Tuesday, August 22, 2017

CAFC in ALVARADO HOSPITAL. A dissent by Judge Newman.

One must always keep in mind that the CAFC has jurisdiction in non-patent areas.
On 22 August 2017:

Because Prime Hospitals’ breach of contract claim is
fundamentally a suit to enforce a contract and it does not
arise under the Medicare Act, we hold that the Court of
Federal Claims has exclusive jurisdiction over that claim
under the Tucker Act, 28 U.S.C. § 1491. We also hold
that the Court of Federal Claims does not have jurisdiction,
however, over Prime Hospitals’ alternative claims
seeking declaratory, injunctive, and mandamus relief.
Accordingly, we affirm the district court’s transfer order
in-part, reverse-in-part, and remand for further proceedings.

Judge Newman dissented:

I respectfully dissent from the ruling that the Medicare
Act’s jurisdictional assignment to the district courts
does not apply when there is an offer of settlement of a
Medicare reimbursement claim.

Nonetheless, my colleagues endorse the transfer of
this action from the district court to the Court of Federal
Claims under the Tucker Act, reasoning that the statutory
assignment of Medicare jurisdiction does not apply
when the issue includes a proposal for settlement of a
Medicare claim. However, as precedent has resolved,
settlement of a Medicare claim does not remove the
statutory Medicare Act jurisdiction. See Pines Residential
Treatment Ctr., Inc. v. United States, 444 F.3d 1379 (Fed.
Cir. 2006)

Two CAFC judges in Nidec case: we question whether the practice of expanding panels

The outcome was that appellant lost:

Nidec Motor Corporation (“Nidec”) appeals a final
written decision of the Patent Trial and Appeal Board
(“Board”) in an inter partes review (“IPR”). The Board
determined that claims 1–3, 8, 9, 12, 16, and 19 of U.S.
Patent No. 7,626,349 (the “’349 Patent”) are invalid as
anticipated or obvious. We affirm.

What the CAFC did not decide:

Both Broad Ocean and the Director argue that the
Board properly applied the joinder and time bar statutes
to allow joinder and institution in this case. Nidec disagrees.
We need not resolve this dispute. Nor need we
address the Director’s and Broad Ocean’s arguments that
the Board’s joinder determination is non-appealable in
light of 35 U.S.C. § 314(d)’s bar of judicial review for
institution decisions or Nidec’s argument that the Board’s
practice of expanding panels violates due process. For the
reasons set forth below, we affirm the Board’s conclusion
that all of the challenged claims are unpatentable as
obvious over Bessler and Kocybik. Because there is no
dispute that Broad Ocean timely filed the First Petition
(containing the obviousness ground), the issues on appeal
relating only to the Board’s joinder determination as to
anticipation ultimately do not affect the outcome of this
case. Both parties agree that, if we affirm as to obviousness,
we need not address Nidec’s argument that various
procedural aspects of the Board’s joinder decision require
reversal of its holding concerning anticipation by Hideji.
See Oral Arg. at 1:28–2:33 (June 8, 2017), available at
16-2321.mp3 (Nidec agreeing that we need not address
the anticipation ground based on Hideji in any respect if
we determine that the Board was correct in its obviousness
determination under Bessler and Kocybik).

Nidec loses:

The Board concluded that “the use of
sinewave commutation and independent Q and d axis
currents would have provided predictable results to
address known problems associated with other types of
motors.” J.A. 29. Nidec asks us to reweigh the evidence
the Board used to make its determination, which we may
not do. See In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
1334 (Fed. Cir. 2016).

The opinion was per curiam. There was a two judge
concurring opinion which included:

Although we do not decide the issues here, we
have serious questions as to the Board’s (and the Director’s)
interpretation of the relevant statutes and current


The issue in this case is whether the time bar provision
allows a time-barred petitioner to add new issues,
rather than simply belatedly joining a proceeding as a
new party, to an otherwise timely proceeding. Section
315(c) does not explicitly allow this practice. We think it
unlikely that Congress intended that petitioners could
employ the joinder provision to circumvent the time bar
by adding time-barred issues to an otherwise timely
proceeding, whether the petitioner seeking to add new
issues is the same party that brought the timely proceeding,
as in this case, or the petitioner is a new party.

Of some interest as to the expanded panel:

Nidec alleges that the two administrative judges added
to the panel were chosen with some expectation that
they would vote to set aside the earlier panel decision.
The Director represents that the PTO “is not directing
individual judges to decide cases in a certain way.” Director
Br. 21 (quotation marks omitted). While we recognize
the importance of achieving uniformity in PTO decisions,
we question whether the practice of expanding panels
where the PTO is dissatisfied with a panel’s earlier decision
is the appropriate mechanism of achieving the desired
uniformity. But, as with the joinder issue, we need
not resolve this issue here. Nor need we address the
predicate issue of appealability.

Monday, August 21, 2017

CAFC uses an analogy to a "cookie jar" to rule against appellant Thought

The relevant portion of a "system" claim contained the

a first adapter responsive to the object application
including an application bridge
receiving an object comprising object attributes
and an object name from the object
application, said first adapter
extracting the object attributes and the object
name from the object to effect packing
of the object attributes
and the object
name as data, said first adapter unpacking
the data to effect instantiating the object
attributes and the object name into a
new object; and

From the decision:

Just as a child might “extract” all of the
cookies from the cookie jar and leave the cookie jar itself
behind, the first adapter may extract all of the data
contained within the object but must leave behind the
data container of the object itself. Taking, or making an
exact copy of, the container and all of the contents held
within the container is not extracting the contents from
the container

CAFC in Walter declines to enter into a highly subjective inquiry depending “on the unpredictable vagaries of any one person’s opinion.”

The outcome of an ex parte re-exam of a patent directed to artificial reefs
for cultivating marine life was that appellant Walter lost at the CAFC:

David Walter appeals the decision of the Patent Trial
and Appeal Board (“Board”) in an ex parte reexamination
proceeding involving U.S. Patent No. 7,513,711 (“the ’711
patent”). See Ex parte David Walter, No. 2015-006121,
2015 WL 5144184 (P.T.A.B. Aug. 31, 2015). In its decision,
the Board ruled that all twelve claims of the ’711
patent lack adequate written description and are indefinite
under 35 U.S.C. § 112. Id. at *2–3. We affirm.

As to "written description," the CAFC wrote:

Compliance with the written description requirement
is a question of fact we review for substantial evidence.
ULF Bamberg v. Dalvey, 815 F.3d 793, 797 (Fed. Cir.
2016) (citing Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011)). Substantial evidence justifies a finding if a reasonable
mind might accept the evidence to support it.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

As to indefiniteness:

At the outset, we decline to adopt the Board’s implicit
determination that a patent claim is indefinite because
the specification uses a term differently from its dictionary
definition. See Ex parte Walter, 2015 WL 5144184, at
*2. The specification is “always highly relevant to the
claim construction analysis. Usually, it is dispositive.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (internal quotation marks omitted) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). If there is a conflict between the
specification and a general purpose dictionary as to a
claim’s proper meaning, the specification controls. Id. at


Here, “block-like” is a term of degree without any accompanying
guidance in the intrinsic record for determining
its scope. The term ostensibly covers a range of
shapes that are sufficiently “like” a “block” and excludes
those that are not. But nothing in the intrinsic record
offers “objective boundaries” for ascertaining whether a
given shape falls into either category. See Interval Licensing,
766 F.3d at 1371. And because the “present invention
10 can be fabricated in any shape without deviating
from the objectives thereof,” see ’711 patent, col. 3 ll. 52–
54 (emphasis added), determining whether a particular
shape is “block-like” thus strikes us as devolving into a
highly subjective inquiry depending “on the unpredictable
vagaries of any one person’s opinion.” Interval Licensing,
766 F.3d at 1371 (quoting Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)).
When, as here, “nothing in the specification, prosecution
history, or proper art provides any indication as to what
range of [structures] is covered by the term,” the claim is
indefinite. Amgen, Inc. v. Chugai Pharm. Co., Ltd. 927
F.3d 1200, 1218 (Fed. Cir. 1991).


And even if it were possible to
harmonize all of Mr. Walter’s statements, it is not enough
“that a court can ascribe some meaning to a patent’s
claims; the definiteness inquiry trains on the understanding
of a skilled artisan at the time of the patent application,
not that of a court viewing matters post hoc.”
Nautilus I, 134 S. Ct. at 2130. Here, the term’s ill-defined
boundaries coupled with the patentee’s erratic use of the
term fails to inform skilled artisans about the scope of the
invention with reasonable certainty. Id. at 2124. The
term is indefinite.

Of interest

Citing to Mr. Miller’s expert declaration, Mr. Walter
urges that “block-like” is a term of art in the structural
engineering field. Appellant’s Br. 12, 17–18, 23. We are
not persuaded by this argument. First, Mr. Miller does
not support his opinion with evidence or analysis, and his
testimony is wholly conclusory. See J.A. 178 ¶ 6.
“[C]onclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court,” Phillips,
415 F.3d at 1318, and thus we give Mr. Miller’s
testimony no weight. See SkinMedica, Inc. v. Histogen
Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) (giving “no
weight” to expert testimony in similar circumstances).
Second, it is difficult to fault the Board for purportedly
overlooking Mr. Miller’s declaration when Mr. Walter
never relied on it. In both his opening and reply briefs to
the Board, Mr. Walter argued that the claims were consistent
with the examiner’s construction of “block” and did
not urge that the phrase implicated a term of art. See
J.A. 401–02, 482–83. Nor did Mr. Walter rely on
Mr. Miller’s declaration during the oral hearing before the
Board. See J.A. 509–13. We therefore see no error in the
Board’s decision to disregard Mr. Miller’s testimony.

In the end, "written description" was not addressed:

Having determined that claims 1–12 of the
’711 patent, as amended, are indefinite, we do not reach
the issue of whether they are also unpatentable for failing
to comply with the written description requirement under
35 U.S.C. § 112, first paragraph.

Thursday, August 17, 2017

Issues with statues of Roger Taney

WJLA reported:

The Robert E. Lee and "Stonewall" Jackson statue in Wyman Park, the Roger B. Taney statue in Mount Vernon, the Confederate Women’s Monument in Bishop Park and the Confederate Soldiers and Sailors Monument on Mount Royal Avenue were all removed between 12:00 a.m. and 3:30 a.m. Wednesday morning. [16 August 2017]

On 17 August 2017, the Washington Post stated:

Maryland Senate President Thomas V. Mike Miller Jr. (D-Calvert) on Thursday [17 Aug 17] lashed out at Gov. Larry Hogan (R) for quickly advancing plans this week to remove a controversial State House statue of former U.S. Supreme Court justice Roger B. Taney, who defended slavery in the landmark 1857 Dred Scott decision.

In a letter to the governor, Miller defended Taney’s legacy and said the memorial should stay put to help educate people about the past. He also criticized Hogan for pushing a vote on the matter “outside the public eye.”

link to WaPo: https://www.washingtonpost.com/local/md-politics/md-senate-president-slams-hogan-for-fast-vote-to-remove-taney-statue/2017/08/17/41833b12-8390-11e7-ab27-1a21a8e006ab_story.html?utm_term=.e26cdbdc081b

Of interest to patent people, Taney was in the dissenting four in Winans v. Denmead, 56 U.S. 15, with Curtis (a dissenter in Dred Scott) writing the majority opinion in Winans. Of the dissent in Winan:

The plaintiff confines his claim to the use of the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly. He might have been unwilling to expose the validity of his patent, by the assertion of a right to any other. Can he abandon the ground of his patent, and ask now, for the exclusive use of all cars which, by experiment, shall be found to yield the advantages which he anticipated for conical cars only?

The claim of today is that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanical industry of the country may freely exert itself? What restraints does this patent impose in this branch of mechanic art?


Curtis was so disgusted with Dred Scott that he resigned from the Supreme Court.

Of the dissent in Dred Scott, from wikipedia:

Justice Benjamin Robbins Curtis, in dissent, attacked much of the Court's decision as obiter dicta, on the ground that once the Court determined that it did not have jurisdiction to hear Scott's case, it must simply dismiss the action, and not pass judgment on the merits of the claims. The dissents by Curtis and McLean also attacked the Court's overturning of the Missouri Compromise on its merits, noting both that it was not necessary to decide the question, and also that none of the authors of the Constitution had ever objected on constitutional grounds to the United States Congress' adoption of the antislavery provisions of the Northwest Ordinance passed by the Continental Congress, or the subsequent acts that barred slavery north of 36°30' N.

Wednesday, August 16, 2017

Georgetown Rail prevails over Holland at the CAFC. Analysis of the preamble.

An issue in the case was the position of the accused infringer that an element in the preamble (“mounted on a vehicle for movement along the railroad track”) was a limitation of the claim. The CAFC wrote:

In the context of the entire patent, it is apparent that
the term “mounted on a vehicle for movement along the
railroad track” is meant to describe the principal intended
use of the invention but not to import a structural limitation
or to exclude from the reach of the claims an assembly
that does not include a vehicle mount. Nothing in the
specification or prosecution history states, or even suggests,
that Georgetown intended to exclude use of technology
that was structurally identical to its claimed
product but that was installed and performed analysis on
a non-vehicle mount.


The body of
the claim itself describes a “structurally complete invention,”
Rowe, 112 F.3d at 478, because it describes a closed
“system” comprised of a “light generator,” “optical receiver,”
and “processor,” which are the objects required to
perform the stated purposes of gathering and processing
data on misaligned track ties, (...) The location of the system is not an
essential feature of the invention. Indeed, as the District
Court noted, the specification states that “[t]he computer
analysis can be performed by the processing device . . .
located on the inspection vehicle. Alternatively, the
computer analysis can be performed by another computer
system having image processing software known in the
art.” Georgetown Rail I, 2014 WL 11498109, at *2−3
(quoting ’329 patent col. 7 ll. 10−14).

Of colorful language by the CAFC:

Holland argues as an example of the need to include the
preamble in the claim language that the claim terms
“plurality of images” and light generator and cameras
that are “positioned adjacent” to the track would not
make sense without the preamble. Id. (internal quotation
marks omitted). This puts the caboose before the locomotive.
It is easy to imagine that the patented system could
be manually carried or pulled across tracks, and that
software configured in any type of device, on-site or off,
could process the data.

As to enhanced damages:

None of the arguments Holland makes with respect to
the findings of enhanced damages demonstrate abuse of
discretion by the District Court. The District Court made
detailed factual findings which, taken together, support
its award of enhanced damages. It did not merely look at
the jury’s finding of willfulness; rather, it applied and
considered all nine Read factors. Specifically, after ana
lyzing each Read factor individually, the District Court
stated that “[f]actors 1, 2, and 5 support enhancement;
factors 3, 4, and 7 slightly support enhancement; and
factors 6, 8, and 9 are neutral.” Georgetown Rail II, 2016
WL 3346084, at *21. It also found that “no single factor
weighs against enhancement.” Id. Finally, the District
Court took into account the degree of willfulness and
found that it was “not warranted” to enhance damages to
the full maximum statutory amount of treble damages
(over $4,500,000); rather, it awarded only an additional
$1,000,000. Id. Considering all of the Read factors and
the District Court’s statutory authority to treble damages
under § 284, the award of $1,000,000 in addition to the
damages award of $1,544,333 was not an abuse of discretion.

Tuesday, August 15, 2017

Clinton Pastor Plagiarized, but victim notes: “The last thing the world needs right now is two pastors having a public dispute over a blog,”

From time to time, IPBiz has discussed pastors who plagiarize (e.g., Plagiarizing pastors, revisited ) and sermons which have been copied (e.g.,
The issue of copying sermons, re-visited

Related to a book by United Methodist minister Rev. Bill Shillady, which book presented compiled emails sent to Hillary Clinton, the Washington Post noted

Indiana pastor Matt Deuel read a prominent piece of Shillady’s book — the email Shillady sent to Clinton the morning after the 2016 election — when CNN published it last week. He recognized it as resembling his own March 2016 blog post and on Saturday he contacted a reporter for CNN, which first published the news Monday.


The publisher, Abingdon Press, said it will cite Deuel in future printings of the book, “Strong for a Moment Like This.”

Stipulating that there was unattributed copying, one notes, as to copyright, this would likely count as a transformative work. The major import of the emails was not the specific content, but rather that they were sent to Hillary Clinton and when (and why) they were sent.

Going back to sermons, IPBiz had a post Popsicle patent wars of yesteryear, which began:

Ministers, in sermons about sharing, frequently point to the story of the two-stick Popsicle. Sometimes the ministers mention that the Popsicle was invented by an eleven year old boy, Frank Epperson, in 1905. And during the depression, the two stick popsicle was introduced so that one could share.

AND there is a sermon about a (mythical?) US submarine sunk in New York City harbor, with a sailor inside tapping out in code: is there hope?

CROCS loses on design patent

In 2015, there was an article in JPTOS titled -- Unpatentability by Design: The Overlooked Use of Inter Partes and Post-grant Review to Challenge Design Patents -- [97 JPTOS 96 ]

In August 2017, CNBC had a story on a CROCS design patent application, which included:

The U.S. Patent and Trademark Office recently issued a final rejection of Crocs' key design patent, which Crocs has said it plans to appeal, according to Footwear News.

SD NY assesses damages against Costco for Tiffany trademark violation

In a 2015 decision, SD NY gave summary judgment in favor of TIFFANY AND COMPANY, holding Costco liable for trademark infringement and trademark counterfeiting under the Lanham Act with respect to engagement rings sold under certain signage that referenced the mark "Tiffany" as a standalone term. A decision on August 14, 2017 addressed damages.

An issue in Tiffany v. Costco, 2017 U.S. Dist. LEXIS 128946, was "equitable vs. legal":

In the Summary Judgment Opinion, the Court stated that "[i]t was still an open question in the Second Circuit as to whether the accounting of profits in a trademark infringement action is an equitable or legal remedy." (S.J. Op. at 36.) In the parties' post-trial briefing, Costco contends that the jury verdict on the "Accounting of Profits Issues" was rendered on an equitable remedy for which there is no federal right to a jury trial, and that the Court is obligated to make an independent determination as to the accounting of profits. Tiffany, likewise, urges that "regardless of where the Court comes out on the state of the law, Tiffany believes the Court should set out findings of fact that would support the jury's determinations, whether or not it was advisory on actual profits." (Tiffany Br. at 3.) Although the Second Circuit has not explicitly ruled on the issue, in Gucci America, Inc. v. Weixing Li, a trademark infringement action under 15 U.S.C. Section 1117(a), the court characterized the accounting of profits sought by the plaintiff as an "equitable remedy." 768 F.3d 122, 130 (2d Cir. 2014). The Court will treat the jury verdict as to accounting of profits as advisory and make its own findings.

The issue of profits through membership fees arose:

Tiffany also presented credible evidence that Costco's profits are not limited to the margin between product costs and sales, but also include very substantial sums derived from warehouse membership fees. Douglas Schutt, Costco's Chief Merchandising Officer, acknowledged that Costco's "business model of charging the membership fee . . . is one of the things that enables [Costco] to charge less of a markup on the individual products [Costco] sell[s]." (Tr. 444.) Costco uses a "treasure hunt" marketing concept - creating "buzz" among members by offering "brand name merchandise at exceptional values" to drive frequent member visits and renewals. (Id. 461-63.) Kaczmarek, Tiffany's expert, testified credibly that even the 13% markup figure that he had used in his analysis is very low, and that Costco is "able to survive with that low markup because they charge membership fees annually. So they make most of their money on the membership fees and so that's how they can actually make such small profits on the items. That's what attracts customers to want to go to Costco." (Tr. 281.)


The Court finds that Costco has failed to prove that its profits on sales of rings under Standalone Signage were limited to the 10.31% margin computed by Costco's damages expert. That margin is artificially small, and was made possible chiefly by the subsidizing impact of membership fees, which are themselves enhanced by the pull of the "treasure hunt" tactic in which Costco uses extraordinary bargains on brand-name merchandise to pull customers into its stores. Fine jewelry is the first display case customers encounter in Costco's standard store layout, along with name-branded luxury watches. (Tr. 451-452, 466-467, 470.) In light of the role of the membership fees in Costco's business model and of its use of Tiffany's mark in selling fine jewelry, which is prominently displayed at the entrance of the stores to catch the [*16] eye of the customer, the Court finds it necessary and appropriate as an equitable matter to impute a sufficient portion of the membership revenue to the sale of these rings to bring the recoverable profit margin on the rings into the profit margin range of a typical run-of-the-mill jewelry store, which is approximately 50-100%. The Court further finds that the advisory jury's award of $3.7 million in profits on the Standalone Signage sales, a figure that is slightly more than 50% of the sales revenue proven in connection with those sales, constitutes a just and appropriate award of Costco's profits attributable to the infringing sales.

As to punitive damages:

The issues of whether punitive damages were warranted and, if so, of how much punitive damages to award were within the province of the jury, and the jury's decision cannot be set aside unless "there exists such a complete absence of evidence supporting the verdict that the jury's findings could only have been the result of sheer surmise and conjecture, or the evidence in favor of the movant is so overwhelming that reasonable and fair minded persons could not arrive at a verdict against it." Providencia v. ex rel. K.V. v. Schultze, No. 02 CV 9516, 2009 U.S. Dist. LEXIS 30411, 2009 WL 890057, at *1 (S.D.N.Y. Apr. 2, 2009) (quoting Brady v. Wal-Mart Stores, Inc., 531 F. 3d 127, 133 (2d Cir. 2008) (internal quotation marks omitted)). As the Court stated in its Summary Judgment Opinion, "Tiffany . . . proffered [in connection with that motion practice] evidence upon which the finder of fact could conclude that Costco's behavior satisfied the 'gross, wanton or willful' standard" required for awarding punitive [*21] damages." (Docket entry no. 175 at 34.) Even more evidence of conduct supporting punitive damages was adduced at trial, including evidence of the conduct and attitude of Costco's senior executives towards use of the "Tiffany" mark and the lawsuit, customer confusion, and marketing strategies designed to invoke an association with Tiffany. Given that there plainly was enough evidence to support the jury's award of punitive damages, the jury's finding that punitive damages were warranted will not be disturbed.

The outcome:

Treating the jury's verdict as advisory only as to the recovery of profits, the Court finds that Plaintiffs are entitled to recover trebled profits of $11.1 million, and judgment will be entered in their favor in that amount, plus prejudgment interest at the annual rate set under 26 U.S.C. § 6621(a)(2) for the period from February 15, 2013, through the date of judgment and punitive damages of $8.25 million, unless Plaintiffs file within seven (7) days from the date hereof a written election to instead recover the $2 million in statutory and $8.25 million in punitive damages awarded by the jury.
Costco is permanently enjoined from using the mark TIFFANY as a standalone term, not combined with any immediately following modifiers such as "setting," "set" or "style," in connection with its advisement and/or sale of any products that were not manufactured by Plaintiffs or their affiliates.

Visual Memory claims survive 101 challenge by 2-1 vote at CAFC

Visual Memory, LLC appeals the district court’s dismissal
of its patent infringement complaint against
NVIDIA Corporation. The district court held that Visual
Memory’s U.S. Patent No. 5,953,740 is drawn to patent ineligible
subject matter, and therefore its complaint
failed to state a claim under Federal Rule of Civil Procedure
12(b)(6). We conclude instead that the ’740 patent
claims an improvement to computer memory systems and
is not directed to an abstract idea. Accordingly, we reverse
the district court and remand for further proceedings

Of the analysis:

Our analysis begins with Alice step one. Although the
two steps in the Alice framework “involve overlapping
scrutiny of the content of the claims,” the “Supreme
Court’s formulation makes clear that the first-stage filter
is a meaningful one, sometimes ending the § 101 inquiry.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016). In this regard, we must articulate with
specificity what the claims are directed to, Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir.
2017), and “ask whether the claims are directed to an
improvement to computer functionality versus being
directed to an abstract idea.” Enfish, 822 F.3d at 1335
(“[S]ome improvements in computer-related technology
when appropriately claimed are undoubtedly not abstract,
such as a chip architecture, an LED display, and the


With these guideposts in mind, and cognizant of the
difficulty inherent in delineating the contours of an abstract
idea, we turn to the claims at issue here. Our
review of the ’740 patent claims demonstrates that they
are directed to an improved computer memory system, not
to the abstract idea of categorical data storage. Claim 1
requires a memory system “having one or more programmable
operational characteristics, said characteristics
being defined through configuration by said computer
based on the type of said processor,” and “determin[ing] a
type of data stored by said cache.” ’740 patent col. 6
ll. 29–38. Dependent claims 2 and 3 narrow the cache’s
programmable operational characteristic to storing certain
types of data (“only code data or . . . both code data
and non-code data”) and buffering data from certain
sources (“buffering of data solely from said bus master or
. . . both from said bus master and said processor”), respectively.
Id. at col. 6 ll. 39–51. Claim 6 recites the fast
page mode embodiment with a programmable operational
characteristic, and dependent claim 7 defines the programmable
operational characteristic as the type of data
to be stored. Id. at col. 7 ll. 3–26. None of the claims
recite all types and all forms of categorical data storage.

Can a state law or regulation define ownership of a US Patent?

At PatentlyO, Dennis Crouch wrote:

An important element of the original district court decision here (that was affirmed without opinion) points out a Florida State Regulation that “An invention which is made in the field or discipline in which the employee is employed by the University or by using University support is the property of the University…” R. 6C4–10.012(3)(c) (emphasis added). To be clear, this regulation is not a “contract” with the future inventor but instead a regulation in the Florida code that identifies ownership of the patent right — seemingly in conflict with the statement in Stanford v. Roche that “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.”

link: https://patentlyo.com/patent/2017/08/right-trial-attorney.html#comments

The post is about the case AIA America v. Avid Radiopharma (Fed. Cir. 2017), which case includes the text:

Dr. Hardy and his team believed the Athena agreement
undervalued their research. Soon thereafter, Mr.
Sexton, a Kansas City businessman who had no experience
in scientific research but saw a business opportunity
for himself, offered Dr. Hardy and his team a better deal
than they had with Athena. Initially, Dr. Hardy and his
team attempted to undermine the agreement with Athena
by misrepresenting the origins of their work on the London
Mutation. This attempt failed when Imperial determined
that it owned the discovery under United Kingdom
law by its employment of the inventors.
Dr. Hardy, his
team, and Mr. Sexton then “decided to make sure [they]
didn’t give anything else away.” J.A. 2759:13–14.

The question of Dennis related to the power of the Florida government to
dictate patent ownership, but then there was a question of the power of
the federal government to do so.

LBE wrote:

In Stanford v. Roche, 563 U.S. 776; 131 S. Ct. 2188; 180 L. Ed. 2d 1 , — Stanford claimed that Holodny had no rights to assign because the University’s HIV research was federally funded, giving the school superior rights in the invention under the Bayh-Dole Act. — The Supreme Court noted: The
question here is whether the University and Small Busi-
ness Patent Procedures Act of 1980—commonly referred to
as the Bayh-Dole Act—displaces that norm and automati-
cally vests title to federally funded inventions in federal
contractors. We hold that it does not.
Theoretically, Congress might have written Bayh-Dole differently, to displace the norm, and that would have been within the scope of Congressional powers. But, as you suggest, not likely within the scope of powers of Florida lawmakers. Or, is there an 11th Amendment/Florida Prepaid Postsecondary kind of issue?


Prior to Bayh-Dole, many government agencies were reluctant to relinquish their ownership of the government funded patents to universities or industry. Instead these agencies granted nonexclusive licenses to anyone who wished to produce the inventions.

AND from a 1924 case:

It is unthinkable that, where a valuable instrument in the war against disease is developed by a public agency through the use of public funds, the public servants employed in its production should be allowed to monopolize it for private gain and levy a tribute upon the public which has paid for its production, upon merely granting a nonexclusive license for its use to the governmental department in which they are employed.

Not clear what the answer to Dennis’ question is…

Further on the pre-Bayh-Dole period:

Before the Bayh-Dole Act was passed in 1980, federal funding to universities resembled a system of government selection and subsidization of private innovators. Researchers received federal money either through allocation by the university or based on the individual research proposal. The intellectual property resulting from such federally funded research then belonged to the federal government, who usually dedicated it to the public domain, and granted nonexclusive licenses for its use

from 18 Harv. J. Law & Tec 459 (2005)


Before 1980, most inventions made with government funding were never patented. n4 The U.S. government generally held title to those few inventions that were actually patented, whether created at federal labs or in academia. n5 Non-exclusive licenses were usually available at a reasonable rate, though these were never very popular. n6

from 2005 B.C. Intell. Prop. & Tech. F. 93001


Innovation's Golden Goose, supra note 10. ("Before Bayh-Dole, the fruits of research supported by government agencies had belonged strictly to the federal government.

from Carl E. Gulbrandsen , 2007 Wis. L. Rev. 1149


As to state law and patents-->

To support this position, the court looked to Jim Arnold Corp. v. Hydrotech Systems, n58 which held that patent ownership is a state court question. n59 In doing so, the court read that holding expansively; though Jim Arnold Corp.'s holding concerned only whether the state court had jurisdiction, here the court read it to mean that state law controls in patent ownership cases. n60
Having established that state law generally controls patent ownership, Akazawa held that the same doctrine should apply when foreign law, rather than [*64] state law, controls.

from 64 Okla. L. Rev. 57 (2011)


Other state laws regulating issues related to patents have not been preempted. This seems to create some room for state legislatures to regulate a limited range of patent related issues.
For example, a state contract law has overcome preemption challenges where it governed agreements to license or assign a patent. n146 In deciding this case, the Supreme Court stated that "[c]ommercial agreements traditionally are the domain of state law." n147 The Court then found that the [*781] state law did not violate any of the three objectives of federal patent law. n148 First, it found that the state law actually encouraged invention by providing royalties to patent owners. n149 Second, the Court found that the state licensing law encouraged disclosure of inventions. n150 Third, the enforcement of a licensing agreement under state licensing law did not withdraw any idea from the public domain. n151 Based on these findings, the Supreme Court determined that the state contract law was not preempted. n152

from 68 S.C. L. Rev. 761 (2017)


We have previously held that patent ownership is determined by state, not federal law. Akazawa, 520 F.3d at 1357 (citing Jim Arnold Corp. v. Hydrotech Sys., Inc., 109 F.3d 1567, 1572 (Fed. Cir. 1997) ("[T]he question of who owns the patent rights and on what terms typically is a question exclusively for state courts.")). However, "the question of whether [**11] a patent assignment clause creates an automatic assignment or merely an obligation to assign is intimately bound up with the question of standing in patent cases," and therefore we have "treated it as a matter of federal law." DDB Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1290 (Fed. Cir. 2008). Usually, federal law is used to determine the validity and terms of an assignment, but state law controls any transfer of patent ownership by operation of law not deemed an assignment.

from Sky Technologies, 576 F.3d 1374

Under the classical conception of the patent, individual states lost the power to determine entitlement to a patent or the scope of the patent property right. But the Constitution's Patent Clause authorized Congress only to "secure" the exclusive patent right. Once a patent was issued and entered the stream of commerce, its management as a property right largely befell the states. That division of responsibility has very largely persisted, although with qualifications emanating from the first sale doctrine, federal antitrust, and misuse policy. Federal law defines entitlement to a patent, its appropriate scope, and enforcement power by means of infringement actions. By contrast, state commercial law determines questions about licensing, assignment, and descent.

from 58 Ariz. L. Rev. 263 (2016)


"there is nothing that limits assignment as the only means for transferring patent ownership...by operation of law," Akazawa, 520 F.3d at 1356
The Tenth Circuit acknowledged that "states retain the power to 'adopt rules for the promotion of intellectual creation within their own jurisdictions' so long as those rules do not impermissibly interfere with the federal patent scheme."

174 F.3d 1104, 1108-9 (10th Cir. 1999).


See also the discussion of University Patents v. Kligman, 762 F. Supp. 1212 (1991), within
Therein a policy presented in a "handbook" was deemed sufficient to transfer patent ownership

Monday, August 14, 2017

CAFC goes through FRCP 60 in Piccone case

The CAFC decision in PICCONE v. Matal (and others) is per curiam and not precedential. There apparently were some disciplinary issues with registered patent attorney Piccone, but in this sequence, Piccone sued the PTO (and others) in ED Va for items including alleged
constitutional violations by the Individual Defendants,
challenges to the PTO’s FOIA decisions, and a request for
declaratory relief from the PTO’s disciplinary proceedings.

His complaint was dismissed on October 27, 2015. The district court
issued a separate order later that day informing Mr. Piccone he had
thirty days to file a notice of appeal.

On December 9, 2015, Mr. Piccone filed a motion to
reconsider the October 27 order.

The district court denied the
motion for reconsideration on December 30, 2015.

On February 29, 2016, Mr. Piccone filed a notice of
appeal to the Court of Appeals for the Fourth Circuit,
which transferred the case to our court. His notice stated
that he was appealing “the final judgment dismissing the
above-identified case, entered December 29, 2015.” We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

The CAFC began its discussion with

Although the majority of Mr. Piccone’s brief to our
court addresses the district court’s October 27, 2015 order
granting summary judgment, our appellate jurisdiction is
limited to reviewing the district court’s December 30,
2015 order denying Mr. Piccone’s motion for reconsideration.1
The timely filing of a notice of appeal in a civil case
is a jurisdictional requirement. Bowles v. Russell, 551
U.S. 205, 214 (2007). Under the Federal Rules of Appellate
Procedure, Mr. Piccone had sixty days from the date
of the October 27, 2015 order to file his notice of appeal.
See Fed. R. App. P. 4(a)(1)(B)(ii); Gist v. United States,
504 F. App’x 918, 918 (Fed. Cir. 2013). Mr. Piccone did
not file his notice of appeal until February 29, 2016, more
than four months after the summary judgment order.
And his notice of appeal only identified the district court’s
December 30, 2015 order denying reconsideration. We
therefore lack jurisdiction to review the October 27, 2015

Of some interest is the discussion of the "motion for reconsideration":

The district court interpreted Mr. Piccone’s December
9, 2015 motion for reconsideration as a motion under Rule
60 rather than Rule 59 of the Federal Rules of Civil
Procedure. We see no error in this conclusion. Under
Rule 59, a party must file a motion to amend a judgment
within twenty-eight days of the entry of the judgment.
Fed. R. Civ. P. 59(e). Mr. Piccone filed his motion fortythree
days after the October 27, 2015 order. The district
court properly treated his motion as a Rule 60 motion,
which may be filed within a year of entry of judgment.
See Fed. R. Civ. P. 60(c)(1).

For a court to reconsider an initial ruling, there is not much time
for the losing party to file. In D NJ, Local Rule 7.1(i) states:
Unless otherwise provided by statute or rule (such as Fed. R. Civ. P. 50, 52 and 59), a motion for reconsideration shall be served and filed within 14 days after the entry of the order or judgment on the original motion by the Judge or Magistrate Judge. A brief setting forth concisely the matter or controlling decisions which the party believes the Judge or Magistrate Judge has overlooked shall be filed with the Notice of Motion.

On FRCP 59, from PETERSON v. Brooks, 2008 U.S. Dist. LEXIS 66904 :

Federal Rule of Civil Procedure 59(e) provides that a party may file a motion within ten days of the entry of a judgment requesting that the court alter or amend the judgment. Fed. R. Civ. P. 59(e). Such a motion is considered a motion for reconsideration.

"A proper Rule 59(e) motion must be based on either an intervening change in controlling law, the availability of new or previously unavailable evidence, or the need to correct clear error or prevent manifest injustice." Choi v. Kim, 258 Fed. App'x 413, 416 (3d Cir. 2007) (citing North River Ins. Co. v. CIGNA Reinsurance Co., 52 F.3d 1194, 1218 (3d Cir. 1995)).

The current version of FRCP 59(e) does recite 28 days: A motion to alter or amend a judgment must be filed no later than 28 days after the entry of the judgment.

**One notes a curious error in the CAFC decision:

The Fourth Circuit reviews
the denial of a Rule 60(b) motion for abuse of discretion.
Aikens v. Ingram, 652 F.3d 496, 501 (Fed. Cir. 2011).

The Aikens case, of course, is from the Fourth Circuit, not from the Fed. Cir. [ Plaintiff Frederick Aikens, a former colonel in the North Carolina Army National Guard, filed a complaint against defendant National Guard officers alleging that they violated his Fourth Amendment rights by wrongfully intercepting, reading, and forwarding his e-mails while he was deployed in Kuwait. Aikens lost his appeal. ]

[In passing, FRCP 54 is used to seek clarification of a non-final order: : “Federal Rule of Civil Procedure 54(b) provides that any non-final decision or order "may be revised at any time before the entry of judgment adjudicating all the claims." Fed.R.Civ.P. 54(b). Pursuant to this rule, Hines seeks clarification of this court's May 9, 2011 order, arguing that the order was unclear… “ ]

Friday, August 11, 2017

Amgen loses appeal at CAFC in Hospira / Epogen case

The issue was appeal of a denial of a motion to compel:

Amgen Inc. (“Amgen”) appeals an order of the United
States District Court for the District of Delaware denying
Amgen’s motion to compel discovery from Hospira, Inc.
(“Hospira”) in a patent infringement case governed by the
Biologics Price Competition and Innovation Act of 2009

The material in question was Epogen:

Hospira filed a subsection (k) application with the
FDA in December 2014 seeking approval of a biosimilar of
EPOGEN®, a biological product developed by Amgen and
approved by the FDA under section 262(a) in 1989. In
accordance with paragraph (l)(2)(A), Hospira provided a
copy of its application to Amgen. Hospira did not separately
provide information concerning “the process . . .
used to manufacture the biological product”—again, as
required by the statute—but contends that such information
was disclosed in its application.

The motion to compel was denied by D. Delaware for lack of

Hospira refused Amgen’s discovery requests, and
Amgen ultimately filed a motion to compel discovery. The
district court denied Amgen’s motion, stating that the
cell-culture information sought by Amgen had “essentially,
no relevance to the patents that are asserted,” J.A. 37,
a conclusion that Amgen does not now dispute.
Amgen appealed the district court’s interlocutory order.
Hospira then moved this court to dismiss Amgen’s
appeal for lack of jurisdiction. We denied Hospira’s motion,
but asked the parties to brief “whether this court has
jurisdiction pursuant to the collateral order doctrine or
under the All Writs Act.” Order, Amgen, Inc. v. Hospira,
Inc., No. 16-2179 (Fed. Cir. Aug. 12, 2016), ECF No. 16

Of note in the case:

Nothing in Sandoz suggests that the BPCIA somehow
supplants the preexisting rules of civil procedure. Our
opinion in Amgen merely acknowledged that a sponsor
“can access the required information through discovery,”
794 F.3d at 1356, but our statement did not purport to
hold that the usual rules governing discovery do not apply
in the BPCIA context. Nor does anything in Sandoz
suggest otherwise


Under Amgen’s reading of the statute,
an applicant could effectively control the scope of litigation
under the BPCIA by withholding information under
paragraph (l)(2)(A), thereby preventing the sponsor from
identifying and bringing suit on patents related to the
biological product that the sponsor “believes a claim of
patent infringement could reasonably be asserted” under
paragraph (l)(3)(A). We note that the statute penalizes
sponsors that decline to participate in the BPCIA’s information
exchanges because under 35 U.S.C. § 271(e)(6)(C),
a sponsor that fails to list a patent that “should have been
included in the list described in [paragraph (l)(3)(A)] . . .
may not bring an action under this section for infringement
of the patent with respect to the biological product.”
In contending that a sponsor would be unable to list a
patent under paragraph (l)(3)(A), Amgen emphasizes that
the sponsor must form a good-faith belief that a patent
listed under paragraph (l)(3)(A) “could reasonably be
asserted.” Amgen asserts that a sponsor listing a patent
without the benefit of the applicant’s paragraph (l)(2)(A)
disclosures would later be subject to sanctions under
Federal Rule of Civil Procedure 11 or antitrust liability
for asserting baseless claims of patent infringement.


Amgen’s argument misunderstands the statute. Paragraph
(l)(3)(A) merely requires the sponsor to list patents
that it “believes . . . could reasonably be asserted.” (emphasis
added). The statute provides no sanction for holding
or asserting a mistaken belief in good faith. Moreover,
once a patent is listed by the sponsor, the BPCIA’s information
exchange further requires the applicant to “provide
to the . . . sponsor, with respect to each patent listed
. . . a detailed statement that describes, on a claim by
claim basis, the factual and legal basis of the opinion of
the subsection (k) applicant that such patent is invalid,
unenforceable, or will not be infringed.” 42 U.S.C.
§ 262(l)(3)(B)(ii) (emphases added). In other words, once a
sponsor lists a patent under paragraph (l)(3)(A), the
applicant must once again come forward with additional
disclosures under paragraph (l)(3)(B) that inform whether
“a claim of patent infringement . . . could” or could not
“reasonably be asserted.” If the applicant fails to comply
with its obligation to respond under paragraph (l)(3)(B),
the sponsor would have a reasonable basis for asserting a
claim of patent infringement.
Furthermore, under Rule 11, one submits a filing “to
the best of the person’s knowledge, information, and
belief, formed after an inquiry reasonable under the
circumstances.” Fed. R. Civ. P. 11(b). The rule also expressly
permits factual allegations that “will likely have
evidentiary support after a reasonable opportunity for
further investigation or discovery.” Fed. R. Civ. P.
11(b)(3). Thus, if a sponsor forms a belief based on an
inquiry limited by an applicant’s withholding of information,
the sponsor has still satisfied Rule 11. See, e.g.,
Hoffman-La Roche Inc. v. Invamed Inc., 213 F.3d 1359,
1363–64 (Fed. Cir. 2000) (affirming denial of Rule 11
sanctions where patentees unsuccessfully sought manufacturing
information from defendants before suit and
“attempted to ascertain whether the processes so used
were infringing, but were unable to do so”); Morda v.
Klein, 865 F.2d 782, 785–86 (6th Cir. 1989) (affirming
denial of Rule 11 sanctions because “[i]t would be particularly
difficult to fault plaintiffs for a lack of prefiling
inquiry when, as here, defendants have refused plaintiffs
access to material information that would bear on certain
allegations made in the complaint”). The Supreme Court
appears to have contemplated the filing of suit after an
applicant fails to disclose information under paragraph
(l)(2)(A). See Sandoz, 137 S. Ct. at 1676 (“If the applicant
failed to provide that information, then the sponsor but
not the applicant, could bring an immediate declaratory
judgment action pursuant to § 262(l)(9)(C).”).

There was reference to a Supreme Court decision on finality.

A final decision of a district court means, with limited exceptions, an order that ends the litigation on the merits and leaves nothing for the district court to do but execute the judgment. Coopers & Lybrand v. Livesay, 437 U.S. 463, 467, 98 S. Ct. 2454, 2457, 57 L. Ed. 2d 351 (1978).

Tuesday, August 08, 2017

Li v. Matal. Matter arising out of attorney discipline in New Jersey

The outcome

Feng Li appeals from the decision of the United States
District Court for the Eastern District of Virginia granting
the motion of the United States Patent and Trademark
Office (“USPTO”) and the Director of the USPTO
(collectively, “Appellees”) to dismiss Mr. Li’s complaint for
lack of subject matter jurisdiction and failure to state a
claim, thereby affirming the USPTO’s decision to exclude
Mr. Li from practice before the USPTO. Li v. Matal, No.
15-cv-668 (E.D. Va. Jan. 22, 2016). We affirm.

The case has a New Jersey connection:

After successfully obtaining a
judgment for his clients, Mr. Li disagreed with his clients
on the amount of attorney’s fees he was owed, resulting in
his clients filing suit in New Jersey state court. Knowing
the fees were in dispute, Mr. Li transferred $1.2 million of
the judgment into trust funds in his children’s names.
The New Jersey Office of Attorney Ethics determined that
Mr. Li violated the New Jersey Rules of Professional
Conduct by taking possession of client funds he knew to
be disputed. In 2013, the Supreme Court of New Jersey
disbarred Mr. Li from the practice of law based on attorney


Mr. Li’s response to the
Notice and Order did not dispute the fact that he had
been disbarred in New Jersey, but rather argued that
reciprocal discipline by the USPTO was not justified
because the New Jersey Supreme Court did not have
jurisdiction to disbar him based on his conduct in New
. He further argued that the New Jersey Supreme
Court’s actions violated the due process, equal protection,
and Ex Post Facto clauses of the U.S. Constitution. On
April 28, 2015, the Director of the USPTO issued a final
order pursuant to 37 C.F.R. § 11.24, excluding Mr. Li from
practice before the USPTO. The USPTO Director carefully
applied § 11.24 and found that Mr. Li failed to meet his
burden to show by clear and convincing evidence that: (1)
the New Jersey disciplinary process was “so lacking in
notice or opportunity to be heard;” (2) there was an “infirmity
of proof” establishing his conduct; or (3) a “grave
injustice” would result from his disbarment.

Of CAFC review:

Our review of a district court’s
decision on a petition brought pursuant to 35 U.S.C. § 32
is de novo, “reapplying the standard” applied by the
district court under the APA.


Symbolic lost its appeal to the CAFC from an adverse decision
from the TTAB. Its arguments:

Symbolic argues that the Board erred in its likelihood
of confusion analysis by: (1) holding that the will.i.am
restriction is “precatory” and “meaningless” and therefore
not considering it in analyzing certain DuPont factors;
(2) ignoring third-party use and the peaceful coexistence
on the primary and supplemental registers and in the
marketplace of other I AM marks; and (3) finding a likelihood
of reverse confusion. We will address each argument
in turn.

Likelihood of confusion is a question of law based on
underlying findings of fact. In re Chatam Int’l Inc., 380
F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood
of confusion based on the factors set forth in DuPont. 476
F.2d at 1361. “The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence
but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v.
Alberto–Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)
(alteration in original)). While evidence of actual confusion
may be considered in the DuPont analysis, “a showing
of actual confusion is not necessary to establish a
likelihood of confusion.” Id. (citing Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 1571 (Fed. Cir.
1983)). In the likelihood of confusion analysis “doubts are
to be resolved against the newcomer and in favor of the
prior user.” San Fernando Elec. Mfg. Co. v. JFD Elecs.
Components Corp., 565 F.2d 683, 684 (CCPA 1977).

The Coach case arose:

Furthermore, Symbolic’s reliance on Coach is misplaced.
Although it is true that word marks identical in
sound and appearance may have different meanings and
commercial impressions, 668 F.3d at 1369, the Board’s
finding that this is not such a case is supported by substantial
evidence. Unlike in Coach, Symbolic did not
establish that the words “I AM,” which comprise the
totality of the mark, by themselves “ha[ve] many different
definitions in different contexts,” or that I AM when
applied to Symbolic’s goods “brings to mind” something
different from I AM when applied to registrants’ marks.

Of reverse confusion:

“The term ‘reverse confusion’ has been used to describe
the situation where a significantly larger or prominent
newcomer ‘saturates the market’ with a trademark
that is confusingly similar to that of a smaller, senior
registrant for related goods or services.” In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (quoting Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957
& n.12 (7th Cir. 1992)). In that situation, “[t]he junior
user does not seek to benefit from the goodwill of the
senior user; however, the senior user may experience
diminution or even loss of its mark’s identity and goodwill
due to extensive use of a confusingly similar mark by the
junior user.” Id. Trademark law “protects the registrant
and senior user from adverse commercial impact due to
use of a similar mark by a newcomer.” Id.; see also Wallpaper
Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d
755, 762 (CCPA 1982) (explaining “even where there is
reverse confusion . . . another source with superior de jure
rights may prevail regardless of what source or sources
the public identifies with the mark”).

Symbolic argues that the Board found a likelihood of
reverse confusion and that that finding is not supported
by substantial evidence. The PTO responds that the
Board did not find a likelihood of reverse confusion and
that its finding that the fame of the marks, the fifth
DuPont factor, is neutral is supported by substantial
We agree with the PTO that the Board did not find a
likelihood of reverse confusion. The Board treated the
fifth DuPont factor as “neutral” and explained that the
“purported lack of fame” of registrants’ marks was of
“little consequence.” Symbolic I, 116 U.S.P.Q.2d at 1412;
Symbolic II, 2015 WL 6746544, at *8; Symbolic III, 2015
WL 6746545, at *8. That determination is consistent with
our precedent holding that the purported lack of fame of a
registrant’s mark has “little probative value” in the likelihood
of confusion analysis. Majestic Distilling, 315 F.3d
at 1317.
Symbolic points to a footnote in the Board’s opinions
in support of its contention that the Board found a likelihood
of reverse confusion.

Monday, August 07, 2017

CAFC in Personal Audio: a third-party winning challenger at PTAB is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor

Of the standing issue in Personal Audio (Appeal from the United States
Patent and Trademark Office, Patent Trial and Appeal Board in
No. IPR2014-00070):

We asked the parties to brief the question of whether
EFF has standing to participate in this appeal, in view of
the court’s holding in Consumer Watchdog v. Wisconsin
Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir.
2014), that a PTAB petitioner that does not meet the
Article III case-or-controversy requirement does not have
standing to invoke judicial power, and thus does not have
standing to appeal to this court from a PTAB decision on
inter partes reexamination. The court in Consumer
Watchdog stated that “although Article III standing is not
necessarily a requirement to appear before an administrative
agency, once a party seeks review in a federal
court, ‘the constitutional requirement that it have standing
kicks in.’” Id. at 1261 (quoting Sierra Club v. E.P.A.,
292 F.3d 895, 899 (D.C. Cir. 2002)). Thus the court held
that Consumer Watchdog, a non-profit organization
described as representing the public interest, did not have
standing to appeal to the Federal Circuit from the PTAB
decision that sustained the validity of the patent Consumer
Watchdog had challenged.

35 U.S.C. § 141(c) provides the right of appeal to the
Federal Circuit for “[a] party to an inter partes review or
a post-grant review who is dissatisfied with the final
written decision of the Patent Trial and Appeal Board.”
Consumer Watchdog raises no question as to whether
EFF has standing to appear in this court to defend the
judgment of the PTAB, for EFF is not the appellant. The
Court explained in ASARCO Inc. v. Kadish, 490 U.S. 605
(1989), in an appeal from the Arizona Supreme Court to
the United States Supreme Court, that standing to appeal
is measured for the party “seek[ing] entry to the federal
courts for the first time in the lawsuit”:

The following year, in U.S. Department of
Labor v. Triplett, 494 U.S. 715, 732 (1990), Justice Marshall
explained in concurrence that: “Because respondent
has not invoked the authority of any federal court, then,
federal standing principles are simply inapplicable to
Here, the party invoking judicial review is Personal
Audio; it is apparent that Personal Audio, on cancellation
of its patent claims by the PTAB, has experienced an
alteration of “tangible legal rights . . . that is sufficiently
‘distinct and palpable’ to confer standing under Article
III.” Virginia v. Hicks, 539 U.S. 113, 121 (2003) (internal
citations omitted). With Article III satisfied as to the
appellant, EFF is not constitutionally excluded from
appearing in court to defend the PTAB decision in its

After a discussion of the substantive patent issues, the CAFC
affirmed PTAB:

We have considered all of Personal Audio’s arguments,
and affirm the PTAB’s conclusion that the challenged
claims are anticipated by the Patrick/CBC
reference, and alternatively that the claims are invalid as
obvious in view of the Compton/CNN reference.
The decision of the PTAB, holding claims 31–35 of the
’504 Patent unpatentable, is affirmed.

See also Court says patent troll didn’t invent podcasting

Sunday, August 06, 2017

FRCP 30(b)(6) inquiries are not objectionable solely because the designation would require testimony about a corporation’s opinion or the application of law to facts

In the post Rule 30(b)(6) at 45: Is It Still Your Friend? , some issues with 30(b)(6) depositions are addressed:

In Sigmund v. Starwood Urban Retail VI, LLC, 236 F.R.D. 43 (D.D.C. 2006), the court considered a motion to compel a 30(b)(6) corporate designee to respond to questions. The district court rejected the defendant’s argument that “legal opinions are more appropriately sought through contention interrogatories” as contrasted with 30(b)(6) testimony. The court noted that the advisory committee intended for Rule 30(b)(6) to address mixed questions of law and fact, such as the basis for interpretation of a provision of a contract. Id. at 45. The Sigmund court reviewed and summarized decisions evaluating the request to require an inquiring party to use contention interrogatories as opposed to proceeding by Rule 30(b)(6) and concluded that, while there should be a case-by-case determination of such requests, 30(b)(6) inquiries are not objectionable solely because the designation would require testimony about a corporation’s opinion or the application of law to facts.

As to defendant government bodies:

In High Five Investments, LLC v. Floyd County, Ga., 239 F.R.D. 663 (N.D. Ga. 2007), the court considered the defendant county’s motion for a protective order seeking to prevent a 30(b)(6) deposition. The 30(b)(6) notice contained the following designation:

Such designated agent(s) will be prepared to testify with regard to the ordinance’s enactment process, each and every governmental interest meant to be furthered by the provisions of Floyd County Ordinance 2006-002A, how such interests are furthered by the regulations, and the origin, timing, and authenticity of all materials the County relied upon for enactment of said ordinance. Id. at 665.

The county objected to this 30(b)(6) designation on numerous grounds. The court concluded that the information sought was relevant to the claims at issue and denied the defendant’s motion for protective order.


in Fidelity Management & Research Co. v. Actuate Corp., 275 F.R.D. 63 (D. Mass. 2011), the court considered the plaintiff’s 30(b)(6) notice, through which it sought to discover the facts on which the defendant’s affirmative defenses were based. The court considered the issue of work product in the context of 30(b)(6) discovery directed at a defendant’s claims for damages and affirmative defenses. The court converted the plaintiff’s 30(b)(6) deposition notice into a deposition on written questions on its own motion. Id. at 64.



A Rule 30(b)(6) deponent's testimony represents the knowledge and opinions not just of the individual deponent, but of the governmental or business entity itself. n97 The testimony represents the entity's "position" on the topics in the Rule 30(b)(6) deposition notice. In effect, the deponent is speaking for the entity, presenting the entity's position on the listed topics, including for instance the entity's interpretation of events or documents. n98 Generally, inquiry into an entity's legal position is appropriate in a Rule 30(b)(6) deposition. n99 "The Rule aims to prevent a corporate defendant from thwarting inquiries during discovery, then staging an ambush during a later phase of the case." n100
n97 Canal Barge, slip op. at *1; Calzaturficio, 201 F.R.D. at 37; Smithkline Beecham Corp., slip op. at *9; Taylor, 166 F.R.D. at 361.
n98 Canal Barge, slip op. at *1; Smithkline Beecham Corp., slip op. at *9; Taylor, 166 F.R.D. at 361.
n99 Canal Barge, slip op. at *2.
n100 Rainey, 26 F. Supp.2d at 95; see also Prokosch, 193 F.R.D. at 639 ("Any other interpretation of the Rule would allow the responding corporation to 'sandbag' the depositional process by 'conducting a half-hearted inquiry before the deposition but a thorough and vigorous one before the trial.'"); Taylor, 166 F.R.D. at 362.

Subjective beliefs and opinions are within the permissible scope of 30(b)(6) topics:

From Taza Systems v. Taza, 2012 U.S. Dist. LEXIS 156339 (WD Pa 2012):

Rule 30(b)(6), contrary to common belief, does not require a corporate party to identify the person "most knowledgeable" about a topic. Rather, the organizational entity has the duty to identify a witness to testify on its behalf and to prepare that witness to state the organization's position, knowledge, subjective beliefs, and opinions on identified topics. Harris v. New Jersey, 259 F.R.D. 89, 92 (D.N.J. 2007); State Farm Mutual Auto. Insur. Co. v. New Horizon, Inc., 250 F.R.D. 203, 216 (E.D. Pa. 2008); United States v. Taylor, 166 F.R.D. 356, 361-62 (M.D.N.C. 1996) (cited with approval in Black Horse Lane Assoc., L.P. v. Dow Chem. Corp., 228 F.3d 275, 303-04 (3d Cir. 2000)).

One notes that the list includes knowledge, subjective beliefs, and opinions, and the scope is NOT limited to first hand knowledge of facts.

As to Monell claims

It is understood that discovery can be detailed, rather than simple:

from Jewells v. Casner, 2015 U.S. Dist. LEXIS 156627 (ED NY 2015)

The court acknowledges that Monell claims can often involve onerous discovery demands. See Carr v. City of N. Chicago, 908 F. Supp. 2d 926, 933 (N.D. Ill. 2012) [*12] (recognizing that Monell discovery "can add significant time, effort, and complications to the discovery process" (internal quotation marks and citation omitted)). But the information covered in the Rule 30(b)(6) Notice at issue here - considering also the magistrate judge's limitations - is relevant to the plaintiff's claims.

Information on policy and practice can be sought via 30(b)(6):

from Walden v. City of Chicago, 2007 U.S. Dist. LEXIS 7400 (ND Ill 2015)

In connection with the latter claim, plaintiff served a 30(b)(6) Notice of Deposition on the City, requesting that the City produce a knowledgeable witness to testify to the subject areas relevant to plaintiffs policy and practice claim. The City does not contest that the 30(b)(6) notice ("notice") was proper.
The subject matters contained in the notice include, for example:
. Any investigation, evaluation, report, findings, analysis, or conclusions done or made

Examples of 30(b)(6) witnesses in 42 USC 1983 cases:

2015 U.S. Dist. LEXIS 148344
2014 U.S. Dist. LEXIS 95987
2014 U.S. Dist. LEXIS 65835
62 F. Supp. 3d 1049 (N.D. Cal. 2013)
977 F. Supp. 2d 738 (E.D. Mich. 2013)
957 F. Supp. 2d 442 (S.D. NY 2013)
2012 U.S. Dist. LEXIS 88079

Refusing to produce a 30(b)(6) witness is inappropriate:

On the other hand, rather than simply saying that "Philips cannot provide a witness on this topic as written," Philips could (and should) have responded that "Philips will produce a witness to testify [description]." If ZLC was not satisfied [*15] with that description, ZLC could have proposed an alternative.



Saturday, August 05, 2017

Did the Berkeley CRISPR brief satisfy Dynamic Drinkware to establish Kim provisional filing date?

Further to an earlier post on IPBiz about the Berkeley brief in the CRISPR matter, a quick inspection of the brief does not show the UC/Berkeley lawyers met their burden to establish priority of the Kim application [ US application 14/685,568 (published appl. 20150322457) ] to the earliest provisional filing date under the law of Dynamic Drinkware v. National Graphics,800 F.3d 1375; 2015 U.S. App. LEXIS 15764; 116 U.S.P.Q.2D 1045.

Excerpts from the brief follow. [If anyone has additional information, please comment.]
From the brief-->

Second, the PTAB reasoned that the Kim Application was not public when Broad filed its provisional application in December 2012. But Section 102(e) prior art is prior art as of its effective filing date, not the date on which it eventually becomes public. In re Bartfield, 925 F.2d 1450, 1451 n.4 (Fed. Cir. 1991); Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 254-55 (1965).
Under the correct legal standard, it would have been obvious to a skilled artisan to take UC’s claims to using the CRISPR-Cas9 complex in any environment and follow the steps set forth in the Kim Application in order to use CRISPR-Cas9 to successfully cleave DNA in eukaryotes.13
13 Even if the Kim Application is not considered as Section 102(e) prior art, it is compelling evidence of simultaneous invention that the PTAB refused to consider. Considered under the correct legal standard, the evidence of simultaneous invention (including the Kim Provisional) and the level of guidance and knowledge in the art demonstrate beyond doubt that Broad’s claims are obvious. See Part III, infra.
III. When considered under the correct legal standard and all the evidence, Broad’s eukaryotic claims are obvious in light of UC’s generic claims.
The PTAB’s multiple legal errors led directly to its counterintuitive conclusion that Broad’s claims were not obvious in light of UC’s claims. Broad identified no innovation—or even extensive experimentation—that would be needed to employ UC’s CRISPR-Cas9 system in eukaryotic cells. Nor could it have done so, given that five other research groups succeeded in introducing CRISPR-Cas9 into eukaryotic cells within a matter of months using only conventional techniques. Broad staked its entire argument for non-obviousness (on which Broad bore the burden of proof) on the proposition that a skilled artisan seeking to employ CRISPR-Cas9 to cleave DNA in eukaryotes would have lacked a reasonable expectation that its effort would succeed. The PTAB accepted that argument because it erroneously required “specific instructions” in the prior art and conflated the need for experimentation with a lack of an expectation of success. O’Farrell, 853 F.2d at 903.
Considered under the correct standard and in light of the simultaneous-development evidence that the PTAB erroneously disregarded, the undisputed evidence permits only one conclusion: Broad’s claims are obvious. And at the very least, the PTAB’s decision is not supported by substantial evidence

WWE trademark application serial no. 87543714 for "3:16"

On July 26, 2017, the WWE [World Wrestling Entertainment, Inc ] filed a trademark application for the word mark 3:16 as applied to goods: IC 025. US 022 039. G & S: Clothing, namely, tops, shirts, jackets, sweatshirts, hoodies; outerwear, namely, coats; bottoms, pants, shorts, underwear, dresses, pajamas, lingerie, clothing ties, scarves, gloves, swimwear; Halloween and masquerade costumes; footwear, namely, shoes, sneakers, slippers, flip flops, boots; headwear, namely, hats, caps; wrist bands; bandanas. The serial number is 87543714.

As of July 31, 2017, the application was in NEW APPLICATION PROCESSING. The trademark application has been accepted by the Office (has met the minimum filing requirements) and has not yet been assigned to an examiner. The application will be assigned to an examining attorney approximately 3 months after filing date [which was July 26].

Friday, August 04, 2017

"A Lion Walks Among Us"

On 3 December 1961, the episode "A Lion Walks Among Us" of the ABC television series "Bus Stop" was broadcast. With the resultant firestorm, this was the only time this episode was broadcast on commercial television and it is not available on DVD. ABC president Oliver Treyz, who insisted on broadcasting it despite many concerns, would later be fired, and Bus Stop was cancelled.

Roy Huggins, the executive producer, saw his career at 20th Century Fox derailed, and, separately, got into a war of words with Newton Minow of the FCC.

There is an interesting blog post on A Shroud of Thoughts. LINK: http://mercurie.blogspot.com/2008/09/bus-stop-lion-walks-among-us.html?m=1

Of legal interest, the deranged psychopath in the episode (played by Fabian, who actually seemed to benefit from the controversy) killed his defense attorney, who had gotten him off of another murder rap.

Of academic interest, while recovering from the fallout, Huggins resumed working on his PhD at UCLA, and was out of the entertainment business for a while. "The Fugitive" did get moved along. He did later work on the Rockford Files, re-uniting with James Garner.

Of IP interest, there is funny business on crediting of Huggins' work done by Warner.

Most of the "bad acts" by Fabian's character appear in a short clip which precedes the title and credits at the beginning. There is a lengthy courtroom scene wherein the prosecutor's wife, who has relevant (time) evidence, is "destroyed" by the defense attorney. The prosecutor (played by Richard Anderson) is shown bowed down, hand on head.

Homeland wins appeal at CAFC against Whirlpool

Homeland Housewares, LLC (“Homeland”) petitioned the United States Patent and Trademark Office Patent Trial and Appeal Board (“Board”) for an inter partes review of claims 1–16 of U.S. Patent No. 7,581,688 (“’688 patent”), which is assigned to Whirlpool Corporation (“Whirlpool”). The Board did not construe the key term “settling speed” found in the claims and determined that the claims were not invalid as anticipated by prior art reference U.S. Patent No. 6,609,821 (“Wulf”). Homeland appeals. We reverse.

Of anticipation

Anticipation is a two-step analysis. The first step is properly interpreting the claims. Beachcombers v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir. 1994). The second step is determining whether the limitations of the claims, as properly interpreted, are met by the prior art. Id. The Board determined that Wulf did not anticipate the ’688 patent because its disclosures did not meet the “settling speed” limitation. J.A. 14. However, the Board did “not adopt any explicit construction of the term for [its] Final Written Decision,” J.A. 7, even though the parties disagreed as to claim construction.2 Just as district courts must, “[w]hen the parties raise an actual dispute regarding the proper scope of . . . claims, . . . resolve that dispute,” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008), the Board also must resolve such disputes in the context of IPRs. See CSR, PLC v. Skullcandy, Inc., 594 F. App’x 672, 678 (Fed. Cir. 2014) (holding that “[t]he Board erred by failing to construe ‘threshold value’ as it is used
in claims 1–6 before finding that [prior art reference] Smith failed to disclose a ‘threshold value’” in anticipation). Given that the Board did not rely on extrinsic evidence here as to claim construction, we can determine the correct construction of “settling speed” and then determine whether the Board correctly held that Wulf does not meet the limitations of claim 1. Teva, 135 S. Ct. at 841.

“[T]he claim construction inquiry . . . begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (citations omitted). Here, the relevant language of claim 1 provides that during pulsing, “the speed of the cutter assembly is reduced from the operating speed to a predetermined settling speed.” ’688 patent, col. 7 ll. 15–17 (emphasis added).


The words of a claim are generally given their ordinary and customary meaning. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). In some cases, the ordinary meaning of claim language may be readily apparent and claim construction will involve little more than the application of the widely accepted meaning of commonly understood words. Id. at 1314. Here, it is undisputed that the plain meaning of “predetermined” is to determine beforehand. This plain language definition does not require that a predetermined speed be empirically determined for each use, depending on the particular blender or the individual contents of the blender. Claims must also be read in view of the specification, of which they are a part. Phillips, 415 F.3d at 1315. While the specification refers to an embodiment of the invention in which “a predetermined settling speed” is empirically determined and varies depending on blender use, the process for empirically determining a settling speed is neither taught in the specification nor a part of the claims. The claim language only requires “a predetermined settling speed,” and does not require empirically determining a particular settling speed for a particular blender or a particular blender load.

There was a dissent.

NEWMAN, Circuit Judge, dissenting. The court today rewrites the claims of the ’688 patent, adopting a “claim construction” that states the invention more broadly than did the patentee. The court then holds its broadened claims anticipated by the prior art, on which the patentee has provided an improvement that is not shown in the prior art.


The court’s rejection of the Board’s finding that the claims are not anticipated is based on an incorrect understanding of the claims, coupled with an unwarranted enlargement of the references. The ’688 patent is directed to an improvement in blender technology, an improvement explained in the specification and by unrebutted expert testimony. My colleagues make their own findings, construe the claims to broadly include the prior art, and then invalidate the claims based on their unduly broad claim construction.

Substantial evidence:

The Board’s findings are supported by substantial evidence; the majority does not show otherwise.2 As reiterated in Apple Inc. v. Samsung Electronics Co., Ltd., “such fact findings are indisputably the province of the [factfinder].” 839 F.3d 1034, 1039 (Fed. Cir. 2016). The structure of the post-grant administrative process assigns to this court the traditional “appellate function . . . limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and . . . requiring appropriate deference be applied to the review of factfindings.” Id.; see also Cutter v. Wilkinson, 544 U. S. 709, 718, n.7 (2005) (“[W]e are a court of review, not first view.”). The panel majority does not discuss the substantial evidence on which the Board’s decision was based, ignores the unrebutted expert evidence, and in general oversteps the appellate role.

Thursday, August 03, 2017

Burt Bacharach on derivation in copyright law

The BBC posted text concerning comments made by Burt Bacharach on copyright law:

Bacharach, a multiple Grammy and Oscar winner is famed for such classics as I Say A Little Prayer and Close to You, said it was "a delicate matter".

"It's not a perfect science," he told the BBC's Colin Paterson.

"I think what needs to be done is there has to be maybe three, four outstanding experts, musicologists, who can be trusted, who can differentiate and say 'that's derivative, that's not derivative'."

Bacharach explained that with a limited number of notes, some songs were bound to be similar.
"It's one octave you've got to play with. Some songs sound like others. Things are messy enough in the world of pop music and records and downloads, free music and things like that."

link: http://www.bbc.com/news/entertainment-arts-40813002

In thinking about derivative work, one also must consider the concept of transformative.

The Berkeley brief in the CRISPR interference appeal

On July 31, Kevin Noonan at Patent Docs posted Berkeley Files Opening Brief in CRISPR Appeal, which included the text:

The brief also faults the Board for not considering a provisional application by Kim (U.S. Provisional Application No. 61/717,324, filed October 23, 2012, and later published as U.S. Application No. 14/685,568) as prior art under 35 U.S.C. §102(e). (In many ways this is the brief's strongest argument, because this reference is clearly prior art to the earliest-filed Broad provisional, and Berkeley has a strong argument that the Board not considering it was legal error.)

Finally, Berkeley argues that Broad had not shown that it was entitled to the December 12, 2012 filing date of its earlier provisional. According to the brief, the Board should have considered October 15, 2013 as the relevant "end date" for considering prior art; if it had done so, many of the references not considered by the Board (set forth in the table above) would have made it impossible for Broad to satisfy its burden of proof that its claims were not obvious. Instead, the brief contends that the Board "assume without analysis" that Broad was entitled to its December 12, 2012 first provisional filing date for its "hundreds of involved claims," a conclusion Berkeley contends was error.

Broad will have the opportunity to make its arguments in favor of the Board's decision in the coming months; oral argument should be scheduled for some time before the end of the year.

***Of the Kim reference mentioned by Noonan:

*One notes that US application 14/685,568 (published appl. 20150322457) has first published claim:

A composition for cleaving a target nucleic acid sequence in a eukaryotic cell, the composition comprising a Type II Clustered Regularly Interspaced Short Palindromic Repeats (CRISPR)/Cas system in a eukaryotic cell, wherein the Type II CRISPR/Cas system comprises: a) a nucleic acid encoding a Cas9 polypeptide, and b) a nucleic acid encoding a guide RNA that hybridizes with the target nucleic acid sequence, wherein the Cas9 polypeptide and the guide RNA form a Cas9/RNA complex in the eukaryotic cell and wherein the guide RNA has sufficient sequence complementarity to the target nucleic acid sequence in the eukaryotic cell to allow the Cas9 polypeptide to mediate double stranded cleavage at the target nucleic acid sequence.

*This application derives from a PCT application, which in turn claims priority to more than one provisional: The present application is a continuation application of PCT/KR2013/009488 filed Oct. 23, 2013, which claims priority to U.S. Provisional Application No. 61/837,481 filed on Jun. 20, 2013, U.S. Provisional Application No. 61/803,599 filed Mar. 20, 2013, and U.S. Provisional Application No. 61/717,324 filed Oct. 23, 2012, the entire contents of each aforementioned application are incorporated herein by reference.

*It is not so clear that the saga of the Kim application is "good" for UC/Berkeley. In the rejection mailed November 7, 2016, the attached interview summary shows the applicant argued for unpredictability.
Dr. Bryan Cullen argued there was no expectation of success that the Doudna/Jinek system would work in eukaryotic cells, the same argument as that of Broad. Does UC/Berkeley want the Cullen material on the record?

Furthermore, in pre-AIA law, the granting of the provisional filing date to a later patent/published application is a bit tricky.

As William Valet pointed out in discussing Dynamic Drinkware v. National Graphics :

The ultimate issue during this appeal was whether Dynamic had satisfied its burden of proving that the claims of U.S. Patent No. 7,153,555 to Raymond (the “Raymond Patent”) were supported by the written description of Provisional Application No. 60/182,490 (the “Provisional Application”), thus permitting the use of the disclosure of the Provisional Application to anticipate the claims of U.S. Patent No. 6,635,196 (the “‘196 Patent”) to National Graphics, LLC (“National”).


Dynamic’s troubles did not end there. Since Dynamic was not entitled to a presumption that a non-provisional application claims priority to its provisional application, Dynamic had the burden of proving that the Raymond Patent was entitled to the benefit of the filing date of the Provisional Application. Unfortunately, Dynamic merely compared “the claims of the ‘196 patent to the disclosure of the Raymond Patent and claim 1 of the ‘196 patent to the disclosure of the Raymond provisional application,” and therefore failed to meet this burden. (Slip Op. at 11, citing Appellant’s Br. at 22).

Because Dynamic failed to meet its burden, the court ultimately agreed with National Graphics, noting that, “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. (Slip Op. at 11, citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981).) The court included a reminder that “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” (Slip Op. at 11). Ultimately, the court noted, by failing to “compare the claims of the Raymond patent to the disclosure in the Raymond provisional application,” “Dynamic did not make that showing.” (Id., citing Appellant’s Br. at 22, emphasis added).

To be specific, from the case, 800 F.3d 1375; 2015 U.S. App. LEXIS 15764; 116 U.S.P.Q.2D 1045 :

For a patent to claim priority from the filing date of its provisional application, it must satisfy 35 U.S.C. § 119(e)(1) (2006), which provides that:

An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title . . . .
(emphases added). "In other words, the specification of the provisional must 'contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,' 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application." New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (emphases in original).

Of the Giacomini case:

As relevant here, we found that "[b]ecause Giacomini never argued before the Board that the Tran provisional failed to provide [page 1381] written description support for the claimed subject matter in accordance with [page 1050] section 119(e), Giacomini waived the argument by failing to raise it below." Id. at 1383 (citation omitted). We ultimately concluded that the Tran patent had the same "patent-defeating effect" as though it was filed on the date of the Tran provisional. Id. at 1385. Because Giacomini waived the argument that the Tran provisional application did not support the Tran patent, we did not reach the question whether the Tran patent was presumptively entitled to the benefit of the filing date of its provisional application.

Asserting that it carried that burden, Dynamic argues that it provided sufficient evidence to prove that the Raymond provisional application provided written description support for the claims of the Raymond prior art patent. Dynamic contends that, as part of its petition, it compared the claims of the '196 patent to the disclosure in the Raymond patent. According to Dynamic, it then provided a claim chart in its reply brief to the Board establishing anticipation of claim 1 of the '196 patent by the Raymond provisional application. Dynamic argues that the combination of the two charts demonstrates that the Raymond provisional application provides written description support for the claims [page 1382] of the Raymond patent.
National Graphics responds that Dynamic only made a conclusory assertion in its petition that Raymond was entitled to an earlier effective date, and the argument is therefore waived. National Graphics also argues that, even absent a determination of waiver, the Board's decision is supported by substantial evidence because Dynamic never compared the claims of the Raymond patent to the disclosure in the provisional application.

First, we find that Dynamic did not waive its argument that Raymond was entitled to an earlier effective date. As discussed supra, Dynamic did not have the burden of producing evidence relating to the Raymond provisional application until after National Graphics made its argument regarding reduction to practice. As a result, it was not necessary for Dynamic to prove in its petition that Raymond was entitled to the filing date of its provisional application. Thus, there was no waiver.

We ultimately agree with National Graphics, however, that the Board's decision was supported by substantial evidence because Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981).2 As Dynamic acknowledges, it provided charts to the Board comparing the claims of the '196 patent to the disclosure of the Raymond patent and claim 1 of the '196 patent to the disclosure of the Raymond provisional application. See, e.g., Appellant's Br. at 22. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic's burden. A provisional application's effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.

Of published applications (rather than issued patents) see also Amgen, 2016 U.S. Dist. LEXIS 26049 :

3. Because I asked the parties to identify the case that best supports their respective positions, I assume that there is no case on point, that is, a case where defendants are relying for their obviousness defense on a published application (as opposed to a patent) which is only prior art by claiming priority to an earlier filed unpublished application, neither of which have claims that have been examined. I recognize that the references at issue may change; nevertheless, I believe the law is more accurately described in Dynamic Drinkware. However, because plaintiffs did not object to the two prior art references at issue until the conclusion of expert discovery through the Daubert motion exercise, I decline to grant plaintiffs' motion to preclude defendants from presenting their obviousness defense and will, instead, give defendants the opportunity to supplement their expert reports to appropriately address the question of whether the Schering and Novartis references constitute prior art by comparing their claims to the prior disclosures. (D.I. 247 at 62) If the parties need a short postponement of the trial date to accommodate this order, I will make it so.

See also VERINATA HEALTH, INC., 2017 U.S. Dist. LEXIS 7728 :

Ariosa is correct that the PTAB never specifically compared Fan with the challenged claims of the '794 Patent in its final written decision. See Decl. Wathen (Dkt. No. 301), Ex. 18. Rather, the PTAB found that, under the Federal Circuit's decision in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), Ariosa failed to carry its burden to demonstrate that Fan was prior art under § 102. Establishing priority is one of the elements of a claim that the patent is invalid on anticipation grounds, not an evidentiary "technicality."

***Pre-AIA law is NOT what one intuitively expects (did the provisional provide DISCLOSURE rendering the later challenged claims not patentable?) but rather is claim-centric (did the written description of the provisional support the claims of the patent/application arising from the provisional?). Intuitively, Dynamic had a good case; legally, under pre-AIA, it did not.

link to Valet piece: http://www.cdfslaw.com/publications/think-provisional-application-qualifies-prior-art-better-think/