Sunday, December 30, 2012

"60 Minutes" on December 30, 2012

First, Scott Pelley on prosthetics. More than 1300 Americans have lost limbs on the battlefield. The connection of a robotic limb to a human brain. A mind that is game. Jan Sherman, a Pittsburgh mother of two, who was on Wheel of Fortune in 1995. Jan Sherman suffered from a genetic disease. Andy Schwartz of University of Pittsburgh on "Revolutionizing Prosthetics." The holy grail was to connect the robot to the human brain. Elizabeth Tyler Cabarra was the surgeon who did the surgery on Jan Sherman. Two sensor arrays were placed on the surface of Jan Sherman's brain. Five months after the surgery, 60 Minutes came back. Dr. Jeffrey Ling is the program manager. Have stepped over a great threshhold: restoration of function. Brain's ability to adapt to new circumstances. Arms and legs are just tools to the brain. 57 year old Johnny Mathney lost an arm to cancer. Signals come from brain go from brain even though arm is not there.

IPBiz note. Although Pelley did not mention it, a more thorough discussion of control of artificial limbs appears in the January 2013 issue of Scientific American: D. Kacy Cullen, "Bionic Connections," Scientific American, Volume 308 Number 1, pp. 52-57.

Second, Lara Logan on Morten Storm, former Danish spy who claims to have played a crucial role in the controversial CIA drone strike that killed Anwar Al Awlaki.

Third, Jud Apotow done by Anderson Cooper.

S3 Mini "out" in Apple patent suit against Samsung

CBS Sunday Morning on December 30, 2012

Charles Osgood introduced the stories for the last Sunday Morning of 2012. The cover story is on fracking, done by David Pogue. Jamie Foxx is interviewed by Byron Pitts. I still pinch myself. Third, Hail and farewell to people who have died in the year 2012. Fourth, Mo Rocca on Cancun, art that lives underwater. Fifth, fast draw. Sixth, Scotland. Seventh, good and bad of 2012. Headlines: Senator negotiators. 23 year old woman of India was cremated. Woman subway pusher. George Bush improving. 150th anniversary of Emancipation Proclamation (slaves forever free [?]). Weather: turning colder in northeast.

Natural gas is cheap and plentiful. American shale basins. Marcellus shale formation. Cabot Oil and Gas. 3/4 of billion cubic feet of gas per today. Pogue illustrates with a layered cake. Robert Jackson of Duke University. In last decade, horizontal business added. Bob and Tina McShane in New York. Stories of contaminated water. Ramsey Adams of Catskill Water Keepers. Clip from movie "Promised Land." 99% of fracking fluid is water and sand. Higher likelihood of finding gas in water. Michelle Bamberger and Bod Oswald have studied the issue. Methane migration. Now, in PA, water tested before and after fracking. Also, issued of "where" used water goes. Now, recycle used water. There is so much we don't know. Issue of proprietary chemicals. Issue of nondisclosure agreements. EPA is doing a study. 36,000 fracking wells in US. Price of natural gas has dropped 86% since 2008. Fracking isn't going away. Pulse: 36% don't know if fracking is safe.

Almanac. Dec. 30, 1695. Samuel Borland died. The inventor of the first calculating machine. 1981: IBM first desktop. Clip from Seinfeld. Daily planner; figure out tips. In 1976, challenge to Devi. 986 is the answer to a cube root problem.

Mo Rocca does "Sunken Treasures" in Cancun, Mexico. MUSA is the underwater museum. Jaime Gonzalez, Marine Park Director, wanted to divert attendance from natural reefs damaged by hurricanes, so that they could re-grow. Roberto Diaz, operator of Apple World, does underwater tours. Taylor created statues of local Cancun people, made via molds. A nun who was Taylor's Spanish teacher. Victoria Secret model. Ultrahard concrete. Art gone wild. People visit the underwater statues instead of the reef.

News events. Costa Concordia wreck in Italy in January 2012. Treyvon Martin in Sanford, FL in February. In March, world population at 7 billion. In April, NYC building. In May, super moon. In June, 5-4 Supreme Court on Obamacare. In July, Aurora, Colorado. Olympics in London. In August, Republican convention in Tampa. Clint Eastwood. In September, Democrat convention. Benghazi. Chris Stevens. In October, Sandy, late season hurricane. In November, Obama won. In December, Sandy Hook in Newtown, CT. Now, the fiscal cliff.

Byron Pitts does the "Sunday Profile" on Jamie Foxx. Best Actor Oscar for role as Ray Charles. Life is notes under your fingers; all you have to do is hit the right notes. Role in Tarantino movie. Born in Terrill, Texas. Star of high school football team. Bradshaw Street. I still got ya, just in case you fall. Scholarship to college in San Diego. Took name Jamie Foxx. "In Living Color" Wild parties. I can't wait to go there and have fun. Bill Cosby was critical of Jamie Foxx. Booty Call. Movie: Any Given Sunday. Shininess of being TV. Movie with Michael Mann. In 2005, nominated for two different Oscars. Got a call from Oprah. Sidney Poitier. At end of speech, tribute to grandmother: she still talks to me, in my dreams. Jamie Foxx loves music best. Remnants of her in my thoughts.

Steve Hartman on legacy in northeast Michigan (Midland). Launching Chinese balloons. Jayden Lamb. I'm never going to get married daddy; God needs me more. Kind deeds being done.

Willem Marks on Scotch whiskey. Isle of Islay. Water, malted barley, and yeast. Copper stills and wooden barrels. Peat smoke rich. Peat smoke used to flavor the barley. The sheep outnumber the people. Summer camp for adults: festival in the summer. Bowmore. John Campbell, master distiller at Laphroaig . [Ardbeg, Lagavulin, and Laphroaig ]

Hail and farewell starts with Dick Clark. Then Dave Brubeck. Jerry Nussen of the Muppets. Ann Curtis, swimmer in 1948. Neil Armstrong. Andy Williams (Moon River). Sun Yung Moon. Sherwood Rowland (phaseout of CFCs). Inouye, McGovern, Schwarzkopf. 300 servicemen who died. Mass shootings Aurora, CO; Oak Creek, WI; Newtown, CT. Whitney Houston. Mike Wallace. Most feared words in English language: Mike Wallace is here. Levon Helm, The Last Waltz. Elizabeth Catlett. Russell Means. Richard Threlkeld did initial cover story of Sunday Morning in 1979. Leroy Neiman. Jack Klugman as Oscar. Hector Macho Camacho. Alex Karras. Ernest Borgnine. Vidal Sassoon. Phyllis Diller. Maurice Sendak, where the wild things are. Adam Yelp of Beastie Boys. Davy Jones. Richard Dawson. Sherman Helmsley. Don Cornelius. Donna Summer. Helen Gurley Brown. Nora Ephron. Larry Hagman. Marvin Hamlisch. Joseph Murray and Donnall Thomas (Nobel Prize winners). Ray Bradbury. Sally Ride. Earl Scruggs. Andy Griffith. Etta James.

Fast Draw on baby colors. ToysRUs catalog in Europe. Book: Pink and Blue. Picture of FDR.

Week ahead. Monday: Newsweek. Tuesday: New Years. Wednesday: Holmes of Aurora.
Thursday: Sandy Hook. Friday: confirm Obama as winner.

Next week. MaCrystal and Laura Dern.

Moment of nature. HandiHaler. Cache Le Poudre River in Colorado.

Friday, December 28, 2012

Inventive rodent control?

See Ex parte Endepols concerning application 10/477,480 and a method of removing rodents.

Xerox provides no persuasive evidence in Ex parte Wegeng

Obviousness found in Ex parte Wegeng.

Conclusory statements without evidence don't work well at the Board:

In connection with contention 2 Appellants argue “one of ordinary skill in the art would not look to the Wang et al. reference in combination with the Nelson et al. reference to perform a method [according to claim 1.]” App. Br. 13. However, Appellants provide no persuasive evidence in support of their conclusion. Instead, we find that the Examiner has provided an articulated reasoning with a rational underpinning to substantiate the obviousness rejection. See Ans. 5-6 and 20. Accordingly a conclusion of obviousness is proper. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We therefore find that Appellants do not provide persuasive evidence or argument to rebut the motivation for combining provided by the Examiner and conclude that there is no error.

Eyewitness identification fails because of identical twin

There are many stories of faulty eyewitness identification. In Trenton, NJ, one finds a story of an absolutely correct eyewitness ID, thwarted by the existence of an identical twin.

From the Trenton Times, about a crime committed by one Anthony Burkhalter:

The victim was able to identify a mugshot of Steven Burkhalter, Anthony Burkhalter’s identical twin brother, as the man she believed committed the sexual assault, the prosecutor said. Steven Burkhalter was incarcerated at a prison in Missouri at the time and police did not know that had a twin, Downing said. No charges were filed immediately following that incident.

Anthony Burkhalter’s photo was not originally included in the photos the victim used to identify her assailant.

Thursday, December 27, 2012

"Best Exotic Marigold Hotel" theme of outsourcing old age comes true in real life

Signs of real life emulating art [ The Best Exotic Marigold Hotel ] appear in the post
Germany accused of 'deporting' its elderly: Rising numbers moved to Asia and Eastern Europe because of sky-high care costs , which includes the text:

According to Germany’s federal bureau of statistics, more than 400,000 senior citizens cannot afford a German retirement home, a figure growing by around 5 per cent a year. This is because many are living for longer while their pensions are stagnating.
As a result, the Krankenkassen – or statutory insurers that make up Germany’s state insurance system – are discussing cheaper care in foreign retirement homes.

Innovation not stifled by current patent system

Note the post at IPFinance titled No evidence of stifled innovation in smartphone patent battlefield suggesting that prophets of patent doom [such as Jaffe and Lerner?] are misguided.

Moriguchi cited in Ex parte BARRACLOUGH

From within Ex parte KEITH BARRACLOUGH:

Of written description:

To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellants possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). But, “[t]he claims do not run afoul of the written description requirement simply because it is possible to broadly interpret the claims in a way that is not described in the Specification.” Ex parte Moriguchi, 2012 WL 1637675 at *3 (BPAI 2012) (citing cases decided by the U.S. Court of Customs and Patent Appeals).

Of res judicata:

Although it is not clear whether res judicata can be applied to ex parte proceedings before the Board (see In re Craig, 411 F.2d 1333, 1336 (CCPA 1969)), we note that the Board’s previous decision in this case agreed with the Examiner’s finding that “Hamlin’s routing telephone network data to pods and receiving units in the home, constitute ‘a plurality of telephony- based appliances communicatively coupled to the bussing arrangement.” 2008 Board Decision 12 (emphases added).

Lovin is cited:

Appellants’ arguments in their Appeal Brief in opposition to the rejections of claims 3 and 5 are not persuasive because they only recite claim language. An argument that merely points out what a claim recites is unpersuasive. 37 C.F.R. § 41.37(c)(1)(vii). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”).

Of issues not initially briefed:

Appellants’ Reply Brief raises a number of arguments in opposition to the rejections of these claims. Reply Br. 7, 9. However, these arguments have been raised for the first time in the Reply Brief and are therefore waived. “[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). “[A]n issue not raised by an appellant in its opening brief . . . is waived.” Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citations omitted) (internal quotations marks omitted).

Siemens loses appeal to Board

Siemens (Iselin, NJ) lost its appeal in Ex parte Ahmed. From the case:

Appellants’ argument that the cited prior art, collectively, fails to teach the disputed limitation unpersuasively focuses only on the teaching of Ingley. See In re Keller, 642 F.2d 413, 426 (CCPA 1981)(finding that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references); see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).


Appellants’ remaining arguments are likewise unpersuasive. For example, we disagree with Appellants that the Examiner’s finding of obviousness would require “leaving [Ingley’s] transponder 430 in place.” (Reply Br. 3.) “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”
Keller, 642 F.2d at 425.

Nonfunctional descriptive material discussed in Ex parte Kerr

Within Ex parte Kerr

To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” Mere disclosure of alternative embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

Nonfunctional descriptive material cannot render nonobvious an invention that would otherwise have been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex parte Curry, 84 USPQ2d 1272, 1274 (Bd. Pat. App. & Int. 2005); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing cases pertaining to non-functional descriptive material).

When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1993).


We agree with the Examiner that Appellants may not show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Further, Appellants’ arguments are not commensurate in scope with the claim. The Examiner relies on Fitzgerald only for a teaching of “archiving the mediums in a storage area” (Ans. 15). We agree with the Examiner that Fitzgerald teaches this limitation (Ans. 15-16).

The rejections of Eastman Kodak's claims was affirmed.

KSR was cited for the basic concept of obviousness:

Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).

The Board discusses "obvious improvement" in MacKenzie

The Board affirmed obviousness in Ex parte PHILIP D. MacKENZIE

Moreover, we are not persuaded by Appellant’s arguments, which unduly focus on the individual steps in Faucher’s joint process to obtain a session key and ignore the capabilities of the skilled artisan. The test for obviousness is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See id. at 426; In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).

As to "obvious improvement,"

The Examiner’s proposed combination of Cramer-Shoup and Faucher predictably uses prior art elements according to their established functions— an obvious improvement. See KSR, 550 U.S. at 417. Accordingly, we find the Examiner’s reason to combine the teachings of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion.

AND, of the need for substance in arguments,

Apart from merely summarily asserting that the relied on portion of Cramer-Shoup (col. 7, ll. 10-27) does not teach or suggest generating information a form of the random secret, a share of a private key, and the ciphertext, Appellant does not persuasively show error in the Examiner’s position in this regard (App. Br. 10; Reply Br. 5). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”).

Obviousness affirmed in Ex parte Karr

Many cases are cited in the Board's affirmance in Ex parte Karr:

If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). To establish a prima facie case of obviousness, so as to meet the notice required of 35 USC § 132, requires (1) “set[ting] forth the statutory basis of the rejection”; (2) “the reference or references relied upon”; and (3) explaining the references “in a sufficiently articulate and informative manner.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Further, there must be (4) “a reason to combine prior art references[, which] is a question of fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012) (internal citations omitted). Also, an obviousness determination cannot rest upon impermissible hindsight reasoning, and to guard against hindsight reasoning the Federal Circuit “flexibly seeks evidence from before the time of the invention in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.” Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010) (internal citations omitted).

The Examiner has provided articulated reasoning with a rational underpinning to support the combination for the legal conclusion of obviousness, i.e., set forth a prima facie case of obviousness in rejecting claims 1-4, 6, and 9-23 under §103(a) over Parkin, Horng, and Fontana, Jr. (Ans. 3-14). In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also, while not required to, Appellants have not submitted evidence of secondary considerations. Evidence of secondary considerations “may also serve a guard against slipping into use of hindsight.” Kahn, 441 F.3d at 986 (quoting Graham v John Deere Co., 383 U.S. 1, 36 (1966)). Therefore, we accord very little probative value to Appellants’ conclusory statements that combining the teachings of Parkin, Horng, and Fontana, Jr. required more than ordinary skill in the art.

Footnote 2 states:
Once the Examiner has satisfied the burden of presenting a prima facie case of obviousness, the burden then shifts to Appellants to present evidence and/or arguments that persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

KSR was not cited.

Board affirms obviousness rejection in Ex parte Lim

The Board cited KSR in Ex parte Lim

We also agree with the Examiner’s explicit motivation that combining the references would be obvious since all four references are of an “analogous art” of mobile communication terminals having image processing and multiple displays for displaying thumbnail images and other data (Ans. 8-9). The Supreme Court has stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

Whether there is significance to "whether or not" a given Board decision explicitly cites KSR in an obviousness case may be questioned.

CAFC addresses attorney disqualification in Valeant v. Watson

The order in Valeant v. Watson gives insight in attorney disqualification issues based on later representation adverse to a former client. The concept of "generally known" information was argued.

The issue arose because Watson proposed to use Winston and Strawn in an appeal of a decision in a patent case, and a lawyer (Braden) at Winston and Strawn had once represented Valeant:

On appeal, Kasowitz [attorneys for Watson at trial] informed Valeant of Watson's intention to retain Winston & Strawn for this appeal. Valeant declined to consent to Winston & Strawn's representation of Watson and timely informed Watson of its opposition.

Valeant argues that two legal professionals now at Winston & Strawn had formerly represented Valeant in the Valeant Matters while at Howrey LLP and obtained relevant knowledge about the matters. Valeant identifies these individuals as attorney Georgianna Braden and paralegal Alissa Hodges. Applying Florida's Rules of Professional Conduct, Valeant argues that, because Ms. Braden acquired Valeant's protected information during her time at Howrey, her new firm, Winston & Strawn must now be disqualified from representing Watson in this appeal.

Watson argues that this court should not apply Florida's Rules of Professional Conduct, but instead only the ethical code of the United States Court of Appeals for the Eleventh Circuit.

Of the "which rules apply" matter, the CAFC noted:

The parties dispute whether the regional circuit law in this case also includes ethical rules applicable to the underlying district court. In previous unpublished rul- ings, this court has applied a district court's ethical rules to determine whether counsel should be disqualified on appeal. See Touchcom, Inc. v. Bereskin & Parr, 299 Fed. Appx. 953, 954 (Fed. Cir. 2008); Outside the Box Innova- tions, LLC v. Travel Candy, Inc., No. 2009-1171, 2010 WL 2160753 (Fed. Cir. May 26, 2010). In any event, there could be inconsistencies if we did not apply the district court's ethical rules, for example, if this court's decision requires a remand to the district court. We determine that it is appropriate to apply the Florida Bar Rules in this instance.

Of the Florida rules:

Rule 4.1-10 of the Florida Bar Rules of Professional Conduct states that "[w]hen a lawyer becomes associated with a firm, the firm may not knowingly represent a person in the same or substantially related matter in which that lawyer, or a firm with which the lawyer was associated, had previously represented a client whose interests are materially adverse to that person and about whom the lawyer had acquired information protected by rules 4-1.6 and 4-1.9(b) and (c) that is material to the matter."

The issue of "generally known":

Rather, Watson contests whether the material that Ms. Braden acquired while at Howrey would have been protected by the Florida Bar Rules. Watson argues that any information about Valeant that Ms. Braden acquired while at Howrey is "generally known" as defined by Florida Bar Rule 4-1.9(b) and therefore not disqualifying.

As to published pleadings, the issue arose in Cohen v. Wolgin:

Cohen v. Wolgin, 1993 U.S. Dist. LEXIS 9040 , stating “since the pleadings are accessible to the public upon demand, it is concluded that any information that is contained in the pleadings filed in prior state or federal litigation regarding Hotel Rittenhouse Association ("HRA") is "generally known".”

Watson's position:

Watson relies on comments to the rules, which state that "[i]nformation that has been widely disseminated by the media to the public, or that typically would be ob- tained by any reasonably prudent lawyer who had never represented the former client, should be considered generally known and ordinarily will not be disqualifying." Watson argues that any information Ms. Braden acquired should be considered generally known, largely due to the fact that the material has been publicly litigated in the Valeant Matters.

There was no doubt that Braden had access to confidential materials:

Declarations submitted by both Valeant and Watson indicate that Ms. Braden had knowledge about confidential information material to this case. She worked on validity issues for several asserted patents and reviewed confidential documents, such as laboratory notebooks.

The CAFC rejected the "generally known" argument and disqualified Winston & Strawn:

Watson argues that this information would be consid- ered "generally known" because some Valeant matters have been litigated publicly and some information would be gleaned through typical discovery procedures. The comments to the Florida Bar Rules, however, indicate that while "information acquired in a prior representation may have been rendered obsolete by the passage of time," "knowledge of specific facts gained in a prior representation that are relevant to the matter in question ordinarily will preclude such a representation." Florida Bar Rule 1- 9, cmt. Watson has not convinced us that confidential matters became publicly known, nor have the declarations submitted by Watson overcome the prima facie showing that Ms. Braden had knowledge of at least some confidential information material to this case. Because Ms. Braden is otherwise prohibited from representing Watson, her new firm is likewise prohibited. See Edward J. DeBartolo Corp. v. Petrin, 516 So. 2d 6, 6-7 (Fla. 5th Dist. Ct. App. 1987).

The Cohen v. Wolgin case was briefed in Vares-Ebert v. Kelberg (NJ Appellate A–4581–10T2), wherein Kelberg tried to suppress "generally known" information from court documents, with the Appellate Division observing:

The confidentiality provisions of the settlement agreement are inconsistent with N.J.S.A. 45:9–22.21 to –22.25, specifically, N.J.S.A. 45:9–22.23a(10) and Rule 1:38, which permit free access by the public to the information sought to be concealed.

Of separate interest is the footnote of the NJ Appellate decision, as initially published:

A subsequent order dated May 14, 2010, enforced the settlement between plaintiff and defendant Kelberg and ordered plaintiff to sign the Stipulation of Dismissal with prejudice, the Release, and the Certification of Medicare eligibility within fifteen days.   Plaintiff has not designated this order in the notice of appeal or amended notice of appeal.   Therefore, none of the terms of this order are subject to review.   Rule 2:5–1(f)3A;  see W.H. Indus., Inc. v. Fundicao Balancins, Ltda, 397 N.J.Super. 455, 458 (App.Div.2008).

The footnote was later modified in what IPBiz terms a "Sikahema event."

UPDATE. 13 Sept 2015


"The Lone Ranger" and invention

From wikipedia on the movie The Legend of the Lone Ranger :

In a sequence in the movie, John Reid, a newly graduated attorney, is traveling west in a stagecoach to meet his brother. Another passenger announces his intent to make his fortune from his invention of sunglasses. The stage is robbed and the inventor killed. As the man lies on the ground with the broken dark glasses, John Reid says, "So much for free enterprise."

The sequence is an allusion to the legal fight between Clayton Moore and Jack Wrather, over Moore's appearing in public wearing The Lone Ranger Mask. After Wrather's initial victory, Moore appeared wearing sun glasses.

The original "The Lone Ranger" on radio was created because WXYZ, a small station in Detroit, could not afford network programs.

Wednesday, December 26, 2012

Affinity analysis and urban legends

from theinsightaisle : Traditional market basket analysis tells us what is (i.e. correlation). To cite a classic, yet most likely an erroneous example, affinity analysis may find that on Thursdays and Fridays customers tend to buy diapers and beer together in a supermarket — i.e. young families stock up for the weekend. The main shortcoming of this information is that, beyond the conclusions that (a) the store should stock up on diapers and beer more heavily on certain days of the week and (b) both products should be placed close to each other in the store, there is little actionable information merchants and marketers can use to make smarter decisions. Affinity analysis tells us nothing about optimal pricing (e.g. should we discount diapers so that customers come in, buy discounted diapers but also grab a pack of beer with a healthy margin?), optimal promotional strategy (e.g. should we place diapers, beer or both in the ad?) or optimal merchandising tactics (e.g. which product should be placed on the endcap?).

from wikipedia: A common urban legend highlighting the unexpected insights that can be found involves a chain (often incorrectly given as Wal-Mart) discovering that beer and diapers were often purchased together, and responding to that by moving the beer closer to the diapers to drive sales; however, while the relationship seems to have been noted, it is unclear whether any action was taken to promote selling them together.

Cross-reference: Numbers-Atomic No. 30, Eikenberry

**Separately, from wikipedia on OODA:

The OODA loop has become an important concept in both business and military strategy. According to Boyd, decision-making occurs in a recurring cycle of observe-orient-decide-act. An entity (whether an individual or an organization) that can process this cycle quickly, observing and reacting to unfolding events more rapidly than an opponent, can thereby "get inside" the opponent's decision cycle and gain the advantage. Frans Osinga argues that Boyd's own views on the OODA loop are much deeper, richer, and more comprehensive than the common interpretation of the 'rapid OODA loop' idea.

Monday, December 24, 2012

Tell us what you really think, PatentHawk

A post at The Patent Prospector titled Dumping begins

Dumb judges have been dumped on the CAFC for decades. The few decent ones are fed up. Old saws Dyk and Clevenger are called out by a dissent from Judge Reyna, the penultimate member, over an anti-dumping appeal from a Chinese company. and goes on from there.

Sunday, December 23, 2012

Plagiarism up in 2012

Poynter notes that 2012 was a bad year for plagiarism incidents.

There were 31 incidents of plagiarism/fabrication in 2012

CBS Sunday Morning on December 23, 2012

Charles Osgood introduced the stories for December 23, 2012. Millions of families across the land. Seth Doane does the cover story on the gift of time. Time out from cancer. Second, Bradley Cooper interviewed by Serena Alschuler. Silver Linings Playbook. Going home to Philadelphia. Bill Geist on Still Life. Placido Domingo by Tracy Smith. Bill Flanagan and David Edelstein.

Headlines. Funerals at Sandy Hook. Newtown CT has received 60,000 teddy bears. Daniel Inouye. Muslin Brotherhood. New Delhi protesters. Shopper Track is cutting its forecast to 2.5%. Weather: cold in plains and northeast.

Seth Doane on a very special journey. A trip by the Curtis's from Woodburn, KY. Theresa received a terminal notification about cancer 18 months ago. Cancer is always a part of their lives. The big elephant. Dr. Vonda Abraamson at Vanderbilt. Jack & Jill Late Stage Cancer Foundation gives a time out from cancer. Young mom or dad with children under 18. John Albert. Former wife Jill. Give the gift of memories. The foundation relies on gifts from the public. Families choose between few options. White Stallion Ranch near Tucson, AZ. It's a calmness; don't think about anything at all. A trip called a wow. Bill and Sandra Francis went to a Bronco's game, and meet and greet with Dallas Clark. Take the weekend with us forever. Todd Jordano lived for only six months after diagnosis. Jeff Curtis noted the trip did change things; if for ten minutes they forget about sickness, it is worth it. Theresa Curtis was wearing a WKU sweatshirt.

Almanac. Dec. 23, 1823. The Sentinel printed "A visit from St. Nicholas" by Clement Clark Moore. March 13, 1862 letter. Dash away all. The Night Before Christmas. Happy Christmas to All and All a Good Night.

1983 film A Christmas Story discussed by Mo Rocca. Ralphie Parker in 1940s Indiana. A leg lamp. Seinbeld of Christmas stories. Peter Billingsly. Now, one of the producers on Broadway Johnny Rabb played Ralphie. Gene Shephard wrote stories for Playboy Magazine, which became a book. kiddie korn. Movie on movie marathon. Brian Jones found the Cleveland house used for filming. Home opened to the public in 2006. A leg lamp in the window. Jones raised money to pay for the house by selling leg lamps. What is the message of the story? Love. Heart-warming.

Placido Domingo singing The Little Drummer Boy and interviewed by Tracy Smith. A force of nature. On-stage invincible. The worst thing is to fly in a plane. Must change planes if someone has cold. The voice shines more if quiet the day before. Can sing, but speaking makes him tired. Nonstop tour for most of the last five decades. Clip of him conducting; gets very sweating; needs to change clothes. Born in Spain; moved to Mexico. His mother heard him sing a Mexican song; she cried. That was a beautiful note. This year is his 45th at the Met. Pop album now out featuring duets, including with his son. Known as The Three Tenors. World Soccer Cup in 1990. No Royalties. Reports of a feud were not true. Friendly rivals. Frenemies? Pavarotti died in 2007.
Earthquake in Mexico in 1985. Domingo family members buried, tho parents un-hurt. Beverly Hills Chihuahua. Evil wizard in Dora the Explorer episode. He has 80 performances booked for 2013.

Steve Hartman on secret Santa in Staten Island. Wealthy businessman from Missouri gives about $100,000 away via $100 bills. [Recycled story from CBS Evening News.] Carol Hefty is going to frame the $100. Gave Janice Kennedy $300; Janice had lost her house.

Edelstein on Christmas movies. Tidings of great annoyance. On Les Miserables lost Edelstein's interest in first 30 seconds. Uncanny fog of atonality. Hugh Jackman's Jean Valjean. Forced to sing an octave too high. I dreamed a dream, looking like a plucked chicken. Django Unchained. Jack Reacher. Dinky Tom Cruise. It's a reach. This is 40. Anna Karenina is overstylized, deadly. The Hobbit is punishment. Surprise: The Guilt Trip. Limp and Wan. but leads have intimacy. Life of Pi. Skyfall and Argo are still kicking around.

A still life. Bill Geist. Suzanne Heintz. Denzer. An entire family in the window. Chauncy. Mary-Margaret. This year Steamboat Strings. Fiberglass family. final picture on a dog sled.

Bradley Cooper in The Hangover from 2009. Serena Alschuler does Sunday Profile on Bradley Cooper. The jerk in Wedding Crashers. The hearthrob in He's not that into you. People Magazine: sexiest man alive. Silver Linings Playbook. Got SAG and Golden Globe. Jennifer Lawrence. Coming home to Philadelphia. Met him at Highway Theater in Jenkintown, PA. Philly is idiosyncratic city. Irish father was a stockbroker. Talked about movies. Father was excited about movies. The Elephant Man. Rehearsing in his back yard. Platoon. Stand by me (train tracks). Father was example of American dream. Didn't get into Georgetown University first time; accepted next time. In 1999, small part in Sex in the City. Cooper had part in Alias. Issue of drug and alcohol. 2005 Wedding Crashers. 2009 the Hangover. Cooper said he watched Sunday Morning (Charles Kuralt) with Cooper's grandfather. Cooper is 37 now. Returns to Jenkintown. Lee's Hoagie House. His father died last year. Pointed to tree his father and he planted. Cooper always remembers Jenkintown.

Music. Bill Flanagan of MTV. Allan Light book on Hallelujah. Faith was strong but you needed proof. James Taylor Fire and Rain. Endurance and Perseverance. The Melodians based on Psalm 1:37. Bob Dylan. Bing Crosby. Going My Way. Holiday songs about separation and longing for reunion. White Christmas.

Holiday shopping in person 68%

Nancy Giles. Can any adult present be better than an easy bake over or a bicycle with training wheels. But then flannel pjs. Blank book. Selfish, self-involved. Christmas became all about what I got, or didn't get. But you grow up. Think about Sandy or Newtown. Wanted for Christmas: lova and peace and giving to people in need.

The week ahead. Monday: third anniversary of Obamacare. Tuesday: 50th anniversary of premier of To Kill a Mockingbird. Thursday: 80th anniversary Radio City Friday: Stan Lee.

Charles Osgood at the Baldwin piano: I'll be home for Christmas. Seasons Greetings appears on the screen.

Moment of Nature (no sponsor). Snows of Nevada, with wild horses.

Friday, December 21, 2012

Ex parte Fu: obvious to substitute rare earth for alkaline earth [?]

Within Ex parte Fu , the Board notes that appellant did not challenge an allegation that it was obvious to substitute a rare earth aluminate for an alkaline earth aluminate.

Vaguely reminiscent of Graver Tank, wherein manganese was found an equivalent of magnesium.

“application of a known technique to a piece of prior art ready for the improvement"

From within Ex parte Lifson:

The Examiner found that Blair’s vehicle A/C system includes all but the required economizer heat exchanger (hereafter “economizer”). (Ans. 4.) In view of the economizer 43 of Zheng’s vehicle A/C system, the Examiner determined that it would have been obvious to add an economizer to Blair’s system for increased performance. (Id.) In addition, the Examiner noted that economizers were known to increase system efficiency. (Id.)
We find no error in the Examiner’s determinations. Zheng shows that economizers were known to improve the capacity of vehicle A/C systems, particularly by further subcooling the refrigerant supplied to an evaporator. (Zheng, col. 7, ll. 30-33.) Given this benefit, the proposed addition of an economizer to Blair’s vehicle A/C system constitutes a prima facie obvious “application of a known technique to a piece of prior art ready for the improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). (...)

Appellants’ arguments are not persuasive. Appellants fail to present evidence that Blair’s system would not have been understood as benefiting from subcooling by an added economizer. For example, Appellants allege but fail to establish that, despite Zheng’s express teachings of increased capacity, vehicle A/C economizers would not have been understood as increasing capacity.2 See Estee Lauder Inc. v. L’Oreal S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (arguments cannot take the place of factual evidence).

Board reverses examiner for lack of prima facie case in Ex parte ZAWACKI

The examiner was reversed in Ex parte Zawacki.

Of the prima facie case:

Because the Examiner does not establish how Ash (or Quinn) discloses or suggests a catheter comprising “a generally cylindrical body enclosing a first and second lumen separated by a generally planar septum,” as recited in claims 1 and 7, the Examiner fails to present a prima facie case of obviousness of these two independent claims, as well as claims 2 and 4-6, which depend on claim 1. Because the Examiner fails to establish a prima facie case of unpatentability in the first instance, the obviousness rejection of claims 1, 2, and 4-7 must be reversed. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).

End result:

We reverse the rejection of claims 1, 2, and 4-7 as obvious over Ash in view of Quinn. We also reverse the rejection of claim 3 as obvious over Ash in view of Quinn, further in view of Bacich.

There is no citation to KSR.

Bayer loses appeal in Ex parte Lorenz

In Ex parte Lorenz, the Board dealt with issues of anticipation and obviousness as to Bayer's polyether-polyester polyol synthesis.

As to anticipation, the Board cited Verve v. Crane, 311 F.3d 1116, 1120 (CAFC 2002) and In re Spada, 911 F.2d 705, 708 (CAFC 1990).

The Board did NOT cite KSR, or other cases, as to obviousness.

CAFC on collateral estoppel from a stipulated judgment

In addition to the Disney / Pooh case, the CAFC tackled collateral estoppel in Reese v. Verizon California , and again came up with a 2-1 vote.

The issue related to estoppel arising from a stipulation:

We have previously held that issue preclusion or collateral estoppel may indeed arise by reason of stipulated judgment or consent decree, under which the primary consideration is the intent of the parties with respect to its preclusive effect. Hartley v. Mentor Corp., 869 F.2d 1469, 1471 (Fed. Cir. 1989) (applying Ninth Circuit law to an appeal from C.D. Cal.). In Yachts America, Inc. v. United States, 673 F.2d 356, 361 (Ct. Cl. 1982), one of our predecessor courts also held that broad, far-reaching preclusive language in a consent decree terminating a prior litigation and dismissing with prejudice “all other issues” constituted a final judgment on an issue not specifically addressed in the agreement, and therefore that the doctrine of collateral estoppel precluded relitiga- tion of that issue.

Subsequently, and contrary to Reese’s interpretation, the Supreme Court in Arizona also indicated that settle- ments may occasion collateral estoppel when it is clear that the parties intended their agreement to have such an effect. Arizona, 530 U.S. at 414. Indeed, the Court con- cluded that collateral estoppel did not apply in that case because the consent judgment in the first action was “ambiguous as between mutually exclusive theories of recovery” and therefore “too opaque to serve as a founda- tion for issue preclusion.” Id. at 417–18. However, that is not the case before us.


Finally, having determined that collateral estoppel was applicable, the district court did not abuse its discretion in applying collateral estoppel. The Ninth Circuit has held that a motion to dismiss may be supported by collateral estoppel, particularly when the parties have negotiated a consent judgment or settlement agreement to have preclusive effect. Skilstaf, 669 F.3d at 1021–25; Reyn’s Pasta, 442 F.3d at 745–47. All the required ele- ments having been met, fairness does not weigh against the application of collateral estoppel in this case. In re Freeman, 30 F.3d 1459, 1467 (Fed. Cir. 1994).

Judge Moore dissented.

The majority concludes that the language of a stipula- tion in an earlier case (Reese I) against different parties collaterally estops Mr. Reese from bringing his suit. I am perplexed by the majority’s claim that the “extent and scope of the Stipulation are specific and unambiguous.” Maj. Op. at 7. With all due respect, I find that the Stipu- lation unambiguously supports the opposite view—namely that the parties intended that collateral estoppel would attach to the claims for which final judgment of noninfringement on the merits was admitted, but not the claims that were dismissed without decision. At a mini- mum, the Stipulation is ambiguous, and if it is ambiguous, under governing Ninth Circuit law, collateral estoppel does not apply.

The Stipulation distinguishes between claims 1, 7, 13, 18, 25, and 36 of the ’150 patent which the parties stipu- lated to final judgment of noninfringement, and claims 23 and 32 of the ’150 patent which the parties stipulated to dismissal only, not final judgment on the merits. Walking through the Stipulation, the distinctions are clear. To begin, the Stipulation is titled, “Stipulation and Joint Motion for Dismissal and Final Judgment”—two separate things. The first sentence of the Stipulation explains that the parties move for “entry of final judgment of non- infringement by Defendants of certain asserted claims and for dismissal of the remaining asserted claims.” J.A. 157.


If there was ambiguity in paragraph 4 with regard to which claims collateral estoppel attaches, we cannot affirm. Ninth Circuit law is clear that for a stipulated judgment to give rise to claim preclusion, the language of the Stipulation must unambiguously evince the parties’ intent for it to have that effect. See Foster v. Hallco Mfg. Co., 947 F.2d 469, 481 (Fed. Cir. 1991) (applying Ninth Circuit law that courts should avoid “speculat[ing] as to the intent of the parties based on broad, general and ambiguous language”); Sekaquapetwa v. MacDonald, 575 F.2d 239, 246 (9th Cir. 1978) (holding that the default rule is that “an issue is not deemed to be actually litigated if it is the subject of a stipulation between parties”) (in- ternal quotation mark omitted); see also Arizona v. Cali- fornia, 530 U.S. 392, 414 (2000).

The ending of Judge Moore's dissent is direct:

Finally, I do not understand why the majority places the burden on Mr. Reese “to show that the parties . . . did not intend for their stipulated judgment to have any preclusive effect on the issue of infringement.” Maj. Opp. at 8. Ninth Circuit law makes clear that “[t]he party asserting preclusion bears the burden of showing with clarity and certainty what was determined by the prior judgment.” Hydraunautics v. Filmtec Corp., 204 F.3d 880, 885 (9th Cir. 2000) (quoting Offshore Sportswear, Inc. v. Vuarnet Int’l, B.V., 114 F.3d 848, 850 (9th Cir. 1997)). The majority’s burden-shifting is especially odd given that we must construe all factual allegations in the complaint in the light most favorable to the nonmoving party, Mr. Reese. See Skilstaf, Inc. v. CVS Caremark Corp., 669 F.3d 1005, 1014 (9th Cir. 2012).

The Stipulation is clear. The judgment is clear. The parties intended collateral estoppel to apply to the claims upon which judgment of noninfringement was entered, not the dismissed claims. The district court thus erred by dismissing Mr. Reese’s complaint, and I would reverse.

Winnie-the-Pooh shows up at the CAFC

The case SLESINGER v. Disney Enterprises is an appeal from the TTAB about decisions related to opposition and cancellation proceedings made by Slesinger against marks of Disney related to Winnie-the-Pooh. The TTAB relied on collateral estoppel based on a California state court decision to dismiss Slesinger's actions. The 2-1 vote at the CAFC arises from different levels of detail applied to the law of collateral estoppel.

As to assignment, from the majority:

The record shows the district court concluded that Slesinger completely granted all its rights to Disney as an assignment. See, e.g., In re Computer Eng’g Assocs., 337 F.3d 38, 46 (1st Cir. 2003) (assignment where party divests itself of “all right, interest, and control in the property”); In re Apex Oil Co., 975 F.2d 1365, 1369 (8th Cir. 1992) (“assignment” defined “as a transfer by the assignor of all rights in the property”); 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competi- tion § 18:1 (4th ed. 2012) (assignment is “an outright sale of all rights in . . . [a] mark,” whereas license “is a limited permit to another to use the mark”). With such a clear explanation that Slesinger conveyed all rights completely to Disney, it is immaterial that the district court used the terms “transfer” and “grant” rather than “assignment.” Moreover, it is the court’s ultimate “judgment that mat- ters,” not the language used to discuss the court’s rulings. Yamaha Corp. of Am. v. United States, 961 F.2d 245, 254 (D.C. Cir. 1992) (emphasis in original); see also Clark v. Bear Stearns & Co., 966 F.2d 1318, 1321 (9th Cir. 1992) (“When the issue for which preclusion is sought is the only rational one the fact finder could have found, then that issue is considered foreclosed, even if no explicit finding of that issue has been made.”); 18 Lawrence B. Solum, Moore’s Federal Practice – Civil § 132.03[3][e] (Matthew Bender 3d ed.) (“An issue that was necessarily implicit in a larger determination is given issue preclusive effect. An issue that is distinctly presented in the pleadings and necessarily resolved may be reflected in the decision that includes that point, although it may not be expressly mentioned in the decision.”).

Judge Reyna dissented:

The issue before us is whether the district court decided the ownership of the Winnie-the-Pooh trademarks. Because I believe the district court did not decide owner- ship of the Pooh trademarks, and because I believe that a decision on ownership was not necessary to the district court’s decision concerning trademark infringement, I respectfully dissent.

As to issue preclusion (aka collateral estoppel):

Collateral estoppel, often called “issue preclusion,” bars relitigation in a second action of an issue litigated and decided in a prior action. Because preclusion may forever bar meritorious claims and negate significant legal rights, courts must ensure that the circumstances for preclusion are “certain to every intent.” Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1234 (Fed. Cir. 2005) (citing Russell v. Place, 94 U.S. 606, 610 (1876)). Precedent weighs against deny- ing litigants a day in court unless there is a clear and persuasive basis for that denial. If there exists a reason- able doubt as to whether an issue was actually decided in the first action, preclusion should not apply in the subse- quent action. Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1557 (Fed. Cir. 1996); McNellis v. First Fed. Sav. & Loan Ass’n of Rochester, New York, 364 F.2d 251, 257 (2d Cir. 1966) (“[A] reasonable doubt as to what was decided in the first action should preclude the drastic remedy of foreclosing a party from litigating an essential issue.” (internal citation omitted)). Guided by these principles, we resolve ambiguities in what issues were actually decided in a prior proceeding in favor of the party seeking to prevent application of preclusion. Charter Fed. Sav. Bank v. United States, 87 F. App’x 175, 178 (Fed. Cir. 2004) (nonprecedential).

The Supreme Court summarized the requirements of issue preclusion in Montana v. United States, 440 U.S. 147, 153-55 (1979). Issue preclusion requires (1) identity of an issue in a prior proceeding, (2) that the identical issue was actually litigated and decided, (3) that determi- nation of the issue was necessary to the judgment in the prior proceeding, and (4) that the party defending against preclusion had a full and fair opportunity to litigate the issue in the prior proceeding.

Judge Reyna's issues:

In view of the foregoing, I believe the TTAB erred on two distinct grounds when it determined that the trademark ownership issue was precluded. First, the district court did not actually decide the ownership issue. Second, resolution of the ownership issue was not essential or necessary for the district court’s decision on non- infringement.

An Exxon case is cited:

This scenario is as suggestive of a license as it is of an assignment. See Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1076 (5th Cir. 1997) (“A license to use a mark is a transfer of limited rights, less than the whole interest which might have been transferred.”

An old radio case is also invoked:

Disney argues that in order for the district court to evaluate whether Disney’s use of the Pooh trademarks was infringing, the court first had to determine whether Slesinger or Disney owned the rights. This is incorrect. As happened precisely in this case, an effective defense to a claim of trademark infringement can be made upon a showing of authorized use under a license. De Forest Radio Tel. & Tel. Co. v. United States, 273 U.S. 236, 242 (1927) (“If a licensee be sued, he can escape liability to the patentee for the use of his invention by showing that the use is within his license.”); see also 3 McCarthy on Trademarks and Unfair Competition §18:40 (4th ed. 2011) (“Every license carries with it a waiver of the right of the trademark owner to sue for infringement arising out of acts that fall within the scope of the license.”). Whether Disney was authorized to use the Pooh trade- marks does not solely depend on whether Slesinger or Disney owned the marks, because Disney could have been authorized to use the Pooh trademarks under a license.

Obviousness reversed in Atanasoska case

In the Atanasoska case, the Board relied on the 1995 In re GPAC case for finding that an absence of motivation undercut the prima facie case on obviousness. Yes, KSR was cited.

Board discusses double-patenting in Hitachi case

The applicant in Ex parte Hitachi Metals, Ltd. escaped a prior art rejection over applicant's prior work:

Thus, based on this record, the ‘651 Patent was entitled to claim priority to the application resulting in the Sagawa ‘368. Therefore, the Examiner erred in determining that Sagawa ‘368 is prior art to the ‘651 Patent. Accordingly, we reverse the Examiner’s decision to reject claims 1, 2, 6, and 7 as being anticipated by Sagawa ‘368.

As to double-patenting:

If the same invention is not being claimed twice, a second question must be asked. The second analysis question is: Does any claim in the application define merely an obvious variation of an invention disclosed and claimed in the patent? In considering the question, the patent disclosure may not be used as prior art. This does not mean that the disclosure may not be used at all. . . . As pointed out above, in certain instances it may be used as a dictionary to learn the meaning of terms in a claim. It may also be used as required to answer the second analysis question above. . . . It must be noted that this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined.

In re Vogel, 422 F.2d 438, 441-442 (CCPA 1970)


In In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Fed. Cir. 2008), our reviewing court stated:

Indeed, our predecessor court stated that a patent's disclosure may be used to determine whether an application claim is merely an obvious variation of an invention claimed in a patent. Vogel, 422 F.2d at 441-42. The court stated that the disclosure may be used to learn the meaning of terms and in “interpreting the coverage of [a] claim.” Id. at 441. It may also be used to answer the question whether claims merely define an obvious variation of what is earlier disclosed and claimed.

Basell, 547 F.3d at 1378.


It is clear from the above discussion that such elements do not materially affect the basic and novel characteristics of the materials recited in the claims of Sagawa ‘368. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976) (“‘consisting essentially of’ limits the scope of a claim to the specified ingredients and those that do not materially affect the basic and novel characteristic(s) of a composition.”) (emphasis in original)

And, here's the practice point:

We recognize that our analysis differs from the Examiner’s position in the Final Rejection and Examiner’s Answer. Accordingly, we designate our rationale as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). As a result, we find it unnecessary to reach Patent Owner’s argument that the Examiner presented a significant new rationale in the Examiner’s Answer.

Bottom line:

The Examiner’s decision to reject claims 1, 2, 6, 7, and 15-24 on the
ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 3, 13, 16, 29, and 34 of Sagawa ‘368 is affirmed.

Board cites no cases in affirmance in Ex parte Yoo

The Board affirmed the Examiner in Ex parte Yoo . There were rejections for anticipation and obviousness, and the Board cited no cases generally and did not cite KSR specifically.

The application in question was 11/600,059 and the technology involved LEDs. McDermott, Will was the law firm.

Prior art prophetic example renders claims obvious in Ex parte LEVEUGLE

The compounds at issue in Ex parte LEVEUGLE are hypocrellins, which are perylene derivatives used in photodynamic therapy (PDT) cancer treatment.

Within the case, a prophetic example in one application [ Fanslow III et al., US 2002/0041864 A1, Apr. 11, 2002. ] is used AGAINST another application (10/470,519 ).

The appellant argued:

Appellant argues that the procedures in Fanslow’s Example 2 “are merely a wish list of experimental protocols that could be utilized.... Such wish list is certainly insufficient to support an inference that one of skill in the art would regard such therapy as useful or efficacious.” (Id.)

Of appellant's argument against this use, the Board noted:

This argument is also unpersuasive. Fanslow expressly discloses that “[c]ombining PDT with administration of a CD40 binding protein should significantly enhance the in vivo anti-tumor immune response” (FF 6) and that a CD40 binding antibody is a suitable CD40 binding protein (FF 4). “[A] presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003).


Nor has Appellant provided evidence or sound reasoning to show that a skilled worker would not have expected Fanslow’s treatment method to be effective, notwithstanding the fact that Fanslow did not actually carry out the treatment in vivo. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (Patent applicants bear the burden of “presenting sufficient reason or authority or evidence, on the facts of the case, to show that the prior art method would not produce or would not be expected to produce the claimed subject matter.”).

Navitas Systems gets A123's government contracts

From within a story at EE Times:

A123 looked like the next big thing in cleantech when it emerged as one of the hottest MIT spinoffs about the time the Obama administration arrived. The company had – and still has – promising lithium ion battery technology, but at least one battery recall showed that A123 would have a hard time delivering on all the promise of clean technology.

The company filed for bankruptcy protection mid-year, and it looked for awhile like its technology would remain in domestic hands when power management specialist Johnson Controls made a strong bid to acquire A123. But the Wisconsin company along with Siemens and other suitors were outbid in November by the well-heeled Chinese auto parts conglomerate Wanxiang Group Corp. for $256.6 million.

While A123’s demise falls short of matching the failure of solar startup Solyndra in 2011 – A123’s key government contracts will remain with another U.S. company (Navitas Systems) – the bankruptcy of a promising cleantech startup with solid battery technology represents a blow to the renewable energy sector.

See also previous IPBiz posts on A123, including

A123 battery company being bought by Chinese Wanxiang

Thursday, December 20, 2012

Dow Chemical smoked by Board in Ex parte Costolnick

Things did not go well for Dow Chemical in Ex parte Costolnick.

Dow's single example was found wanting under In re Graselli, 713 F.2d 731 and In re Clemens, 622 F.2d 1029.

Wednesday, December 19, 2012

CAFC discusses Panduit factors


Of the Panduit factors:

Presidio advanced its lost profits theory under the four-factor Panduit test, which requires Presidio to show: (1) demand for the patented product; (2) absence of ac- ceptable noninfringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of profit that would have been made. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1329 (Fed. Cir. 2009) (citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)). ATC argues Presidio did not establish the first two Panduit factors. With respect to the first factor —demand for the patented product— ATC contends Presidio’s BB capacitors are neither covered by the asserted patent, nor in direct competition with the infringing 545L capacitors.

As an initial matter, the demand in question in the first Panduit factor is not limited to demand for the patented products. Rather, demand may also arise from a product that “directly competes with the infringing de- vice.” Depuy Spine, 567 F.3d at 1330 (citing Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1548–49 (Fed. Cir. 1995) (en banc)). Because Presidio conceded that the ‘356 patent does not cover its BB capacitors, this record must show that the BB capacitors directly competed with ATC’s 545L capacitors.

Of the law of infringement:

To prove literal infringement, a plaintiff must show that the accused device contains each and every limitation of the asserted claims. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). In infringe- ment cases, the court first interprets the claims to deter- mine their scope and meaning. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). Next, the jury compares the properly construed claims to the allegedly infringing device. Id. “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). This court reviews a finding of infringement for substantial evidence. Uniloc, 632 F.3d at 1301.

Of permanent injunctions:

However, particularly with an eye to protecting the public interest, the decision to deny a permanent injunction remains within the equitable discretion of the district courts. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). A trial court, though, can misapply and abuse that discretion with “a clear error of judgment in weighing relevant factors or . . . an error of law or clearly erroneous factual findings.” lnnogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008) (quoting Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772 (Fed. Cir. 1993)). “To the extent the court’s decision is based upon an issue of law, we review that issue de novo.” Sanofi-Synthelabo v. Apotex, lnc., 470 F.3d 1368, 1374 (Fed. Cir. 2006).

CAFC finds "Cock Sucker" mark to have vulgar meaning

In the case In re Marsha Fox , the Court of Appeals for the Federal Circuit addressed the trademark registerability of "Cock Sucker", to designate a lollipop, but with an obvious other meaning.

Of background law:

The prohibition on “immoral . . . or scandalous” trademarks was first codified in the 1905 revision of the trademark laws, see Act of Feb. 20, 1905, Pub. L. No. 58- 84, § 5(a), 33 Stat. 724, 725. This court and its predeces- sor have long assumed that the prohibition “is not an attempt to legislate morality, but, rather, a judgment by the Congress that [scandalous] marks not occupy the time, services, and use of funds of the federal govern- ment.” In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374 (Fed. Cir. 1994) (quotation marks omitted). Because a refusal to register a mark has no bearing on the appli- cant’s ability to use the mark, we have held that § 1052(a) does not implicate the First Amendment rights of trade- mark applicants. See id.

More concisely, and especially usefully in the context of this case, the PTO may prove scandalousness by establishing that a mark is “vulgar.” In re Boulevard Entm’t, Inc., 334 F.3d 1336, 1340 (Fed. Cir. 2003). This demonstration must be made “in the context of contemporary attitudes,” “in the context of the marketplace as applied to only the goods described in [the] application,” and “from the standpoint of not necessarily a majority, but a substantial composite of the general public.” Mavety, 33 F.3d at 1371 (quotation marks omitted).

Of details:

In August 2009, the examiner responded, noting that “COCK is defined . . . as ‘penis,’ and SUCKER as, ‘one that sucks,’” and that both words are considered vulgar “as used in context.” J.A. 121 (emphasis in original). Conced- ing that this vulgar meaning is not the primary meaning of “cock,” the examiner asserted that “taking COCK in context with SUCKER, the primary meaning of this wording as a whole is ‘one who sucks a penis,’” and that “the strong and commonly known meaning of COCKSUCKER in the general public” ensures that the two component words, when used together, will “un- equivocal[ly]” assume their vulgar meanings. J.A. 122. The examiner continued the refusal, however, to allow Fox to respond to several questions.

The Board had denied registration:

The Board concluded that “the evidence supports the fact that the term COCK SUCKER is vulgar and, therefore, is precluded from registration under [§ 1052(a)].” J.A. 8.

As to burdens-->

“The determination that a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries.” Mavety, 33 F.3d at 1371. Factual findings of the Board are reviewed for the presence of substantial evidence, In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003), while its ultimate conclusion as to registrability is reviewed de novo. Mavety, 33 F.3d at 1371. The burden of proving that the proposed mark is unregistrable under 15 U.S.C. § 1052(a) rests on the PTO. Id.

Of sound

Fox urges, however, that “[i]n the present case, the space between the words makes all the difference.” Reply Br. 10. How- ever, Fox concedes that a mark’s “sound” is central to its “commercial impression” for purposes of §1052. See Appellant’s Br. 32 (citing Palm Bay Imps. v. Veuve Clic- quot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005)). Fox, moreover, has admitted that her mark at least in part has a vulgar meaning. She acknowledged that “the . . . humor of the mark is derived” from “[the] possibility of [a] double entendre,” consisting of a vulgar and a non-vulgar meaning. See J.A. 181; see also Appellant’s Br. 25 n.1. At oral argument, she con- ceded that her mark, if used to sell sweaters, would be unregistrable as vulgar. We think that the Board did not err in concluding that the distinction between COCKSUCKER and COCK SUCKER is a distinction
without a difference. So too the association of COCK SUCKER with a poultry-themed product does not dimin- ish the vulgar meaning—it merely establishes an addi- tional, non-vulgar meaning and a double entendre. This is not a case in which the vulgar meaning of the mark’s literal element is so obscure or so faintly evoked that a context that amplifies the non-vulgar meaning will efface the vulgar meaning altogether. Rather, the mark is precisely what Fox intended it to be: a double entendre, meaning both “rooster lollipop” and “one who performs fellatio.”

George Carlin came up

We recognize that there are “whimsical” and humor- ous aspects to Fox’s mark. See Appellant’s Br. 43. But the fact that something is funny does not mean that it cannot be “scandalous.” Indeed, the Supreme Court in Pacifica, in determining that the use of the word “cocksucker” is generally patently “indecent” under 18 U.S.C. § 1464, made a point of noting that “[t]he transcript of [humorist George Carlin’s] recording . . . indicates frequent laughter from the audience.” FCC v. Pacifica Found., 438 U.S. 726, 729 (1978).

Fox can use the label, but can't register it:

Nothing in this decision precludes Fox from continu- ing to sell her merchandise under the mark at issue, or from seeking trademark protection for some other, other- wise registrable element of her product’s design, dress, or labeling. If Fox is correct that the mark at issue “bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser,” Appellant’s Br. 43 (second altera- tion in original), then the market will no doubt reward her ingenuity. But this does not make her mark registra- ble.

Tuesday, December 18, 2012

Board discusses "unexpected results"

The topic of "unexpected results" arose in Samsung SDI Co. Ltd. :

Referring to its Table 1, Applicant argues that invention achieves unexpected results due to the dimensions of the absorption layer. Applicant has the burden of proving unexpected results inhere in the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Applicant’s proofs must be clear and convincing. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property.") The proofs must show that the superior results are “surprising or unexpected” to one of ordinary skill in the art when considered in the context of the prior art. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). It is not sufficient to show that results are obtained which merely differ from those obtained in the prior art. The difference must be shown to be an unexpected. In re D'Ancicco, 439 F.2d 1244, 1248 (1971). In other words, mere improvement in properties does not always suffice to show unexpected results.” Soni, 54 F.3d at 751. Additionally, The unexpected results relied upon also must be “different in kind and not merely in degree from results of the prior art.” In re Harris, 409 F.3d 1339, 1344 (2005).


Applicant has presented only attorney argument that the increased degree of efficiency would have been considered unexpected to a person having ordinary skill in the art. Counsel’s argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Applicant has failed to provide clear and convincing evidence that the claimed ratios provide in an unexpectedly improved solar cell.

Obviousness reversed in Ex parte PAMARTHY

An obviousness rejection was reversed in Ex parte PAMARTHY :

On this record, the Examiner has not provided a credible reason why one of ordinary skill in the art would have modified Masuda’s optical transmitter to have Nishimoto’s through holes. The Examiner has not dispensed with the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

We reverse all the Examiner’s rejections under § 103.

As to the remaining rejection:

As all of the prior art rejections have been reversed and the present application is senior to application 11/421,208, it would be premature for the Board to address this provisional obviousness-type double patenting rejection. Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010). See, Ex parte Jerg, Appeal No. 2011-000044 (BPAI 2012) (informative status). See also, Manual of Patent Examining Procedure (MPEP) § 804(B)(1) (Rev. 8, July 2010).

Incorporation by reference

IPBiz has discussed the concept of "incorporation by reference." For example,

Acushnet gets new trial in Callaway infringement assertion

Note the availability of a brief by Fish & Richardson attorneys representing Callaway in the case Callaway v. Acushnet in D. Delaware. Also:

Within MPEP 608.01(p) Completeness:

The incorporation by reference practice with respect to applications which issue as U.S. patents provides the public with a patent disclosure which minimizes the public's burden to search for and obtain copies of documents incorporated by reference which may not be readily available. (...)Particular attention should be directed to specific portions of the referenced document where the subject matter being incorporated may be found. Guidelines for situations where applicant is permitted to fill in a number for Application No. __________ left blank in the application as filed can be found in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971) (Abandoned applications less than 20 years old can be incorporated by reference to the same extent as copending applications; both types are open to the public upon the referencing application issuing as a patent. See MPEP § 103).

Also from MPEP 608.01(p):


Simulated or predicted test results and prophetical examples (paper examples) are permitted in patent applications. Working examples correspond to work actually performed and may describe tests which have actually been conducted and results that were achieved. Paper examples describe the manner and process of making an embodiment of the invention which has not actually been conducted. Paper examples should not be represented as work actually done. No results should be represented as actual results unless they have actually been achieved. Paper examples should not be described using the past tense. >Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003).< For problems arising from the designation of materials by trademarks and trade names, see MPEP § 608.01(v).

**On incorporation by reference, from pptuu:

Be specific with regard to subject matter to be incorporated
Statements incorporating a document “in its entirety” may not be sufficient to permit incorporation of material not specifically identified in the incorporation statement

As to essential material:

37 CFR 1.57 (c)
“ Essential material ” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference

37 CFR 1.57 (c)
“Essential material”
Provides written description, enablement and/or best mode of the invention
Describes the claimed invention as required by 35 USC 112, 2nd paragraph
Describes the structure, material or acts corresponding to a means or step + plus function as required by 35 USC, 6th paragraph

And, from the IPBiz post
Further thoughts on Graves and Donohue on anticipation under 35 USC 102

**The interference case also speaks of incorporation by reference:

On such general manner of incorporation, we cannot assume that Genise’s inventors recognized and appreciated every single detail that happens to be contained in the disclosure of U.S. Patent Nos. 4,850,236 and 5,105,357. In that regard, note Advanced Display Systems v. Kent State University, 212 F.3d 1272, 1282, 54 USPQ2d 1673, 1679 (Fed. Cir. 2000), in which the Court of Appeals for the Federal Circuit stated:
Incorporation by reference provides a method for integrating material from various documents into a host document – a patent or printed publication in an anticipation determination – by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. [Citation omitted.] To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. [Citations omitted.] [Emphasis added.]

Monday, December 17, 2012

Intel wins

From the decision:

Negotiated Data Solutions, Inc. (“N-Data”) appeals from the district court’s grant of summary judgment of license and noninfringement in favor of Intel Corp. (“In- tel”). Intel Corp. v. Negotiated Data Solutions, LLC, No. 2:11-cv-247 (E.D. Tx. May 9, 2011). Because Intel is licensed to practice the patents-in-suit pursuant to a licensing agreement with N-Data’s predecessor in inter- est, National Semiconductor Corp. (“National”), this court affirms.

Wheel games

From the decision:

IGT owns several patents related to “wheel games,” a type of casino gaming machine containing a secondary bonus game incorporating a spinning wheel. IGT sued Alliance Gaming Corp., Bally Gaming International, Inc., and Bally Gaming, Inc. (collectively, “Bally”) for infringe- ment of these patents, and Bally counterclaimed under state and federal antitrust laws. The district court denied the motions for summary judgment on the antitrust issues, granted the motions that the patents were invalid and not infringed, and certified the patent issues for interlocutory appeal. This court affirmed. On remand, the district court granted summary judgment against Bally on its antitrust counterclaims. Because the undis- puted facts are insufficient to establish the existence of a relevant antitrust market in wheel games, we affirm.

Crestor case

The case IN RE ROSUVASTATIN CALCIUM PATENT LITIGATION, on appeal from In re Rosuvastatin Calcium Patent Litig., 719 F. Supp. 2d 388 (D. Del. 2010)., presents several issues.

As to obviousness:

The Defendants challenge patent validity on the ground of obviousness. Obviousness is decided as a matter of law based on four basic factual inquiries, as set forth in Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966), and elaborated in KSR International, Co. v. Teleflex Inc., 550 U.S. 398, 406– 07 (2007), viz., (1) the scope and content of the prior art, (2) the level of ordinary skill in the field of the invention, (3) the differences between the claimed subject matter and the prior art, and (4) any objective indicia of unobviousness, such as commercial success or long-felt need, or failure of others.
The Defendants identified as the closest prior art Euro- pean Patent Office Publication No. 0 367 895 of the Sandoz company (“Sandoz”), published May 16, 1990, which de- scribes numerous pyrimidine-based statin compounds, including a compound designated as Compound 1b. Com- pound 1b has two –CH3 (methyl) groups on the amino side chain, instead of one –CH3 and one –SO2CH3 group as in rosuvastatin.

As to "obvious to try":

We agree that “obvious to try” was negated by the gen- eral skepticism concerning pyrimidine-based statins, the fact that other pharmaceutical companies had abandoned this general structure, and the evidence that the prior art taught a preference not for hydrophilic substituents but for lipophilic substituents at the C2 position. See Takeda Chem. Indus., Ltd. v. Alphapharm Pty., 492 F.3d 1350, 1357 (Fed. Cir. 2007) (“[I]n cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.”).

Bottom line:

The district court correctly held that patent invalidity on the ground of obviousness had not been shown for the compound rosuvastatin. That ruling is affirmed.

Judge Mayer dissented:

I respectfully dissent. There can be no infringement of U.S. Reissue Patent No. 37,314 (the “’314 patent”) because that patent is invalid for improper reissue. Reissue is available under 35 U.S.C. § 251 to rectify an “error” resulting from inadvertence, accident, or mistake. No such error was present in U.S. Patent No. 5,260,440 (the “’440 patent”), so there is no basis upon which it could properly be reissued. Furthermore, Shionogi Sei- yaku Kabushiki Kaisha (“Shionogi”) has forfeited the right to obtain reissue by its failure to exercise due dili- gence in seeking to rectify the alleged defect in the ’440 patent.

Sunday, December 16, 2012

Another breakthrough at MIT? Not.

IPBiz strongly recommends the post MIT Makes Breakthrough in Wireless Electricity for great humor about MIT.
One does recall the strong praise given by the MIT Technology Review to the fraudulent work of Jan Hendrik Schon. The current post is funnier still, and a comment includes reference to the USPTO:

even a patent on a scheme to extract unlimited power from any point in the universe.

When I questioned the later, I received a nice letter from the Patent Office, explaining, in so many words, that I was an idiot because (I do paraphrase a bit here) by act of congress the issuance of a patent overrides the laws of physics.

***And in Spanish-->

Entre los falsos estudios más sonados de los últimos tiempos está el publicado en Science, en mayo de 2005, relativo a un experimento dirigido por el científico surcoreano Hwang Woo Suk, quien aseguró haber logrado por primera vez la clonación de embriones humanos.

Otro embustero ilustrado fue Jan Hendrik Schon, joven físico alemán que en 2002 anunció la creación de transistores de tamaño molecular, lo que supondría un gran avance en la nanotecnología. Este fue calificado como el "mayor fraude de la física en los últimos 50 años", y fue descubierto a punto de ser nominado con el Premio Nobel.

Nobel laureate against biofuels?

See post Nobel Prize Plant Scientist Outspoken Against Biofuel Effiency including the text related to opinions of Nobel laureate Hartmut Michel:

Dr. Michel adds, however, that even if non-food plant substances like algae and manure are used instead of grains and sugar to produce biofuel, the overall inefficiencies of converting energy from sunlight into a chemical fuel product still do not warrant their use. He believes that more emphasis should be used in developing renewable energy, especially solar energy. The only exception involves aviation fuel which cannot be supplied by a source like an electric power plant (you can’t “plug in” and recharge a jet airliner).

CBS "Sunday Morning" on December 16, 2012

Charles Osgood introduced the stories for Sunday, December 16, 2012. Osgood started with Newtown, CT. Lee Cowan does the cover story on religion, "none of the above." Second, Byron Pitts on the harp, "pluck." Third, Anthony Mason on Led Zeppelin. Fourth, Bill Geist on the end of fall, and the end of the world. Fifth, Rita Braver on Chris Elliot. Ravi Shankar. Peter Rabbit. Headlines: Obama to Newton, CT. 27 people are confirmed dead, 20 of whom are young people. Martha Teichner will have more. Mall at Newport Beach, CA. Birmingham, Alabama. Jets in Damascus. Nelson Mandela underwent surgery for gallstones. Weather: rain likely east of Mississippi.

Martha Teichen covered the shooting at Sandy Hook Elementary in Newtown, CT. Emily Parker was one of the victims. 8 boys/12 girls, all first graders. Marsha Lanza is the aunt of the shooter, Adam Lanza. Will Newtown be any different? At Virginia Tech, 32 people died; Sandy Hook is the second worst. The Worther Effect discussed by John Miller, now a correspondent for CBS News. Pew survey shows only 26% support for ban on handguns. "Fortress Kindegarten." Kenneth Trump, National School Safety and Security Systems in Cleveland, Ohio. Adam Lanza broke into Sandy Hook Elementary School. Glenn Sachs of Langone Medical Center at Langone: trauma drops IQ. "In the end, hugs are not enough."

Lee Cowan on the cover story. Pew: 45 million people say they belong to no church in particular. Red McCall president of atheist group in Ok. City, Ok. Researchers call them the nones. Now, 20%. Terry Funk is senior researcher on the Pew study. Spiritual, but not religious. The turn off is organized religion seeking money. US only has 48% Protestants. Ed Young of the Fellowship Church in Dallas, Texas. The church is one generation away from extinction. The young are turned off: 1 in 3 not into organized religion. Charles Kimball: vast majority of students don't see organized religion as effective. So much bureacracy and rules. Single and not hoping to find anything else. Solstice rituals at the Cathedral of St. John the Divine.

Almanac. Dec. 16, 1901, first Beatrix Potter story on Peter the Rabbit. Flopsy, Mopsey, and Peter. Squirrel Nutkin. Over 40 million Potter books have been sold. I never quite understood the secret of Peter's perennial charm. Potter died in December 1943.

Byron Pitts on the harp. 13 year old Kim Walker of Atlanta's Harp Ensemble. Who can say: I play the harp? Carolyn Lund is the instructor. Rare and unique. Kids want to stand out. Ensemble has 12 year history. Elizabeth Remy Johnson and Rosalind Lewis. African-American males playing. Desmond Johnson, raised by his grandmother. Playing harp kind of girlie. Harp is reason Desmond going to college, at Georgia State University. Morton at Boston University. Lesson: don't give up. Real stuff, real life.

Chris Elliott: get a life. Rita Braver does Sunday Profile. American Comedy Royalty.
Bob Elliott and Ray Goulding: "Bob and Ray." Wally Balou. In 1979: on Saturday Night Live. Chris appeared on David Letterman. What's going to make Dave laugh? Rachel Maddow Show. "He should not have children". Chris: the guy under the sheets. Son of Sam sounds funnier. Sound effect machine. In 1990: Get a Life, 30 year old paper boy. Bob Elliott always wore a bath robe. Testy cameraman in Ground Hog Day.
"How I met your mother." Stupidity excites you. Lives next to dad in Maine. Worked with daughter Abby on Letterman skits. Bridey is the youngest Elliott. Bob is age 89.

Ravi Shanker died at age 92. Born in northern India. Ravi appeared at Woodstock in 1969. Concert promoter Sue Jones. Daughter Anushka. Co-inventor of bard code, Norman Joseph Woodland also died in the last week. Bullseye format. US Patent 2,612,994 sold to Philco for $15,000. Inducted into inventor's hall of fame.

Bob Orr gives details on Adam Lanza. Police lieutenant noted two badly damaged computers. Lanza used guns from his mother Nancy. 223 semiautomatic assault rifle. Dr. Wayne Carver, medical examiner. Victims had 3 to 11 shots. Peter Lanza, the father: we too are asking why.

Anthony Mason interviews the members of Led Zeppelin. John Paul Jones and two other surviving members got Kennedy Center Awards. Mad, bad, and dangerous to know. Disbanded in 1980 after death of drummer Ron Bonham. Band sold more than 300 million records. Changed the blueprint of a lot of things. Moved the horizon. Jimmy Page was the founder. Played for the Who, the Kinks, and theme for Goldfinger. The Yard Birds. Bass player John Paul Jones, who wrote for Herman's Hermits. Singer: Robert Plant. "Just so powerful." Rolling Stone Mag: self-indulgent. Geritol. Old farts. By mid1970s, most popular rock band. Tampa FL: 56,000. Joe Perry quote re: Lord Byron. In 1980, Bonham died after consuming 40 shots of vodka. Re-uniting twice before 2007. Everything that is magnificent: can you touch it again? Jason Bonham on drums. Celebration Day. Jimmy Page: open to the idea of reunion, but unlikely to happen. Went out with thunder and awe.

Bill Geist: Friday is the end of the world. Mayan calendar. Night of the Living Dead clip. Bugout bag. two tents. Solar pad. Radio/flashlight/solar charger. Small ax. Tube tent. Stewart Charmay at Rutgers/Camden. Image of the zombie. Doctrine of the rapture. Believing Christians lifted into heaven. Reuters poll: 22% of Americans think the world will end during their lifetime.

Week ahead: Dec. 17: busiest mailing day; DEc. 19 person of the year. Dec. 20: Peter Madoff sentenced. Dec. 21 winter solstice. Dec. 22: busiest shopping day.

Opinion piece from Congresswoman McCarthy related to Dec. 1993 shooting on LIRR. Wife (now Congresswoman) on CT shooting. Carolyn McCarthy.

Moment of Nature. Spiriva HandiHalder. Lansford, North Dakota. Snow and ice on trees.

Thursday, December 13, 2012

CAFC emphasizes need for record to allow meaningful appellate review

The outcome in Osram v. American Induction

OSRAM SYLVANIA, Inc., (“OSRAM”) appeals the district
court’s grant of summary judgment of invalidity of
claims 1, 17, 25, 27, and 32 of U.S. Patent No. 5,834,905
(the “’905 patent”), issued to Valery A. Godyak et al., and
assigned to OSRAM. Because we find genuine issues of
material fact that preclude a finding of anticipation and
obviousness on summary judgment, and because we find
that the district court erred in failing to consider objective
indicia of nonobviousness, we reverse and remand for
proceedings in accordance with this ruling.

Of burden:

We begin by addressing the district court’s finding
that the Anderson ’334 patent anticipates claim 32 of the
’905 patent. A patent claim is anticipated if each and
every limitation is found in a single prior art reference.
35 U.S.C. § 102. Patents are presumed to be valid and
invalidity must be proven by clear and convincing evidence.
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238,
2242, 180 L. Ed. 2d 131 (2011). OSRAM argues that AITI
faced an enhanced burden in establishing anticipation
because the examiner considered the Anderson ’334
patent during the prosecution of the ’905 patent. While
prior consideration of a reference during prosecution may
carry some weight, the burden to prove invalidity does not
change; at all times, it remains a showing “by clear and
convincing evidence.” Id.; see also Tokai, 632 F.3d at

Of a genus anticipating a species:

AITI primarily relies on the legal argument that
“the disclosure of a small genus may anticipate the species
of that genus even if the species are not themselves
recited.” Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001). Referencing
our decisions in Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (Fed. Cir. 2006) and ClearValue, Inc. v.
Pearl River Polymers, Inc., 668 F.3d 1340 (Fed. Cir. 2012),
AITI asserts that the range in the Anderson ’334 patent,
which completely encompasses the range in the ’905
patent, is sufficient to disclose the claimed buffer gas
pressure in the ’905 patent.

The CAFC noted the law:

We disagree. While it is true that an earlier disclosed
genus may, in certain circumstances, anticipate a later
species, this inquiry necessarily includes a factual component.
See, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008) (“[W]hether a generic disclosure
necessarily anticipates everything within the genus .
. . depends on the factual aspects of the specific disclosure
and the particular products at issue.”); Atofina, 441 F.3d
at 999; In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994). For
example, in Atofina we analyzed a patent claiming a
method of synthesizing difluoromethane at a temperature
between 330-450 degrees Celsius. Atofina, 441 F.3d at
993. The prior art, in contrast, disclosed a broad temperature
range of 100-500 degrees Celsius. Id. at 999. In
Atofina, we reversed the district court’s finding of anticipation
following a bench trial and we explained that our
holding was premised on the “considerable difference
between the claimed [temperature] range and the range
in the prior art.” Id. Our decision in Atofina clarified
that the prior art’s teaching of a broad genus does not
necessarily disclose every species within that genus. Id.
Under the circumstances presented in Atofina, “no reasonable
fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to
anticipate this limitation of the claim.” Id.

Note "how" the CAFC handled "reasonable expectation of success":

Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1361 (Fed. Cir. 2007); see also Amgen, Inc. v. F.
Hoffmann-La Roche Ltd., 580 F.3d 1340, 1362 (Fed. Cir.
2009) (“An obviousness determination requires that a
skilled artisan would have perceived a reasonable expectation
of success in making the invention in light of the
prior art.” (citations omitted)). The Supreme Court has
warned, however, that, while an analysis of any teaching,
suggestion, or motivation to combine known elements is
useful to an obviousness analysis, the overall obviousness
inquiry must be expansive and flexible. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415, 419 (2007).


as OSRAM correctly
notes, both this Circuit and the Ninth Circuit repeatedly
have made clear that a trial court must at least provide
its analysis and grounds for entering judgment somewhere
in the record. AITI counters that the district
court’s findings are ascertainable from the parties’ own
arguments and again contends that, because we review
judgments not opinions, we are free to affirm on any
ground supported by the record.


It is not our role to scour the record and search for
something to justify a lower court’s conclusions, particularly
at the summary judgment stage. Whether dealing
with an issue of law like claim construction or an issue of
fact such as infringement, this court must be furnished
“sufficient findings and reasoning to permit meaningful
appellate scrutiny.” Nazomi Communs., Inc. v. Arm
Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005)
(quoting Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed.
Cir. 1997)). Where, as here, the record is devoid of meaningful
analysis, we will not conduct such an analysis in
the first instance. Id; see also Research Corp. Techs. v.
Microsoft Corp., 536 F.3d 1247, 1254 (Fed. Cir. 2008)
(“Microsoft’s motions for summary judgment were granted
without a proper analysis regarding inequitable conduct.
This court therefore lacks findings and conclusions for
adequate review.”). We previously have had occasion to
remind this very district court of these important principles;
we do so once more here.


AITI tries to limit TriMed to scenarios where the
district court explicitly references only “common sense” as
the basis for its obviousness findings. There is no justification
for limiting TriMed in that fashion, however. The
point made there, as here, is that the trial court must
explain how it reached the conclusions it does, particularly
where there is evidence in the record supporting the
non-movant’s position. AITI’s request that we forgive the
lower court’s failure to explain its ruling—and insistence
that we should review the record in the first instance to
ascertain what the lower court might have been thinking—
rings particularly hollow given AITI’s failure to
respond to the trial court’s order to submit findings of fact
and conclusions of law.