Tuesday, June 30, 2015

Applied Materials wins at PTAB in Ex parte CUVALCI; PTAB mentions "the epitome of hindsight"

The discussion section begins:

We reverse the Examiner’s rejection for the reasons set forth in
Appellants’ Appeal and Reply Briefs.
We add the following for emphasis.
As the Federal Circuit has explained, “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning
with some rational underpinning to
support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)

As to hindsight

This argument is unpersuasive because an examiner’s
prior art searches are the epitome of hindsight, and the Examiner has not
explained why or how a person of ordinary skill in the art would formulate
the “simple text search” in
the absence of hindsight.

link: http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013007850-06-29-2015-1

PTAB decision in Ex parte Florian

The PTAB basically adopted the arguments of the Appellant in the case Ex parte Florian :

We reverse the above § 103 rejection,
for substantially the reasons provided by Appellants in their Brief and Reply Brief.
We add the following.
It is the Examiner’s position that the primary reference of Hayano
discloses the claimed subject matter, except for the recitation of
“wherein the piezoelectric layers, the electrode layers, and the absorption layer
together form a sintered monolithic component”. Ans. 4–5.
The Examiner relies upon Ragossnig for suggesting
this aspect of the claimed subject
matter. Ans. 5

As to motivation:

We add that “[i]f the
proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
is no suggestion or motivation
to make the proposed modification.
In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984)”

March 18, 2015. Attorneys involved were Fish & Richardson.

Apple prevails over Affnity Labs of Texas at PTAB

As to 95/001,264 and 90/010,333, Apple wins at PTAB.

link: http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2015004281-06-30-2015-1

Abbvie petition for re-hearing denied by PTAB in ritonavir case

The third party requester in the 95/000,569 case concerning US Patent 6,703,403 was Pubpat .

link: http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2014007786-06-30-2015-2

PTAB gives mixed decision on anticipation in Ex parte Ostrander

link: http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013006029-06-30-2015-1

IBM loses at PTAB in Ex parte Gooding

An issue seemed to be "new arguments" presented in the reply brief.

link: http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013004516-06-30-2015-1

Microsoft loses at PTAB in re-exam 95002315

Back in January 2014, techcrunch noted:

Motorola Mobility is being sold to Lenovo, in a deal worth $2.91B. Google is divesting itself of the handset division it purchased for $12.5B in 2011, but it will keep some of the assets — including patents.

One infers patent challenges were passed along as well. One of these was against Microsoft with Patent Owner, Microsoft Corporation (“Owner”), unsuccessful in its appeal to PTAB under 35 U.S.C. §§ 134(b) and 315(a) from various adopted rejections.

PTAB noted: We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)(precedential)
(citing In re Oetiker, 977 F.2d 1443, 1445(Fed. Cir. 1992))

Of Ex parte Frye, from LawUpdates: In a recent and rare precedential decision, the Board of Patent Appeals and Interferences (BPAI) has clarified that examiner findings are given no deference when specifically challenged on appeal. However, the Board will neither review nor disturb examiner findings that are not specifically challenged on appeal. The opinion in Ex Parte Nancy C. Frye, 94 U.S.P.Q.2d 1072, 2010 WL 889747 (BPAI 2010) is particularly notable because both U.S. Patent and Trademark Office Director David J. Kappos and Deputy Director Sharon R. Barner joined the Board in issuing the opinion.


Director Kappos best stated the message of Frye on his blog: “In summary, preserving a complete de novo review on the one hand, while not diverting Board effort into issues no raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.”

The Frye decision appears designed to emphasize the importance of challenging on appeal the specific factual findings made by the examiner, rather than merely the general basis for the examiner’s rejection. The Board will defer to examiner findings that are not specifically challenged.

Mytheos Holt praises Goodlatte’s Innovation Act

Mytheos Holt, a Senior Fellow in Freedom to Innovate with the Institute for Liberty, and sometime writer for US Senator John Barrasso (R-WY), goes after Democratic Iowa Senate Candidate Bob Krause in an article in the DailyCaller.

There is a line about arguments of Krause and opponents of patent reform (reform manifested in Goodlatte's Innovation Act): as is often the case when an argument’s biggest exponents are the architects of Obamacare and trigger warning-happy universities, this attempt to gloss over the real problem of patent trolling is utterly untrue.

One suspects Dana Rohrabacher, Republican Congressman from Orange County, CA, finds it amusing to be grouped with the "architects of Obamacare." And a different Holt ("Rush"), a Democrat (and Ph.D. scientist) from the Princeton, NJ area was also NOT in the camp of patent reform.

** Another memorable line from Mytheos:

Contrary to the liberal narrative that paints them as heroic little guys standing up against nasty, evil corporations, NPEs are nothing but leeches, and the sorts of leeches who dirty the name of the legal system, to boot.

link: http://dailycaller.com/2015/06/29/dont-feed-the-patent-trolls/#ixzz3eZQhy06x

There are actually "heroic little guys" who survive because of the patent system.
LBE has written about the Spencer repeating rifle which played an important role at "East Cavalry Field" at Gettysburg and during Wilson's cavalry raid to Selma. The Wright Brothers' story is legendary. Chester Carlson, the father of xerography, was ignored for years and then later copied. The recent "axe handle" bat story illustrates a recent case of the importance of patents to the "little guy."

CAFC relies on intrinsic record for claim construction in Cambrian


Cambrian makes the additional argument that the
district court should not have relied upon Mr. Koch’s
expert testimony. We need not reach that issue here, as
the intrinsic evidence fully determines the proper con-
struction of the contested claim term.
See Shire Dev., 2015 WL 3483245, at *4

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1686.Opinion.6-24-2015.1.PDF

Saturday, June 27, 2015

Stare decisis and the Spider-Man case (Kimble v. Marvel)

As a flashback, concerning the Supreme Court's refusal to overturn Brulotte v. Thys, contemplate the following from Monell, 436 U.S. 658, 695 (1978) :

Although we have stated that stare decisis has more force in statutory analysis than in constitutional adjudication because, in the former situation, Congress can correct our mistakes through legislation, see, e. g., Edelman v. Jordan, 415 U.S. 651, 671, and n. 14 (1974), we have never applied stare decisis mechanically to prohibit overruling our earlier decisions determining the meaning of statutes. See, e. g., Continental T. V., Inc. v. GTE Sylvania Inc., 433 U.S. 36, 47-49 (1977); Burnet v. Coronado Oil & Gas Co., 285 U.S. 393, 406 n. 1 (1932) (Brandeis, J., dissenting) (collecting cases). Nor is this a case where we should "place on the shoulders of Congress the burden of the Court's own error." Girouard v. United States, 328 U.S. 61, 70 (1946).

Recall the New York Times discussion:

The lesson, Justice Kagan wrote, is that the Supreme Court should use its power cautiously when it is asked to overrule a precedent. “What we can decide, we can undecide,” she wrote. “But stare decisis” — Latin for “to stand by things decided” — “teaches that we should exercise that authority sparingly.”


She said the Brulotte decision might be based on an outdated understanding of economics that hinders competition and innovations. But, she added, “respecting stare decisis means sticking to some wrong decisions.”

That is especially true, she said, when the decision in question did not involve the Constitution, about which the court has the last word, but rather the interpretation of a statute, which may be altered by Congress. “As against this superpowered form of stare decisis,” she wrote, “we would need a superspecial justification to warrant reversing Brulotte.”

link: http://www.nytimes.com/2015/06/23/business/in-spider-man-toy-patent-case-supreme-court-stands-by-past-decision.html?_r=0

Friday, June 26, 2015

Trade secrets as a solution to the Brulotte issue?

Note How a trade secret could have saved a running royalty from a nearly invincible law

Amazingly, both parties later professed that they knew not of the seminal Brulotte case when they entered into the agreement. But Marvel ultimately “stumbled across” it, and thus ensued a DJ action that Marvel could cease paying upon conclusion of the patent’s story-arc.


Easier is the situation where there are trade secrets involved in the transaction, and know-how, show-how and who-doesn’t-know-what-how is so very often part of the deal. The so-called hybrid license. As Justice Kagan put it, “[t]hat means, for example, that a license involving both a patent and a trade secret can set a 5% royalty during the patent period (as compensation for the two combined) and a 4% royalty afterward (as payment for the trade secret alone).”

Frankly, that is a bit too much of a simplistic example, as the allocation between patent and trade secrets has implications, such as the impact on other just pure patent royalty deals to be had and valuation of the patent rights, just to name two. Further, savvy licensees are not likely to accept a deal that leaves the trade secret part of the arrangement running forever. But it can happen.

Mixed result at CAFC in GAYMAR INDUSTRIES case

The CAFC noted:

In assessing the totality of the circumstances,
the district court relied on several instances of
defendant CSZ’s purported litigation misconduct
as a basis for finding that the case was not exceptional.
We affirm the district court’s finding of a lack
of objective baselessness.
We reverse the exceptional case finding
insofar as it was
based on CSZ’s
misconduct, and remand.

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1174.Opinion.6-23-2015.1.PDF

CAFC affirms district court in MOHSENZADEH case concerning 35 USC 154

The patent term adjustment statute, 35 U.S.C. §154,
has two provisions restoring patent term
to patentees for delays
attributable to the PTO
that occur prior to the
issuance of a patent.
“A Delay” refers to the PTO’s failure to
timely take certain actions or provide certain notices to
the patentee. 35 U.S.C. §154(b)(1)(A).
“B Delay” refers to the PTO’s failure to issue a patent within three years of
the actual filing date of the application.
Id. § 154(b)(1)(B).
The statute requires the agency to extend the term of the
patent by one day for each day the issuance of a patent is
delayed under either section 154(b)(1)(A) or (B)

The decision of the district court is affirmed by the CAFC:

The language of the provision of the patent term ad-
justment statute at issue, 35 U.S.C. §
154(b)(1)(A), clearly
shows that Congress intended
delay in the prosecution of
an application to be restored to a single patent, the
patent issuing directly
from that application. In other words, the
term of any patent arising from a
is not restored for delay in the prosecution of the parent
patent’s application.

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1499.Opinion.6-23-2015.1.PDF

Celgene fishing for [Kyle] Bass?

In a post titled Celgene May Seek Sanctions Against Kyle Bass Over Patent Challenges , the Wall Street Journal notes of Bass's IPR against claims of Celgene patents (including one patent related to a drug for alleviating problems caused by MS, the patent relating to Tecfidera, a multiple sclerosis drug that had $2.9 billion in sales last year.}:

In response to a patent challenge filed by the hedge-fund manager, Celgene recently won permission from the U.S. Patent and Trademark Office to file a motion seeking sanctions against a Bass entity for allegedly abusing the process for reviewing patents.

Although Celgene has not yet filed a motion, the development is being closely watched because it raises the possibility that patent officials may put an end to a tactic Bass has used to challenge valuable patents held by drug makers and biotechs.

Thursday, June 25, 2015

Prism wins against Sprint

Ars Techica notes:

Patent troll wins $30M verdict against Sprint, has more trials on the way
Changes in case law didn't stop Prism Technologies from winning big.

A Nebraska jury has ordered Sprint to pay $30 million to Prism Technologies, a patent-holding company that has sued the five largest cell phone carriers.

US legislation coming on the "patent box"?

The problem for the US is that the US cannot compete with single-digit tax rates some companies can now achieve abroad, so there is some thought in Congress for a "tax break" related to intellectual property.

From investmentnews:

The idea — known as a patent box or innovation box — would grant a lower tax rate on income generated from patents and other intellectual property housed in the U.S. This would aid technology and pharmaceutical companies trying to maintain low tax rates that they've achieved by booking income in overseas tax havens.

The so-called innovation box also is attractive to lawmakers in both parties worried that companies can easily move income outside the U.S. and chase low tax rates around the world. The break could help preserve the domestic tax base threatened by tax inversions and takeovers by foreign companies, said Representative Charles Boustany, a Louisiana Republican who is working on innovation box legislation.

link: http://www.investmentnews.com/article/20150624/FREE/150629962/lawmakers-consider-lower-tax-rate-for-intellectual-property-housed


From the specification:

0003] A particularly advantageous approach to fingerprint sensing is disclosed in U.S. Pat. No. 5,963,679 to Setlak and assigned to the assignee of the present invention. The fingerprint sensor is an integrated circuit sensor that drives the user's finger with an electric field signal and senses the electric field with an array of electric field sensing pixels on the integrated circuit substrate. Such sensors are used to control access for many different types of electronic devices such as computers, cell phones, personal digital assistants (PDA's), and the like. In particular, fingerprint sensors are used because they may have a small footprint, are relatively easy for a user to use and they provide reasonable authentication capabilities.

[0004] In some recent applications, the sensor may desirably capture images of fingerprint patterns from fingers that are farther away from the sensor array than is typical with today's technologies. Unfortunately, as the finger gets farther away from the sensor array (for example when a relatively thick dielectric lies between the sensor array and the finger), the spatial field strength variations that represent the fingerprint pattern become weaker. One way to compensate for this loss of spatial pattern strength is to increase the voltage of the signals that generate the field between the finger and the sensor array, also known as the drive signal. The fingerprint spatial pattern strength increases proportionately.

[0005] However, the detected signals generated from the sensor array and based upon placement of the user's finger adjacent the sensor array are relatively small compared to the drive signal. Thus, these relatively small detected signals may be increasingly difficult to process along with the relatively high drive signal, limiting measurement resolution of the detected signals, for example. Amplifier and processing stages that read and process the detected signals may add additional noise. Another source of noise may be fixed pattern noise from the sensor array, which also may make it increasingly difficult to measure the detected signals.

First claim of published application:

A finger biometric sensor comprising: an array of finger biometric sensing pixels; and processing circuitry coupled to the array of finger biometric sensing pixels and capable of acquiring initial data from the array of finger biometric sensing pixels based upon an initial drive signal level and with a finger positioned adjacent the array of finger biometric sensing pixels, determining an updated drive signal level based upon the initial data, and acquiring finger biometric data from the array of finger biometric sensing pixels based upon the updated drive signal level and with the finger positioned adjacent the array of finger biometric sensing pixels.

US patent application 20150173302 with inventor Lowell Wood: REFLECTIVE ARTICLES AND METHODS FOR INCREASING PHOTOSYNTHESIS

The first published claim:

A reflective article comprising: a reflecting material configured to diffusely reflect at least 80% of incident sunlight that is photosynthetically active; and a retro-reflecting material configured to retro-reflect at least 80% of incident sunlight that is non-photosynthetically active; wherein: sunlight that is photosynthetically active corresponds to wavelengths from 400 nm to 750 nm; and the article is configured for placement under, around, or in the proximity of a plant.

The application is assigned to Elwha.

Note the inventors of US 20130268756 (also assigned to Elwha):

Marc E. Davis, Matthew G. Dyor, William Gates, Xuedong Huang, Roderick A. Hyde, Edward K.Y. Jung, Jordin T. Kare, Royce A. Levien, Richard T. Lord, Robert W. Lord, Qi Lu, Mark A. Malamud, Nathan P. Myhrvold, Satya Nadella, Danny Allen Reed, Harry Shum, Clarence T. Tegreene, Lowell L. Wood, JR.

US patent application 20150176033 to Joule Unlimited: REACTIVE OXYGEN SPECIES-RESISTANT MICROORGANISMS

The first twelve claims of the published patent application:

1. A method to produce a carbon-based product of interest, comprising culturing an engineered cyanobacterial cell in a cell culture in the presence of CO.sub.2 and light under conditions suitable to produce a carbon-based product of interest, wherein said engineered cyanobacterial cell comprises a recombinant nucleic acid encoding an enzyme classified under an Enzyme Commission number selected from EC, EC, and EC

2. The method of claim 1, wherein said enzyme has catalase activity.

3. The method of claim 1, wherein said enzyme has peroxidase activity.

4. The method of claim 1, wherein said enzyme is selected from KatG and KatE.

5. The method of claim 1, wherein said enzyme comprises an amino acid sequence at least 90% identical to SEQ ID NO: 3.

6. The method of claim 1, wherein said enzyme comprises an amino acid sequence at least 90% identical to SEQ ID NO: 4.

7. The method of claim 1, wherein said cell culture further comprises hydrogen peroxide.

8. The method of claim 7, wherein said hydrogen peroxide is at a concentration of 0.1 to 50 mM in said cell culture.

9. The method of claim 1, wherein said cell culture comprises a reagent to mitigate contamination of said cell culture.

10. The method of claim 1, wherein said cell culture is exposed to diurnal light conditions.

11. The method of claim 1, wherein said engineered cyanobacterial cell has the same or a higher rate of ethanol production in said cell culture than an otherwise identical cyanobacterial cell lacking said recombinant nucleic acid.

12. The method of claim 1, wherein the production rate of ethanol of a culture of said engineered cyanobacterial cells is greater than a rate selected from: 50, 100, 150, 200, 250, 300, 350, and 400 mg*L.sup.-1*day.sup.-1, or wherein the production rate of ethanol of a culture of said engineered byanobacterial cells is greater than a rate selected from: 13, 14, 15, and 16 mg*L.sup.-1*h.sup.-1, or wherein the mass of ethanol produced by a culture of said engineered cyanobacterial cells per volume of said culture is greater than an amount selected from: 1.5, 2, 2.5, 3, 3.5, 4, 4.5, 5, 5.5, 6, 6.5, 7, 7.5, and 8 g/L, or wherein said ethanol is produced during up to 30 days of culture.

The US case is related to PCT/US2012/071250, for which the written opinion of May 2013 was unfavorable.

Wednesday, June 24, 2015

Innovation in baseball: the axe bat (and US Patent 8,801,551)

Yahoo.sports has a piece on the axe bat now used by Dustin Pedroia.

Yes, there is mention of a patent:

In 2006, a New Yorker named Steve Leinert obtained a patent on the axe handle for a baseball bat, a concept Ted Williams hit on decades earlier in his book "The Science of Hitting," in which he compared a baseball swing to that of an axe. "Try it for yourself," Williams wrote. "Get a bat and swing it against a telephone pole. I do this with doubting young Washington players. Where is the wrist position at point of impact? Square and unbroken, that's where, just as when you hit a tree with an ax."

The axe handle felt more comfortable to Leinert, and he shopped it around to manufacturers. He met rejection after rejection, companies frightened off by something so novel, until Baden, whose main products to that point were balls, fell in love with the Axe Bat and agreed to license it for 20 years starting in 2009.

[Update: Mr. Leinert observed his name is Bruce, not Steve, as reported by yahoo.sports.]

Note the text which shows a New Jersey connection:

It took five years for MLB to climb onboard, and even now Baden isn't making the bats for Pedroia because it doesn't have a license from the league. Victus Sports, a small New Jersey-based company, produces the axe-handle bats for major league players, something Pedroia learned by happy accident.

Link to article in yahoo.sports: http://sports.yahoo.com/news/why-dustin-pedroia-uses-the-axe-bat--which-may-make-the-round-handle-obsolete-013113798.html

One of the relevant patents is US 8,801,551, with first claim:

. A bat comprising: a body, comprising a first material, the body defining an exterior surface with a top end and a bottom end; a barrel portion having a barrel cross-section with a substantially circular perimeter that defines a center point; the barrel cross-section defining a longitudinal axis substantially perpendicular to the barrel cross-section, the longitudinal axis intersecting the barrel cross-section at approximately the center point, the longitudinal axis intersecting and extending through the exterior surface, near the top and bottom ends, at respective upper and lower intersection points, and otherwise within the exterior surface; a handle portion that includes the bottom end, the handle portion having a separately formed handle component comprising a second material; the handle portion defining a maximum forward distance, measured along a first line perpendicular to the longitudinal axis, from a first point on the longitudinal axis to a first location on the exterior surface of the handle portion that is farthest forward of the longitudinal axis; the handle portion defining a maximum rearward distance, measured along a second line perpendicular to the longitudinal axis, from a second point on the longitudinal axis to a second location on the exterior surface of the handle portion that is farthest rearward of the longitudinal axis; the handle portion also having an asymmetrically flared region extending from an upper boundary to a lower boundary, the upper boundary being more proximate the top end and the lower boundary being more proximate the bottom end; the asymmetrically flared region defining a non-circular cross-section perpendicular to the longitudinal axis, the non-circular cross-section having a major axis, wherein the major axis increases continuously throughout the asymmetrically flared region, from the upper boundary to the lower boundary; and portions of the exterior surface, in the asymmetrically flared region, defining a front edge and a rear edge, wherein the distance from the longitudinal axis to the front edge, measured along respective lines perpendicular to the longitudinal axis, is greater than the distance from the longitudinal axis to the rear edge, for each point of the longitudinal axis throughout the asymmetrically flared region.

And, yes, Ted Williams is cited in the patent:

Williams, Ted & Underwood, John, "The Science of Hitting," (New York: Simon & Schuster, Inc., 1986; 1st ed. 1970)

***Text in the yahoo.sports article

He met rejection after rejection, companies frightened off by something so novel, until Baden, whose main products to that point were balls, fell in love with the Axe Bat and agreed to license it for 20 years starting in 2009.

sounds in "Chester Carlson" and is highly relevant to the patent reform discussion. Yes, there still are individual inventors who may have a big impact.

Google suffers setback at the US Supreme Court in Vederi case related to Google Street View

The Supreme Court's decision not to grant certiorari leaves intact a March 2014 decision by the U.S. Court of Appeals for the Federal Circuit [CAFC], which threw out a district judge’s finding that Google had not infringed on four different patents of Vederi LLC. The case will now return to lower courts for further proceedings.


link: http://recode.net/2015/06/22/u-s-supreme-court-rejects-google-patent-appeal-over-street-view/


The March 2014 decision by then-CJ Rader had noted:

However, the district court erred
in construing “substantially elevations”
without sufficiently considering the
intrinsic evidence in this case.
In this case, the claim language is a
critical part of the record that shows the
error in the trial court’s reading of the claims. T
he opera-
tive language in this case is “substantially
elevations.” The district court’s construction
requiring elevation, and “elevation” alone
in the strict sense,
gives no effect to the “substantially” modifier
contained in the claims.
“A claim construction that gives meaning to all the terms of the
claim is preferred over one that does not do so.”
Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372
(Fed. Cir. 2005).
By effectively reading “substantially” out the claims, the district court erred

This was a "claim construction" case, not a "doctrine of equivalents" case:

Accordingly, in view of the foregoing, this
court reverses the district court’s claim construction
vacates its judgment of non-
infringement and remands for further proceedings
consistent with this opinion.

From the past

--from 2011
So things don’t look very promising for Vederi, but we’ll see.


link: http://ipjournal.law.wfu.edu/2011/04/google-street-view-v-vederi-llc-a-lesson-on-provisional-patent-applications/

--from Oct. 2014

In November 2011, U.S. Circuit Judge Alex Kozinski, who sat by designation in district court, adopted a claim construction for the patents proposed by Google, ruling that Vederi’s patents cover “vertical flat” images rather than curved images like those used in Google Street View.

Largely as a result of that claim construction, the judge ruled in September 2012 that Google had not infringed Vederi’s patents, which he said covered stitched-together flat images rather than spherical ones.

The Federal Circuit held in March that Judge Kozinski had been too strict in his construction of a patent claim that defined Vederi’s images as “substantially elevations,” which is an architectural term for a flat, typically illustrated image of a building.

The Federal Circuit found that the inclusion of the word “substantially” meant that Vederi’s patent claims were not exclusively limited to flat images, and that the trial court had erred by ignoring the word.

link: http://www.law360.com/articles/590402/google-asks-high-court-to-take-up-street-view-patent-fight


from 2015


Does a former employee have to "forget" past information to avoid trade secret litigation?

See Ron Sokol's post Can trade secret laws be used to intimidate? including

You are not required to “forget” what you learned. Go over your nondisclosure agreement. Chances are it prohibits certain use and disclosure by you of an actual trade secret.

Sokol alludes to a certain trade secret case, which was Cypress v. Maxim, discussed on another blog in the following way:

Cypress Semiconductor Corp. v. Maxim Integrated Products, Inc., H038555 (Apr. 28, 2015). Cypress sued Maxim for trade secret misappropriation, alleging Maxim was attempting to hire its employees in violation of California law. Cypress pled two theories: (1) the names of its employees were trade secrets and Maxim wrongly obtained and exploited a list of its employees, and (2) Cypress was seeking to hire its employees to misappropriate their knowledge of Cypress’ touchscreen technology. The trial court denied Cypress’ requests for preliminary relief, finding Cypress had no evidence to support its claims. One piece of telling evidence the court noted was a declaration submitted by Maxim’s attorney demonstrating she learned the name of nearly every Cypress employee who worked on touchscreen technology by spending an afternoon perusing LinkedIn. Facing an upcoming hearing on Maxim’s demurrer to its first amended complaint, Cypress voluntarily dismissed its lawsuit without prejudice. Maxim thereafter sought and was awarded $180,817.50 in sanctions on the ground Cypress had brought its suit in bad faith, which under California law has two prongs: (1) objective speciousness of the claim, and (2) subjective bad faith in bringing or maintaining the action, i.e., for an improper purpose.

link: http://www.noncompetereport.com/2015/05/06/cases-are-easier-to-start-than-they-are-to-finish-california-court-awards-180000-in-sanctions-for-meritless-trade-secret-misappropriation-lawsuit-brought-in-bad-faith/

Plagiarism hidden because of collusive ties between literary critics and major publishers?

The New York Times has covered the plagiarism charges against Korean author Shin Kyung-sook in the post
South Korean Novelist Apologizes in Wake of Plagiarism Accusation

Within the NYT post is the text

Over the past week, Ms. Shin has come under increasing pressure to respond to the plagiarism accusation, which was made by the novelist Lee Eung-jun in an online commentary. Mr. Lee and others have argued that instances of plagiarism by best-selling authors such as Ms. Shin go largely unnoticed because of collusive ties between literary critics and major publishers.

One notes that in the famous Harvard plagiarism case involving Kaavya Viswanathan, plagiarism was "caught" not by publishers or by book critics but rather by readers. IPBiz wrote in 2006:

authors such as Viswanathan or Laurence Tribe borrow freely from previously-written works, and there is little if any penalty. In the case of Viswanathan, plagiarism was caught not by sophisticated anti-plagiarism software, frequently advertised on the internet, or by the copyright "police," but rather by customers (ie, book buyers) who noticed the similarities.

[Note IPBiz posts:

Boston Globe on plagiarism by Viswanathan

Baltimore Sun out of touch on Harvard plagiarism? ]

See also

Plagiarism charges against professor's Civil War book

And from Levin's CivilWarMemory:

UT is going to have to take a look at its peer review process and try to figure out how this one got through.

link: http://cwmemory.com/2006/11/14/university-of-tennessee-press-embroiled-in-plagiarism-allegations/

Predictions on Congressional action on patent reform

In the post --The PATENT Act: Be Careful What You Wish For --, one has the following "prediction"

Most Congressional observers believe that the change in control of the United States Senate presages approval of the PATENT Act, the Innovation Act or some form of those bills in the 114th Congress. To that end, the House continues to amend the Innovation Act, recently adding new venue provisions that would make it more difficult for non-practicing entities to bring their suits in the Eastern District of Texas. Moreover, the White House previously has signaled its intention to support and sign patent reform legislation. On the other hand, opposition to these bills is mounting from small businesses and individual inventors who sincerely believe that these changes will make it harder for them to protect their patent rights, thereby enabling larger companies to infringe their patents with impunity, as well as from those who benefit from the current system. In the end, it appears likely that Congress will amend the Patent Act during this session.

link: http://www.natlawreview.com/article/patent-act-be-careful-what-you-wish

One notes that pharma and university interests have strongly opposed the Innovation Act. Among other things, "loser pays" is opposed by many.

See also the post The anti –innovation Patent Act of 2015 which includes

Now, Congress is on the verge of passing major revisions to the Patent Act, which, if enacted, would be a blunder of historical proportions and would pose a threat to American innovation. Large corporations have been able to convince Congress and the public, through a well-funded, organized and misleading PR campaign, that innovation is being threatened by patent trolls, entities that abuse the system by extorting settlements and by bringing frivolous lawsuits.


Both of the bills also would alter the “American rule” that attorney’s fees should be borne by the respective parties absent exceptional circumstances and ignore the recent Supreme Court decisions giving district courts greater discretion to award attorney’s fees. Indeed, courts have recently begun to grant more motions seeking attorney’s fees. Fee shifting will likely deter legitimate owners of enforcing their patent rights by making the risk of enforcement prohibitively high.

Smaller companies also will be less able to enforce their patent rights by making it harder to obtain litigation funding.

Tuesday, June 23, 2015

What is the "conservative" IP position?

In the Spider-Man case with a Supreme Court vote of 6-3, Justice Scalia (and Justice Kennedy) aligned with the "liberal" judges. Justices Thomas, Alito, and CJ Roberts made up the dissent of three justices.

In the Cisco case at the Supreme Court, Justice Alito aligned with the "liberals," and Justice Thomas partially so. CJ Roberts and Scalia were in the dissent.

Recall the IPBiz post [ http://ipbiz.blogspot.com/2015/05/cisco-loses-at-supreme-court-in-case.html ] on the Cisco case:

***In terms of the conservatives of the court, Justice Alito aligned
with the majority; Justice Thomas joined only parts II-B and III, and Justice
Scalia dissented.

If hypothetically the conservatives Thomas and Alito had aligned with Scalia, the vote would have been 4 to 4, and the decision of the CAFC would have stood.

link to Supreme Court text for Cisco: http://www.supremecourt.gov/opinions/14pdf/13-896_l53m.pdf

One notes that Scalia and Alito voted in opposite ways on both cases, basically the same for Scalia and Thomas.
Scalia voted with Roberts in one case (Cisco); against in the other.

The coverage of Kimble/Marvel by the New York Times
In Spider-Man Toy Patent Case, Supreme Court Stands by Past Decision

In terms of "big guy" vs. "little guy," the little guy/patentee Kimble was the loser of the Spider-Man case.
In Cisco, the decision made life a bit tougher for accused infringers who believe the asserted patents are invalid, so arguably that decision was pro-little guy-patentee.

So, using only this one lens, Alito/Thomas/Roberts favored the position of the little guy in Spider-Man.

Monday, June 22, 2015

Supreme Court decides Spider-Man case; Brulotte still lives.

By a 6-3 vote, with the four court "liberals" joined by Justices Antonin Scalia and Anthony Kennedy, the Supreme Court decided to maintain the rule of Brulotte v. Thys. Marvel wins. Kimble loses.

USA Today: Supreme Court cuts the string on Spider-Man toy inventor's patent

Slate notes:

Then Kagan actually references the Spider-Man comic books:

What we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: “Spider-Man,” p. 13 (1962) (“[I]n this world, with great power there must also come—great responsibility”).

A comic book fanatic colleague of mine—who insisted I not use his name in this piece—lauds Kagan for correctly citing to Amazing Fantasy, the name of the issue that introduced Spider-Man. However, he notes that she did make one error: The story in that issue introduced a character named Spider-Man!, with an exclamation mark which Kagan omits. The authors of the Bluebook would be disappointed.

link: http://www.slate.com/blogs/the_slatest/2015/06/22/spider_man_supreme_court_case_kagan_cites_the_comic_book.html

The Wall Street Journal noted:

Justice Kagan said that if the Supreme Court’s earlier interpretation of patent law was problematic, Congress was the branch of government best suited to change patent policy. She also said parties have other ways to craft business arrangements that allow for deferred payments after a patent expires.

Justice Samuel Alito, joined by Chief Justice John Roberts and Justice Clarence Thomas, dissented and would have overruled the 1964 decision, a ruling that Justice Alito called an “obvious mistake.”


Sunday, June 21, 2015

CBS Sunday Morning on June 21, 2015

Charles Osgood introduced the stories for Father's Day, June 21, 2015. Lee Cowan does the cover story on family leave.
Second, Tracy Smith interviews Pat Boone. Third, Barry Petersen on small businesses in Viet Nam. Fourth, Anthony Mason on"Little Big Town." Fifth, Bill Geist; Steve Hartman; Jim Gaffigan. Headlines: Sunday services at Emanuel AME Church in Charleston, SC. Manhunt in New Orleans. NY State police look for escapees in Allegheny County. June 21 is longest day of year. Yogathon. Weather: cool in northeast; rainstorms.

Martha Teichner mentions Denmark Vesey. [Wikipedia: in 1818 he was among the founders of an AME Church in the city, which later became Emanuel African Methodist Episcopal Church. The first independent black denomination in the nation, it had recently been organized in Philadelphia, Pennsylvania.] Poll says 61% of people think race relations are bad.

Lee Cowan on parental leave. Example of six week leave for father to be with adopted child. Price Waterhouse has policy of six weeks leave. The US has no law on paid leave. FMLA has 12 weeks of unpaid leave. A study shows dads take an average of two weeks. National Partnership for Women and Families. Poll : 80% favor paid leave for parents.
"Family Act" offers three months at 66% salary. Videoclip of Dan Rather on Cal. paid leave law in 2002.

Pulse: In 1960, 70% of households, only dad works.

Almanac. June 21, 1921. Jane Russell born. Movie: "The Outlaw." Adoption group: WAIF. Died in 2011. Publicity can be terrible, but only if you don't have any.

Anthony Mason on "Little Big Town"'s Girl Crush. We are a walking breathing country song.

Bill Geist on cat circus. Samantha Msrtin's Acro-cats. 17 cats.

Barry Petersen's postcard from Vietnam. "The floating market."

Speed the tortoise died at San Diego Zoo.

Ringing church bells in Charleston.

Steve Hartman on 1053 Malcolm Road in Toledo. Built in 1955. Selling of the family home.

Pat Boone. April love. Pat turned 81 last month. The issue of covering songs initially done by black artists. Ain't that a shame. 1957: Chevy variety show, Class of 1958 at Columbia University. Raised in Nashville/
Contract to sell Beatles pictures. In 1997: heavy metal album. Shirley Foley. I'd like to be loved by everybody, but nobody is.

Brannigan on Father's Day. Dads are the human equivalent of cargo shorts. Without the comparison to dads, moms would look horrible.

Week ahead. Monday: 5th annual, sings for pride. Tuesday: Shatner journey Wed. sentencing in Boston Thurs. Grammy museum on Supremes. Friday: take your dog to work Sat.: Grateful Dead.

Video from Charleston. Church bell ringing.

Next week. "Heart and soul" Capture love in a photograph?

Moment of nature, Spiriva. Elks in Rocky Mountain National Park.

Some aspects of Teva's US 5,800,808 (related to Copaxone)

The first claim of US 5,800,808 states:

A method of manufacturing copolymer-1, comprising reacting protected copolymer-1 with hydrobromic acid to form trifluoroacetyl copolymer-1, treating said trifluoroacetyl copolymer-1 with aqueous piperidine solution to form copolymer-1, and purifying said copolymer-1, to result in copolymer-1 having a molecular weight of about 5 to 9 kilodaltons.

The claim refers to "molecular weight" and does not refer to "average molecular weight." That might suggest that the term "copolymer-1" refers to an individual molecule, not a collection of polymers, each individual one of which might have a different molecular weight.

The "background" section states:

Copolymer-1 is a synthetic polypeptide analog of myelin basic protein (MBP), which is a natural component of the myelin sheath. It has been suggested as a potential therapeutic agent for multiple sclerosis (Eur. J. Immunol. [1971] 1:242; and J. Neurol. Sci. [1977] 31:433). All references cited herein are hereby incorporated by reference in their entirety. Interest in copolymer-1 as an immunotherapy for multiple sclerosis stems from observations first made in the 1950's that myelin components such as MBP prevent or arrest experimental autoimmune encephalomyelitis (EAE). EAE is a disease resembling multiple sclerosis that can be induced in susceptible animals.

Copolymer-1 was developed by Drs. Sela, Arnon, and their co-workers at the Weizmann Institute (Rehovot, Israel). It was shown to suppress EAE (Eur. J. Immunol. [1971] 1:242; U.S. Pat. No. 3,849,550). More recently, copolymer-1 was shown to be beneficial for patients with the exacerbating-remitting form of multiple sclerosis (N. Engl. J. Med. [1987] 317:408). Patients treated with daily injections of copolymer-1 had fewer exacerbations and smaller increases in their disability status than the control patients.

Copolymer-1 is a mixture of polypeptides composed of alanine, glutamic acid, lysine, and tyrosine in a molar ratio of approximately 6:2:5:1, respectively. It is synthesized by chemically polymerizing the four amino acids forming products with average molecular weights of 23,000 daltons (U.S. Pat. No. 3,849,550).

It is an object of the present invention to provide an improved composition of copolymer-1.

The first three sentences of the "summary" do suggest the term "copolymer-1" refers to a collection of molecules:

The present invention relates to a composition of copolymer-1 substantially free of species of copolymer-1 having a molecular weight of over 40 kilodaltons (KDa).

The invention further relates to a copolymer-1 having over 75% of its molar fraction within the molecular weight range from about 2 KDa to about 20 KDa.

In addition, the invention relates to a copolymer-1 having an average molecular weight of about 4 to about 8.6 KDa.

As the courts have noted, the patent does not discuss "how" average molecular weight is to be measured; claim 1 does not use the term "average molecular weight."

Examples 3 and 4 are written in the PRESENT tense:


Preparation of Trifluoroacetyl-Copolymer-1

Protected copolymer-1 is prepared as described by Teitelbaum et al. Eur. J. Immun. Vol. 1 p. 242 (1971) from the N-carboxyanhydrides of tyrosine (18 g), alanine (50 g), y-benzyl glutamate (35 g) and trifluoroacetyllysine (83 g) dissolved in 3.5 liters of dioxane.

The polymerization process is initiated by the addition of 0.01-0.02% diethylamine. The reaction mixture is stirred at room temperature for 24 hours and then poured into 10 liters water. The product (protected copolymer-1) is filtered, washed with water and dried. The removal of the gamma-benzyl blocking groups from the glutamate residue is carried out by treating the protected copolymer-1 with 33% hydrobromic acid in glacial acetic acid at room temperature for 6-12 hours with stirring. The product is poured into excess water, filtered, washed and dried, yielding the trifluoroacetyl-copolymer-1.


Preparation of Trifluoroacetyl-Copolymer-1

Protected copolymer-1 is prepared as described by Teitelbaum et al. Eur. J. Immun. Vol. 1 p. 242 (1971) from the N-carboxyanhydrides of tyrosine (18 g), alanine (50 g), .tau.-benzyl glutamate (35 g) and trifluoroacetyllysine (83 g) dissolved in 3.5 liters of dioxane.

The polymerization process is initiated by the addition of 0.01-0.02% diethylamine. The reaction mixture is stirred at room temperature for 24 hours and then poured into 10 liters water. The product (protected copolymer-1) is filtered, washed with water and dried.

Protected copolymer-1 is treated with 33% HBr in acetic acid which removes the omega benzyl protecting group from the 5-carboxylate of the glutamate residue and cleaves the polymer to smaller polypeptides. The time needed for obtaining copolymer-1 of molecular weight 7,000.+-.2,000 Da depends on the reaction temperature and the size of protected copolymer-1. At temperatures of between 20.degree.-28.degree. C. a test reaction is performed on every batch at different time periods for example, from 10-50 hours.

The results concerning the molecular weights of these small scale reactions are calculated and a curve of molecular weight against time is drawn. The time needed for obtaining molecular weight 7,000.+-.2,000 Da is calculated from the curve and performed on larger scale reaction. On average, working at 26.degree. C. the time period is 17 hours. The product is poured into excess water, filtered, washed and dried, yielding the trifluoroacetyl-copolymer-1.

Preparation of low-toxicity copolymer-1

20 g of trifluoroacetyl-copolymer-1 are dispersed in 1 liter of water to which 100 g piperidine are added. The mixture is stirred for 24 hours at room temperature and filtered. The solution of crude copolymer-1 is distributed into dialysis bags and dialyzed at 10.degree.-20.degree. C. against water until a pH=8 is attained. It is then dialyzed against about 0.3% acetic acid and again water until a pH=5.5-6.0 is obtained. This solution is then concentrated and lyophilized to dryness.

The application leading to the '808 patent was filed May 22, 1995.

See also United States Patent Application 20090237078

Friday, June 19, 2015

David Lumb on Michelle Lee's plan for the US Patent Office

Lumb's piece starts out poorly:

Tech media’s patent coverage typically centers on two rather unseemly arenas: patent trolls, who profit from frivolous copyright lawsuits against larger companies, and tech titans slugging it out in court over minor device similarities.

The four ways Lee plans to bring the U.S. Patent and Trademark Office into the 21st century:

* Expand Beyond Washington

For the first time in its 200-year history, the USPTO is expanding beyond Washington, D.C. to staff four satellite offices as regional resource centers.

* Reach Young inventors

To educate the next generation about the importance of intellectual property, the patent office sponsors a summer program for elementary school kids, during which they build simple devices and write patents for them.

* Improve Outdated Tech

Modernizing the USPTO's internal data systems is a priority, starting with establishing an integrated system to track patent progress from the minute an application is submitted. Revamping the internal system will also allow the USPTO to track distinct parts of a patent: Currently, the USPTO simply scans in patent forms and uploads them as PDFs. Updating the network will allow staff to search for patent data from within forms.

Hmmm, that was only three...

link: http://www.fastcompany.com/3047424/how-former-googler-michelle-lee-plans-to-supercharge-the-us-patent-office

***Separately, the sitemeter icon has disappeared.
Note also
The End of the SiteMeter Era

Intuitive Surgical and trolls

In a discussion of Intuitive Surgical, Forbes gets into issues of --patent trolling-- in the robotic surgery space.

One suit against Intuitive Surgical was brought by Alisanos LLC after Medicanica – a company that retained surgical robotics patents – transferred its patent portfolio to Alisanos in a “licensing arrangement.” That agreement ensured Medcanica received a portion of any licensing fees Alisanos could extract from other companies. Alisanos itself is owned by the Medici Portfolio, a company that offers patent “monetization” services. Medici states that its “fee for advisory services is contingent on making money for the client.” In short, Medici and Alisanos make money when they propound demands on other companies for alleged patent infringement.

Undoubtedly, there are inherent benefits to having companies that aid inventors seeking compensation when their intellectual property has been infringed upon. When, however, neither the company suing nor the company for whose benefit a suit is being brought are actually producing products or services, innovative companies are harmed without benefits being provided to the public. This practice of so-called patent privateering levies tangible costs for innovators globally. Just like pirates taxing commerce with unfair attacks on the high seas, innovative companies can be sapped of their capital and their vitality by patent litigation boutiques for hire. Often, the targets do not even know which company is launching an attack and who will ultimately benefit financially.

Freedom for companies to innovate without fear of frivolous patent lawsuits helps promote healthy competition and healthy patients. Competition in this marketplace benefits consumers by driving down costs of care, and a competitive marketplace is a healthy marketplace.

link: http://www.forbes.com/sites/timsparapani/2015/06/19/surgical-robotics-and-the-attack-of-patent-trolls/

CAFC reverses, remands ED Va case in TomTom v. Adolph; TomTom loses

In this case, there were European antecedents:

This dispute began in 2011 when Dr. Adolph’s German
company, AOT Systems GmbH (“AOT”), accused
TomTom of infringing EP 0 988 508 B1 (“EP ’508”), the
’836 patent’s European counterpart. In June 2011, representatives
of TomTom and Dr. Adolph met in person to
discuss the infringement allegations.

Yes, Teva is cited:

“[W]hen the district court reviews only evidence intrinsic
to the patent (the patent claims and specification[],
along with the patent’s prosecution history), the judge’s
determination will amount solely to a determination of
law, and the Court of Appeals will review that construction
de novo.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135
S. Ct. 831, 841 (2015) (italics omitted). “On the other
hand, in considering extrinsic evidence, we review the
subsidiary factual findings underlying the district court’s
claim construction for clear error.” Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 676 (Fed. Cir.

Of relevance

Dr. Adolph argues the court incorrectly interpreted
the prosecution history, and therefore misconstrued the
phrase, and should replace “does not contain” maps with
“does not require” maps. Appellant’s Br. 51. Specifically,
Dr. Adolph contends that during prosecution he stated
that the invention described by claim 1 does not require
an initial map database, not that it does not contain one.
Id. Appellees counter the district court correctly found
prosecution history disclaimer when Dr. Adolph differentiated
his invention from Saito. See Appellee’s Br. 31.


The district court’s construction was based on the
prosecution history of the ’836 patent, but, as demonstrated
above, nowhere does Dr. Adolph actually assert
that the invention described by claim 1 does not contain
an initial map database. Because there is no “clear and
unambiguous” disclaimer that the tracking system does
not contain an initial map database, we reverse the
district court’s construction. Instead, there is a disclaimer
that the system does not require an initial map database.
Accordingly, we construe the phrase “destination tracking
system of at least one mobile unit” to mean “a destination
tracking system of at least one mobile unit that does not
require initial information relating to existing road networks.”


However, the prosecution history is part of the intrinsic
evidence, which this court reviews de novo. Enzo
Biochem Inc. v. Applera Corp., 780 F.3d 1149, 1153 (Fed.
Cir. 2015) (“‘[W]hen the district court reviews only evidence
intrinsic to the patent (the patent claims and
specifications, along with the patent’s prosecution history),
the judge’s determination will amount solely to a
determination of law, and the Court of Appeals will
review that construction de novo.’”) (quoting Teva, 135 S.
Ct. at 841).


“Claim terms are generally given their plain and ordinary
meanings to one of skill in the art when read in
the context of the specification and prosecution history.”
Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362,
1365 (Fed. Cir. 2013) (citing Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). “There are
only two exceptions to this general rule: 1) when a patentee
sets out a definition and acts as his own lexicographer,
or 2) when the patentee disavows the full scope of the
claim term either in the specification or during prosecution.”
Id. (internal quotation marks and citation omitted).
Here, there is neither lexicography nor disavowal. Rather,
the ’836 patent uses the term “node” to mean, simply,
a “geographic location.” This construction is consistent
with the specification, which associates nodes with various
geographical locations, including origins and destinations,
and intersections. ’836 patent col. 7 ll. 41–44. The
district court’s construction is therefore reversed.

And note:

Therefore, these terms should be construed to reflect
their plain and ordinary meaning: “storage device” means
“storage device.” It does not mean the claimed invention
must use a different storage device for each type of data,
as all three types of data can be stored on the same storage
device as described in claim 1.

Gilead suffers IP reverse in China

China has rejected a patent application of Gilead, related to a precursor drug to Sovaldi

Reuters noted:

Officials at China's State Intellectual Property Office did not confirm the decision when contacted by Reuters, but a notice posted on the body's website said Gilead's application for "nucleoside phosphramidates", a kind of prodrug, had recently been rejected.

China's move follows a decision by India's patent office in January to reject Gilead's patent application for Sovaldi, finding it was not inventive enough. Gilead is appealing the ruling.

link: http://uk.reuters.com/article/2015/06/19/us-gilead-sciences-sovaldi-patents-idUKKBN0OZ0A620150619

Thursday, June 18, 2015

Surfs up for Glatopa ( glatiramer acetate injection for relapsing MS )?

Of the decision in Teva v. Sandoz related to Copaxone,
as to legal matters:

To the extent that Teva argues that the meaning of
“molecular weight” in the context of patents-in-suit is
itself a question of fact, it is wrong. See Teva, 135 S. Ct.
at 841–42. A party cannot transform into a factual matter
the internal coherence and context assessment of the
patent simply by having an expert offer an opinion on it.
The internal coherence and context assessment of the
patent, and whether it conveys claim meaning with
reasonable certainty, are questions of law. The meaning
one of skill in the art would attribute to the term molecular
weight in light of its use in the claims, the disclosure
in the specification, and the discussion of this term in the
prosecution history is a question of law. The district court
should not defer to Dr. Grant’s ultimate conclusion about
claim meaning in the context of this patent nor do we
defer to the district court on this legal question. To the
extent that Teva argues that this ultimate determination
deserves deference, it is in error. To the extent that Teva
or the dissent suggests that the specification’s disclosure
of SEC would “infer” that this claim term, molecular
weight, in this patent refers to Mp, such an inference is
part of the legal analysis, not a fact finding to be given

Determining the meaning or significance to
ascribe to the legal writings which constitute the intrinsic
record is legal analysis. The Supreme Court made clear
that the factual components include “the background
science or the meaning of a term in the relevant art
during the relevant time period.” Id. at 841. Teva cannot
transform legal analysis about the meaning or signifi-
cance of the intrinsic evidence into a factual question
simply by having an expert testify on it. Id. at 841 (“experts
may be examined to explain terms of art, and the
state of the art, at any given time, but they cannot be
used to prove the proper or legal construction of any
instrument of writing” (citation omitted)). Determining
the significance of disclosures in the specification or
prosecution history is also part of the legal analysis.
Understandings that lie outside the patent documents
about the meaning of terms to one of skill in the art or the
science or state of the knowledge of one of skill in the art
are factual issues. Even accepting as correct the district
court’s factual determinations about SEC and the transfer
of chromatogram data to create Figure 1, these facts do
not resolve the ambiguity in the Group I claim about the
intended molecular weight measure

**Of average molecular weight

The district
court found credible Dr. Grant’s testimony that Mp is
the only type of average molecular weight that can be
directly obtained from a chromatogram and calibration
curve obtained by the analytical method described in
Example 1 (Size Exclusion Chromatography or SEC). Id.
at 588, 590. It noted that experts testified that Mn and
Mw can be obtained from the chromatogram and calibration
curve, but doing so would require additional data
manipulation and calculations not disclosed in the specification.
Id. It therefore credited Dr. Grant’s opinion that
Example 1 implies the use of Mp.

One has the text about other cases:

In the prosecution of both patents, the
examiner rejected the claims as indefinite because the
term average molecular weight was meaningless without
specifying whether Mp, Mn, or Mw should be used. S

One notes that Mp is not an average.

**Of the commercial significance-->

from http://www.marketwatch.com/story/momenta-pharmaceuticals-announces-cafc-decision-to-invalidate-remanded-teva-pharmaceuticals-patent-in-daily-copaxoner-20-mg-suit-2015-06-18?reflink=MW_news_stmp :

About GlatopaTMOnce daily Glatopa (glatiramer acetate injection), developed in collaboration with Sandoz, is the first FDA-approved generic version of daily COPAXONE® 20 mg for patients with relapsing forms of multiple sclerosis. Produced entirely in the United States, once daily Glatopa has been determined by the FDA to be therapeutically equivalent to daily COPAXONE 20 mg, and is an "AP" rated, fully-substitutable product. As a therapeutically equivalent generic product, once daily Glatopa contains the same active ingredients, route of administration, strength, and dosage form, and can be substituted with the full expectation that Glatopa will produce the same clinical effect and safety profile as daily COPAXONE 20 mg. Daily COPAXONE 20 mg is one of the leading products marketed to treat multiple sclerosis, and is frequently prescribed as a first-line therapy in newly diagnosed patients.

CAFC vacates injunction and contempt order in ePlus v. Lawson

Because the USPTO had cancelled claim 26 in a re-exam, the CAFC vacated an injunction and contempt order.

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1506.Opinion.6-16-2015.1.PDF

On remand, CAFC holds that Teva's Group I claims are invalid for indefiniteness; Teva loses.

The CAFC noted:

On remand, the parties submitted supplemental briefing
explaining how the appeal should be resolved in light of
the Supreme Court’s Teva decision.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 12-
1567 (Fed. Cir. Feb. 20,2015), ECF No. 137. Applying the
legal standards set forth in the Supreme Court’s Teva
and Nautilus II decisions , we hold that the
Group I claims are invalid for indefiniteness.

Note from footnote 3:

Thus, claim 1 of the ’808 patent is the sole unexpired Group I claim.

At issue here:

Teva filed a petition for a writ of certio-
rari, arguing to the Supreme Court that
in holding the claims indefinite, we
erred by giving no weight to the
district court fact findings.

A key point in the CAFC decision:

But accepting these fact findings does
not, as Teva suggests, mean
that there now exists a presumption
regarding the meaning of the claim term
in the art in general or in the context of this patent.
To the extent that Teva argues that the meaning of
“molecular weight” in the context of patents-in-suit is
itself a question of fact, it is wrong.

A party cannot transform into a factual mat-
ter the internal coherence and context assessment of the
patent simply by having an expert offer an opinion on it.
The internal coherence and context assessment of the
patent, and whether it conveys claim meaning with
reasonable certainty, are questions of law.
The meaning one of skill
in the art would attribute to the term molecu-
lar weight in light of its use in the claims, the disclosure
in the specification,
and the discussion of this term in the
prosecution history is a question of law.

The district court should not defer to Dr. Grant’s ultimate conclusion about
claim meaning in the context of this patent nor do we
defer to the district court on this legal question.


To summarize, it is undisputed that
“molecular weight” or average molecular weight can be ascertained
by any of three possible measures:
Mp, Mn, and Mw. The claims do not indicate which measure to use. The specifi-
cation never defines molecular weight or even mentions
Mp, Mw, or Mn.
And the term “average molecular weight”
does not have a plain meaning to one of skill in the art.

Judge Mayer dissented.

So, although Teva won the legal point at the Supreme Court, it
lost the substantive patent case on remand.

Keep that in mind for Gevo/Butamax.

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1567.Opinion.6-16-2015.1.PDF

Is Derek Khanna wrong on patent reform?

Within Derek Khanna's The U.S. Patent System is Broken: Derek Khanna on Trolling and Low-Quality Patents, one finds a number of mistakes:

"A patent is a government-granted monopoly" that gives the owner sole right to profit from making or licensing a product, Khanna explains. "So effectively every week the government says, 'These are all the things that American citizens can't do for about the next 20 years.'

Wrong as to "government-granted monopoly" ! !

A patent is a right to exclude others from practicing the claims of the patent.
A monopoly pertains to exclusive control by one group of the means of producing or selling a commodity or service. In the classic case of diodes and triodes, the patent right to exclude meant that NEITHER patentee had exclusive control of producing triodes. This is a significant conceptual misunderstanding by Khanna.

Wrong as to "can't do" !! A patent right gives the inventor the ability to negotiate. That is "free markets and free competition." And patent owners have discretion. The Wright Brothers never sued any amateur or hobbyist for infringing their patent. They were concerned with those who profited by the invention of the Wright Brothers, as manifested by the patent claims. So, the government is not saying these are the things you can't do; the government is saying we are giving property rights, for a limited time, to the inventor, in return for the knowledge the inventor has made available. If you want to do these things, negotiate with the inventor.

The link at reason.com: https://reason.com/reasontv/2015/06/17/patent-abuse-is-stifling-economic-growth

As to Khanna's background, linkedin indicates

University of Massachusetts, Amherst
BA, Middle Eastern Studies, Political Science, History

Georgetown University Law Center
Juris Doctor, Technology related law

As to "promote the progress," note issues in scientific journals--Misconduct and poor laboratory practice in science threatens the scientific progress

In a post in The Scientist titled Widespread Data Duplication, Kerry Grens discusses work by
Morten P. Oksvold in the June 2015 issue of Science and Engineering Ethics :

Oksvold had collected 40 papers continuously as they were published in the three journals—reportedly, Cancer Cell, International Journal of Oncology, and Oncogene—beginning in late 2013. All suspicions of duplication were sent to a second scientist for confirmation, he noted.

This February, Oksvold posted his observations to the post-publication peer review site PubPeer, and two authors responded over the course of a month. Both explained that the mistakes were honest errors.

Oksvold pointed out in his paper that it’s impossible to tell from his analysis whether any of the duplications were due to accidental slip-ups, sloppiness, or intentional misconduct. Some commenters on PubPeer also stated that some duplications could be appropriate. “It is absolutely OK to show the same data on a different page in a larger context, for readability reasons or simply to make a related argument,” wrote one anonymous poster. Yet, without replies from authors or editors, the cases go unresolved.

“There is an obvious need for reforms in the peer reviewing and erratum/retraction system,” Oksvold wrote in his paper. “If no action is taken it seems clear that over time, the public confidence in science and research could entirely erode away.”

The abstract of the Oksvold paper states:

Since the solution to many public health problems depends on research, it is critical for the progress and well-being for the patients that we can trust the scientific literature. Misconduct and poor laboratory practice in science threatens the scientific progress, leads to loss of productivity and increased healthcare costs, and endangers lives of patients. Data duplication may represent one of challenges related to these problems. In order to estimate the frequency of data duplication in life science literature, a systematic screen through 120 original scientific articles published in three different cancer related journals [journal impact factor (IF) <5, 5–10 and >20] was completed. The study revealed a surprisingly high proportion of articles containing data duplication. For the IF < 5 and IF > 20 journals, 25 % of the articles were found to contain data duplications. The IF 5–10 journal showed a comparable proportion (22.5 %). The proportion of articles containing duplicated data was comparable between the three journals and no significant correlation to journal IF was found. The editorial offices representing the journals included in this study and the individual authors of the detected articles were contacted to clarify the individual cases. The editorial offices did not reply and only 1 out of 29 cases were apparently clarified by the authors, although no supporting data was supplied. This study questions the reliability of life science literature, it illustrates that data duplications are widespread and independent of journal impact factor and call for a reform of the current peer review and retraction process of scientific publishing.

LBE served on the "Ethics Task Force" of the American Chemical Society from 2000-2002. At the time, there was no procedure for third party correction of mistakes that appeared in the Journal of the American Chemical Society.
LBE was victimized by this procedural failing, by a paper published in JACS, which made a false statement about LBE's work on (poly(carbon monofluoride)), also published in JACS. Of patent relevance was an inaccurate paper in JACS which played a significant role in the litigation of SKB's US '639 on nabumetone (Relafen).

Wednesday, June 17, 2015

Teva case arises in Cephalon v. Celgene

Acusphere, Inc. is the assignee of U.S. Reissued
Patent No. RE40,493 (“the ’493 patent”), titled “Porous
Paclitaxel Matrices and Methods of Manufacture
Thereof.” Acusphere, Inc., and its exclusive licensee
Cephalon, Inc., sued Celgene for infringement of the ’493
patent based on Celgene’s Abraxane drug product, which
contains a fast-dissolving form of paclitaxel.
Following the district court’s construction
of a number of disputed claim terms,
see Cephalon, Inc. v. Celgene Corp.
, 985 F. Supp. 2d 171 (D. Mass. 2013), Acusphere
stipulated to noninfringement. Acusphere appeals the
district court’s claim constructions of: (1) “nanoparticles”
and “microparticles”; (2) “nanoparticles and
microparticles of a taxane”; and (3) “wherein upon
exposure to an aqueous medium, the matrix dissolves to
leave the taxane nanoparticles and microparticles.”
See Appellants’ Br. 2–3. Acusphere stipulated that if any of
the district court’s claim constructions are affirmed, it
cannot sustain its burden of proving infringement of the
’493 patent. J.A. 29.

Of definitions:

The district court construed the term “nanoparticles”
to mean “particles that have a mean diameter of between
about 1 to 1000 nanometers and less than that of
microparticles,” and construed “microparticles” to mean
“particles that have a diameter of betwee
n about 1 to 1000 microns and greater than that of nanoparticles.”
J.A. 28–29;
see also Cephalon, 985 F. Supp. 2d at 175–78. The
district court found these constructions supported by the
“widely accepted definition” of the terms nanoparticles
and microparticles.Cephalon,
985 F. Supp. 2d at 176.

Teva is mentioned:

Acusphere first argues the “‘widely accepted
definition[s]’” of the disputed terms are “not standard
usage.” Appellants’ Br.18 (quoting Cephalon, 985 F.
Supp. 2d at 176). As the United States Supreme Court
has recently instructed, “‘how the art underst[ands] [a]
term . .. [is] plainly a question of fact.’” Teva, 135 S. Ct.
at 838 (quoting Harries v. Air King Prods., Co.
, 183 F.2d 158, 164 (2d Cir. 1950) (Hand, C.J.)). Technical words
“may give rise to a factual dispute” that, “like all other
factual determinations, must be reviewed for clear error.”
Id.at 837 – 38. The terms “microparticles” and
“nanoparticles” are technical words, and how the relevant
scientific community understands them is therefore a
question of fact reviewable for clear error.
Acusphere fails to establish clear error

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/14-1411.Opinion.6-12-2015.1.PDF

Jawbone goes after Fitbit in court, again

Back in May, IPBiz discussed IP issues between Jawbone and Fitbit in the post

Jawbone suing Fitbit over poaching of employees and confidential information

Now, on June 17, Buzzfeed reports:

Jawbone is suing Fitbit for infringing on its patented wearable technology. It’s bad news for Fitbit, the biggest activity-tracker maker in the world — but if Jawbone wins, it will also mean trouble for Apple, Samsung, and basically any other wearable company that attempts to track movement and equate it to health.

Last week, Jawbone sued Fitbit for infringing on patented technologies that broadly use sensors to detect, collect, and interpret data about users’ health and fitness biometrics. In Jawbone’s reckoning, those functions sound uncannily similar to “virtually all of Fitbit’s wearable technology line.”


If Jawbone’s patents hold up, they would be ammunition against the Apple Watch — which, with Apple’s clout and capital, threatens to swallow both Jawbone and Fitbit’s market share.

“If I’m Jawbone,” Marlett said, “I want to take down Fitbit first before I go and attack Apple.”

If that happens, it wouldn’t be the first time a company successfully went after a target and then took on a bigger rival. In 2001, NTP, a Virginia patent holding company, sued Research in Motion, the company behind BlackBerry, for allegedly infringing on its wireless email patents. After NTP won a $612.5 million settlement, it went on from 2007 to 2010 to sue more than a dozen other tech giants, including AT&T, Verizon, Sprint, and T-Mobile, for infringing on those patents, too.

link: http://www.buzzfeed.com/stephaniemlee/why-wearables-are-silicon-valleys-next-patent-fight#.iwBrabqdWE

**See also article in the Wall Street Journal: Jawbone Hits Fitbit With Second Lawsuit in Two Weeks

**IPBiz notes that it is "standard operating procedure" to seek licenses from smaller entities (and sue such companies if licensing talks break down).

Buzzfeed also observed:

Fitbit says it has more than 200 granted and pending patents. (A search of the U.S. Patent and Trademark Office turns up about 100 patents granted from 2012 onward.) Meanwhile, Jawbone, including BodyMedia, claims to have “hundreds” of granted and pending patents (about 150 granted patents going back to 2001 show up online).

IPBiz found 96 issued US patents with assignee Fitbit.
The most recent was US 9,050,488 (issued 9 June 2015) with first claim:

An apparatus comprising:

one or more biometric sensors; at least one user interface element; at least one processor; and a memory, wherein: the memory, the at least one processor, the at least one user interface element, and the one or more biometric sensors are communicatively connected with one another, and the memory stores computer-executable instructions for controlling the at least one processor to:
a) receive biometric data from the one or more biometric sensors;
b) calculate at least one biometric performance measurement using the biometric data;
c) determine at a first time that the at least one biometric performance measurement indicates that a first biometric performance goal has been met during a first goal achievement window;
d) determine, after the first time, that the biometric data indicates that a wearer of the apparatus is engaged in a first fitness activity associated with the first biometric performance goal;
e) cause the at least one user interface element to provide, responsive to (d), a secondary indicator that signals that the first biometric performance goal has been met; f) receive, after (d) and (e), an input signal indicative of a user interaction with the apparatus; and
g) cause the at least one user interface element to output a first goal celebration indicator associated with the first biometric performance goal after c) and responsive to f) when the input signal is received at a second time after the first time.

The earliest patent in the list of 96 is US 8,180,591, with first claim

A portable monitoring device, adapted to couple to a body of a user, to calculate a number of stairs or flights of stairs traversed by the user, the portable monitoring device comprising: a housing having a physical size and shape that is adapted to couple to the body of the user; a motion sensor, disposed in the housing, to detect motion of the user and, in response thereto, to generate data which is representative of motion of the user; an altitude sensor, disposed in the housing, to sample an altitude of the user in response to a sample signal, wherein, in response to sampling the altitude of the user, the altitude sensor generates data which is representative of a change in altitude of the user; and processing circuitry, disposed in the housing and coupled to the motion sensor and the altitude sensor, to: generate the sample signal using the data which is representative of motion of the user, and calculate a number of stairs or flights of stairs traversed by the user using the data which is representative of motion of the user and the data which is representative of a change in altitude of the user.

An article in ManagingIP [An Unfit Lawsuit ] states that Jawbone has 97 granted US patents.

***UPDATE on June 25


Former PPG chemist, accused of trade secret theft, commits suicide

Thomas Rukavina, a chemist who retired from PPG in 2012 and who was accused of transmitting trade secret information to an entity in Jiangsu, China in May 2015, committed suicide on 7 June 2015. The trade secret theft will still be investigated. Suspect suicide won’t end trade secret theft probe

The FBI.GOV website had noted

The criminal complaint alleges that Rukavina retired from PPG in July of 2012. As early as June 2014, Rukavina passed proprietary and confidential information to J.T.M.G. Co., a glass company based in Jiangsu, China, that specializes in automotive and other specialty glass. The trade secret information he passed included PPG’s manufacturing specifications for windows, which are made of synthetic plastics and used for high-speed transportation, including airplanes.

link: https://www.fbi.gov/pittsburgh/press-releases/2015/former-ppg-employee-charged-with-theft-of-trade-secrets

Text at spiritwind noted:

According to the complaint, the Chinese company asked Rukavina if he had signed “any type of confidential agreement or non-competitive agreement with PPG.”

Rukavina allegedly responded, “When you join and when you leave PPG, you are forced to sign these documents. [If] you followed these documents as written you could never work again.”

Rukavina went on to write that he was “forced out,” and that had he not agreed to leave PPG, he would have received only $18,000 in severance pay instead of $100,000.

Rukavina said, “If PPG owns my brain for life then they should pay me $2 million per year to keep it!!”

PPG says it’s cooperating with authorities, but won’t comment because the investigation is ongoing.

PPG told the FBI the various information Rukavina shared with the Chinese company would be worth “hundreds of millions of dollars… and the plastic window product in question was the industry’s first new transparent plastic in more than 50 years.”

On his Facebook page, Rukavina says he has 44 U.S. patents. And that he’s responsible for “the highest impact plastic ever developed and approved for aircraft transparencies… will stop any handgun round.”

link: http://spiritwindtradingpost.com/cheapnflaxx.php?tag/china/feed/

Of interest is other text concerning Chinese students:

Fifteen Chinese nationals — almost all in their 20s — have been indicted by a Pittsburgh grand jury for using fake Chinese passports and hired test-takers to take SATs and other standardized exams in order to gain admission to American universities.

U.S. Attorney David Hickton outlined the first-of-its-kind conspiracy to KDKA money editor Jon Delano on Thursday.

“A test-taker using a phony passport misrepresents themselves as someone else and they take the test, and when the test score is obtained, the student can gain admission to an American institution of higher education,” said Hickton. “And then, because of that under the visa rules, they can get an F-1 visa that allows them to stay here.”

While most of the indicted Chinese were in Pittsburgh, Hickton would not confirm that the University of Pittsburgh and Carnegie Mellon University were the principal victims of the conspiracy, saying only, “Great educational institutions in this region and around the country have been victimized.”

***Separately, as to a matter of timing, the law firm Orick, Herrington & Sutcliffe LLP had posted an article on the Rukavina matter, titled Fighting Back: Identifying Risks Posed by an Angry Current or Former Employee on 2 June 2015, five days before Rukavina's suicide.

The Orrick text includes:

PPG appears to have learned of Rukavina’s work with the Chinese manufacturer after J.T.M.G. contacted one of PPG’s subcontractors about purchasing molds based on PPG’s designs and specifications.

US Patent 9,034,629 to Joule Unlimited titled Recombinant synthesis of medium chain-length alkanes

On about 16 June 2015, Joule Unlimited issued a press release which begins

Joule, the pioneer of liquid fuels from recycled CO2, today announced the issuance of an additional patent on the direct, continuous production of hydrocarbon fuels – extending its ability to target the highest-value molecules of the petroleum distillation process and generate them on demand from sunlight and CO2.

U.S. Patent #9,034,629, issued on May 19, covers both the cyanobacterium and the process for directly converting CO2 into medium-chain alkanes, which are the molecular basis of diesel, jet fuel and gasoline.

link: http://finance.yahoo.com/news/joule-expands-intellectual-property-direct-130000228.html

The first claim of US 9,034,629

An engineered cyanobacterium,
wherein the engineered cyanobacterium comprises recombinant genes encoding an alkane deformylative monooxygenase having EC number, a thioesterase having EC number, and a carboxylic acid reductase having EC number, wherein the alkane deformylative monooxygenase is encoded by adm, the thioesterase is encoded by fatB or fatB2, and the carboxylic acid reductase is encoded by carB, wherein the thioesterase converts C(.sub.8-12) acyl-ACP to C(.sub.8-12) fatty acid, wherein the carboxylic acid reductase converts C(.sub.8-12) fatty acid to C(.sub.8-12) aldehyde, wherein the alkane deformylative monooxygenase converts C(.sub.8-12) aldehyde to C(.sub.7-11) alkane, and wherein the engineered cyanobacterium produces at least one of heptane, nonane, and undecane in an amount greater than an otherwise identical cyanobacterium, cultured under identical conditions, but lacking recombinant genes encoding alkane deformylative monooxygenase, thioesterase, and carboxylic acid reductase.

Example 4 includes the text:

One or more recombinant genes encoding one or more enzymes having enzyme activities which catalyze the production of medium chain-length alkanes are identified and selected. The enzyme activities include: an alkane deformylative monooxygenase activity, a thioesterase activity, a carboxylic acid reductase activity, and a phosphopanthetheinyl transferase activity, a long-chain fatty acid CoA-ligase activity, and/or a long-chain acyl-CoA reductase activity. Such genes and enzymes can be those described in Tables 1 and 2.

The selected genes are cloned into an expression vector. For example, adm-carB-entD-fatB or adm-acrM-fadD-fatB (or combinations of homologs thereof) are cloned into one or more vectors. See FIG. 6. The genes can be under inducible control (such as the urea-repressible nir07 promoter or the cumate-inducible cum02 promoter). The genes may or may not be expressed operonically; and one or more of the genes can be placed under constitutive control such that when the other gene(s) are induced, the genes under constitutive control are already expressed. For example, one might express adm, carB, and entD constitutively while placing fatty-acid-generating fatB under inducible control; thus when fatty acids are made by fatB after induction, the remainder of the pathway is already present.

One or more vectors are selected and transformed into a microorganism (e.g., cyanobacteria). The cells are grown to a suitable optical density. In some instances cells are grown to a suitable optical density in an uninduced state, and then an induction signal is applied to commence alkane production.

Alkanes are produced by the transformed cells. The alkanes generally have 7, 8, 9, 10, or 11 carbon atoms. In some instances, alkanes are detected. In some instances, alkanes are quantified. In some instances, alkanes are collected.

The claim to priority: This application is related to U.S. Provisional Application No. 61/756,973, filed Jan. 25,2013.

There was a final rejection in the case on 9 October 2014. Among other items, there were rejections over Roessler, including US 8,633,002. Joule Unlimited, in papers and in an interview on 13 January 2015, pointed to the lack of working examples in the cited prior art of Roessler.

Is the proposed patent reform bad for small businesses?

As to patent reform, the Innovation Act of Congressman Goodlatte currently before the House is the same Innovation Act that passed the House in the last session, and includes the presumption of "loser pays". The PATENT Act, proposed in the Senate this session, responded to criticism of "loser pays," and modified the provision to make the situation more acceptable to smaller entities.

From within The Anti–Innovation Patent Act of 2015

Under the terms of the Innovation Act the losing party would have to pay the attorney’s fees of the prevailing party, unless the court finds that the positions taken by the losing party were objectively reasonable. This is a giant step beyond the PATENT Act that would allow a court to award attorney’s fees to the prevailing party if the position or conduct of the non-prevailing party was not objectively reasonable and, thus does not create a presumption of fee shifting. In either case, though, it alters the “American rule” that attorney’s fees should be borne by the respective parties absent exceptional circumstances. It ignores the recent Supreme Court decisions giving district courts greater discretion to award attorney’s fees. Indeed, courts have recently begun to grant more motions seeking attorneys’ fees. Fee shifting will likely deter legitimate owners of enforcing their patent rights by making the risk of enforcement prohibitively high.

Smaller companies also will be less financially able to enforce their patent rights. In order to finance a patent enforcement proceeding now, small firms with limited resources often turn to “funders” that agree to cover costs and expenses in return for a share of the recovery. The PATENT Act would let the defendant join individual “interested parties,” who have a financial interest in the patent, such as funders, and would make them personally liable to satisfy any award of attorney’s fees and expenses if the party owner cannot pay the award. This provision is likely to dry up most sources of patent litigation funding making it even harder, if not impossible, for small companies and individuals to assert their patent rights against infringers. In essence, by creating disincentives to enforce patent rights, Congress is providing certain large businesses with royalty free licenses.

The bills pending in Congress go far beyond what is necessary to address the limited abuse of the system by patent trolls. According to Dana Rohrabacher, (R-Calif.), the Innovation Act is “actually anti-innovation” and “in reality makes it harder for small inventors to protect their patents and easier for big corporations to steal them.” He added: “In all my years [in Congress] I have never seen a bill so deserving of the description crony capitalism.”

The piece concludes

The winners here would be large companies and corporations that will find it much easier to willfully ignore patent rights and be freed from having to pay royalties to patent owners. Apart for small patent owners, the loser will be the American public that will be deprived of jobs and new technology.

From a previous post on IPBiz:

An AP story notes that doughnut selling lawyers were partly to blame for the demise: A county commissioner who owns a doughnut shop and two lawyers who own a new Dunkin' Donuts on Panama City Beach turned against him ... After the lawyers threatened to sue, his bosses at the Florida Health Department made him remove the anti-fried dough rants and eventually forced him to resign, [Newsom] says.

This little story evokes themes in the story of patent reform, although the patent reform saga has added complexity. In patent reform, the big doughnut sellers (eg, IBM, Cisco) are complaining about the little doughnut sellers ("trolls") and are trying to implement "reform" to favor the big doughnut sellers, rather than to get rid of the doughnuts. The popular press would have the public believe that the little doughnut sellers are the only ones selling doughnuts, and that "reform" will get rid of the doughnuts. Anybody who actually advocated getting rid of the doughnuts would meet the same fate as Dr. Newsom, likely from doughnut selling lawyers. Furthermore, the position of the big doughnut sellers would do significant harm to smaller vendors, who aren't selling doughnuts at all.

Tuesday, June 16, 2015

Patent reform in trouble?

From the Washington Times,

Patent-reform bill hit from both sides of the aisle

link: http://www.washingtontimes.com/news/2015/jun/16/patent-reform-bill-hit-both-sides-aisle/

“It’s a broad-spectrum weed killer, but it’s killing plants, too,” said Rep. Thomas Massie, a Kentucky Republican and MIT graduate who said he holds 29 patents.

“The problem,” he said, “is everything this does to a troll, it does to a legitimate inventor.”

Mr. Massie is leading the fight alongside Reps. Dana Rohrabacher, California Republican, and Marcy Kaptur, Ohio Democrat.

Some conservatives see the reform legislation as a gift from the administration to Google, which stands to gain from a tightened legal patent process as it battles competitors such as Apple Inc.

Mr. Massie said larger companies are not dissuaded from ripping off ideas, because the law weakens a judge’s ability to freeze the company’s ability to ship products once they are caught.

Williamson v. Citrix

The result in Williamson v. Citrix:

Because the district court erroneously
construed the limitations “graphical display
representative of a classroom” and “first graphical display
comprising . . . a classroom region,” we vacate the judgment
of non-infringement of claims 1–7 and 17–24 of
the ’840 patent. Because the district court correctly
construed the limitation “distributed learning control
module,” we affirm the judgment of invalidity of claims 8–
12 of the ’840 patent under 35 U.S.C. § 1122, para. 2.
Accordingly, we remand.

We agree with Williamson. The district court erred in
construing these terms as requiring a “pictorial map.”
First, the claim language itself contains no such “pictorial
map” limitation. “[I]t is the claims, not the written description,
which define the scope of the patent right.”
Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed.
Cir. 1998); see also id. (“[A] court may not import limitations
from the written description into the claims.”).
While the specification discloses examples and embodiments
where the virtual classroom is depicted as a “map”
or “seating chart,” nowhere does the specification limit the
graphical display to those examples and embodiments.
This court has repeatedly “cautioned against limiting the
claimed invention to preferred embodiments or specific
examples in the specification.” Teleflex, Inc. v. Ficosa N.
Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002) (quoting
cases) (citations omitted).

The ’840 patent defines a classroom as “an at least
partially virtual space in which participants can interact.”
Id. at col.6 ll.5–6. Nothing further is required, and no
greater definition is mandated by the language of the
claims, the specification, or the prosecution history. As is
well settled, the claims must “not be read restrictively
unless the patentee has demonstrated a clear intention to
limit the claim scope using words or expressions of manifest
exclusion or restriction.” Innova/Pure Water, Inc., v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117
(Fed. Cir. 2004) (internal quotations omitted).

Judge Reyna writes separately

This is the second time around for this case. In the
first, Williamson I, I dissented from the majority conclusion
that the “distributed learning control module” term
of claim 8 of the ’840 patent recites sufficient structure to
keep the claim limitation “distributed learning control
module” outside of the purview of 35 U.S.C. § 112, paragraph
In this second time around, Williamson II, the majority
reverses itself to conclude that the “distributed learning
control module” term does not recite sufficient
structure, is governed by 35 U.S.C. § 112, paragraph 6,
and is indefinite under paragraph 2. Because this conclusion
is the correct result, I concur. To explain my
concurrence, I rely on the reasons I laid out in my dissent
in Williamson I.
The majority, however, continues to ignore critical evidence
showing that an image of a visually depicted
virtual classroom is required by claim 8 of the ‘840 patent.
I dissent from that portion of this opinion.

Of functional claiming

Arguably, this rationale applies to functional claiming
generally, not just to claims that recite “means.” Indeed,
the Halliburton Court relied on precedent invalidating
functional claims that did not recite the term “means.”
Id. at 9 (citing Holland Furniture Co. v. Perkins Glue Co.,
277 U.S. 245, 256–57 (1928).) The continued viability of
this rationale, and its impact on how this Court applies
§ 112, para. 6 merits attention.
In sum, my view is that perhaps we need to revisit our
judicially-created § 112, para. 6 presumptions.

Note footnote 1:

The earlier opinion in this case, reported at 770
F.3d 1371 (Fed. Cir. 2014), is withdrawn, and this opinion
substituted therefore. Part II.C.1. of this opinion has
been considered and decided by the court en banc. See
Order in this case issued this date.

Judge Newman's dissent begins

I respectfully dissent from the en banc ruling that is
inserted into this panel opinion at Section II.C.1. The
court en banc changes the law and practice of 35 U.S.C.
§ 112 paragraph 6, by eliminating the statutory signal of
the word “means.” The purpose of this change, the benefit,
is obscure. The result, however, is clear: additional
uncertainty of the patent grant, confusion in its interpretation,
invitation to litigation, and disincentive to patentbased

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1130.Opinion.6-11-2015.1.PDF

Our consideration of this case has led us to conclude
that such a heightened burden is unjustified
and that we should abandon characterizing as “strong” the
tion that a limitation lacking the word “means” is not
subject to §112, para. 6. That characterization
is unwar-
ranted, is uncertain in meaning and application,
and has the inappropriate practical effect of placing a
thumb on what should otherwise be a balanced
analytical scale. It has
shifted the balance struck by Congress in passing §
112, para. 6 and has resulted in a proliferation of func-
tional claiming untethered to §
112, para. 6 and free of
the strictures set forth in the statute.
Henceforth, we will
apply the presumption
as we have done prior to
Lighting World,
without requiring any heightened evidentiary
showing and expressly overrule the
characterization of
hat presumption as “strong.”

We also overrule the
strict requirement of “a showing that the limitation
essentially is devoid of anything that can be construed as structure.”

The standard is
whether the words of the claim are
understood by persons of ordinary skill in the art to have
a sufficiently definite meaning
as the name for structure. Greenberg, 91 F.3d at
1583. When a claim term lacks the word “means,”
the presumption can be overcome and §112, para. 6 will apply
if the challenger demonstrates
that the claim term fails to “recite sufficiently definite
structure ” or else recites“
function without reciting suffi-
cient structure for performing that function.”