Friday, July 31, 2015

CAFC discusses inherent anticipation in ParkerVision/Qualcomm case

Of the matter of inherent anticipation:

Only one claim limitation is in dispute here: “performing
a plurality of charging and discharging cycles of the
first and second capacitors to generate first and second
down-converted information signals across first and
second impedance devices, respectively.”12 ParkerVision
contends that DeMaw does not anticipate claim 18 because
it does not expressly teach the claim limitation of
“charging and discharging” capacitors to generate a
baseband signal. Anticipation, however, “can occur when
a claimed limitation is ‘inherent’ or otherwise implicit in
the relevant reference,” even though the reference does
not expressly teach that limitation. Standard Havens
Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369
(Fed. Cir. 1991), citing Tyler Refrigeration v. Kysor Indus.
Corp., 777 F.2d 687, 689 (Fed. Cir. 1985).

Cases involving inherent anticipation are counter-examples
to the "urban legend" that anticipation is the epitome of obviousness.

The CAFC also noted:

Thus, even though Figure 6.7 of DeMaw does not expressly
state that the capacitors engage in “charging and
discharging” to generate a baseband signal, Dr. Razavi’s
detailed testimony regarding the DeMaw circuit established
that charging and discharging is “implicit” in that
reference. ParkerVision sought to challenge Dr. Razavi’s
testimony in various respects on cross-examination, but
none of its questioning undermined Dr. Razavi’s explanation
of the operation of the DeMaw circuit and how Figure
6.7 of DeMaw corresponds to Figure 16H of the ’342
ParkerVision also challenged Dr. Razavi’s computer
simulations at trial, faulting him for assigning values to
certain components of the DeMaw circuit that were not
provided in DeMaw itself. Dr. Razavi admitted that
DeMaw does not disclose the values of certain capacitor
and inductor components; he explained, however, that he
used simulations only to “illustrate one or two effects [of
the DeMaw circuit],” and that the component values he
picked for the simulations did not affect his conclusion
that “DeMaw exactly matches the claim language.”


Newegg wins on "prevailing party" issue at CAFC

The CAFC analyzed "prevailing party" in Pragmatus v. Newegg :

To the extent the district court interprets our precedents
to require a prevailing party to have won a dispute
or benefitted from a substantive court decision, the district
court is incorrect. Such a requirement goes beyond
the Supreme Court’s statements in Buckhannon, which
require only that the party has obtained a “judgment on
the merits,” 532 U.S. at 603, resulting in “a corresponding
alteration in the legal relationship of the parties,” id. at

“The dismissal of a claim with prejudice . . . is a judgment
on the merits under the law of the Federal Circuit.”
Power Mosfet, 378 F.3d at 1416. At least where such a
dismissal is paired with a covenant not to sue, this court
has held that the dismissed party must be regarded as the
prevailing party.
See Highway Equip. Co. v. FECO, Ltd.,
469 F.3d 1027, 1035 (Fed. Cir. 2006) (“[A]s a matter of
patent law, the dismissal with prejudice, based on the
covenant [not to sue] and granted pursuant to the district
court’s discretion under Rule 41(a)(2), has the necessary
judicial imprimatur to constitute a judicially sanctioned
change in the legal relationship of the parties, such that
the district court properly could entertain [a party’s] fee
claim under 35 U.S.C. § 285.”).


CAFC reverses WDNC in Blue Ridge case; synecdoche not inherently ambiguous

There was a claim construction issue in SOCIEDAD ESPANOLA DE ELECTROMEDICINA Y
CALIDAD, S.A. v. Blue Ridge ; Phillips was cited:

Claim terms are generally given “the meaning that
the term would have to a person of ordinary skill in the
art in question at the time of the invention.” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (citations omitted). “[T]he person of ordinary skill
in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term
appears, but in the context of the entire patent, including
the specification.” Id. at 1313.

The parties dispute the proper construction of two
claim terms: “two insulated chambers” and “magnetic
core.” Because the district court relied only on intrinsic
evidence in its claim construction, we review its claim
construction entirely de novo.

[So the Teva decision is not at play here.]

The issue on insulated chambers:

The district court recognized that construing “insulated
chambers” as electrically insulated “has a common
sense appeal.” Construction Op. at *7. Nevertheless, it
concluded that the patentees disavowed this definition
during prosecution. Id. at *8–10. The district court
placed great weight on the patentees’ statement during
prosecution describing their invention as requiring “different
and isolated chambers,” quoting this language
three different times. Id. at *9, *10 (quoting ’534 application
at applicants remarks (May 27, 2003) (emphases in
original)). The district court’s quote of the prosecution
history was inaccurate.
The prosecution history refers to
the chambers as being “different and insulated,” but
never refers to them as being isolated. What was referred
to as being “isolated” were the “different and
isolated columns.” ’534 application, applicants remarks
(May 27, 2003). The prosecution history thus fails to
support the district court’s characterization of the two
chambers as being so isolated that nothing can pass from
one to the other. The prosecution history certainly does
not rise to the level of a clear and unmistakable disavowal.
Blue Ridge argues that the plain and ordinary meaning
of “chambers” requires some sort of an enclosure.
True enough. But Blue Ridge has failed to show that such
an enclosure must be so closed or isolated as to prevent oil
or other elements from passing from one enclosure to


Thus, the proper construction of “two insulated chambers”
is “two electrically insulated chambers.”

** As to magnetic core:

Blue Ridge argues that a synecdoche is inherently
ambiguous and should, therefore, be construed against
SEDECAL. That is not the law. Where a claim term
“ha[s] more than one plain and ordinary meaning,” we
look to the specification to ascertain which definition is
intended. See Kaneka Corp. v. Xiamen Kingdomway Grp.
Co., --- F.3d ----, 2015 WL 3613644, at *4 (Fed. Cir. June
10, 2015).
From the foregoing, we conclude that the phrase
“magnetic core” as used in the specification of the ’829
patent refers to core legs connected by yokes. The district
court’s contrary conclusion is unsupported by the specification
and is erroneous.


Thursday, July 30, 2015

Bioreactor patent application to K. Helllingwerf


Ice cream and intellectual property

Dunlap Codding has a recent post titled The Cold Reality of Our Favorite Frozen Treat Lawsuits mentioning certain trademark disputes in the ice cream biz.

For example, “Mister Softee” and “Master Softee” argued over Master Softee’s use of Mister Softee’s federally registered logo and sensory marks and its trade dress, among other issues. The owner of the “Master Softee” trucks, Dimitrios Tsirkos, was a prior franchisee of “Mister Softee.”

IPBiz has discussed some patent disputes in the ice cream biz. See for example
Popsicle patent wars of yesteryear

And don't forget that "melted ice cream" was behind the Evinrude patents. In 1906, ice cream melted while Evinrude was rowing to his girl friend. See

CAFC re-visits design patents in High Point Design vs. BDI

The outcome:

BDI challenges each of these determinations on appeal.
For the reasons set forth below, we reverse summary
judgment of invalidity, affirm summary judgment of
non-infringement, affirm the denial of BDI’s motion for
additional discovery, and affirm the denial of BDI’s motion
to amend the complaint.

The CAFC gave background:

Design patents are presumed to be valid. 35 U.S.C.
§ 282(a). A party seeking to invalidate a patent on the
basis of anticipation must do so by clear and convincing
evidence. See Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277, 1288 (Fed. Cir. 2002). Design patent
anticipation requires a showing that a single prior art
reference is “identical in all material respects” to the
claimed invention. Door-Master Corp. v. Yorktowne, Inc.,
256 F.3d 1308, 1312 (Fed. Cir. 2001) (quoting Hupp v.
Siroflex of Am., Inc., 122 F.3d 1456, 1461 (Fed. Cir.
1997)). In other words, the two designs must be substantially
the same. See Door-Master, 256 F.3d at 1312, 1313
(applying design patent infringement test from Gorham
Mfg. Co. v. White, 81 U.S. 511, 528 (1871), as the test for
anticipation). Two designs are substantially the same “if
the resemblance is such as to deceive [an ordinary observer],
inducing him to purchase one supposing it to be the
other[.]” Gorham, 81 U.S. at 528. Anticipation is a question
of fact. Int’l Seaway Trading Corp. v. Walgreens
Corp., 589 F.3d 1233, 1237 (Fed. Cir. 2009). Summary
judgment is proper only when the evidence underlying
anticipation is clear and convincing such that no reasonable
fact-finder could find otherwise. See SRAM Corp. v.
AD-II Eng’g, Inc., 465 F.3d 1351, 1357 (Fed. Cir. 2006).
Viewing all evidence in the light most favorable to the
non-moving party—BDI—we conclude that a reasonable
jury could have found there was not clear and convincing
evidence of anticipation.
In High Point I, we instructed that on remand, the
district court should “add sufficient detail to its verbal
description of the claimed design to evoke a visual image
consonant with [the] claimed design.” 730 F.3d at 1314.
We also instructed that the district court should perform
a side-by-side comparison of the claimed and prior art
designs as part of the proper obviousness determination.
Id. Notably, we cautioned that there appeared to be
“genuine issues of material fact as to whether the Woolrich
Prior Art are, in fact, proper primary references” for
obviousness purposes under 35 U.S.C. § 103. Id.
On remand, the district court did not perform a sideby-side
comparison, but concluded that the claimed and
prior art designs share the “same characteristics” because
they share “a structured body, a soft-looking fluff surrounding
the opening of the slipper, and a sole that appears
durable and fairly thick.” Remand Order, 2014 WL
1244558, at *6; see also id. at *7.
We find again that the district court fundamentally
erred in its analysis by analyzing the designs from “too
high a level of abstraction” and failing to focus “on the
distinctive visual appearances of the reference and the
claimed design.” High Point I, 730 F.3d at 1314 (quoting
Apple, 678 F.3d at 1331–32). Specifically, the court’s
description does little more than point out the main
concepts of the claimed design: a structured slipper
having fuzzy material at the foot opening. See Durling v.
Spectrum Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996)

CAFC analyzes stay requests in view of CBM review by PTAB

The background of this CAFC case relates to stays requested by
Apple, and by Samsung:

Smartflash LLC and Smartflash Technologies Ltd.
(collectively, “Smartflash”), patent licensing companies,
filed separate suits against Apple and Samsung on May
29, 2013, alleging infringement of U.S. Patent Nos.
7,334,720 (the “’720 Patent”); 8,033,458 (the “’458 Patent”);
8,061,598 (the “’598 Patent”); 8,118,221 (the “’221
Patent”); 8,336,772 (the “’772 Patent”); and 7,942,317 (the
“’317 Patent”). Subsequently, Smartflash sued Google,
Inc. (“Google”) on May 7, 2014 and, Inc.
(“Amazon”) on December 23, 2014 for patent infringement,
asserting the same six patents as those asserted
against Apple and Samsung, as well as an additional
patent that issued on August 5, 2014, U.S. Patent No.
8,794,516. All of the asserted patents relate to managing
access to data via payment information.
Throughout the course of these cases, both Apple and
Samsung filed multiple CBM petitions with the Patent
Trial and Appeal Board (“PTAB”). See America Invents
Act, Pub. L. No. 112-29, § 18, 125 Stat. 284, 329–31 (2011)
(“AIA”). Between March 28 and April 3, 2014, Apple filed
12 separate petitions for CBM review on 35 U.S.C. §§ 102
and 103 grounds. And, on April 3, 2014, Apple moved to
stay the district court action pending CBM review. See
Defendants’ Motion to Stay Litigation, SmartFlash LLC
v. Apple Inc., No. 6:13-cv-447 (E.D. Tex. Apr. 4, 2014),
ECF No. 120. On May 15, 2014, Samsung filed a motion
to stay based on Apple’s CBM petitions, explaining that, if
the court were to grant its motion, it “would stipulate to
be bound to the same extent as Apple is under
§ 18(a)(1)(D) of the America Invents Act.” Defendants’
Motion to Stay Litigation, SmartFlash LLC v. Samsung
Elecs., Co., No. 6:13-cv-448 at 3 n.4 (E.D. Tex. May 15,
2014), ECF No. 149. Because the PTAB had not yet
decided whether to grant these petitions, the district court
denied both motions without prejudice to refiling if any of
the petitions were granted. S

Of history of the AIA:

Congress enacted the AIA, in part, to address concerns
about business method patents. With this Court’s
decision in State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the
test for patent eligibility greatly expanded until the
Supreme Court’s decision in Bilski v. Kappos, 561 U.S.
593 (2010), which significantly curtailed the patentability
of business methods. As a result of “[t]his judicial expansion
and subsequent judicial retraction of U.S. patentability
standards . . . a large number of business-method
patents” issued that may not be valid. 157 Cong. Rec.
S1379 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
Through the enactment of Section 18 of the AIA, Congress
sought to clarify this confusion by providing “a relatively
inexpensive administrative alternative to litigation for
addressing disputes concerning the validity of [CBM]
patents.” 157 Cong. Rec. S1379 (daily ed. Mar. 8, 2011)
(statement of Sen. Kyl); see also 157 Cong. Rec. S1364
(daily ed. Mar. 8, 2011) (statement of Sen. Schumer)
(noting that the fundamental purpose of the CBM review
process is “to provide a cost-efficient alternative to litigation”).

But in order to realize Congress’s intent to establish
an alternative to district court litigation for CBM issues,
parties must file CBM petitions in a manner that facilitates
this goal. We recognize that there is no statutory
deadline to file a CBM petition, unlike other post-grant
proceedings, but we nevertheless conclude the timing of
the petitions in this case created a tactical advantage for
Apple. See VirtualAgility, Inc., 759 F.3d 1319–20 (considering
the timing of a CBM petition to assess whether a
party sought to gain a tactical advantage or had a “dilatory
motive”). By waiting to submit its petitions until
almost the eve of trial and well after it filed its motion for
summary judgment on the § 101 issue, Apple was able to
first pursue its § 101 defense at the district court and
then at the PTAB.

Footnote 3 of the CAFC decision observes:

Although delay in filing a CBM petition is not one
of the express factors listed in § 18(b)(1), it is not improper
for the trial court to have considered traditional equitable
factors, such as unclean hands, in its analysis.

And the CAFC noted:

Specifically, because Apple
waited to file its petitions, the district court found that it
and the parties had already spent substantial time and
resources on the litigation, as evidenced by the six day
jury trial, the hundreds of pages of court-issued orders
and opinions, and the thousands of pages of briefing and
exhibits submitted by the parties. The district court also
explained that, under the current post-trial schedule, the
parties could appeal the entire litigation to this Court
prior to any appeal from a PTAB final determination.
Thus, the district court determined that it was more
efficient not to stay the case.

The conclusion of the CAFC: no stay for Apple:

Here, all four factors weigh against a stay in this case.
On this record, we conclude that the district court did not
abuse its discretion when it denied Apple’s motion to stay.

There was a different result for Samsung:

But the critical distinction
between the Apple and Samsung cases is that Samsung
has yet to go to trial. This fact affects the analysis of two
of the four factors: simplification of the issues and reduction
of the burden of litigation on the parties and on the
court. While the district court is extremely familiar with
the Apple case at this juncture, there are different claims
at issue and different accused technology in the Samsung
case. Oral Arg. at 30:18–31:24, available at
15-1707.mp3. Additionally, the Samsung case involves
three co-defendants: Exedea, Inc.; the Samsung entities;
and the HTC entities. The trial will involve fact witnesses
from overseas and require the use of interpreters for
some foreign witnesses. The additional complexities and
cost of the Samsung trial counsel us to find that these two
factors weigh in favor of a stay


the district court did not properly consider the significance
of this fact in its analysis, we find that the district
court abused its discretion when it denied Samsung’s
motion to stay. And, on balance, we conclude that the
totality of the factors weigh in favor of a stay.


Tuesday, July 28, 2015

CAFC addresses analogous art in Circuit Check v. QXQ

In Circuit Check v. QXQ, the jury had found the claims of the patent
of Circuit Check not invalid as obvious, the district court judge granted judgment as a matter of law
that the claims were obvious and invalid, and the CAFC reversed the district court's judgment as a matter of
law. Thus, not obvious, obvious, not obvious.

The END of the Circuit Check opinion states:

Whatever doubts we have about these patents, the ju-
ry verdict was supported by substantial evidence.
We therefore reverse the district court’s grant of judgment as
a matter of law and remand for further proceedings
consistent with this opinion

The big issue in the case was whether certain prior art was analogous:

At trial, QXQ argued that three additional refer-
ences—rock carvings, engraved signage, and a machining
technique known as Prussian Blue (collectively, the
“disputed prior art”)—disclose the limitation
not present in the stipulated prior art and constitute analogous prior
art. Circuit Check argued that
the references were not

The CAFC spoke of the analysis by the district court:

[The district court] found that although there was no
doubt that rock carvings “are not technically pertinent to
the ‘field’ of circuit testers,” and “witnesses credibly
testified that Prussian Blue dye had not been used on
alignment plates,” “any layman ” would have understood
that interface plates could be marked using the tech-
niques described in the disputed prior art (...)
It further noted that “any vandal who has ‘keyed’ a car
knows that stripping the paint with a key will result in
the underlying metal color showing through.”

As to the issue of "analogous art," the CAFC stated:

By finding the claims nonobvious, the jury presuma-
bly found that the disputed prior art is not analogous
and therefore not within the scope of the prior art.
See Jurgens, 927 F.2d at 1557. Substantial evidence supports
the jury’s presumed finding. To be considered within the
prior art for purposes of the obviousness analysis, a
reference must be analogous. Wang Labs., Inc. v. Toshiba
Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). Whether a
reference is analogous art is a question of fact.
Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).
Prior art is analogous if it is from the same field of en-
deavor or if it is reasonably pertinent to the particular
problem the inventor is trying to solve. Id.

The CAFC also stated:

The jury heard testimony that a
person of ordinary skill in the
art would not have thought
about rock carvings, engraved
signage, or Prussian Blue
in considering how to mark
interface plates.


The question is not whether simple concepts
such a s rock carvings, engraved signage, or Prussian Blue
dye are within the knowledge of lay people or even within
the knowledge of a person of ordinary skill in the art.
Rather, the question is whether an inventor
would look to this
particular art to solve
the particular
problem at hand.

Monday, July 27, 2015

Pre-emption of state trade secret law by federal copyright law

From the JDSupra post Fifth Circuit Revisits Copyright Preemption of Trade Secret Law :

On appeal, the Fifth Circuit analyzed preemption in two steps. First, the court determined “whether [the claim] falls within the subject matter of copyright.” Second, “the cause of action is examined to determine if it protects rights that are ‘equivalent’ to any of the exclusive rights of a federal copyright.” The Fifth Circuit joined other circuit courts (including the First, Third, Seventh, and Ninth Circuits) in finding that “state law claims based on ideas fixed in tangible media are preempted by § 301(a).” It found that the Spear Marketing’s claims were within this scope of preemption because: 1) computer software is a tangible medium; and 2) input/output data from VaultWorks is a trade secret. When addressing the second prong, the court found that the allegations of copying, communicating, and transmitting were equivalent to the reproduction and distribution rights under Copyright Law.

One wonders if the trend of courts requiring greater specificity in trade secrets (which might be advanced by fixing the ideas in tangible media), will run afoul of preemption?

Copyright and jokes posted on Twitter

In the realm of copying without attribution, see the thread on betanews titled Twitter censors plagiarized tweets that repeat copyrighted joke

Fortune on Google's patent giveaway to start-ups

Fortune's piece on Google's patent "giveaway", titled Google's new patent plan: how it will and won't help startups does not project big impact for the patent recipients. For example:

It’s a nice gesture on Google’s part, but will two patents make a big difference for the startups? Not really. One reason is the patents Google is giving out are mostly defanged. They come with licensing terms that prevent the new startup owners from invoking them against certain companies and, more broadly, a patent can only be used for defensive purposes – otherwise the startup will have to give it back to Google.

Elsewhere in the Fortune article:

Ultimately, though, receiving a Google patent will not change the destiny of any individual startup. History shows that successful startups – think Uber or Pinterest or AirBnb – get where they are by focusing on innovation and execution, not by mastering patent strategy.

The real significance of the Google Patent Starter Program is instead more subtle, and should be seen against the backdrop of other moves Google is undertaking to change the economic incentives that have made patents such a problem for the tech sector in the first place.

One other such move came in April when Google opened a temporary patent portal in April that let sellers ask if the company wanted to buy their assets. According to Kurt Brasch, a lawyer at Google, the program was a big success. In a phone interview, he wouldn’t provide many details, but did say the company bought numerous patents at purchase prices ranging from $3000 to $250,000.

Friday, July 24, 2015

Holt still clueless on patent reform

Mytheos Holt has another post on patent reform titled: The Fight Against Patent Trolls Is About Principle: link:

He suggests that patent reform was bipartisan. He omits that the opposition to patent reform is also bipartisan.

Holt writes:

That it is breaking down is a sign of the success of an otherwise very dubious public relations campaign seeking to cast the idea of patent reform as a giveaway to corporate interests and the Chinese.

One issue is that Goodlatte's "loser pays" provision is a problem for small inventors and universities, not so much of a problem for big companies, and nothing to do with the Chinese. One can look at the recent Columbia University / Illumina matter. Was Columbia University a troll who should pay Illumina's legal fees because Columbia lost?

Thursday, July 23, 2015

Columbia University's nucleotide sequencing patents handled roughly at CAFC in Illumina case

concerns the affirmance, by the CAFC,
of invalidity for obviousness determinations by PTAB, of several patents
assigned to Columbia University.

The nonprecedential opinion written by Judge Wallach has a large discussion
of DNA science and of legal obviousness.
In March 2012, Columbia University sued Illumina
for infringement of five DNA sequencing patents. Inter partes reviews followed.

** An NSF Grant Announcement comes into play in the "obviousness" analysis:

The tendency of simultaneous invention to weigh in
favor of obviousness would, of course, be negated if the
purported simultaneous invention was not made
independently of the claimed invention. Perhaps with
this in mind, Columbia University asserts the Solexa
patent was filed “months after features of Dr. Ju’s SBS
method were disclosed in a public National Science
Foundation Grant Announcement.” Reply Br. 6–7.

However, Columbia University asserts that at the time of
Solexa’s disclosure, “Solexa . . . thought that a nucleotide
with the requisite combination of features was
patentable.” Id. It makes a similar assertion with respect
to Amersham. Id. In so asserting, Columbia University
undermines its own argument: If Solexa and Amersham
had copied their purported simultaneous inventions from
the grant announcement, they would have had no basis to
believe their simultaneous inventions were patentable.

Columbia University also argues Amersham’s
activities did not constitute simultaneous invention
because the chemical configuration it described was
“useless as a chain terminator.” Reply Br. 7. It points out
that Illumina did not present its simultaneous invention
argument to the PTAB. Because the record is not fully
developed, the evidence of simultaneous invention as a
whole weighs only modestly in favor of obviousness.

As to copying:

Columbia University asserts “Manteia, a company
whose intellectual property was later acquired by
Illumina’s predecessor-in-interest Solexa, copied Dr. Ju’s
invention” as reflected in a 2003 presentation.
Appellant’s Br. 12. The 2003 presentation cites Dr. Ju’s
publication. See J.A. 3894. Illumina responds that the
asserted copying is irrelevant because the only elements
shown to be copied were disclosed in Tsien, Dower, and
Stemple, and that the presentation does not disclose a
deazapurine and therefore does not reflect copying of the
claimed invention. Appellee’s Br. 57.

The Kinetic Concepts case is cited as to skill level
of the "person having ordinary skill in the art" {PHOSITA}:

In general, the higher
the PHOSITA’s skill level, the more likely the PHOSITA
would find an invention obvious. Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir.
2012) (“[I]t is generally easier to establish obviousness
under a higher level of ordinary skill in the art.”).

Of relevance to Columbia's arguments:

Because the PTAB found the claims would have been
obvious to a PHOSITA not necessarily possessing the
additional skill Columbia University proposed, the claims
would have also been obvious to a PHOSITA with a
higher level of knowledge and ability.

As to "reduction to practice":

Columbia University asserts that if “Tsien disclosed
such nucleotides in 1991,” then it is difficult to explain the
“decade-long SBS research efforts that followed.”5 Reply
Br. 29; see also Appellant’s Br. 61. However, Illumina
points out that Dr. Ju’s invention “was not reduced to
practice until six years later using important changes not
disclosed in the patents at issue.” Appellee’s Br. 53; see
also J.A. 4130–31. Although the record does not provide a
conclusive explanation for either of these long lags, some
testimony suggests large capital investments may provide
a partial answer. See J.A. 3581.

Footnote 5 observes

Although this argument might appropriately have
been raised in support of the secondary consideration of
long-felt need, Columbia University did not assert long-felt

As to emails, and licensing:

Columbia University cites several emails from
Illumina showing an interest in “collaborating with Dr. Ju
from Columbia University on his reversible terminators,”
and stating “Professor Jingyue Ju purportedly has solved
the reversible terminator cleavable dye label issue.” J.A.
3993–95. Although these emails demonstrate an interest
in Dr. Ju’s work, none of the emails mentions the ’698,
’575, or ’869 patents or clearly indicates the subject
matter sought to be licensed fell within the claims of those
patents. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(“Because, in affidavits reciting the licensing history of
the ’111 patent, GPAC did not establish which claim(s) of
the patent the licensing program incorporates, GPAC has
not shown that licensing . . . arose out of recognition and
acceptance of the subject matter claimed in the ’111
patent.”). This factor therefore provides only modest
evidence of nonobviousness.

As to commercial success:

Columbia University asserts Illumina’s sales were
significant and embody the claims of the ’698, ’869, and
’575 patents. Appellant’s Br. 59 (citing J.A. 3879–85);
Appellant’s Br. (-1548) 57; Appellant’s Br. (-1550) 57.
Illumina responds that “the very features proclaimed by
Columbia [University] to be the reason for Illumina’s
commercial success (attachment of the label to the base
via a cleavable linker) were already known in Tsien,
Dower, and Stemple,” and that Columbia University did
not assert the deazapurine contributed to commercial
Appellee’s Br. 54.

Commercial success does not favor nonobviousness.
“[I]f the feature that creates the commercial success was
known in the prior art, the success is not pertinent.”
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312
(Fed. Cir. 2006). Here, each of the features claimed to be
responsible for the commercial success of the invention
was disclosed in a single prior art reference, Tsien.
In addition, Columbia University does not itself sell
its patented invention. Although reliance on a
defendant’s or third party’s sale of a patented invention to
demonstrate commercial success may be probative of
nonobviousness in some cases, it is not particularly
helpful in the present matter because it is unclear
whether any success was attributable to developments in
the field that led to simultaneous invention (which would
tend to show the invention was obvious) or to copying
(which would tend to show the invention was nonobvious).

As to unexpected results:

Unexpected results “‘must be shown to be unexpected
compared with the closest prior art.’” Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006)
(quoting In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991)). The PTAB found pyrosequencing was
not the closest prior art. Columbia University argues
pyrosequencing was the closest prior art because it was
“the only commercial embodiment of SBS at the time of
Dr. Ju’s invention.” Appellant’s Br. 63. However, there is
no requirement that the closest prior art be
See In re Merchant, 575 F.2d 865, 869
(CCPA 1978) (“In In re Wright . . . , failure of a particular
reference to constitute the commercial standard did not
diminish its position as the closest prior art.”) (internal
quotation marks and citation omitted); see also In re
Chupp, 816 F.2d 643, 644 (Fed. Cir. 1987) (“To rebut the
prima facie case of obviousness, Chupp submitted a
declaration discussing the results of tests comparing the
herbicidal activity of the claimed compound with that of
the closest prior art compounds and with two commercial
herbicides . . . . It is undisputed that the claimed
compound gave superior results . . . .”) (emphases added).
Evidence of unexpected results in comparison to
pyrosequencing is therefore not probative of

As to anticipation by a genus:

However, “when a genus is so limited
that a person of ordinary skill in the art can at once
envisage each member of this limited class, . . . a
reference describing the genus anticipates every species
within the genus.
” Abbvie Inc. v. Mathilda & Terrence
Kennedy Inst. of Rheumatology Trust, 764 F.3d 1366, 1379
(Fed. Cir. 2014) (internal quotation marks and citation
omitted). This court agrees with the PTAB that an
embodiment comprising a 3’-OH-capped nucleotide, baselabel,
and cleavable linker could be “envisaged clearly by
one of ordinary skill in the art upon reading the Tsien
disclosure.” J.A. (-1548) 10.

As to the interplay between enablement / written description and obviousness:

However, as already
explained, if novel and nonobvious chemistry was needed
to practice the claimed inventions, Dr. Ju would have
been obligated to disclose this chemistry in the patent.
See 35 U.S.C. § 112(1) (2000).7

The matter of inability to amend (in inter partes reviews) arose:

In Appeal 2014-1548, Columbia University argues the
PTAB’s denial of its motion to amend its claims was
erroneous, and that the error was not harmless:
Columbia’s amendments would have rewritten
claim 15 in independent form and added the
deazapurine limitation to the other challenged
claims. . . .
The [PTAB’s] failure to enter Columbia’s
amendment led it to address the critical dispute
over the scope of Tsien’s and Stemple’s disclosures
first in the context of anticipation, where the
issues were (in the [PTAB’s] mistaken view)
uncontested. When the [PTAB] turned to the
obviousness of claims 15 and 16, it had already
decided that Tsien and Stemple disclosed a
nucleotide with a 3’-OH cap and a label attached
to the base by a cleavable linker, and it asked
whether adding a deazapurine was obvious.
Appellant’s Br. (-1548) 62–63.


Because the PTAB did not clearly err in its determination
of what Tsien teaches, Columbia University’s argument
based on its contrary assertion does not establish
patentability over the prior art, and is therefore rejected.
See Microsoft Corp. v. Proxyconn, Inc., No. 2014-1542,
2015 WL 3747257, at *13 (Fed. Cir. June 16, 2015)
(explaining that motions to amend may properly be
denied where the patentee has failed to establish
patentability over the prior art of record).

UPDATE on August 5. Some commentary at PatentDocs was of interest:

Not sure if I just misfollowed your comments, but bumping up the skill level to find obviousness is exactly the wrong way to apply the PHOSITA standard.

The higher you go up that level of capability, the more will be "obvious" and that is reason enough NOT to conflate the levels and what is "obvious" at the different levels.

This appears to be nothing other than the outlawed "Flash of Genius."

Maybe I am just not following what you were trying to say...

Posted by: Skeptical | August 04, 2015 at 06:01 AM

Dear Skeptical,

Thank you for pointing out that my explanation related to the PHOSITA was less than clear. Basically, the PTAB had concluded that a PHOSITA would have found the claimed invention obvious, and the fact that they did not make an explicit finding regarding the level of skill was not necessarily reversible error. The Federal Circuit then pointed out that Columbia’s argument was basically doomed, because if the PTAB had used Illumina’s expert’s definition instead of Columbia’s expert’s definition, then Columbia’s argument that the level of skill should have been found to be higher would only make the invention more obvious, not less. However, reading between the lines, I think Columbia’s main argument was that Illumina’s expert should be discounted because he was not a PHOSITA (because of the lack of Chemistry experience). But, because the Federal Circuit deferred to the Board, this argument was a non-starter. I hope that clears it up (but I remain . . . )


Posted by: Andrew Williams | August 04, 2015 at 08:42 AM

I laughed at your closing Andrew.

The quantum of error that is "reversible" or not is an interesting one.

And as here, shifting the proper establishment of one of the factors of PHOSITA working against the arguments one side is making may be seen as saying that the error was self-induced.

But I do not think a court should make its judgment on an error-induced PHOSITA - no matter which side introduces that error. It is the function of the court in applying PHOSITA to get that set-up right, and I do not think the quantum of reversible error should be judged against the error-prone argument, poorly made.

Even if the Federal Circuit defers to the Board, the "shortcuts" of not explicating the proper foundations of applying the law are problematic. Shall we revisit eBay for a quick lesson?

Posted by: Skeptical | August 05, 2015 at 06:52 AM


CAFC cites Twombly and Iqbal in affirming 12(b)(6) dismissal

is a 2=1 affirmance of a
dismissal under Federal Rule 12(b)(6)

Addiction and Detoxification is the assignee of U.S. Patent
No. 5,789,411, titled Improvements to rapid opioid detoxification,
and initially assigned to Lance L. Gooberman .

The first claim of US '411 states:

A method of detoxifying a patient addicted to one or more opioids, comprising:

sedating said patient with an anesthetic agent;

administering to said patient a diarrhea suppressant;

detoxifying said patient by injecting an opioid antagonist into said patient;

reviving said patient from the effects of said anesthetic agents,

whereby said patient can be discharged in an ambulatory condition within about eight hours of being sedated with said anesthetic agent without a significant amount of diarrhea.

The "background of invention" is an interesting read and includes the

It is widely known that heroin addicts fear and loathe heroin detoxification. For the addict, withdrawal can be like having a massive panic attack, an acute case of Huntington's Chorea, a psychological shock syndrome, and a nasty flu, all rolled into one.

Even if we discount the less than warm reception by addicts, the current method of detoxifying an individual from opiates is flawed in several respects. First of all, it is extremely uncomfortable for individual patients. Second, it can take days, and even weeks, for treatment, and this treatment is very expensive when one considers the overall length of stay at a hospital. Third, it is not very effective. Early relapse is the rule rather than the exception.

From within the CAFC decision:

“Rule 8(a)(2) of the Federal Rules of Civil Procedure
generally requires only a plausible ‘short and plain’
statement of the plaintiff’s claim, not an exposition of his
legal argument.” Skinner v. Switzer, 562 U.S. 521, 530
(2011). To survive a motion to dismiss, a complaint must
plead “enough factual matter” that, when taken as true,
“state[s] a claim to relief that is plausible on its face.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556, 570 (2007).
“A claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Twombly and Iqbal require that a complaint for patent
infringement contain sufficient factual allegations such
that a reasonable court could, assuming the allegations
were true, conclude that the defendant infringed

As to Form 18:

We have held that a complaint that complies
with Form 18 will satisfy Rule 8 because Form 18 has the
force of law and was enacted by Congress. See, e.g., In re
Bill of Lading, 681 F.3d at 1334 (“to the extent the parties
argue that Twombly and its progeny conflict with the
Forms and create differing pleadings requirements, the
Forms control”). However, as Form 18 applies only to
direct infringement, we have rejected the idea that it
provides a model for other causes of action, such as indirect
infringement. Id. at 1336. For other patent-related
claims, such claims must comply with Twombly and Iqbal.
See id.

As to notice:

Pre-filing notice, however, is
not required to bring a suit for direct infringement. See,
e.g., id. (“Filing of an action for infringement shall constitute
such notice.”).

As to pleading:

It is not
enough to say “you infringe my patent.” And that is all
that is alleged in Addiction and Detoxification’s complaint.
There must be some allegation of specific services
or products of the defendants which are being accused.

As to indirect infringement:

To state a claim for
induced infringement, a plaintiff must allege that the
defendant knew of the patent and that the induced acts
constitute patent infringement. Commil USA, LLC v.
Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015). The Original
Complaint contains no allegations regarding intent or
any specific acts caused by Defendants. “To state a claim
for contributory infringement . . . a plaintiff must, among
other things, plead facts that allow an inference that the
components sold or offered for sale have no substantial
non-infringing uses.” In re Bill of Lading, 681 F.3d at
1337. The Original Complaint contains no allegations
regarding substantial non-infringing uses. Simply repeating
the legal conclusion that Defendants induced infringement
or contributorily infringed does not plead
“factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Iqbal, 556 U.S. at 678. We thus affirm the
dismissal of the indirect infringement claim in the Original

CJ Bryson dissented:

The majority concludes that the district court properly
dismissed the plaintiff’s claim of direct infringement
because the complaint “provides no detail whatsoever that
would put Defendants on notice as to what activity,
method, or procedure is alleged to infringe.” I disagree
with the majority that the complaint fails to satisfy the
requirement of Rule 8, Fed. R. Civ. P., of “a short and
plain statement of the claim showing that the pleader is
entitled to relief,” particularly in view of Form 18, Fed. R.
Civ. P., which contains a form complaint for patent infringement
that is not materially different from the
complaint in this case.


If the majority’s reference to “products” means that it
would require the complaint to contain detail regarding
the products that the defendants use in their therapies—
such as allegations identifying the specific drugs that the
defendants administer to patients—that degree of specificity
would be far greater than what is required by Rule 8
and Form 18 and would depart from the principles of
notice pleading that are embodied in the Federal Rules of
Civil Procedure. See Erickson v. Pardus, 551 U.S. 89, 93
(2007) (“Specific facts are not necessary; the statement
need only give the defendant fair notice of what the . . .
claim is and the grounds upon which it rests” (citation


Other CAFC cases citing Iqbal:

**ABB TURBO SYSTEMS AG v. TURBOUSA, INC., 774 F.3d 979 (CAFC 2014)

To avoid dismissal under Rule 12(b)(6), the complaint must contain sufficient factual allegations "to raise a right to relief above the speculative level." Id. Rule 8's pleading standard "does not require 'detailed factual allegations.'" Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (quoting Twombly, 550 U.S. at 555); see also Erickson v. Pardus, 551 U.S. 89, 93, 127 S. Ct. 2197, 167 L. Ed. 2d 1081 (2007) (per curiam) ("Specific facts are not necessary . . . ."); Speaker, 623 F.3d at 1380 (quoting Iqbal). But it requires more than "barren recitals of the statutory elements, shorn of factual specificity," Speaker, 623 F.3d at 1384, and more than the mere possibility of liability or mere consistency with liability, Iqbal, 556 U.S. at 678; Twombly, 550 U.S. at 557, 570. What is needed is "facial plausibility" of the claim, which exists "when the plaintiff pleads factual [**10] content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556). Rule 8 "simply calls for enough fact to raise a reasonable expectation [*985] that discovery will reveal evidence" of the alleged violation. Twombly, 550 U.S. at 556.

Overview of case: [1]-The district court erred when it dismissed an action a Swiss corporation and a Delaware corporation filed against a Florida corporation and its president, alleging, inter alia, misappropriation of trade secrets in violation of Fla. Stat. §§ 688.001-688.009 and civil conspiracy to misappropriate trade secrets concerning the design, manufacture, servicing, and pricing of plaintiffs' turbochargers; [2]-The district court relied on judgments about the merits of the case that went beyond what was authorized at the complaint stage when it found that plaintiffs' complaint showed that their claim alleging misappropriation of their trade secrets was time-barred under Fla. Stat. § 688.007, and was precluded by Fla. Stat. § 688.002(4)(b) because plaintiffs did not take reasonable steps to protect their trade secrets.


"To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007)). Given Accent's admissions, both in its complaint and before the district court, we conclude that its complaint fails to state a claim to relief that is plausible on its face. Accordingly, we affirm the district court's dismissal of Accent's MUTSA claim.

Wednesday, July 22, 2015

Trade secrets and FOIA

From Dunlap Codding:

A trade secret plaintiff clearly needs to establish both elements, but I’d like to discuss the second element, i.e., reasonable efforts to maintain secrecy. Specifically, I’d like to focus on this element in the context of defending one’s trade secret from disclosure through a Freedom of Information Act Request (“FOIA”) or Open Records Request (“ORR”).

A hypothetical may help highlight one particular inequity that can arise at the junction of trade secrets and FOIA/ORR. Imagine that your company is required to submit an application or documentation to a state or federal agency in order to conduct business, obtain certification, or gain approval to contract with the agency. Examples include a defense contractor submitting information to the Department of Defense, a pharmaceutical company submitting test or trial results to the FDA, or an oil and gas company submitting information to a local governing body, such as the Oklahoma Corporation Commission, in order to conduct business. The information or documentation at issue may be protected by a patent, trademark, or copyright, but often, the submitted information may contain trade secrets.


The CAFC addresses US discovery for use in foreign jurisdictions in In re Posco

POSCO (of Korea) was sued by Nippon Steel & Sumitomo Metal
Corporation (“Nippon Steel") for patent infringement in the
federal district court of New Jersey. There was also a suit by
Nippon against POSCO in Japan. At issue was the providing of about
200 pages of US discovery materials to Nippon lawyers in Japan.

A master in NJ applied Pansy v. Borough of
Stroudsburg, 23 F.3d 772 (3d Cir. 1994) and granted the request.
The judge affirmed the master.

Of review, the CAFC noted: Our review is appro-
priate because the order in question turns on
claims of confidentiality that
raise an important issue of first
impression. See In re United States, 669 F.3d 1333, 1336
(Fed. Cir. 2012)

The CAFC brought up the relevance of 28 U.S.C. §
1782 or the Supreme Court’s decision
in IntelCorp. v. Advanced
Micro Devices, Inc., 542 U.S. 241 (2004)

The outcome:

We therefore
grant mandamus for purposes of directing
the district court to conduct the proper assessment
giving due consideration to the
Intel factors.

Accordingly, POSCO’s petition is granted, the order
granting the motion to modify the protective order to allow for use of
discovery in foreign proceedings is
vacated, and the
district court is directed to conduct further proceedings
consistent with this Order.


Momentum for Goodlatte Innovation Act slipping away?

The opposition to the Goodlatte Innovation Act may block a vote. From The Hill on the opposition by Heritage Action:

The House should give the system time to adjust to the 2011 reforms before moving forward on another set of transformational reforms," the group's director said in a statement. "Heritage Action opposes H.R. 9. The bill should not come to the floor.”

Elsewhere, there are proposed changes to inter partes review:

Lobbyists for the biotechnology and pharmaceutical industry are fighting to include a provision that would exempt some FDA-approved drug patents from the U.S. Patent and Trademark Office's trial-like reviews, which were set up as a fast and low-cost way to challenge the validity of patents. But some seniors groups have opposed that inclusion.


See also the post by former Congressman Ron Klink (D-Pa.)


Tuesday, July 21, 2015

US Patent No. 9,085,785 to Kiverdi

The abstract

Compositions and methods for a hybrid biological and chemical process that captures and converts carbon dioxide and/or other forms of inorganic carbon and/or C1 carbon sources including but not limited to carbon monoxide, methane, methanol, formate, or formic acid, and/or mixtures containing C1 chemicals including but not limited to various syngas compositions, into organic chemicals including biofuels or other valuable biomass, chemical, industrial, or pharmaceutical products are provided. The present invention, in certain embodiments, fixes inorganic carbon or C1 carbon sources into longer carbon chain organic chemicals by utilizing microorganisms capable of performing the oxyhydrogen reaction and the autotrophic fixation of CO.sub.2 in one or more steps of the process.

The first claim

A biological and chemical method for the capture and conversion of an inorganic carbon compound and/or an organic compound containing only one carbon atom into an organic chemical product, comprising:

introducing an inorganic carbon compound and/or an organic compound containing only one carbon atom into a bioreactor comprising an environment suitable for maintaining oxyhydrogen microorganisms and/or capable of maintaining extracts of oxyhydrogen microorganisms; and converting the inorganic carbon compound and/or the organic compound containing only one carbon atom into the organic chemical product and/or a precursor thereof within the environment via at least one chemosynthetic carbon-fixing reaction utilizing the oxyhydrogen microorganisms and/or cell extracts containing enzymes from the oxyhydrogen microorganism; wherein the oxyhydrogen microorganisms used are Rhodococcus sp.; wherein the organic chemical product produced includes compounds with carbon chain lengths between C5 and about C30; and wherein the chemosynthetic fixing reaction is at least partially driven by chemical and/or electrochemical energy provided by electron donors and electron acceptors that have been generated chemically and/or electrochemically and/or are introduced into the environment from at least one source external to the bioreactor.

CAFC interprets BPCIA in Amgen v. Sandoz related to filgrastim

In 2010, as part of the Patient Protection and Afford-
able Care Act (aka "Obamacare"), Congress enacted the Biologics Price
Competition and Innovation Act [BPCIA].

Here, the plaintiff Amgen has marketed filgrastim under the brand
name Neupogen ® (“Neupogen”) since 1991. Sandoz wanted to market a
filgrastim product.

Sandoz filed an aBLA,
seeking FDA approval of a biosimi-
lar filgrastim product, for which Neupogen is the refer-
ence product. On July 7, 2014,
Sandoz received notification from the FDA that
it had accepted Sandoz’s application for review. Sandoz
intended to launch its filgrastim product
under the trade name Zarxio.

There was a Clinton-esque discussion of whether statutory language
"should" meant "must." The CAFC, by a 2-1 vote, decided it did not.

As to statutory construction:

Importantly, mandating compliance with paragraph (l)(2)(A)
in all circumstances would render paragraph (l)(9)(C) and 35 U.S.C. §
271(e)(2)(C)(ii) superfluous, and
statutes are to be interpreted if possible to avoid render-
ing any provision superfluous.
Marx v. Gen. Revenue Corp.,568 U.S. __,
133 S. Ct. 1166, 1178 (2013)(“[T]he
canon against surplusage is strongest when an interpre-
tation would render superfluous
another part of the same
statutory scheme. ”); TRW Inc. v. Andrews, 534 U.S. 19, 31
(2001) (“It is a cardinal principle of statutory construction
that a statute ought, upon the whole, to be so construed
that, if it can be prevented, no clause, sentence, or word
shall be superfluous, void, or insignificant.
” (internal quotation marks omitted))

Bottom line. Sandoz wins on this point.

Because Sandoz took a path expressly
contemplated by the BPCIA, it did
not violate the BPCIA by not disclosing its aBLA and the
manufacturing infor-
mation by the statutory deadline

Judge Newman dissented on the "should" issue:

notice of acceptance of the
filing of the sub-
section (k) application is also mandatory, along with the
accompanying documentary and
information exchanges
set in the BPCIA
in accordance with 42 U.S.C. §262(l)(2)(A).I
respectfully dissent from the court’s
holding that this activity is not required
because the Sponsor might file an infringement suit
in which it might learn this information
though discovery.
Sandoz did not comply with either of these statutory
requirements. These deliberate violations
of the require-
ments of the BPCIA forfeit Sandoz’
access to the benefits
of the BPCIA.


Monday, July 20, 2015

CAFC in Airbus v. Firepass

The background:

Firepass Corporation (“Firepass”) owns U.S. Patent 6,418,752
(the “’752 patent”) , which is directed to using hypoxic compositions
for preventing and extinguishing fires.
In October 2009, Firepass brought suit against
Airbus in the District Court for the Eastern District of
New York alleging infringement of,
inter alia , several claims of
the ’752 patent.
In February 2011, Airbus filed a request for
inter partes
reexamination of the ’752 pa-
In its request, Airbus proposed that each of original
claims 1, 2, 4, 7, and 8 was
anticipated under 35 U.S.C. §
102 by U.S. Patent 5,799,652 (“Kotliar”).

From Airbus v. Firepass:

However, the provision requiring a determination of a
substantial new question of patentability was not appli-
cable to the case once the Director already had ordered
reexamination on the ground that other prior art raised a
substantial new question of patentability.

We therefore agree with Airbus that the Board erred in dismissing the
cross-appeal for lack of jurisdiction because the Examiner
incorrectly refused to consider proposed rejections to
newly-added claims after reexamination had been insti-

As to the MPEP:

The MPEP [is] commonly relied upon as a guide to
patent attorneys and patent examiners on procedural
matters. . ..”
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439
(Fed. Cir. 1984). Although the MPEP does not have the force of law,
it is entitled to judicial notice “
so far as it is an official interpretation of statutes
or regulations with which it is not in conflict.” Id.
Here, the MPEP is consistent with
the statutory scheme and § 1.948(a)(2).
MPEP § 2666.05, titled “Third Party Com-
ments After Patent Owner Response,” pertains to
§ 1.948(a)(2) and the limitations on submission of
prior art by the third-party requester after the order
for inter partes reexamination. According to
§2666.05, “ any such new proposed rejection stands on the same
footing as a proposed rejection presented with the request for reexam-
ina tion.” MPEP § 2666.05 (2008)


Juice Generation gets a remand on PEACE LOVE AND JUICE mark

From the decision:

Juice Generation applied to the Patent and Trade-
mark Office to register a mark consisting of
and a design for use with its juice bar services.
GS Enterprises opposed the application on the ground
that Juice Generation’s mark was likely to
cause confusion with its own family of marks, all of which
contain the phrase “PEACE & LOVE”
and are registered for use with restaurant services. The Trademark Trial
and Appeal Board sustained the opposition and refused to
register Juice Generation’s mark.
We conclude that the Board did not adequately assess the weakness of GS’s
marks and did not properly
consider the three-word
combination of
Juice Generation’s mark as a whole in
comparing it to the two-word
combination in GS’s marks.
We therefore remand for further proceedings

Of relevance here was the weakness of the earlier mark:

The weaker an oppos-
er’s mark, the closer an applicant’s mark can come with-
out causing a likelihood of confusion and thereby invading
what amounts to its comparatively narrower range of
protection. Id. (“Evidence of third-
party use of similar marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of
In re Coors Brewing Co., 343 F.3d 1340,
1345 (Fed. Cir. 2003)
(third-party use can establish that
mark is not strong);
Fleetwood Co. v. Mende, 298 F.2d
797, 799 (CCPA 1962) (“Where a party uses a weak mark,
his competitors may come closer to his mark than would
be the case with a strong mark without violating his

An earlier Daktronics case was cited:

Tektronix, Inc. v. Daktronics, Inc.,
534 F.2d 915, 917 (CCPA 1976) (even if “there is no
evidence of actual use”
of “third-party registrations,” such registrations “may be
given some weight to show the meaning of a mark in the
same way that dictionaries are used”)

The CAFC noted:

In the present case, the Board overlooked this aspect
of the inquiry by insisting on specifics as to the third-
party use. It never inquired whether and to what
degree the extensive evidence of third-party use
and registrations indicates
that the phrase PEACE & LOVE carries a
suggestive or descriptive connotation in the food service
industry, and is weak for that reason.
See , e.g., Anthony’s Pizza & Pasta Int’l, Inc., 95 U.S.P.Q.2d 1271, at *8
(T.T.A.B. Nov. 10, 2009)

As to prosecution history estoppel (in trademarks):

Although estoppel based on prosecu-
tion of an application has played a more limited role for
trademarks than for patents, see Anthony’s,
95 U.S.P.Q.2d 1271, at *12, aff’d,
415 F. App’x 222 (Fed. Cir. 2010) (not mentioning estoppel);
see also 6 McCarthy on Trademarks
and Unfair Competition §32:111 (4th ed. 2015),
we have recognized that such comments have
significance as “facts ‘illuminative of shade and tone in the total picture con-
fronting the decision maker, ’ ”
GS Enters. , 2014 WL 2997639, at *7
(quoting Interstate Brands Corp. v. Celes-
tial Seasonings, Inc., 576 F.2d 926, 929 (CCPA 1978)
); see also Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 1322 (Fed. Cir. 2014).

Of the remand:

A remand is needed for the Board to undertake that
consideration, along with consideration of the evidence of
third-party use.
We cannot deem the Board’s errors harmless.
The remand analysis might well call for an
answer to the overall likelihood -of-confusion question
different from the answer the Board gave in the decision
on review.


Versata alleges Ford stole trade secrets

From within a post by Alisa Priddle, Detroit Free Press :

"We are in a serious dispute with Ford," said Michael Richards, president of the global automotive division of Trilogy, parent company of Versata. Prior to the press conference he told the Free Press that some of Versata's protected trade secrets are included in Ford's patents. "We believe we've identified at least three areas where our trade secrets were copied into their patent, and I think we will find more," Richards said.


Techcrunch on Google’s New, Simplified Patent Search

Google modifies Google.patents on July 16. Techcrunch observes:

Google has been a significant player in many facets of the patent world — as a creator, critic, litigator, buyer and big data indexer. Today, it’s taking the wraps off a product that is its flagship in the last of those categories: It’s launching a new version of the Google Patents search, which will now also incorporate related results of Prior Art and Google Scholar citations.

Google says the old link and its standalone Prior Art Finder will continue to work for now.


Trying the google link with the search term "Joule Unlimited" produced 53 results, the first of which was

Enabling technologies or technologies with a potential or indirect contribution to GHG emissions mitigation
Electrofuels: A new paradigm for renewable fuels
Google Scholar Conrado R Advanced Biofuels and Bioproducts
Published 2013
Abstract Biofuels are by now a well-established component of the liquid fuels market and will continue to grow in importance for both economic and environmental reasons. To date, all commercial approaches to biofuels involve photosynthetic capture of solar radiation and ...
Search within classification Y02E60/00 (15 results)

IPBiz is not certain that the "new" search was that helpful for prior art on Joule's work, and indeed not even thorough.

Which way is Congress going on patent reform; the 101 question.

A post related to Ariosa v. Sequenom concludes with the following text:

If the concern is that the inventions would be obvious or are not enabled or are not fully within the grasp of the inventor, there are other sections of the statute that could be used to deny an applicant a patent. But to deny patentability for a patent to an invention that is so clearly useful to so many people does not fulfill the requirement of the Constitution to promote the useful arts.

If the courts are unwilling to listen to the scientists and the patent community as to the effects these positions have on innovation, perhaps it is time to engage the legislators and the White House to clarify the law to ensure that we continue to promote the useful sciences.

one notes, currently, to the extent Congress and the White House are contemplating patent law, they are interested in curbing the power of patentees, not expanding the power.

link to Courts are making bad patent law

UPDATE: 8/27/2015. Amicus brief for en banc review

Sunday, July 19, 2015

CBS Sunday Morning on July 19, 2015

Jane Pauley, not Charles Osgood, introduced the stories for July 19, 2015. Mark Strassman does the cover story on blind people playing baseball. John Blackstone on comedians Keegan-Michael Key and Jordan Peele, a recycle from Sept. 14, 2014 . Title of piece: Real Characters. Anthony Mason on Brian Wilson.
The story of Melinda Wilson. Lee Cowan on spam in Hawaii. The islands are a spam-a-holic's paradise. Martha Teichner. Steve Hartman.

Headlines: Another service member from Chattanooga shooting died. National Guard forces to be armed in several states at recruiting stations. JEB Bush on Trump: enough with slanderous attacks. Obama at "Hamilton". Today's weather: hot. Thunderstorms in northeast.

Mark Strassman starts with Brandon Chesser, who had retinitis pigmentosa, which progressively got worse. In 2006, he met Pam, his future wife. Austin Blackhawks. This story is a recycle from November 2014. See

CBS Sunday Morning on November 2, 2014
. See also Play it by ear: Baseball for the blind

Almanac. July 19, 1941. V for victory sign introduced. Colonel Victory. 3 short knocks, 1 long. ...-. Beethoven's Fifth Symphony.

Martha Teichner on artist J.M.W. Turner. Movie: Mr. Turner. Mike Lee wrote and directed "Mr. Turner." At 24, in 1799, did a self-portrait. Julian Brooks curator of show at DeYoung Museum in San Francisco. Turner transformed Venice into magical city. Town of Margate. "Admiral Booth." Died in 1851 at age 76. Recall from December 2007: J. M. W. TURNER: A look at the works of British artist J.M.W. Turner at the National Gallery of Art in Washington with Morley Safer.

John Blackstone on Key and Peele. Last year named in Time's 100 most influential people. Peabody. They worked on MAD TV. Both born to white mother/black father. Presidential aide named "Luther". Emotional valve.

Pauley on "New Horizons" going to Pluto. Tombaugh Regio. In 2006: dwarf planet. Neil DeGrasse Tyson. Kuiper belt.

Lee Cowan on spam in Hawaii. No state eats more spam than Hawaii. Spam flavored Macademia. Spam at McDonald's. Iniki spam burger. Todd Rundgren. Hormel in Austin, Minnesota. Spam was invented in 1937. Muppet Treasure Island. In the blue and yellow can is Spam. [Story recycled from Nov. 23, 2014.]

Steve Hartman in Kittredge Elementary in North Andover, MA. 10 years ago three students in 2nd grade. Kyra Brown. The kids dug a rock out of the ground. The magical power of making friends. "The power of the rock." [Recycled from news story on July 10, 2015:]

Anthony Mason on Brian Wilson. Greek Theater in Los Angeles, Al Jardine. Cake wheeled out from back stage. 73rd birthday. A summer of milestones. Released 11th solo album. John Cusack plays older Brian Wilson. Wilson was 20 when Beach Boys signed with Capitol Records. Cousin Mike Love. 1965: Pet Sounds Album, including Wouldn't it be nice. Mike and the guys didn't like it, but Brian said, we got to grow. 1980's. Melinda: when you tell the truth everything works out. Melinda was working at a Cadillac dealership. Dr. Lande was controlling Brian Wilson. Melinda called attorney general about situation. I want out of this hell hole. In 1991, family found out about changed will. Nine year ordeal over. Melinda and Brian married in 1995. Belinda: when we got married, I won.

Confronting 100 fears in 100 days. Nichtophobia. Michelle Fuller. Fear of tarantula. Fear of trapeze. Debbie Millman, School of Visual Arts in NYC. Fear of snakes. Adam Strawasser. Fear of frying food. Fear of insects for dinner. Fear of trapeze (continued). Tapping into inner strength. Fear of dancing in public. Fear of skydiving.

Opinion. NYT on Cosby deposition. What to make. Joseph Phillips. John Wooden on importance of character. Reputation is what others think you are. If the allegations are true, Cosby has flawed character with stellar reputation. The Bill Cosby legacy. Does value of works outweigh character flaws? Behaviors carry consequences.
Cosby legacy will be determined by character Cosby manifests now, not his reputation.

Monday: US and Cuba upgrade to embassy status. Tuesday: Anniversary of Pink Floyd's The Wall. Wed. Prince George 2 years old. Saturday: National Dance Day.

Sunday Journal. JericKa Duncan on Randall Smith, victim of Chattanooga shooting. Shooter: 7 month visit to Jordan.

Next week: Heart and Soul. Love is in the air.

Moment of nature. Waterfalls in Oregon's Cascades. The American Dipper bird. With a uniformly slate-gray color, long legs, a somewhat stocky body and short tail, the Dipper (sometimes called the Water Ouzel) is 7- 8 inches long and weighs just 1.5 to 2.5 ounces. from

Wednesday, July 15, 2015

Hotel people as troll victims: not thinking the problem through?

Part of the "push" for patent reform comes from small businesses who are getting warning letters from so-called patent trolls. A post in praise of the Innovation Act illustrates the cluelessness of many backing the Act, who manifest a knee-jerk, rather than thoughtful, analysis of the problem, and potential solution.

The post Patent trolls are infesting small hotels illustrates a basic misunderstanding of the issue in the text:

One of a troll’s greatest weapons is to prey on innocent companies and customers who bought a patent without knowing it may be infringing on someone’s patent.

One notes that this is NOT the problem facing small enterprises in troll attacks; they did not "buy" a patent. They typically may be practicing a method (not patented) that (allegedly) falls within the scope of claims of the "troll" patent.

link to Patent trolls are infesting small hotels

Separately, frequently overlooked by Innovation Act backers is the reality that many defenses are non-infringement defenses, rather than invalidity defenses (i.e., the patent claim is not invalid (not a "bad" patent) but rather not infringed).

Also, the article by Greg Bryan et al. does NOT reference other proposed bills (such as STRONG)
that more precisely address the perceived problem. Mr. Bryan should be more thorough in thinking about the problem, and the proposed solution. His post rings of superficiality in thought.

Dominic Basulto: just because you have a lot of highly cited patents doesn’t immediately mean that you can create valuable products from those patents

Although Basulto's statement is true, it misses the more basic issue that patent citation analysis is gibberish. Having highly cited patents does not really mean much.

See the work of Edlyn Simmons and some previous IPBiz posts, for example, with the text:

Edlyn S. Simmons and Nancy Lambert. "Patent Statistics: Comparing Grapes and Watermelons" In Recent Advances in Chemical Information, Proceedings of the 1991 Montreux International Chemical Information Conference & Exhibition, H. Collier, Ed, (Royal Society of Chemistry, Cambridge; CRC Press) pp 33-78 (1992).

Simmons, Edlyn S.; Lambert, Nancy. "Comparing grapes and watermelons." ChemTech 23 (6), 1993, p. 51-59. ]

Separately, the link by Basulto to Harvard is to a working paper by Tom Nicholas. Reference 9 of the working paper is to Jaffe/Lerner. Reference 28 is to Bessen/Meurer. Reference 45 is Lemley/Shapiro on the Wright Brothers. The discussion of the Wright Brothers patent from reference 44 is inane, especially because the patent had nothing to do with controlled sustained flight, and was filed months BEFORE December 1903. As to foreign patents, the Germans did not allow the Wright patent, the French did; both countries did well in early aviation. The U.S. was behind because the War Department could not envision the benefits of the Wright's work. Nothing to do with patents.

As to Basulto's text:

Instead of viewing patents as we once did — as a way to encourage inventiveness and innovation, we may be better suited to see them for what they have become: an economic drag and an attractive target for patent trolls, who see them as a way to exact tributes from deep-pocketed tech companies.

The political drumbeat against trolls is the "exacting of tributes" from smaller enterprises, not from deep pocket companies. The reality of the drumbeat may be that deep pocket companies don't want to be bothered by little guy inventors.

As to "victims", for example, note the post on 15 July 2015:

Small and independent hotel owners today are facing their ultimate nightmare: an infestation. But the risk to their livelihoods isn’t of the traditional critter-type variety, it’s a 21st century pest: the patent troll.


Basulto seems to be a futurist who doesn't know the past (or the present), and is doomed by the pronouncement of George Santayana.

link to Basulto article:

Carly Fiorina: If the Innovation Act were law tomorrow, Thomas Edison would be a patent troll

One recalls the 2006 article Edison as a Patent Troll, or Where is California Going in Stem Cell Research? , including the text:

[Of various suggestions that Edison was troll-like in his behavior in not making product, one observes that Edison himself obtained the funds from investors to set up the first electric power plant, and then created the power plant. He made product. Whether he was actually the inventor of the light bulb is a different story.]

link to Fiorina quote:

Sunday, July 12, 2015

CBS Sunday Morning on July 12, 2015

Lee Cowan, not Charles Osgood, introduced the stories for July 12, a visit to Sunday at the Shore, beginning with East Hampton. arry Peterson does the cover story, a modern day treasure hunt. Second, Alan Jackson interviewed by Lee Cowan.
Third, Bill Geist at the Boardwalk at Ringer Stadium on marbles. Fourth, Nancy Giles on flavors of ice cream. Fifth, Tracy Smith on sea lions. Christine Johnson. Martha Teichner. Mo Rocca.
Bonita Knier on headlines. Meeting in Brussels on Greece. John Kerry in Vienna on Iran. Donald Trump at FreedomFest. NAACP ends boycott of South Carolina. Joaquin Guzman from Toluca. First pitch at Seattle Mariners game by oldest person to throw out first pitch. 90s in northeast.

Lee Cowan on Grey Gardens in East Hampton. Edie Beall. 1975 documentary on Grey Gardens. The "Edies" were cousins of Jackie Bouvier. Raccoons living in walls. Board of Health tried to evict them. In 2006, a Tony Award musical. Jessica Lange and Drew Barrymore. Big Edie died in 1977. Sally Quinn and Ben Bradley bought house in 1979, with agreement not to tear down house. Bay Street Theater in Sag Harbor. Little Edie died in 2002. How happy we would be. Grey Gardens now estimated at $20 million.

Barry Petersen on looking for treasure in Montana. Dale Knedsen is looking for treasure hidden by Forrest Fenn. Forrest made money selling artifacts. Poem with nine clues. Two people can keep a secret if one of them is dead.
Valerie Plame. Michael McGarrity.

Tracy Smith on sea lions in California.

Friday, July 10, 2015


Obviousness in patent law goes to predictability. Baseball is not predictable.

Of a Yankees/Red Sox series beginning on July 10:

“Should be a good series,” said right-hander Clay Buchholz, who will pitch the series opener tonight at Fenway Park. “If we get a chance to sweep this series it’s going to put us in a really good spot going in the second half.” (...)

The biggest blemish against Buchholz this season came April 12 in the Bronx when he got rocked for 10 runs (nine earned) in 31⁄3 innings. Since, he has been worthy of top-of-the-rotation status, posting the eighth-best ERA (2.54) among AL pitchers with at least 10 starts since May.

Buchholz lost on July 10.


CAFC analyzes "exceptional case" of 35 USC § 285 ; Newegg loses appeal in SFA case

Mark Lemley argued for the unsuccessful defendant-appellant in the case
SFA v. Newegg. Richard Frenkel was also on the appellant team.

Newegg argues that the district court erred in finding
that this case was not exceptional because :

(1) the district court’s analyses
on claim construction and indefiniteness
were wrong and, under the correct analyses,
SFA’s law-
suit is meritless; and
(2) SFA maintained and filed this
lawsuit in bad faith for the improper purpose of obtaining
a nuisance value settlement
(“the unreasonable manner
in which the case was litigated”).
Octane Fitness, 134 S. Ct. at 1756.
Although, under Octane Fitness, we ulti-
mately consider these issues together under the “totality
of the circumstances,” id., it helps to first parse Newegg’s
arguments because Newegg argues that we should apply
different standards
of review to them.

As to unreasonable litigation:

Newegg asserts that SFA brought this suit for the
improper purpose of obtaining a nuisance value settle-
ment. Newegg alleges that SFA dragged out the litigation
to increase Newegg’s litigation costs and that SFA dis-
missed the suit as soon as it realized that Newegg was not
going to settle.


We agree with Newegg, accordingly, that a pattern of
litigation abuses characterized by the repeated filing of
patent infringement actions for the sole purpose of forcing
settlements, with no intention of testing the merits of
one’s claims,
is relevant to a district court’s exceptional
case determination under §285.

Thursday, July 09, 2015

JEB Bush said: "workforce participation has to rise from its all-time modern lows"

Further to the IPBiz post The "new normal" in jobs predicted long ago by William Bridges , there has been some discussion of comments by JEB Bush, specifically the Bush text:

"My aspiration for the country and I believe we can achieve it, is 4 percent growth as far as the eye can see. Which means we have to be a lot more productive, workforce participation has to rise from its all-time modern lows. It means that people need to work longer hours and, through their productivity, gain more income for their families. That's the only way we're going to get out of this rut that we're in."

There was some clarification. Also, Rick Klein of ABC noted:

But in their context and later clarification, it's clear that Bush was making a very serious point about a very real issue: underemployment. That makes this episode an early test of Bush's strength in the Republican field, as well as a challenge to his rivals who would consider pouncing on the moment. Would they want to attack Bush when they agree - and in fact are largely building their entire campaigns - around his broader point about an Obama economy that has left too many working too few hours?

link for Klein text:

One notes that the issue of low work force participation [e.g., "Under President Obama, we have the lowest workforce participation rate since 1977" and separately --The percentage of Americans in the workforce — those who either have a job or are actively seeking one — dropped to 62.6 percent, a 38-year low. -- is distinct from underemployment.

This is of special concern because "underemployed" are considered to be IN the workforce. If one normalized to a factor such as "hours worked" instead of "Americans in the work force", the situation would look worse.

As to older Americans, note from the BLS in 2008:

Since the mid-1990s there has been a dramatic shift in the part-time versus full-time status of the older workforce. The ratio of part-time to full-time employment among older workers was relatively steady from 1977 through 1990. Between 1990 and 1995, part-time work among older workers began trending upward with a corresponding decline in full-time employment. But after 1995, that trend began a marked reversal with full-time employment rising sharply. Between 1995 and 2007, the number of older workers on full-time work schedules nearly doubled while the number working part-time rose just 19 percent. As a result, full-timers now account for a majority among older workers: 56 percent in 2007, up from 44 percent in 1995.


From Forbes:

The percentage of people 65 and older in the labor force increased from 12.1 percent in 1990 to 16.1 percent in 2010.


And, from CNBC

America's workforce is aging, with nearly a third of workers now over 50 and employees over age 65 outnumbering teenage workers for the first time since 1948.


PTAB renders decision related to dispute between San Francisco-based Square Inc. and Washington University prof Robert Morley Jr.

St. Louis Today summarized the recent activity:

San Francisco-based Square Inc. and St. Louisan Jim McKelvey, a Square co-founder along with Square co-founder and CEO Jack Dorsey, sued Washington University associate professor Robert Morley Jr. in federal court in St. Louis in 2010, alleging McKelvey’s name was left off a patent for Square, a small plastic device that plugs into a cellphone or iPad and allows merchants to process credit card transactions.

The lawsuit alleged McKelvey worked with Morley to develop a prototype for Square. Morley later filed a lawsuit in federal court claiming that he was unfairly cut out of the Square enterprise after developing key software.

The litigation was stayed, or put on hold, while the United States Patent and Trademark Office’s Patent Trial and Appeal Board evaluated Square’s request that the board review the patentability of 17 claims of the patent, referred to as the “’946 patent” in court documents.

So, McKelvey's name was allegedly cut off from a patent, and Morley was cut out from the company. In the patent before PTAB, five claims survived challenge.


More Cuozzo at CAFC

Further to earlier posts on IPBiz (e.g., Judge Newman in Cuozzo was correct on Congressional intent on claim construction standard ) note the CAFC opinion of 8 July 2015 in the Cuozzo case located at:

Note also text from Reuters:

In a 6-5 vote, the U.S. Court of Appeals for the Federal Circuit on Wednesday [July 8, 2015] denied a rehearing en banc of a three-judge panel decision from February, dashing the hopes of patent owner Cuozzo Speed Technologies and its attorney John Kasha of Kasha Law to modify the procedures of the federal agency.

Reuters link:

CAFC addresses "business method" patent issues in Versata v. SAP

The outcome of the Versata case:

With regard to the issues in the case, we conclude:

• On appeal in a § 18 case to this court of a
final written decision by the PTAB,
as a general principle we may review issues de-
cided during the PTAB review process, re-
gardless of when they first arose in the process, if they
are part of or a predicate to the ultimate merits.

• The invention claimed in the ’350 patent is
a covered business method patent as that
term is understood, and it does not fall
within the meaning of a “technological in-

• The PTAB’s claim constructions are af-

• The requirements of § 101 of the Patent Act
apply in a §18 review.

• The ’350 patent claims at issue were
properly held invalid under § 101

Judge Hughes wrote separately:

In reaching that conclusion,
however, the majority impermissibly
expands this court’s jurisdiction and our
scope of review to second-guess the Board’s initial deter-
mination that the patent at issue
is a “covered business method patent.”
Our review of that question is barred by
the plain language, structure, and purpose
of the post-grant review provisions; and by our recent precedent
interpreting an identical statutory bar on review in the
inter partes review provisions.


Monday, July 06, 2015

Celgard loses personal jurisdiction arguments at CAFC in SKI case

As to the technology area:

Celgard is a developer and manufacturer of battery
membranes. The membranes Celgard develops are used
to separate chemical cell components in lithium-ion
batteries, preventing contact between the positive and
negative electrodes. Celgard developed a separator
technology that uses a ceramic composite coating
that helps prevent electrical shorting.
Celgard obtained a patent for the ceramic-
coated separator technology, Unit-
ed States Patent No. 6,432,586 (“ ’586 patent”).
This technology is used in rechargeable batteries in
several emerging industries, including electronic vehicles (“EV”)
and consumer electronic (“CE”) devices such as laptops
and cellular phones. Celgard is headquartered in Char-
lotte, North Carolina

The defendant is SKI. The issue is personal jurisdiction.

SKI moved to dismiss the complaint for lack of per-
sonal jurisdiction on the basis of an absence of
evidence that SKI ever sold or offered for sale the accused products
in North Carolina. J.A. 129–31.
In support of its motion, SKI provided a sworn declaration
from a senior managerof SKI, stating that all of SKI’s sales
are to customers outside of the United States. J.A. 111.

As to the analysis:

first, whether the forum state’s long-arm statute permits service of process and, second,
whether the assertion of jurisdiction is consistent with due process.
Elecs. for Imaging, Inc. v. Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2003).

Due process requires that the defendant have suffi-
cient “minimum contacts with [the forum state] such that
maintenance of the suit does not offend traditional no-
tions of fair play and substantial justice.” Int’ l Shoe Co. v.
Washington, 326 U.S. 310, 316 (1945)


Celgard must make a prima facie showing of jurisdiction.
Under the prima facie burden, the district court must resolve
all factual disputes in the plaintiff’s favor in evaluating the
jurisdictional question. See, e.g. , Deprenyl Animal Health,
Inc. v. Univ. of Toronto Innovations Found., 297 F.3d 1343, 1347 (Fed. Cir. 2002).


Intellectual Ventures loses its appeal against Capital One Bank at the CAFC

The overview of the case

Plaintiffs Intellectual Ventures I LLC and Intellectual
Ventures II LLC (collectively, “Intellectual Ventures ”)
asserted infringement of claims of three patents against
defendants Capital One Bank (USA), NA, Capital One
Financial Corporation, and Capital One, NA (collectively,
“Capital One”) . The three patents were U.S. Patent Nos.
8,083,137, 7,603,382, and 7,260,587 (“the ’137 patent,”
“the ’382 patent,” and “the ’587 patent,” respectively)


We affirm, concluding that the asserted claims of the
’137 and ’382 patents claim unpatentable abstract ideas
and that the district court’s claim construction
with respect to the ’587 patent was correct

As to patent subject matter eligibility:

We first address patent eligibility with respect to the
’137 and ’382 patents. An invention is patent-eligible if it
fits into one of four statutory categories:
processes, ma-
chines, manufactures, and compositions. 35 U.S.C. §101.
But there is an implicit exception.
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)
(citation omitted) . To determine whether an
invention claims ineligible subject matter, we engage in a two-
step process. First, “we determine whether the
claims at issue are directed to one of [the]
patent - ineligible concepts ”—laws of nature, natural phenomena,
or abstract ideas. Id. at 2355.
“The ‘abstract ideas’ category embodies ‘the longstanding rule’
that ‘[a] n idea of itself is not patentable.’” Id.
(quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
An abstract idea does not
become nonabstract by limiting the invention to a particu-
lar field of use or technological environment
, such as the Internet.
See Alice, 134 S. Ct. at 2358 (limiting an ab-
stract idea to a particular technological environment,
such as a computer, does not confer patent eligibility);
Bilski v. Kappos, 561 U.S. 593, 612 (2010) (“[L]imiting an
abstract idea to one field of use . . .
d[oes] not make the
concept patentable.”)

As to the '137 patent:

Here, the patent claims are directed to an abstract
: tracking financial transactions to determine wheth-
er they exceed a pre-set spending limit (i.e. , budgeting).
Although Intellectual Ventures argues the claims are not
“[d]irected or [d]rawn to an [a]bstract [i]dea,” Appellant’s
Br. 30,Intellectual Ventures admits budgeting “undoubt-
edly . . . is an abstract idea.”
Appellant’s Br. 31. And while the claims recite
budgeting using a “communication medium”
(broadly including the Internet and telephone
networks), that limitation does not render the
claims any less abstract. The abstract idea here is not meaningfully
different from the ideas found to be abstract in
other cases before the Supreme Court and our court
involving methods of organizing human activity. In
Bilski, the Supreme Court determined that a
claim directed to a method of hedging risk was
directed to an abstract idea. 561 U.S. at 599 , 613.
In Alice, the Supreme Court held that a computer-based implementation
of a method of mitigating settle-
ment risk using a third-
party intermediary was drawn to
an abstract idea. 134 S. Ct. at 2351–52


Moving to step two of the Alice framework, it is clear
that the claims contain no inventive concept. The recited
elements, e.g., a database, a user profile (“a profile keyed
to a user identity ,” ’137 patent col. 10 l. 5), and a commu-
nication medium, are all generic computer elements.
Instructing one to “apply” an abstract idea and reciting no
more than generic computer elements performing generic
computer tasks does not make an abstract idea patent-eligible.
See Alice, 134 S. Ct. at 2359–60 (