject Volkswagen and PTO Intervenor’s arguments
that EmeraChem had sufficient notice because
the petition block quoted the portion of Stiles the Board
ultimately relied upon in its final written decision.

Genzyme v. Biomarin arises:

Relying on Genzyme, Volkswagen contends that the
Board can rely on prior art references that were not cited
in the Institution Decision. Genzyme Therapeutic Products
L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
(Fed. Cir. 2016) (“There is no requirement . . . for the
institution decision to anticipate and set forth every legal
or factual issue that might arise in the course of the
trial.”). We do not agree that Genzyme permits the Board
to rely on Stiles to reject claims 3, 16, and 20. In Genzyme,
the patent owner alleged the Board violated the
APA’s requirements of notice and an opportunity to
respond because the Board cited two references in its final
written decisions (Kikuchi and van der Ploeg ’91) that
were not specifically included in the combinations of prior
art on which the Board instituted review. Id. at 1366.


By holding EmeraChem did not receive adequate notice
or opportunity to respond with regard to Stiles, we do
not hold that the Board is constricted in its final written
decision to citing only the portions of a reference cited in
its Institution Decision. We do not require “word-for-word
parity between the institution and final written decisions.”
Genzyme, 825 F.3d at 1368 n.4. But in the case
before us, the question is not whether the Board cited a
different passage of Stiles than what it specifically cited in
the Institution Decision. Cf. id. The question is whether
the Board provided adequate notice and opportunity to
respond to Stiles being used to reject claims 3, 16, and 20,
given the specificity with which the Board itemized the
challenged claims with specific grounds for rejection in
the Institution Decision. On this question, we find it did


The fact that neither party ever mentioned Stiles in
the context of discussing claims 3, 16, and 20, helps make
the point that neither party was on notice that Stiles was
at issue as to those challenged claims.

The conclusion

For the foregoing reasons, we hold that Campbell ’558
is prior art under 35 U.S.C. § 102(e) and affirm the
Board’s decision as to claims 1–2, 4–14, and 17–19. We
hold that the Board violated the APA’s requirements of
notice and an opportunity to respond with regard to
Stiles. EmeraChem agues Stiles was not a part of the
grounds for rejection of claims 3, 16, and 20 in either the
petition or the Institution Decision. Nor was it the subject
of any parties’ briefing before the Board in this IPR.
Under these circumstances, EmeraChem argues the
Board’s final written decision should be reversed. While
Volkswagen and PTO Intervenor dispute whether there
was sufficient notice, neither dispute the proper remedy.
Therefore, we consider them to have waived any argument
that any remedy other than reversal is appropriate
when a new rationale for unpatentability is adopted by
the Board in its final written decision. Because we are
unable to discern whether the Board found Saito does not
disclose the dependent limitations in claims 3, 16, and 20,
we vacate the Board’s decision as to these claims and
remand for clarification.

Australian patent on CRISPR to MilliporeSigma

From GEN:

MilliporeSigma, the life science business of Merck KGaA, said today it has been awarded its first patent for CRISPR technology—an Australian patent relating to the use of CRISPR in a genomic integration method for eukaryotic cells.
Patent Application No. 2013355214 was filed December 5, 2013, and accepted on May 22, according to an online search of the Australian Patent Office’s online database AusPat. The patent consists of 14 method claims.

MilliporeSigma said in May that it had developed the alternative CRISPR genome-editing method, called proxy-CRISPR, a month after publishing the results of its research in Nature Communications. According to the company, proxy-CRISPR differs from other genome editing systems in its ability to cut previously unreachable cell locations, making CRISPR more efficient, flexible, and specific, and giving researchers more experimental options.

Since 2012, MilliporeSigma has filed multiple CRISPR patent filings, including its filings related to proxy-CRISPR technology.


Gene Simmons tries to trademark "sign of the horns" hand gesture

A number of outlets have posted on the Gene Simmons (KISS) trademark application for a hand gesture ("sign of the horns")
[US serial no. 87482739 for a service mark. Filed 9 June 2017 via law firm GORDON, HERLANDS & RANDOLPH LLP].

From the New York Post, Gene Simmons trying to trademark rock ‘n’ roll hand gesture

The long-tongued frontman [Simmons] has filed an application with the US Patent and Trademark Office, seeking trademark ownership of the iconic hand gesture.

He claims the “devil horns” became a part of the band’s act during its Hotter Than Hell tour — on Nov. 14, 1974 to be exact.

While it is used in American Sign Language to represent “I love you,” most know it as the international symbol of rock.


Many music fans have been blasting Simmons for the trademark request, citing all the different places they’ve seen the symbol being used.

Some have even noted how it’s very similar to the motion Spider-man is known to make in movies and his comics, while others have pointed to an album cover for the Beatles’ 1966 single, Yellow Submarine/Eleanor Rigby — which shows John Lennon throwing up the gesture long before KISS was formed.

Yes, there is a New Jersey connection. The owner is listed as Simmons, care of Joseph Young Associates, Ltd., Pine Brook, NEW JERSEY UNITED STATES 07058. The description: The mark consists of a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.

Yes, NPR is still confused on trademarks (vs. patents). See post Gene Simmons Wants To Patent Hand Gesture.

Wednesday, June 14, 2017

Bob Dylan copied parts of his Nobel speech from Sparknotes?

Various news outlets have written about alleged plagiarism by Bob Dylan in his
Nobel acceptance speech. Fox News reported:

Bob Dylan has been accused of lifting portions of his Nobel Prize lecture from SparkNotes.

Dylan discussed three books that had the biggest impact on his life including Herman Melville's "Moby Dick." He quoted a passage from the novel – the only problem is the passage does not appear in Melville’s book -- but it does in SparkNotes.

SparkNotes is a website that offers students looking for shortcuts on major works of literature among other topics.

link to FoxNews:

This would not be Dylan's first brush with plagiarism. In 2012, IPBiz had a post

Dylan: Wussies and pussies complain about that stuff.

quoting from CBS News post -- Bob Dylan calls plagiarism accusers "wussies"

link to IPBiz post:

Home Semiconductor loses at CAFC in appeal of IPR decision

Home Semiconductor lost its appeal in IPR2015-00459 via
a per curiam Rule 26 Judgment on June 14, 2017.


Tuesday, June 13, 2017

Ad agency accused of copying

McCann Worldgroup Philippines did an ad for the Philippines Department of Tourism (DOT) involving many images and then revealing the person "viewing" was blind.

There are allegations of copying from an earlier Meet South Africa ad, because both featured an individual, revealed to be blind at the very end of the spot. -


Purdue loses appeal of interference ruling in hydrocodone case

Purdue lost in the interference for lack of written description:

Purdue Pharma L.P. (“Purdue”), the senior party in
an interference proceeding, appeals from a judgment of
the Patent Trial and Appeal Board (“Board”) refusing
claims in Purdue’s Applications 13/833,263 (“’263 Application)
and 14/094,968 (’968 Application) (collectively, the
“Applications”). The Board granted junior party Recro
Technology, LLC’s (“Recro”) motion for judgment that
Purdue’s claims lack written description, concluding that
claims 1, 6, 9, 10, 12–15, 23–26, 32, 39, 41–46, and 53–55
of the ’968 Application and claims 63–67 and 70–71 of the
’263 Application (collectively, the “involved claims”) are
unpatentable for lack of written description support under
35 U.S.C. § 112. We affirm.

The issue

Having concluded that the involved claims are unpatentable,
the Board issued a judgment terminating the
interference. Purdue appeals the Board’s written description
decision with respect to Purdue’s involved claims.


The test for written description “is whether the disclosure
of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of
the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351. “Based on that inquiry, the specification
must describe an invention understandable to that
skilled artisan and show that the inventor actually invented
the invention claimed.” Id. “[W]hile the description
requirement does not demand any particular form of
disclosure, or that the specification recite the claimed
invention in haec verba, a description that merely renders
the invention obvious does not satisfy the requirement.”
Id. (citations omitted).
The issue here is whether the specifications adequately
disclose the claimed separate populations of IR and CR
multiparticulates, which each comprise inert beads coated
with hydrocodone, combined in a single dosage form.
Both parties submitted expert testimony to the Board on
this issue. The Board found that the claimed formulation
is not disclosed. We conclude that substantial evidence
supports the Board’s finding.


Although the written description generally discloses
that a single dosage form may include both IR and CR
hydrocodone components, it does not disclose a formulation
wherein the IR and CR components exist as separate
multiparticulates each containing an inert bead core.

There was an "incorporation by reference" issue:

Purdue finally urges that the claimed formulations
are supported by U.S. Patent No. 5,472,712, (“the ’712
Patent”), which was incorporated by reference into the
Purdue applications. The Board was “not persuaded that
the ’712 [P]atent sufficiently describes the specific dosage
forms Purdue claims. The descriptions do not recite the
actual elements of Purdue’s claims, most notably inert
beads coated with hydrocodone. Instead, the examples of
. . . [the] ’712 [P]atent describe formulations of [a] different
drug[]: . . . hydromorphone . . . .” J.A. 39 (emphasis
added). Recro’s expert, Dr. Palmieri, stated at deposition
that “the examples . . . in the [’712 Patent] are to a different
active pharmaceutical ingredient than the applications.”
J.A. 1329

Of this portion of Purdue's argument:

“[A] description that merely renders the
invention obvious does not satisfy the [written description]
requirement.” Ariad, 598 F.3d at 1352; see also
Novozymes A/S v. DuPont Nutrition Biosciences APS, 723
F.3d 1336, 1349 (Fed. Cir. 2013) (explaining that the
written description analysis requires “[t]aking each claim
. . . as an integrated whole rather than as a collection of
independent limitations”). Substantial evidence supports
the Board’s findings in this regard.

Monday, June 12, 2017

CAFC reverses ITC by 2-1 vote in One-E-Way case; lengthy dissent by CJ Prost

A finding of indefiniteness by the ITC was reversed:

Because we conclude that the term “virtually free from
interference,” as properly interpreted in light of the
specification and prosecution history, would inform a
person of ordinary skill in the art about the scope of the
invention with reasonable certainty, we reverse.

The ALJ and the ITC had found indefiniteness:

One-E-Way petitioned the Commission to review the
ALJ’s summary-determination order. J.A. 2. The Commission
agreed with the ALJ that “virtually free from
interference” was indefinite. Id. The Commission thus
affirmed the ALJ’s order.

Festo AND Nautilus were cited:

This indefiniteness requirement is “part
of the delicate balance the law attempts to maintain
between inventors, who rely on the promise of the law to
bring the invention forth, and the public, which should be
encouraged to pursue innovations, creations, and new
ideas beyond the inventor’s exclusive rights.” Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,
731 (2002). This balance recognizes that all claims suffer
from “the inherent limitations of language,” but also that
claims must “be precise enough to afford clear notice of
what is claimed.” Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2128–29 (2014). This balance permits
“[s]ome modicum of uncertainty” to “ensur[e] the
appropriate incentives for innovation,” but it also provides
a “meaningful definiteness check” to prevent patent
applicants from “inject[ing] ambiguity into their claims.”
Id. (internal quotations omitted). Recognizing this balance,
the Supreme Court articulated the test for indefiniteness
as “requir[ing] that a patent’s claims, viewed in
light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention
with reasonable certainty.” Id. at 2129. This test “mandates
clarity, while recognizing that absolute precision is
unattainable.” Id.

The CAFC noted:

Taken together, the specification makes clear that
private listening is listening without interference from
other users. In other words, the interference would cause
one user to hear another user’s wireless transmissions,
potentially interfering with the utility of a device. The
patented invention sought to prevent such interference,
making it possible for wireless-headphone users to listen
in private. Id. at col. 1 ll. 43–49.

CJ Prost dissented:

In finding that the claim limitation-at-issue—
“virtually free from interference”—meets the definiteness
requirement, the majority relies primarily, if not exclusively,
on a single, non-definitional remark from the
prosecution history and ignores intrinsic evidence that
injects ambiguity. The written description lacks any
reference to the disputed limitation. And One-E-Way
does not submit that the limitation-at-issue has any
ordinary meaning to a skilled artisan.

By relying so heavily on the cherry-picked prosecution
remark, the majority’s decision significantly relaxes the
law on indefiniteness against the tide of the Supreme
Court’s recent decision in Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120 (2014). It also flouts the wellestablished
principle that “the written description is key
to determining whether a term of degree is indefinite.”
Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1378
(Fed. Cir. 2017). Even if it may be possible to “ascribe
some meaning” to the disputed limitation, the Supreme
Court has held that more is required. Nautilus, 134 S. Ct.
at 2130. Here, the intrinsic evidence falls well short of
providing a skilled artisan “reasonable certainty” about
the metes and bounds of the disputed limitation, especially
as distinguished from the narrower limitation “free
from interference” (without the modifier “virtually”). Id.
at 2124.

The CAFC Teva case is cited:

The parties agree that “virtually free from interference”
is a “term of degree.” Appellant’s Opening Br. 11;
Government’s Br. 19; Respondents’ Br. 13.2 Terms of
degree are not “inherently indefinite,” and “absolute or
mathematical precision is not required.” Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir.
2014). Nevertheless, the claims, read in context “must
provide objective boundaries for those of skill in the art.”
Id. at 1371 (citing Nautilus, 134 S. Ct. at 2130 & n.8).
“[P]ast and future prosecution of related patents may be
relevant to the construction of a given claim term.” Teva
Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 n.5
(Fed. Cir. 2015). But as noted above, the written description
is “key” to the indefiniteness inquiry for a term of
degree. Sonix, 844 F.3d at 1378;

The point of the dissent:

For the reasons explained by the majority (and contrary
to the Commission’s decision), I agree that the
prosecution history statement, read in context, is relevant
to the meaning of “virtually free from interference.” But I
disagree that it, alone or with the rest of the intrinsic
evidence, informs with the reasonable certainty needed to
satisfy the definiteness requirement.