Monday, February 29, 2016

Eon v. Silver Spring: the meaning of "portable" and "mobile" debated

From Judge Bryson's dissent:

The majority holds that “no reasonable jury could
have found that Silver Spring’s devices are ‘portable’ and
‘mobile’ in the context of the claimed invention.” I disagree.

There is no room for doubt that the accused meters
would qualify as mobile and portable under the ordinary
meaning of those terms, and the majority does not suggest

The central question in this case is whether
the specifications of the ’101 and ’491 patents demonstrate
that the patentee intended to depart from the plain
meaning of those terms, i.e., “capable of being easily and
conveniently transported,” and to adopt the meaning
proposed by Silver Spring, i.e., “capable of being easily
and conveniently moved . . . and designed to operate
without a fixed location.” The majority essentially adopts
Silver Spring’s construction, and in particular the final
clause requiring that the device be “designed to operate
without a fixed location.”2 I do not agree that the specifications
of the two patents support that restrictive definition.
Instead, I conclude that the district court properly
determined that the terms “portable” and “mobile” were
used in their ordinary sense in the patent, and that the
court properly instructed the jury to give those terms
their ordinary meaning. For that reason, I disagree with
the majority’s decision that the evidence, viewed in light
of the proper construction of the claims, was insufficient
to support the jury’s verdict.

An interesting comment:

The majority regards the presence of the retaining
ring and bolt as evidence that the meters are not portable.
In my view, the fact that the meters need to be secured to
the electrical box supports the jury’s finding that the
meters are portable or mobile. A Silver Spring employee
testified that the meters are locked down because the
utilities “don’t want the meters to be moved” or “tampered
with.” A559, at 139:4-11. Thus, the meters are locked to
the electrical box precisely because they are easy to move
and carry off, and they need to be secured in order to
reduce the risk of loss

Of ordinary meaning:

The majority also faults the district court for instructing
the jury to interpret the terms “portable” and “mobile”
according to their ordinary meanings rather than defining
the terms for the jury. Notably, even if the court erred in
that respect, the remedy would be, at most, a new trial,
not the judgment entered today, which ends the case.
Beyond that, however, I do not agree that the district
court erred by directing the jury to apply the ordinary
meaning of the terms.

LUMINARA WORLDWIDE loses on injunction issue at CAFC

The outcome was the vacating of the D. Minn. decision and remand.

Appellants Liown Electronics Co.; Shenzhen Liown
Electronics Co.; and Liown Technologies/Beauty Electronics,
LLC (collectively, “Liown”), and enjoined distributors
Boston Warehouse Trading Corp.; Abbott of England
(1981), Ltd.; BJ’s Wholesale Club., Inc.; Von Maur, Inc.;
Zulily, Inc.; Smart Candle, LLC; Tuesday Morning Corp.;
Ambient Lighting, Inc.; The Light Garden, Inc.; and
Central Garden & Pet Co. (collectively, “Distributors”)
appeal from the district court’s grant of a preliminary
injunction barring Liown from supplying Distributors
with artificial candle products that infringe Disney Enterprises,
Inc.’s U.S. Patent No. 8,696,166. We vacate and
remand for further proceedings.

Disney is involved:

The patents asserted in this case—the ’166 patent and
U.S. Patent Nos. 7,837,355; 8,070,319; and 8,534,869—
teach improved techniques for making the light from
artificial candles flicker like the flames of real candles.
These techniques were first developed for the “Haunted
Mansion” ride at Disneyland. Disney Enterprises, Inc., a
wholly-owned subsidiary of The Walt Disney Company, is
the owner of the asserted patents, which claim priority to

An issue

Liown argues that Candella does not have exclusionary
rights to the asserted patents because Disney retained
the right to freely license the technology to any
entity by creating new Affiliates.

As to joinder:

Because one purpose of the joinder requirement is to
protect the alleged infringer from multiple lawsuits, the
transfer of the right to sue for infringement is critical.
See Alfred E. Mann Found. for Sci. Research v. Cochlear
Corp., 604 F.3d 1354, 1361 (Fed. Cir. 2010) (explaining
that the right to sue is frequently “the most important
consideration”); Aspex Eyewear, 434 F.3d at 1342 (describing
the right to sue as “[a] key factor”). If the patentee
retains the right to sue, the infringer could face multiple
suits for the same alleged infringement—in one suit
defending itself against the patentee, and in another
defending itself against the exclusive licensee. To prevent
this, we require joinder of the patentee if it has retained
the right to sue for infringement.

Liown loses on standing:

We hold that Luminara has all substantial rights to
the patent and therefore it is not necessary to join Disney
Enterprises in this lawsuit. Thus, we reject the standing
arguments raised by Liown

But wins on the injunction issue:

Liown argues that the preliminary injunction was improperly
granted because there is a substantial question
of validity—namely, whether Disney Enterprises’ earlier
U.S. Patent No. 7,261,455 anticipates claim 1 of the ’166
patent. We agree.

Although Luminara alleges infringement of four patents
in this suit, claim 1 of the ’166 patent forms the sole
basis for the district court’s grant of a preliminary injunction.
Claim 1 recites (emphasis added):
A pendulum member for generating a flickering
flame effect, comprising:
a body with upper and lower portions;
a flame silhouette element extending outward
from the upper portion of the body; and
a hole in the body below the flame silhouette element,
wherein the hole is configured to receive a
flame support element such that the flame support
element passes through the hole and the body
is free to pivot when supported by the flame support

The meaning of "free to pivot":

The ordinary meaning of “free to pivot” does not plainly
require either of these limitations. Pivoting includes
rotation around a single axis—for example, when a door
pivots on its hinges, a dancer turns on a pivot foot, or a
lever pivots on a fulcrum. And being “free to pivot” does
not require chaotic motion. (...)

Absent lexicography or disavowal, we do not depart
from the plain meaning of the claims. Thorner v. Sony
Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012). The standards for finding lexicography and disavowal
are “exacting.” GE Lighting Sols., LLC v. AgiLight,
Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). To act as a
lexicographer, a patentee must “clearly set forth a definition
of the disputed claim term” and “clearly express an
intent to redefine the term.” Thorner, 669 F.3d at 1365
(internal quotation marks omitted). Similarly, disavowal
requires that “the specification [or prosecution history]
make[] clear that the invention does not include a particular
feature.” SciMed Life Sys. Inc. v. Advanced Cardiovascular
Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001).
While such disavowal can occur either explicitly or implicitly,
it must be clear and unmistakable. See Trs. of Columbia
Univ. v. Symantec Corp., No. 2015-1146, 2016 WL
386068, at *2–3 (Fed. Cir. Feb. 2, 2016). We have found
disavowal or disclaimer based on clear and unmistakable
statements by the patentee that limit the claims, such as
“the present invention includes . . .” or “the present invention
is . . . ” or “all embodiments of the present invention
are . . . .” See, e.g., Regents of the Univ. of Minn. v. AGA
Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell
Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19
(Fed. Cir. 2006); SciMed Life Sys., Inc., 242 F.3d at 1343–
44. When a patentee “describes the features of the ‘present
invention’ as a whole,” he implicitly alerts the reader
that “this description limits the scope of the invention.”
Regents of the Univ. of Minn., 717 F.3d at 936.
At this preliminary stage, we see no definition and no
disavowal or disclaimer in the specification requiring
motion in four different ways or directions.

Friday, February 26, 2016

Apple's "slide to unlock" and autocorrect patent claims found obvious by CAFC; Samsung wins on these points

The decision of the Northern District of California in No. 5:12-cv-00630-LHK
(Judge Lucy H. Koh) was modified by the CAFC on February 26, 2016.

Within Samsung v. Apple:

Both Apple and Samsung appeal. With regard to Apple’s
’647 patent, we reverse the district court’s denial of
Samsung’s motion for judgment as a matter of law
(JMOL) of non-infringement and find that Apple failed to
prove, as a matter of law, that the accused Samsung
products use an “analyzer server” as we have previously
construed that term. We also reverse the district court’s
denial of JMOL of invalidity of Apple’s ’721 and ’172
patents, finding that the asserted claims of both patents
would have been obvious based on the prior art. We
affirm the judgment of non-infringement of Apple’s ’959
and ’414 patents, affirm the judgment of infringement of
Samsung’s ’449 patent, and affirm the judgment of noninfringement
of Samsung’s ’239 patent. In light of these
holdings, we need not address the other issues on this
appeal. Accordingly, we affirm-in-part and reverse-inpart.

KATHLEEN M. SULLIVAN of Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, argued for defendant-appellant

Of the "analyzer server" issue, the CAFC noted

However, this testimony is not sufficient evidence to
allow a jury to conclude that the Samsung software met
the “analyzer server” limitation. Our previous construction
required more than just showing that accused software
was stored in a different part of the memory and
was developed separately. We found that the “analyzer
server” limitation is a separate structural limitation and
must be a “server routine,” consistent with the “plain
meaning of ‘server’.” Motorola, 757 F.3d at 1304.


Apple could point to no testimony where its expert
stated that the library programs run separately. When
asked at oral argument to point to testimony that shows
that the Samsung software runs separately, Apple continually
pointed to its expert’s testimony on the last day of
trial that the Samsung software “has access to the code
and it goes to the code where it is and uses it there.” J.A.
13037 (emphasis added). This testimony, though, shows
the opposite of what Apple contends. It shows that the
client application borrows or uses the library program
code, not that the library program code runs separately.
This is consistent with other testimony by the same Apple
expert, admitting that the Samsung programs were not
“standalone program[s].” J.A. 13054.


In short, Apple provided no evidence that the accused
software library programs in the Samsung phones run
separately from the Browser and Messenger applications.
No reasonable jury could have concluded that the accused
devices had “an analyzer server for detecting structures in
the data, and for linking actions to the detected structures.”
We reverse the district court’s denial of JMOL of
non-infringement by the Samsung devices of claim 9 of
the ’647 patent.

**As to the '721 and '172 patents of Apple:

Apple asserted claim 8 of the ’721 patent and claim 18
of the ’172 patent. Before trial, the district court granted
Apple summary judgment of infringement of the ’172
patent. The jury found both patents not invalid and
found the asserted claim of the ’721 patent infringed,
awarding $2,990,625 for infringement of the ’721 patent
by three Samsung products and $17,943,750 for infringement
of the ’172 patent by seven Samsung products.
Additionally, the jury found that Samsung had willfully
infringed the ’721 patent, which Apple argued supported
an award of enhanced damages. The district court denied
Samsung’s motions for JMOL of invalidity and noninfringement,
but granted JMOL that Samsung did not
willfully infringe the ’721 patent. On appeal, Samsung
challenges the determination as to invalidity, and Apple
challenges the JMOL as to willfulness.

The CAFC found the claims of the '721 obvious:

Samsung contends that the district court should have
granted its motion for JMOL that the ’721 patent would
have been obvious. We agree.

The ’721 patent is directed to the “slide to unlock” feature
of the iPhone. As described in the specification, one
problem with a portable device with a touchscreen is the
accidental activation of features.

KSR appears:

Samsung argues that these two
references together disclose every limitation of claim 8 of
the ’721 patent and that it would be a trivial matter for
one of skill in the art to combine the teachings of these
two references. Thus, it asserts that claim 8 would have
been obvious because it is simply “the combination of
familiar elements according to known methods.” KSR,
550 U.S. at 416.

Note footnote 8:

We have held that submission of an information
disclosure statement to the USPTO does not constitute an
admission that the reference listed is material prior art.
Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274,
1279 (Fed. Cir. 2003) (finding that of listing a prior sale in
an IDS was not a disclaimer of claim scope). However,
the nature of the prior art listed in an information disclosure
statement can be informative as to the field of endeavor

The matter of "copying" arose:

As to copying, Apple also argues that internal Samsung
documents show that a feature of the Samsung
unlock mechanism was copied from the iPhone. These
documents show that Samsung engineers recommended
modifying Samsung software to “clarify the unlocking
standard by sliding” to make it the “[s]ame as [the] iPhone.”
J.A. 51289. What was copied was not the iPhone
unlock mechanism in its entirety, but only using a fixed
starting and ending point for the slide, a feature shown in
the Plaisant prior art.

Apple loses on slide to unlock:

In short, Apple’s evidence of secondary considerations
is “insufficient as a matter of law to overcome our conclusion
that the evidence only supports a legal conclusion
that [the asserted claim] would have been obvious.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006). We
reverse the judgment of infringement and no invalidity
because the asserted claim of the ’721 patent would have
been obvious in light of Neonode and Plaisant.

As to the '172 patent of Apple:

The ’172 patent covers the iPhone’s “autocorrect” feature.


Certainly text
correction and text completion are closely related problems
in the “same field of endeavor” such that they would
be considered analogous arts. See, e.g., Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1338 (Fed.
Cir. 2010) (finding that references relating to telephony
and wireless communication were relevant to the Internet
and network protocols because the “problem facing the
inventors of the Network Patents was related to” the
problem faced by the prior art references). There is a
strong prima facie case of obviousness.

Copying arises:

For copying, Apple again points to internal Samsung
documents showing that one feature of the iPhone was
copied. Prior to the copying, the Samsung phones automatically
corrected the typed text as the user typed. See
J.A. 51488. On the iPhone, the correction was made only
after the user “accepts or hits space.” Id. This feature is
exactly what was disclosed in Robinson. When the feature
that is copied is present in the prior art, that copying
is not relevant to prove nonobviousness. See,
239 F.3d at 1366; Wm. Wrigley Jr. Co., 683 F.3d at 1363;
see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed.
Cir. 2011) (“Where the offered secondary consideration
actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the
merits of the claimed invention.”).


In short, we find that Samsung presented a strong
case of obviousness, showing that every element of claim
18 was present in the prior art. Apple’s evidence of secondary
considerations was very weak. Claim 18 of the
’172 patent would have been obvious to one of skill in the
art as a matter of law. Therefore, we reverse the judgment
of infringement and no invalidity.
Because we have found that the asserted claims of the
’721 and the ’172 patents would have been obvious, we
need not address Apple’s argument that the jury’s finding
of willful infringement of the ’721 patent should be reinstated
nor Samsung’s argument that the district court
erred in construing “keyboard” in the ’172 patent for
purposes of determining infringement.


In conclusion, we reverse the district court’s judgment
of infringement of the ’647 patent and the judgment of no
invalidity with respect to obviousness of the ’721 patent
and the ’172 patent. Samsung was entitled to a judgment
of non-infringement of the ’647 patent and a judgment of
invalidity as to the ’721 and ’172 patents. We affirm the
judgment of non-infringement of Apple’s ’959 patent,
Apple’s ’414 patent, and Samsung’s ’239 patent and affirm
the judgment of infringement of Samsung’s ’449 patent.
In light of these holdings, we find that we need not address
any of the other issues on appeal.

Wednesday, February 24, 2016

NY Times defines "patent troll" in post concerning patent fight over technology used in "Deadpool"

The relevant text:

So-called patent trolls — companies that own patents, but don’t actually build products based on them — have sued scores of little and big companies.

Industry complaints that lawsuits were sucking innovation out of tech — and scaring people away from creating start-ups — led to calls in Washington for patent reform. But so far those efforts have gone nowhere.

Rearden has asked a judge to award it financial damages and block the distribution of movies and other entertainment that it claims have been made using infringing Mova patents and trademarks.

from the post -- ’Deadpool’ Technology Lands in Patent Fight --

Tuesday, February 23, 2016

Codexis goes after Chinese company EnzymeWorks over trade secret and patent issues

Codexis has gone against EnzymeWorks and its founder Junhua [Alex] Tao for misappropriating trade secrets and infringing on Codexis patents. Tao, while an employee of Pfizer, led a joint research project between Pfizer and Codexis. EnzymeWorks is based in Zhangjiagang, China.

As to trade secrets, there is an assertion of copying of a plasmid designed by Codexis, which is a proprietary technology that Codexis uses to develop and produce its engineered enzymes. Secret information resides in the selection, arrangement, and sequence of the DNA in the plasmid.

The suit is in federal court, case No. 3:16-cv-00826-BLF in the United States District Court, Northern District of California filed on February 19, 2016.


IPBiz has discussed Codexis in the biofuel context; see for example

** In passing, the 18 Feb 2016 episode of the CBS show Elementary titled --A Study in Charlotte -- had a sub-plot involving employee theft of trade secrets related to biofuels from the company Zarachem.

Monday, February 22, 2016

CAFC vacates PTAB decision in case involving US 8,323,060, IPR2013- 00342

PPC Broadband, Inc. appeals from the United States
Patent and Trademark Office’s Patent Trial and Appeal
Board’s (“Board”) final written decision in an inter partes
review (“IPR”) concluding that claims 10–25 of U.S.
Patent No. 8,323,060 would have been obvious. Because
we conclude that the Board erred in its construction of
“reside around,” we vacate and remand for further proceedings.

What does the word "around" mean?

As the Board noted, the primary and secondary definitions
of the term “around” in THE AMERICAN HERITAGE
COLLEGE DICTIONARY (4th ed. 2002) are “1. On all sides of:
trees around the field. 2. In such a position as to encircle
or surround: a sash around the waist.” J.A. 65 (citing J.A.
2966). These definitions would support PPC Broadband’s
proposed construction. The fourth definition of “around”
the immediate vicinity of; near: She lives around Norfolk.”
J.A. 2966. This definition would support the Board’s
The fact that “around” has multiple dictionary meanings
does not mean that all of these meanings are reasonable
interpretations in light of this specification. And we
conclude that in this context the Board’s construction is
not reasonable. Claim 10 and indeed all of the claims of
the ’060 patent claim coaxial cable connectors. The components
of these connectors—for example, the nut, the
post, the body, and the continuity member—partially or
wholly encircle the inner electrical conductor. See ’060
patent, fig. 1. For the most part, each of these components
has a geometry that is symmetrical around the
inner electrical conductor. Id. Given the context of this
technology, it seems odd to construe the term “reside
around” without recognizing the context of its use in
terms of the coaxial cable at issue.

CAFC affirms ND Cal in Nuance v. ABBYY

Of the case

This case involves optical character recognition
(“OCR”) technology. Nuance Communications Inc. (“Nuance”)
sued ABBYY USA Software House, Inc., ABBYY
Software, Ltd., ABBYY Production LLC, and Lexmark
International, Inc. (collectively, “ABBYY”) in the United
Stated District Court for the Northern District of California.
Although Nuance asserted eight patents in its complaint,
before trial Nuance narrowed its case and
ultimately only tried three patents: U.S. Patent Nos.
6,038,342 (“’342 patent”), 5,381,489 (“’489 patent”), and
6,742,161 (“’161 patent”). The jury returned a verdict of
non-infringement and judgment was entered against
Nuance. Nuance appeals the judgment, arguing that a
new trial on the ’342 patent is warranted because the
district court improperly adopted a dictionary definition
for disputed claim limitations in the ’342 patent. Nuance
also contends that it was denied due process when the
district court entered final judgment against Nuance as to
all of its patents, even those that Nuance chose not to
assert at trial, and thus seeks remand for a second trial
on the untried patents. For the reasons stated below, we
affirm the district court’s rulings.

CAFC on Acco Brands v. Fellowes

The outcome:

This case arises from an inter partes reexamination
that ACCO Brands Corporation (ACCO) sought—and the
Patent and Trademark Office instituted—against a patent
owned by Fellowes, Inc. (Fellowes). After the examiner
rejected four claims on obviousness grounds,
Fellowes appealed to the Patent Trial and Appeal Board
(Board). The Board reversed the rejections, finding that
the examiner had failed to make a prima facie showing of
obviousness. We reverse this finding and hold that the
examiner made this prima facie showing. We remand the
Board’s decision so it may further consider two issues that
it did not reach below: (1) whether Fellowes’ rebuttal
evidence changes the outcome on obviousness and (2)
whether the dependent claims at issue provide independent
grounds of nonobviousness.

The conclusion

We reverse the Board’s determination that the examiner
did not set forth a prima facie case of obviousness.
Based on the Board’s finding of no prima facie case as to
claims 9 and 11, it appropriately declined to reach (1) the
examiner’s prima facie evidence that claims 10 and 12 are
obvious and (2) Fellowes’ rebuttal evidence. We decline to
take either category of evidence up for the first time on
appeal and instead remand this case to the Board so that
it may consider these two issues.

The winners write the history!

See text in The Scientist on a criticism of Mendelian genetics by Walter Frank Raphael Weldon:

Weldon also took a hard statistical look at Mendel’s data, and the analysis only added to his suspicion. Even if Weldon assumed Mendel’s predictions were accurate, the data were just too good to be true—the equivalent of flipping a coin 100 times and getting exactly 50 heads and 50 tails.

In 1902, Weldon published his critiques in Biometrika, a journal he had cofounded the previous year. According to Radick, Weldon considered Mendel’s data symptomatic of the wider problem with binary categories, which construct a misleading concept of genetic dominance. “Weldon’s confirmed view was that biological science was just on the verge of breaking through to the next level because it was taking variation so seriously,” says Radick. “But it all depended on researchers who were not satisfied with a fictional idealization of complex data—which is, in his mind, what you’re dealing with when you’re dealing with ‘yellow.’ ”

For Weldon, Mendel’s patterns represented special cases where humans had artificially bred out variation in domestic plants and animals. But his paper was met with harsh criticism from a colleague, William Bateson. Former schoolmates, Weldon and Bateson suffered a falling out in the mid-1890s after a series of scientific disagreements. Their rivalry continued through the early 1900s, when Weldon started to write a book detailing his thoughts on Mendel—but Weldon died unexpectedly in 1906 at the age of 46. Bateson continued to champion Mendelian principles and garnered widespread acceptance of rules still taught today in the opening chapters of genetics textbooks.

“Weldon gets remembered, if at all, as the one who misguidedly obstructed the path to Mendelism,” says Radick. “The winners write the history.” But Weldon’s ideas and his unfinished book, stored in the archives at University College London, suggest an alternative path that the early study of genetics might have taken—one that would have more closely approached a modern understanding of DNA’s complexity, embracing variation and unexpected results as crucial to the system rather than exceptions.


Wikipedia notes:

As a project for a History of Statistics course taught at the University of Chicago, Zacariah Labby[6] built a machine[7] to roll the dice and automatically count the dots (pips) on each die. The resulting data allowed Labby to repeat Weldon and Pearson's original investigations, as well as delve deeper into the analysis.

Recall the earlier finding:

The conclusion is that the dice show
a clear bias toward fives and sixes, which
Pearson estimated was probably due to
the construction of the dice. Most inexpensive
dice have hollowed-out pips,
and since opposite sides add to seven,
the face with six pips is lighter than its
opposing face, which has only one pip.

"60 Minutes" discusses federal government error in formaldehyde/Lumber Liquidators matter

At the end of "60 Minutes" on 21 Feb. 2016, there was mention of a correction made by the CDC to its earlier
report on the amount of formaldehyde being released from certain flooring being sold by Lumber Liquidators. It seems there was an underestimation by about a factor of three in the volume concentration of formaldehyde in the surrounding air.

In a story in Fortune titled Here's Why Shares of Lumber Liquidators Are Crashing, one has text:

The CDC said it had used an incorrect value to calculate ceiling height, which meant its estimates of the airborne concentration of cancer-causing formaldehyde were about three times lower than they should have been.

60 Minutes reported on Sunday it was alerted to the possibility that scientists had not converted feet to meters in some calculations.

If one is calculating a volume (to be reported in cubic meters), and one uses feet instead of meters in one of the three dimensions, one would OVERREPORT the volume. For example, for a volume of 1 meter by 1 meter by 1 one foot, the volume would be reported as 1 cubic meter, if one failed to convert the 1 foot to the proper distance in meters. The correct volume would be 1 by 1 by 12/39.37, or 0.30 cubic meters. The erroneous volume of 1 cubic meter would be about three times higher than the true volume of 0.30. In a concentration measurement of formaldehyde per volume, the true divisor (volume) would be about three times smaller, and the concentration about three times higher.

Sunday, February 21, 2016

CBS Sunday Morning on February 21, 2016 does US Patent 9,802

Charles Osgood introduced the stories for 21 February 2016. Rita Braver does the cover story on the right to die, A Dying Wish. Second, Lee Cowan on book collecting. Third, Tracey Smith on Jennifer Jason Lee. Fourth, Seth Doane on snowmonkeys in Japan . Anna Warner on Harper Lee.
Headlines. Hillary Clinton won Nevada caucus. Trump won South Carolina, and JEB Bush dropped out. Random shootings in Kalamazoo. Scalia funeral mass. Weather: midweek showers in northeast.
Rita Braver starts with J. J. Hansen who had brain cancer, but who remains alive. Brittany Maynard. "Aid in Dying." Barbara Combs Lee. Eve Elliott. Del Grosso stopped eating and drinking. Patients Rights Action Fund opposes assisted suicide. AMA opposes assisted suicide. In Oregon, 36% who get lethal prescriptions don't use them.
Almanac. Feb. 21, 1858. Edwin Holmes installed first electric burglar alarm . Bought patent from Augustus Pope in 1857 for $1500. The patent was US 9802, issued June 21, 1853. Electric street lamps made people more comfortable with electricity. In 1905, AT&T bought the Holmes Burglar Alarm company. Now burglar alarms a $22 billion business. Holmes is an example of a person who bought a patent from someone else and made product, and later sold his company to an even larger company.
Lee Cowan on books filled with surprises. Called blooks, for book looks. Secret Sam's. A portable altar. Crosley book raio. A book as motion detector. Dusty Evsky.
Ben Tracey on B. J. Novak, from The Office. Mention of tasks of lawyers. Book "One More Thing." Novak went to Harvard. "The Book with No Pictures," written for pre-school kids. Benjamin Joseph Novak. Father was a ghost writer for among others Nancy Reagan. Maybe something crazy will happen. Inglorius Bastards of Tarantino.
Umberto Eco and Harper Lee both dies on 19 Feb. 2016. Anna Werner discusses them. Mary McDonough Murphy.

Seth Doane on snow monkeys in Nagano, Japan. Mark Hemmings. Japanese macaques.

Steve Hartman in Lansing, Michigan on birthday party for police. Gary Hall from Los Angeles.

Tracey Smith on Jennifer Jason Leigh from Fast Times at Ridgemont High. Single White Female. Her dad was Vic Morrow. The Leopard at Des Artistes. Last Exit to Brooklyn. Miami Blues. The Meryl Streep of bimbos. Tarantino. Hateful Eight.

Conor Knighton "on the trail" to Mammoth Cave National Park. 405 miles of passageway. 1904: first automobile arrived at Mammoth. Kentucky cave wars. Great Onyx Cave. Crystal Cave of Floyd Collins. January 30, 1925. Nationwide story on radio. In 1941, Mammoth became a national park.

David Martin with Michael Hayden. Stellar Wind. Head of CIA from 2006 to 2009. Dan Rooney. Once you are in a network ...
Hayden was first chief of Cyber Command. 2010 Stuxnet attack.

Moment of nature. Midwinter snows in New Jersey Pine Barrens.

SecurityBaron wrote of the Pope device:

The device worked when an electric circuit closed. You connected doors and windows in parallel and by opening them interrupted the electric current. This caused the magnets attached to the sensor system to vibrate. The vibration caused a small hammer to strike a brass bell, alerting the homeowner or monitoring station that someone entered. A small spring mounted above the door or window kept the current interrupted, so closing the door or window again kept the current from flowing after it was tripped.

Of Augustus R. Pope:

According to Pope’s wife Lucy, Pope attempted to market his invention by advertising in several newspapers. He hired a salesman to help sell the device, and completed one installation in a shoe factory near Boston; however, failing health and the need to provide for his family prompted him to sell the patent rights to Edwin Holmes in 1858 for $1800.00 in cash and $8000.00 in notes. Pope passed away at age thirty-nine of typhoid fever on May 24, 1858.


**Recall another patent/Boston/typhoid case:

The noted patient [Wilbur Wright] was seized with typhoid on May 4 while on a business trip in the east. On that day he returned to Dayton from Boston and consulted Dr. Conklin, the family physician. He took to his bed almost immediately, and it was several days before his case was definitely diagnosed as typhoid. Throughout the early part of his illness Wright attributed his sickness to some fish he had eaten at a Boston hotel.


Saturday, February 20, 2016

Heinz prevails in ketchup patent battle

Trib Total Media noted a patent victory for Kraft/Heinz in the ketchup wars:

A federal appeals court Friday [ 20 Feb 2016 ] upheld a decision canceling a Chicago man's patent covering a condiment package, which the man claimed H.J. Heinz Co. infringed upon when it developed its Dip & Squeeze ketchup containers.

Scott White sued Heinz in 2012 in federal court in Chicago alleging the ketchup-maker stole his idea for Dip & Squeeze. That case was stayed after Heinz asked the Patent and Trademark Office to re-examine White's patent, which the office eventually canceled.


The CAFC affirmed the PTAB on the IPR of US 8,231,026.

The case brings up the use of figures. Here, oddly, the appellant was arguing for an inherent feature.

Mr. White’s amalgamation of these figures and analysis
is misplaced. We have consistently found “patent
drawings do not define the precise proportions of the
elements and may not be relied on to show particular
sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222
F.3d 951, 956 (Fed. Cir. 2000); see also In re Wright, 569
F.2d 1124, 1127 (CCPA 1977) (“Absent any written description
in the specification of quantitative values,
arguments based on measurement of a drawing are of
little value.” (citation omitted)).

Mr. White further argues that “a physical stop or lockup
seal [i.e., adhesive] is necessarily present because
Selker would otherwise be susceptible to over-peeling that
would render it inoperable.” Appellant’s Br. 30. Without
a stop, Mr. White contends, Selker would not work for its
intended purpose. Id. at 14 (“A stop . . . is fundamental to
Selker’s operation.”).


Both Mr. White and Heinz submitted declarations detailing
their respective positions on why a stop was or was
not present in Selker.

THEN, another inherency argument:

Mr. White next argues that, even if the PTAB correctly
found that Selker does not inherently disclose a stop,
the PTAB committed legal error when it asked him “to
demonstrate Selker inherently disclosed the absence of
the totally removable limitation.” Appellant’s Br. 26. Mr.
White contends that in order for Selker to anticipate the
’026 patent claim limitation of “totally removable,” it
“must have ‘necessarily’ disclosed a totally removable
cover.” Id. (quoting In re Montgomery, 677 F.3d 1375,
1380 (Fed. Cir. 2012)). He explains “[i]t is not enough
that Selker likely or probably discloses a totally removable
cover . . . .” Id. (citation omitted). Mr. White also
contends the PTAB “improperly shift[ed] the burden of
demonstrating inherency” because “it was the Examiner’s
and the Board’s responsibility to show the limitation was
necessarily present.” Id. at 23 (citation omitted).
Mr. White’s argument is contrary to the PTAB’s findings.
Here, the PTAB determined that “Selker neither
depicts in any drawing, nor describes in any textual
disclosure, structure that might prevent the cover from
being removed from both ends of Selker’s package.” J.A.
5. Rather, the PTAB determined that Selker expressly
“disclose[d] reliance upon the user to refrain from peeling
the cover back from either end of the package any more
than necessary.” J.A. 5–6.

The PTAB did not err in its analysis of inherent anticipation.
Inherent anticipation requires that the “prior
art . . . necessarily include the unstated limitation.”
Transclean Corp., 290 F.3d at 1373 (citing Cont’l Can Co.,
948 F.2d at 1268–69). Here, the PTAB found Selker did
not disclose a stop, which was supported by express
disclosures in Selker that cautioned the user to “refrain
from peeling the cover back . . . any more than necessary.”
J.A. 6. Under substantial evidence review, there is sufficient
evidence to support the PTAB’s factual determination
with respect to inherent anticipation. See Rambus,
694 F.3d at 46 (“Anticipation is a question of fact and we
uphold the Board’s factual determinations unless they are
not supported by substantial evidence.” (citation omitted)).

The case: Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,241.

Friday, February 19, 2016

CAFC affirms an inequitable conduct finding in Ohio Willow Wood case

The CAFC affirmed the SD Ohio district court as to inequitable conduct.

An issue in the case was the uncorrobated testimony of a third party witness. PTAB reversed the examiner in crediting such testimony.

The major issue was a question of inequitable conduct. The finding of inequitable conduct by the district court, as to the second re-examination, was affirmed.


Thursday, February 18, 2016

CAFC affirms DNJ; appellant High Point loses

From the decision

High Point SARL (“High Point”) appeals the final
judgment of the United States District Court for the
District of New Jersey holding that its patent rights were
exhausted by the authorized sales of telecommunications
infrastructure equipment substantially
embodying the
asserted claims of U.S. Patent Nos. 5,195,090 (the “’090
patent”), 5,195,091 (the “’091 patent”), 5,305,308 (the
“’308 patent”), and 5,184,347 (the “’347 patent”).
See High Point SARL v. T-Mobile USA, Inc., 53 F. Supp. 3d 797
(D.N.J. 2014) (“District Court Decision”).

We affirm.


Wednesday, February 17, 2016

The Chronicle speaks of "A Plague of Plagiarism"

The Chronicle of Higher Education posed a hypothetical on plagiarism:

Outside academe, policies and practice may be different. For example, here’s a paragraph that appeared last month in a feature article in a well-regarded newspaper:

“A study of the Pittsburgh Steelers published in 2015 in the American Journal of Sports Medicine was especially striking. It found that vitamin D levels were significantly lower in players with at least one bone fracture. Players who were released during the preseason due to injury or poor performance also had significantly lower D levels than those who made the team, the study found.”

The newspaper story included a link to the published study. The abstract read in part as follows:

“When controlling for number of professional years played, vitamin D levels were significantly lower in players with at least 1 bone fracture when compared with no fractures. Players who were released during the preseason because of either injury or poor performance had significantly lower vitamin D levels than did players who played in the regular season.”

Is this plagiarism? You decide.

Given that there is attribution of source this would not be plagiarism.

One comment to the Chronicle post was of interest:

This article manages to thoroughly muddy the waters by failing to distinguish between plagiarism--the kidnapping of ideas, not of words--and copyright infringement--which is the kidnapping of words. Thus the example used at the end is clearly NOT plagiarism, since the source was cited, but possibly could be construed as copyright infringement, though likely of a de minimus type since the passage itself is short. For a really excellent discussion of plagiarism, see judge Richard Posner's gem "The Little Book of Plagiarism" (Pantheon, 2007).

Plagiarism is the copying of words without attribution, not the "kidnapping of ideas." The commenter is incorrect.

Copyright infringement includes, but is not limited to, the copying of protected words without permission. Copying Shakespeare's words without attribution is NOT copyright infringement, but it is plagiarism.

Link to Chronicle:

As to Posner, recall he noted that plagiarism was an "embarrassingly second-rate" offense, and that he did not recommend legal sanctions for plagiarism.

Secure Web loses to Microsoft at CAFC

Secure Web Conference Corporation (“Secure Web”)
appeals the district court’s construction of several patent
claim terms in a patent infringement lawsuit it initiated
against Microsoft Corporation (“Microsoft”). Secure Web
argues that the district court improperly imported limitations
from specific embodiments into the challenged
constructions. Because the district court correctly construed
the terms at issue by considering the language of
the claims themselves and by looking to the patent specification
for guidance on claim term meaning, we affirm.

Teva is discussed, but is not relevant to this case:

The “ultimate interpretation” of a claim term, as well
as interpretations of “evidence intrinsic to the patent (the
patent claims and specifications, along with the patent’s
prosecution history),” are legal conclusions, which this
court reviews de novo. Teva Pharm. USA, Inc. v. Sandoz,
Inc., 135 S. Ct. 831, 841 (2015). Where a district court
“make[s] factual findings about . . . extrinsic evidence[,
however,] th[e] subsidiary factfinding must be reviewed
for clear error on appeal.” Id. Because the district court
relied only on intrinsic evidence in this case, our review is
de novo.

In part, the CAFC relies on the background section:

First, the Background of the Invention section characterizes
the security device as an add-on component to
existing microprocessor-based devices, explaining that “as
many users already possess telephones, facsimile machines
and computers, it is desirable to provide a security
device capable of performing [security] functions in connection
with these existing devices.” ’686 patent col. 1
ll. 43–48. The remainder of the specification reinforces
that using a stand-alone security device is not mere

Not limiting the invention to the preferred embodiment arises:

We are mindful not to limit claims to preferred embodiments,
but in this case, the district court did not err
in concluding that Figures 1 and 2 depict the essence of
the claimed invention rather than a preferred embodiment.
Particularly, the specification describes Figure 1 as
depicting “a communication system according to the
present invention” and Figure 2 as depicting “a telecommunications
security device according to the instant
invention.” Id. col. 2 ll. 16–19. While the specification
later describes Figure 2 as “a block diagram of a preferred
form of the security device according to the instant invention”
(Id. col. 3 ll. 7–9), this statement does not change the
understanding of “security device” at least because the
specification repeatedly notes the importance of using an
external security device, reinforcing that the security
device of the invention is limited to stand-alone security

The use of dictionary definitions arises:

Even were we to rely on dictionaries in this case, we
would not likely find the definition of “device” useful
because our construction does not hinge on the word
“device” used in isolation. See IGT v. Bally Gaming Int’l,
Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“Extracting a
single word from a claim divorced from the surrounding
limitations can lead construction astray. Claim language
must be construed in the claim in which it appears.”).

Of judicial economy:

The parties stipulated to a final judgment of noninfringement
of the ’686 patent under the construction of
“security device” adopted by the district court. Because
we adopt the district court’s construction of “security
device,” we do not address the construction underlying the
alternative stipulated ground for noninfringement as we
need not decide more than is necessary to dispose of the
case regarding to the ’686 patent. See Network Commerce,
Inc. v. Microsoft Corp., 422 F.3d 1353, 1357 n.3
(Fed. Cir. 2005) (declining to construe claim term when
noninfringement judgment is affirmed on other claim
construction ground).


Based on the intrinsic evidence, we conclude that the
district court correctly construed “network communications
device” and “input/output device.” Per the stipulated
final judgment entered by the parties, each of these
constructions is a ground for noninfringement of the ’687
patent for Microsoft.


Tuesday, February 16, 2016

CAFC in Lismont case finds laches applies to inventorship claims

From the decision:

This appeal arises from an inventorship dispute between
Hedwig Lismont (Mr. Lismont) and Alexander
Binzel Schweisstechnik GmbH & Co. KG (Binzel-
Germany), Abicor Unternehmensverwaltungs GmbH
(Abicor), IBG Industrie-Beteiligungs-GmbH & Co. KG
(IBG), Richard Sattler (Mr. Sattler), and Alexander Binzel
Corporation (Binzel-USA) (collectively, Appellees). The
United States District Court for the Eastern District of
Virginia granted summary judgment in favor of Appellees,
concluding that Mr. Lismont’s inventorship claim,
which he filed ten years after the patent issued, was
barred by laches. See Lismont v. Alexander Binzel Corp.,
No. 2:12-cv-592, 2014 WL 4181586 (E.D. Va. Aug. 20,
2014). Because we agree with the district court’s conclusion
that the presumption of laches applies against Mr.
Lismont’s claim and that he failed to rebut that presumption,
we affirm.


If the presumption of laches attaches, a plaintiff may
defeat summary judgment by “rais[ing] a genuine dispute
as to either delay or prejudice.” Hemstreet v. Comput.
Entry Sys. Corp., 972 F.2d 1290, 1293 (Fed. Cir. 1992). If
the plaintiff makes such a showing, the presumption
dissolves and the defendant is then “put to its proof on
both factors” and “must affirmatively prove
(1) unreasonable and inexcusable delay and (2) prejudice
resulting from that delay.” Id. If, however, we agree with
the district court that there are no genuine issues of
material fact, we may set aside the imposition of laches if
“the decision rests on an erroneous interpretation of the
law or on clearly erroneous factual underpinnings.”
Serdarevic, 532 F.3d at 1358; see also Ray Commc’ns, Inc.
v. Clear Channel Commc’ns, Inc., 673 F.3d 294, 299 (4th
Cir. 2012) (“The court has abused its discretion if its
decision is guided by erroneous legal principles or rests
upon a clearly erroneous factual finding.” (internal quotation
marks omitted)).


Mr. Lismont argues that he did not delay in initiating
the underlying action because he had been diligently
seeking to vindicate his inventorship rights in German
and European courts. Mr. Lismont further asserts that
he specifically sought resolution of the ’406 patent inventorship
issue in the Second German Litigation when he
requested “worldwide damages, including in the U.S., and
a worldwide declaration of liability, including in the U.S.”
Appellant Br. 25. Thus, according to Mr. Lismont, the
parties have been litigating inventorship of the ’406
patent in Germany since he filed the Second German
Litigation in 2002 and the presumption of laches is therefore

We disagree. The relevant inquiry for the laches presumption
is whether more than six years passed between
the time when the inventor knew or should have known of
the subject patent and the time the inventor initiated
litigation. See Aukerman, 960 F.2d at 1034. As the
district court correctly recognized, Mr. Lismont was aware
that Binzel-Germany had filed a U.S. patent application
covering the manufacturing method he allegedly invented
before the ’406 patent issued. Accordingly, to avoid the
imposition of the rebuttable laches presumption, Mr.
Lismont should have filed his United States inventorship
litigation within six years of August 6, 2002, the date on
which the patent issued. Because it is undisputed that he
waited more than ten years from that date to initiate this
litigation, the district court correctly found that the
presumption of laches attached.

Monday, February 15, 2016

Abraham Lincoln and patents

An article from the 2006 Smithsonian is re-appearing on the net, including the text

One aspect of this multidimensional man that probably doesn't occur to anyone other than avid readers of Lincoln biographies (and Smithsonian) is that of inventor. Yet before he became the 16th president of the United States, Lincoln, who had a long fascination with how things worked, invented a flotation system for lifting riverboats stuck on sandbars.

Lincoln's patent, No. 6,469, was granted on May 22, 1849, for a device for "Buoying Vessels Over Shoals," when he was back in Springfield practicing law after one term as an Illinois congressman in Washington. His idea, to equip boats with inflatable bellows of "india-rubber cloth, or other suitable water-proof fabric" levered alongside the hull, came as a result of river and lake expeditions he made as a young man, ferrying people and produce on the Mississippi and the Great Lakes.


There is no mention of Abrahma Lincoln as a patent litigator, but see IPBiz:

And, Daniel Webster litigated on behalf of Charles Goodyear.

Sunday, February 14, 2016

"60 Minutes" on 14 February 2016 does interview with CIA's John Brennan

In an interview with Scott Pelley, CIA Director John Brennan mentioned that ISIS has the capability to make
chlorine gas and mustard gas, not exactly state of the art chemical warfare agents.

Wikipedia notes during the American Civil War, New York school teacher John Doughty proposed the offensive use of chlorine gas.
AND: The first full-scale deployment of deadly chemical warfare agents during World War I was at the Second Battle of Ypres, on April 22, 1915, when the Germans attacked French, Canadian and Algerian troops with chlorine gas. Deaths were light, though casualties relatively heavy.

CBS Sunday Morning on February 14, 2016

The news began with a discussion of the death of Justice Scalia. As to IP, one recalls Justice Scalia wrote the opinion in
Merck v. Integra; see

Lee Cowan did the cover story on Churchill, Manitoba, the polar bear capital of the world. Featured was the Tundra Buggy, sort of a cross between a tour bus and a monster truck.

Mo Rocca did the Missouri Cherry Blossom Festival, where descendants of U.S. Presidents meet in the town of Marshfield, Missouri.

Anna Werner did a story on "better than sex," a dessert restaurant in Key West, Florida.

Almanac was to be the birth of Jack Benny, Valentines 1894. Benny died in 1974 at age 80, about the same age of Justice Scalia at his death.

Moment of nature, sponsored by BI, did Pinnacles, California.

"Neil Gross" character on The Good Wife right out of Lemley's Myth of the Solo Inventor

In the "Monday" episode of The Good Wife, airing 14 February 2016, the character Neil Gross of Chumhum makes a statement right out of Lemley's "Myth of the Solo Inventor," to the effect this isn't 1953, or 1973, or even 2003, and no one is making inventions in their garages; significant inventions are made in corporate labs.


You think you're so indispensable to the fabric of modern society that you've even bought your own a police force to do your dirty work under color of law. Goliath stomping David, right? You know what these TAPS agents are, Mrs. Florrick? They are heroes.

And why is that, Mr. Gross?

Because the Goliaths are the new Davids. The model of scruffy kids toiling in a garage is a quaint anachronism. This isn't 1953, 1973 or even 2003. The great innovations today are coming out of corporate labs, not garages. Everyone thinks Goliath is the villain, but the truth is that today, more often than not, he is a victim. And he needs protection. Objection. Relevance, not to mention self-aggrandizing.

AND, as to TAPS:

Um, Agent Dunst, you're technically with the FBI but also serve on TAPS... the Technology Allied Protection Service task force, is that correct? It is, although I would not call myself technically with the FBI. Does the FBI have a steering committee, sir? A... Steering committee. No. Does the Secret Service or the Chicago PD? Not that I know of. How about TAPS? Does they have a steering committee? Yes, they do. And, um, who serves on this committee? Law enforcement. Experts in their fields. And... I'm not sure what you want me to say. CEOs of Silicon Valley's 14 biggest companies... don't they serve on the steering committee too? Dunst: That's right. Including Neil Gross?

Link for text:

link as to recap:

Orin Kerr in Volokh Conspiracy talks of the USPTO and Chevron deference

The Volokh Conspiracy has a post titled --The case for patent law and criminal law exceptionalism in the administrative state -- which includes the text:

Why don’t courts apply the usual doctrines of administrative law in these areas? After all, in patent law, the Patent and Trademark Office (PTO) administers the patent laws. And in criminal law, the Department of Justice (DOJ) administers the criminal laws. But courts don’t treat these executive agencies like other agencies. The decisions of other agencies get deferential standards of review, such as Chevron deference. But courts generally reject those deferential standards when it comes to reviewing the decisions of the PTO and the DOJ.


The PTO and DOJ are agencies, so they should get the same deference that other agencies get. Deferring to agencies would allow smarter decision-making by expert executive agencies instead of by poorly informed courts. (For an example of this argument in patent law, see Jonathan Masur’s Supreme Court Review article, “Regulating Patents”;


As I see it, courts generally don’t apply administrative law doctrines when reviewing the decisions of the PTO and DOJ for a good reason: Patent law and criminal law predate the regulatory state, and they work using different mechanisms. The deferential doctrines of administrative law, such as Chevron, were designed to review delegations of lawmaking authority by Congress to regulatory agencies. Deference is necessary to ensure that the power can be delegated. But patent law and criminal law do not rely on delegations of lawmaking authority. As a result, I think it would be a bad idea to apply deferential standards in patent law or criminal law.


Deference created a zone in which the agency would regulate. Deference was necessary not because agencies were experts, but because it was necessary step to give agencies the substantive rulemaking powers they were supposed to exercise.
Courts generally haven’t applied administrative law doctrines within patent law and criminal law because those fields do not rely on delegations of power. Both systems predate the late 19th century regulatory agency model, and both have retained their earlier mechanisms that work in a pre-regulatory-state way. In the case of criminal law, Congress doesn’t delegate to DOJ the power to say what the criminal laws mean. DOJ can execute the law by bringing a prosecution, based on the state of the law as established by the courts, but the power to say what the law is belongs solely to the courts. Similarly, Congress doesn’t delegate to the PTO the power to say what the patent laws mean. The PTO reviews patent applications, based on the state of the law as established by the courts, but the power to say what the law is belongs solely to the courts.

First, IPBiz notes that the USPTO has not been delegated substantive rulemaking authority. This is distinct from some other agencies. From footnote 168 of 54 Wm. & Mary L. Rev. 1959 : --Both the NLRB and the Federal Trade Commission (FTC) are known for heavily relying on formal adjudication to make policy. For the NLRB, see, for example, Mark H. Grunewald, The NLRB's First Rulemaking: An Exercise in Pragmatism, 41 Duke L.J. 274, 274 (1991) ("Despite having been granted both rulemaking and adjudicatory power in its statutory charter more than half a century ago, the [NLRB] has chosen to formulate policy almost exclusively through the process of adjudication." (footnotes omitted)). For the FTC, see, for example, Paul R. Verkuil, The Purposes and Limits of Independent Agencies, 1988 Duke L.J. 257, 263 ("Adjudication was the primary function of ... the Interstate Commerce Commission (ICC), and it was a substantial part of the business of the [FTC] as well."). --

Note also footnote 179: David J. Barron & Elena Kagan, Chevron's Nondelegation Doctrine, 2001 Sup. Ct. Rev. 201, 204 (discussing the costs of focusing too much on APA procedures in determining whether Chevron deference applies). The Barron/Kagan article includes the text:

The alternative approach offered in this article, which is within reach of the Court, makes the institutional choice question of Chevron dependent on a key aspect of agency organization--the level in the administrative hierarchy at which final decision making takes place. The congressional nondelegation doctrine, which aims to promote (as most of administrative law aims to promote) similar values as Chevron and Mead, suggests and informs this approach. An internal agency nondelegation doctrine, like the congressional analogue, would recognize the comparative responsiveness and visibility of certain officials (here, high-level administrators) to the public. And an agency nondelegation doctrine, once again like the congressional analogue, would acknowledge the ability of certain officials to discipline decision making throughout a large and unwieldy bureaucracy. This doctrine, implemented through Chevron, would avoid the well-known pitfalls of its congressional cousin. Given the likely interaction between legal incentives and political and institutional pressures in the administrative sphere, often over-looked in discussions of judicial review, the doctrine neither would lead to overcentralization of decision making nor prove incapable of principled enforcement.

Second, Chevron does arise in patent cases

To define the Chevron doctrine, from McMaster v. United States , 731 F.3d 881 : -- Under Chevron, we conduct a two-step inquiry to determine whether an agency interpretation warrants deference. At step one, we ask "whether Congress has directly spoken to the precise question at issue." Chevron U.S.A. Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837, 842, 104 S. Ct. 2778, 81 L. Ed. 2d 694 (1984). "If the intent of Congress is clear, that is the end of the matter; [and we] . . . must give effect to the unambiguously [**21] expressed intent of Congress." Id. at 842-43. If, however, "the statute is silent or ambiguous," id. at 843, prior to step two, "we must decide how much weight to accord an agency's interpretation," Tualatin Valley Builders Supply, Inc. v. United States, 522 F.3d 937, 940 (9th Cir. 2008); see United States v. Mead Corp., 533 U.S. 218, 227-28, 121 S. Ct. 2164, 150 L. Ed. 2d 292 (2001); N. Cal. River Watch v. Wilcox, 633 F.3d 766, 772-73 (9th Cir. 2010). If we determine that Chevron deference applies, then we move to step two, where we will defer to the agency's interpretation if it is "based on a permissible construction of the statute." Chevron, 467 U.S. at 843.
First, we hold thatin the case.the meaning of "valid existing rights" in § 1133(d)(3) is ambiguous under Chevron step one. Section 1133(d)(3) clearly excepts "valid existing rights" from its mandate that patents should be issued to only the mineral estate; [*890] but what constitutes a "valid existing right[]" is not clear from the text; the term is undefined. See Chevron, 467 U.S. at 842-43. -

**from Sightsound v. Apple, 2015 U.S. App. LEXIS 21640 : -- We need not decide whether Chevron deference applies because the only legal questions regarding application of AIA § 18 to the patents-at-issue were decided by Versata II. SightSound primarily contends that its patents are not CBM patents because to "relate to a financial product or service the invention as a whole must be directed to the management of money, banking, or investment or credit." [*13] Appellant's Br. 30. Versata II foreclosed this interpretation: HN10Go to this Headnote in the case."as a matter of statutory construction, the definition of 'covered business method patent' is not limited to products and services of only the financial industry, or to patents owned by or directly affecting activities of financial institutions." 793 F. 3d at 1325. We explained that the interpretation proposed by SightSound would "require reading limitations into the statute that are not there." Id. Here, the Board concluded that a "financial activity" not directed to money management or banking can constitute a "financial product or service" within the meaning of the statute. J.A. 988; accord J.A. 556. Versata II directly supports this conclusion. --

** from COOPER TECHNOLOGIES COMPANY v. Dudas, 536 F.3d 1330 :

--In this case, the Patent Office has argued that its interpretation of section 4608 in the MPEP and Official Gazette are entitled at least to Skidmore deference, and carry additional weight because they are "longstanding." See Br. for Appellee Jon W. Dudas at 14 (citing Fed. Express Corp. v. Holowecki, 552 U.S. 389, 128 S. Ct. 1147, 1156, 170 L. Ed. 2d 10 (2008); Saxbe v. Bustos, 419 U.S. 65, 74, 95 S. Ct. 272, 42 L. Ed. 2d 231 (1974)) ("Patent Office Br."); see generally Skidmore v. Swift & Co., 323 U.S. 134, 65 S. Ct. 161, 89 L. Ed. 124 (1944). Though the Patent Office does not expressly argue that Chevron applies in this case, it has in other cases claimed that it is entitled to Chevron deference when interpreting statutory provisions relating to the conduct of proceedings in the Patent Office. See Br. for the Appellants at 21, Tafas v. Dudas, No. 2008-1352 (Fed. Cir. July 18, 2008) ("[T]he USPTO is entitled to Chevron deference where, as here, it is engaged in interpreting the scope of its power under Section 2(b)(2) and its other sources of rulemaking authority."); Br. for Amicus Curiae Director of the U.S. Patent & Trademark Office at 22-31, Aristocrat Techs. Austl. PTY Ltd. v. Int'l Game Tech., No. 2008-1016, (Fed. Cir. Dec. 13, 2007) (arguing that Patent Office is entitled to Chevron deference as agency charged with administering statutes in Title 35 concerning revival). Accordingly, we first address whether Chevron deference applies. Cf. Rogers v. Office of Pers. Mgmt., 87 F.3d 471, 475 (Fed. Cir. 1996) ("We are not bound by concessions of law.").

Under 35 U.S.C. § 2, the Patent Office has authority to establish regulations to "govern the conduct of proceedings in the Office." 35 U.S.C. § 2(b)(2)(A); see also Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930 (Fed. Cir. 1991). This is "the broadest of the Office's rulemaking powers" and, "[b]y this grant of power we understand Congress to have 'delegated plenary authority over PTO practice . . .' to the Office." Stevens v. Tamai, 366 F.3d 1325, 1333 (Fed. Cir. 2004) (quoting Gerritsen v. Shirai, 979 F.2d 1524, 1527 n.3 (Fed. Cir. 1992)); see also Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006) ("Under 35 U.S.C. § 2(b)(2), the PTO has broad authority to govern the conduct of proceedings before it . . . ."). To comply with section 2(b)(2)(A), a Patent Office rule must be "procedural"--i.e., it must "govern the conduct of proceedings in the Office." [*1336] In this case, HN8Go to this Headnote in the case.the Patent Office has interpreted a statutory provision--the portion of the AIPA expressly entitled the "Optional Inter Partes Reexamination Procedure Act of 1999"--that created inter partes reexamination and established rules for inter partes reexamination proceedings before the Patent Office. See Pub. L. No. 106-113, § 4601, 113 Stat. at 1501A-567 (emphasis added). The Patent Office's interpretation of section 4608 thus plainly "govern[s] the conduct of proceedings in the Office" within the meaning of § 2(b)(2)(A).
We have also previously held that 35 U.S.C. § 2(b)(2) does not authorize the Patent Office to issue "substantive" rules. See Merck & Co. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996). "A rule is 'substantive' when it 'effects a change in existing law or policy' which 'affect[s] individual rights and obligations.'" Animal Legal Def. Fund, 932 F.2d at 927 (quoting Cubanski v. Heckler, 781 F.2d 1421, 1426 (9th Cir.1986), vacated as moot [***1710] sub nom., Bowen v. Kizer, 485 U.S. 386, 108 S. Ct. 1200, 99 L. Ed. 2d 402 (1988)). "In contrast, a rule which merely clarifies or explains existing law or regulations is 'interpretative." Id. In the case.the Patent Office's interpretation of "original application" does not effect any change in existing law or policy; rather, it is a prospective clarification of ambiguous statutory language regarding a matter of procedure. It is therefore "interpretive"--rather than "substantive"--under the definitions put forward in Animal Legal Defense Fund. We conclude that the Patent Office had the authority under 35 U.S.C. § 2 to interpret section 4608, because that interpretation both governs the conduct of proceedings in the Patent Office, not matters of substantive patent law, and is a prospective clarification of ambiguous statutory language. --

Link to Volokh post:

Friday, February 12, 2016

Lengthy en banc CAFC Lexmark decision maintains status quo on patent exhaustion

The beginning of the en banc opinion reads:

Congress has declared: “Except as otherwise provided
in [the Patent Act], whoever without authority makes,
uses, offers to sell, or sells any patented invention, within
the United States or imports into the United States any
patented invention during the term of the patent therefor,
infringes the patent.” 35 U.S.C. § 271(a); see id. § 154(a)
(granting patentee “right to exclude others” from itemized
actions). The doctrine of patent exhaustion (or “first sale”
doctrine) addresses the circumstances in which a sale of a
patented article (or an article sufficiently embodying a
patent), when the sale is made or authorized by the
patentee, confers on the buyer the “authority” to engage
in acts involving the article, such as resale, that are
infringing acts in the absence of such authority. There is
nothing “otherwise provided” on the issue in the Patent
Act. In that respect, the Patent Act differs from the
Copyright Act, whose infringement, importation, and
exclusive-rights provisions, 17 U.S.C. §§ 501, 602, 106, are
all subject to a separate, overriding statutory provision
that grants owners of certain copyrighted articles a right
to sell those articles “without the authority” of the copyright
holder, id. § 109(a).

In this case, all of the initial sales at issue were made
by the U.S. patentee, rather than by a licensee having
authorization from the patentee. Some of the initial sales
were made domestically, some abroad. All of the domestic
sales, and an unknown portion of the foreign sales, were
accompanied by clearly communicated restrictions on the
buyer’s reuse and resale.

We decided to hear this case en banc to consider
whether two decisions of this court concerning the uncodified
doctrine of patent exhaustion—one decision from
1992, the other from 2001—remain sound in light of later
decisions of the Supreme Court. Today we reaffirm the
principles of our earlier decisions.
First, we adhere to the holding of Mallinckrodt, Inc. v.
Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992), that a
patentee, when selling a patented article subject to a
single-use/no-resale restriction that is lawful and clearly
communicated to the purchaser, does not by that sale give
the buyer, or downstream buyers, the resale/reuse authority
that has been expressly denied. Such resale or reuse,
when contrary to the known, lawful limits on the authority
conferred at the time of the original sale, remains
unauthorized and therefore remains infringing conduct
under the terms of § 271. Under Supreme Court precedent,
a patentee may preserve its § 271 rights through
such restrictions when licensing others to make and sell
patented articles; Mallinckrodt held that there is no
sound legal basis for denying the same ability to the
patentee that makes and sells the articles itself. We find
Mallinckrodt’s principle to remain sound after the Supreme
Court’s decision in Quanta Computer, Inc. v. LG
Electronics, Inc., 553 U.S. 617 (2008), in which the Court
did not have before it or address a patentee sale at all, let
alone one made subject to a restriction, but a sale made
by a separate manufacturer under a patentee-granted
license conferring unrestricted authority to sell.
Second, we adhere to the holding of Jazz Photo Corp.
v. International Trade Comm’n, 264 F.3d 1094 (Fed. Cir.
2001), that a U.S. patentee, merely by selling or authorizing
the sale of a U.S.-patented article abroad, does not
authorize the buyer to import the article and sell and use
it in the United States, which are infringing acts in the
absence of patentee-conferred authority. Jazz Photo’s noexhaustion
ruling recognizes that foreign markets under
foreign sovereign control are not equivalent to the U.S.
markets under U.S. control in which a U.S. patentee’s
sale presumptively exhausts its rights in the article sold.
A buyer may still rely on a foreign sale as a defense to
infringement, but only by establishing an express or
implied license—a defense separate from exhaustion, as
Quanta holds—based on patentee communications or
other circumstances of the sale. We conclude that Jazz
Photo’s no-exhaustion principle remains sound after the
Supreme Court’s decision in Kirtsaeng v. John Wiley &
Sons, Inc., 133 S. Ct. 1351 (2013), in which the Court did
not address patent law or whether a foreign sale should
be viewed as conferring authority to engage in otherwiseinfringing
domestic acts. Kirtsaeng is a copyright case
holding that 17 U.S.C. § 109(a) entitles owners of copyrighted
articles to take certain acts “without the authority”
of the copyright holder. There is no counterpart to
that provision in the Patent Act, under which a foreign
sale is properly treated as neither conclusively nor even
presumptively exhausting the U.S. patentee’s rights in
the United States.

The issue:

The litigation progressed to the point at which no defendant
remained except Impression, and only the single
count of infringement remained against Impression.
Impression came to agree that the patents covered the
cartridges it was importing and selling, and it did not
dispute the validity or enforceability of the patents. It
contested liability for infringement on just one ground,
namely, that Lexmark had exhausted its U.S. patent
rights in the cartridges by its initial sales of them.

Impression presented its exhaustion defense by filing
motions to dismiss the infringement count, one motion for
each of the two groups of cartridges at issue. For each
motion, Impression did not contest that, under this court’s
governing law, its exhaustion defense must fail: Mallinckrodt
for the cartridges initially sold in the United States,
Jazz Photo for the cartridges initially sold abroad. But it
argued that the Supreme Court’s more recent decisions
had made Mallinckrodt and Jazz Photo no longer good
law. In a pair of opinions issued the same day, the district
court agreed with Impression about Mallinckrodt but
disagreed about Jazz Photo.

The the district court

Despite that recognition of what Quanta involved, the
district court concluded “that Quanta overruled Mallinckrodt
sub silentio.” Id. at *5, *6. Although Return Program
cartridges were sold under post-sale restrictions on
reuse and resale, the district court held that “those postsale
use restrictions do not prevent patent rights from
being exhausted given that the initial sales were authorized
and unrestricted.” Id. The court thus dismissed the
infringement claim regarding Impression’s actions involving
Return Program cartridges Lexmark had sold in the
United States. Id. at *7.

As to cartridges Lexmark had sold abroad, the court
held that exhaustion did not apply, i.e., did not render
Impression’s imports and domestic resales of those cartridges
non-infringing. (...)

The court recognized, and Impression
did not dispute, that “under Jazz Photo, an
initial authorized sale of a patented product outside of the
United States would not exhaust the patent rights of the
patent holder.” Id. at 833. It then examined the Supreme
Court’s decision in Kirtsaeng and rejected Impression’s
contention that Kirtsaeng “overturns the Federal Circuit’s
decision in Jazz Photo, 264 F.3d 1094, such that
Lexmark’s patent rights were exhausted upon the first
authorized sale abroad.” Foreign Sale Opinion, 9 F. Supp.
3d at 834 (footnote omitted).
The court stated that “[t]he Supreme Court’s decision
was rooted in interpretation of a statutory provision of
copyright law,” namely, 17 U.S.C. § 109(a). Foreign Sale
Opinion, 9 F. Supp. 3d at 833. The district court noted
the absence from Kirtsaeng of any discussion of exhaustion
in the patent field and the Supreme Court’s
longstanding recognition that copyright law and patent
law are not interchangeable. Id. at 835 (citing BobbsMerrill
Co. v. Straus, 210 U.S. 339, 346 (1908)). I

Within the CAFC decision:

The requirement of “authority” in order to avoid infringement,
in its natural meaning, refers to a grant of
permission. Logically, permission might come from
Congress, whether outside the Patent Act or within the
Patent Act itself, as reflected in § 271(a)’s “[e]xcept as
otherwise provided in [the Patent Act]” language, which
explicitly bows to other contrary sections of the Patent
Act. But it is undisputed that no other statutory provision
applies in this case. See U.S. Br. 5; compare 35
U.S.C. § 262 (each joint owner of a patent may engage in
making, using, selling, offering to sell, and importing
without authority from other owners). Nothing in the Act
supersedes the § 271 requirement of authority from the
patentee before a person in Impression’s position may
engage in the itemized acts without infringing.
In this respect, the Patent Act differs from the Copyright
Act. In the copyright statute, Congress included a
provision giving a right of sale to certain article owners,
17 U.S.C. § 109(a), and made the infringement, importation,
and exclusive-rights provisions all subservient to
that express guarantee.4

General Talking Pictures is cited

Most importantly, the Court squarely held in the General
Talking Pictures case that a patentee could preserve
its infringement rights against unauthorized uses by
restricting manufacturing licensees’ authority to sell for
such uses. General Talking Pictures Corp. v. Western
Elec. Co., 304 U.S. 175, opinion on rehearing at 305 U.S.
124 (1938). Companies holding patent rights in certain
amplifiers (AT&T, Western Electric, RCA) licensed the
American Transformer Company to make and sell amplifiers.
The Transformer Company “was a mere licensee
under a nonexclusive license, amounting to no more than
‘a mere waiver of the right to sue.’” 304 U.S. at 181
(quoting De Forest Radio Telephone & Telegraph Co. v.
United States, 273 U.S. 236, 242 (1927)). The license
permitted sales only “for radio amateur reception, radio
experimental reception, and home broadcast reception,”
not “for use in theaters as a part of talking picture equipment.”
Id. at 180. The Transformer Company nevertheless
sold amplifiers to General Talking Pictures for
theater use in violation of the restriction, and General
Talking Pictures “had actual knowledge that [the Transformer
Company] had no license to make such a sale.” Id.
When the patentees sued General Talking Pictures (the
buyer) for infringement, the Supreme Court, based on
Mitchell, affirmed the judgment of infringement. Id. at


A patentee exercises its congressionally granted
rights only when it invokes its power to exclude others,
not when it sells its product. Similarly, the congressionally
granted right to exclude may be viewed as being shared
by certain exclusive licensees, who, in appropriate circumstances
(e.g., with joinder of the patent owner), may bring
infringement actions against others to enforce exclusivity.
See Independent Wireless, 269 U.S. at 464–69 (discussing
cases); 8 Chisum § 21.03[2]. But an exclusive licensee, in
merely selling (or making, using, etc.) a patented article,
is not exercising any power conferred by the patent statute.
That is a fortiori true of a non-exclusive licensee, like
the licensee in General Talking Pictures, which has no
exclusivity protections at all. Thus, although the government’s
assertion that “licensees stand in patentees’
shoes” in sharing certain patent-granted rights is true in
a significant respect as to exclusive licensees, U.S. Br. 8, it
is not true as to non-exclusive licensees—like the licensee
in General Talking Pictures. Accordingly, a patentee’s
ability to preserve its patent rights (rights to exclude) by
arranging for sales to be made by a non-exclusive licensee,
like the Transformer Company, cannot rest on a
premise that “licensees exercise a portion of the patentee’s
rights.” U.S. Br. 8

The Goodyear rubber patents arise in footnote 10:

In Chaffee, which involved Goodyear’s rubber patents,
the Supreme Court rejected the defendants’ invocation
of the Bloomer principle, again in a term-extension
context, explaining that there was no evidence that the
defendants had ever received any authority to practice the
patented invention. 63 U.S. (22 How.) at 222–24.

Light bulbs also arise

In United States v. General Electric Co., 272 U.S. 476
(1926), the Supreme Court rejected the government’s
antitrust challenge to (among other things) General
Electric’s licensing of Westinghouse to make and sell
patented lamps under terms controlling resale prices. See
Fed. Trade Comm’n v. Actavis, Inc., 133 S. Ct. 2223, 2232
(2013) (describing General Electric). In making a general
point about patentee sales (not involved in the case), the
Court said: “It is well settled, as already said, that where
a patentee makes the patented article, and sells it, he can
exercise no future control over what the purchaser may
wish to do with the article after his purchase. It has
passed beyond the scope of the patentee’s rights.” 272
U.S. at 489 (citing cases). We read that language to deem
“settled” only what was settled in the cited precedents—a
patentee’s sales without restrictions exhaust patent rights
in the item sold. The cited cases are Adams, Bloomer v.
McQuewan, Hobbie, Keeler, and Mitchell. They do not go
beyond that proposition.


Thursday, February 11, 2016

CAFC tackles IPR amendments in Nike v. Adidas

The outcome:

This appeal arises from the inter partes review (IPR) of U.S. Patent No. 7,347,011 (the ’011 patent) owned by Nike, Inc. (Nike). The United States Patent and Trademark Office, Patent Trial and Appeal Board (Board) granted the IPR petition filed by adidas AG (Adidas) and instituted inter partes review of claims 1–46 of the ’011 patent. Nike then filed a motion to amend in which it requested cancellation of claims 1–46 and proposed substitute claims 47–50. The Board granted Nike’s motion to cancel claims 1–46, but denied the motion as to the substitute claims because Nike failed to meet its burden of establishing patentability of substitute claims 47–50. Nike now appeals the Board’s denial of its motion to amend, and the Director of the United States Patent and Trademark Office (Director) intervened to defend the Board’s decision. For the reasons stated below, we affirmin-part, vacate-in-part, and remand for further proceedings consistent with this opinion.

An issue here is amendments during an IPR:

Particularly relevant to this case is § 316(a)(9), in which Congress delegated authority to the PTO to prescribe regulations “setting forth standards and procedures for allowing the patent owner to move to amend the patent under [§ 316](d) to cancel a challenged claim or propose a reasonable number of substitute claims.” Id. § 316(a)(9); see also id. § 316(d)(1) (“During an inter partes review . . . , the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim. (B) For each challenged claim, propose a reasonable number of substitute claims.”). Consistent with § 316(a)(9), the PTO promulgated a regulation relating to motions practice, 37 C.F.R. § 42.20, which explains that “[r]elief, other than a petition requesting the institution of a trial, must be requested in the form of a motion” and that “[t]he moving party has the burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(a), (c). The Board addressed these regulations in its Idle Free “informative” decision in which it interpreted section 42.20(c) and explained that “[t]he burden is not on the petitioner to show unpatentability [of new, substitute claims], but on the patent owner to show patentable distinction over the prior art.” Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027, 2013 WL 5947697, at *4 (PTAB June 11, 2013);

But the CAFC was not swayed from its previous course:

For these reasons, Nike’s attempt to undo our conclusion in Proxyconn—that the PTO may impose the burden of establishing the patentability of proposed substitute claims on the patent owner—is not persuasive. (...)

Our precedent recognizes that § 316(a)(9) instructed the PTO to promulgate a regulation setting forth the standard for motions to amend a patent that might be filed as part of an IPR proceeding. The PTO did just that in 37 C.F.R. § 42.20(c) and, as we held in Proxyconn, the Board permissibly interpreted this regulation as imposing the burden of proving patentability of a proposed substitute claim on the movant: the patent owner. Section 316(e), on the other hand, speaks to a different context. Section 316(e) places the burden on the petitioner to prove unpatentability of any issued claim for which the Board has instituted review and requires that the petitioner carry this burden by a preponderance of the evidence. Thus, the Board did not err by placing the burden on Nike to establish patentability over the prior art of Nike’s proposed substitute claims.

Yes, KSR is cited in the obviousness analysis:

In KSR, the Supreme Court instructed that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” 550 U.S. at 420

Footnote 2 shows that Nike is getting a remand relating to secondary considerations:

we must remand for reconsideration of obviousness in light of Nike’s evidence of secondary considerations. As such, it may be appropriate for the Board to consider the passage of time in connection with Nike’s secondary considerations evidence on remand.

In re Kao is cited: In fact, we have expressly stated that “when secondary considerations are present . . . it is error not to consider them.” In re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011)


our precedent dictates that the Board is bound to fully consider properly presented evidence on the long-felt need for a claimed invention. Recognizing that the Board operates under stringent time constraints, we do not hold that it is obliged to explicitly address conclusory and unsupported arguments raised by a litigant. Cf. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1296 (Fed. Cir. 2009) (holding that a party cannot preserve an argument if it presents “only a skeletal or undeveloped argument to the trial court”). Under the particular circumstances presented here, however, we conclude that the Board should have explicitly acknowledged and evaluated Nike’s secondary considerations evidence.

As to claim grouping:

We agree with Nike that, despite correctly reciting the Idle Free standard that multiple substitute claims are permissible if they are patentably distinct from each other, the Board nevertheless did not engage in any such analysis comparing proposed substitute claims 48 and 49. Thus, the Board’s decision to group substitute claims 48 and 49 together, meaning that claim 49 would stand and fall with claim 48, is not consistent with the rule set out by the Board in Idle Free. The Board has not provided a supported basis for grouping the two claims together in this manner. We must therefore remand for a proper determination of how these claims should be treated per the standard set forth in Idle Free, and, if necessary, a full consideration of the patentability of each.

An IPBiz favorite, Nelson v. Adams, is cited:

Adidas seems to imply that Nike insufficiently preserved the argument by raising it only in its motion to amend and not in its reply brief. An issue is preserved for appeal, however, so long as it can be said that the tribunal was “‘fairly put on notice as to the substance of the issue.’” Consolidation Coal Co. v. United States, 351 F.3d 1374, 1378 (Fed. Cir. 2003) (quoting Nelson v. Adams USA, Inc., 529 U.S. 460, 469 (2000)). Nike raised this argument in its motion to amend and supported the argument with its expert declaration. This was sufficient to put the Board on notice that Nike was asserting the “apertures formed by omitting stitches . . . and . . . for receiving laces” limitation as a patentable distinction. We therefore cannot agree with Adidas that Nike has waived its arguments relating to the patentability of claim 49.

Of negative claim limitations:

Even if we assume, as the Board did, that this claim limitation is a negative limitation, Adidas is incorrect that any sort of heightened standard applies. “Negative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Id. at 1351. We recently explained in Inphi that, contrary to Adidas’s argument, Santarus did not create a heightened standard for written description support of negative limitations. Inphi, 805 F.3d at 1356. We further explained that “[w]hen viewed in its proper context, Santarus simply reflects the fact that the specification need only satisfy the requirements of § 112, paragraph 1 as described in this court’s existing jurisprudence.” Id. (citing MPEP § 2173.05(i) (“If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.”)). Thus, we need only consider whether the disclosures of the ’011 patent, using the customary standard for the written description requirement, allow persons of ordinary skill in the art to recognize that the inventor invented a flat-knit textile with flat-knit edges that are knit to shape rather than being cut from a larger textile web.


After the Board’s decision in this case, the Board issued MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, 2015 WL 4383224 (PTAB July 15, 2015), which has been designated by the PTO as a Representative Decision on Motions to Amend. See Standard Operating Procedure 2, at 3 (¶ IV.A–B) (explaining that Board decisions labeled “representative” are “not binding authority,” but provide “a representative sample of outcomes on a matter”). In MasterImage 3D, the Board “ma[d]e three points of clarification regarding” Idle Free’s requirement that the patent owner show that its proposed substitute claims are patentable over the prior art of record and also other prior art known to the patent owner. Importantly, the Board explained that “[t]he reference to ‘prior art known to the patent owner’ . . . in Idle Free, should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of the Motion to Amend.” MasterImage 3D, Slip. Op. at 3. At oral argument in the present case, the PTO confirmed this characterization of MasterImage 3D. See Oral Argument at 29:13–29:22 available at (“[MasterImage] is not a change of Idle Free, it’s more of a clarification of Idle Free.”). The PTO further explained that, although the Board’s denial of Nike’s motion to amend was based on a reasonable reading of Idle Free, given the clarification in MasterImage 3D, the PTO acknowledged that the Board “read Idle Free too aggressively in this decision.” Id. at 29:23–30:01. We agree with the PTO. At the heart of Idle Free, as interpreted by MasterImage 3D, is the question of whether the patent owner has submitted the necessary information to comply with its duty of candor to the office. In this case, there is not, and there has never been, an allegation that Nike violated its duty of candor. Moreover, the PTO acknowledged that Nike’s statement about the substitute claims’ patentability over prior art not of record but known to Nike would satisfy the obligation as explained in MasterImage 3D. Id. at 35:50–36:06. After MasterImage’s explanation of Idle Free, we cannot see how the statement used by Nike would be inadequate, absent an allegation of conduct violating the duty of candor. We therefore conclude that this was an improper ground on which to deny Nike’s motion to amend.