Saturday, October 29, 2016

The connection of the early aircraft industry to Lee Harvey Oswald

In 1914, Lawrence Dale Bell had been shop foreman for the Glenn L. Martin Company. In 1916, the Martin Company merged with the Wright Company to form Wright-Martin. Wright-Martin competed with the Curtiss Company for government contracts. One of the last projects of the Curtiss Company was the Curtiss-Bleecker Helicopter, work for which was abandoned in 1933. Lawrence Dale Bell founded Bell Aircraft in 1935.

In 1941, Arthur Middleton Young was issued the key rotor stabilizer bar patent, assigned it to Bell and moved to Buffalo to work with them.

The first claim of US Patent 2,256.635:

In an aircraft, a bladed rotor, a rotor support, means for mounting said rotor for rotation on said support and for universal inclination of the plane of the rotor relative to the rotor support, and means for adjusting the aerodynamic incidence of the blades individually including means for controlling the aerodynamic incidence of a given blade by the change in inclination of the blade ahead of it relative ,to the rotor support.
Note also US 2,256,918.

In 1948, Young married Ruth Forbes Paine, and thereby became step-father to Michael Paine (then 20 years old).

Bell Aircraft Corporation created a Helicopter Division which moved to Fort Worth, Texas in 1951 and became Bell Helicopter Corporation.

Around 1958, Michael Paine became the husband of Ruth Hyde (Paine), and Michael Paine joined Bell Helicopter in 1958 and was employed there in 1963. Prior to joining Bell Helicopter, Michael Paine worked directly for Young.

Ruth Hyde Paine was housing Marina Oswald at the time of the Kennedy assassination. The famous picture of Lee Harvey Oswald holding a rifle was found in the Paine's garage.

**Of relevance to the recent action of the current FBI director (James Comey), Congressman Ron DeSantis observed:

"Had Comey not done this and something happened after she was potentially elected president, then he would have had a lot to answer for in Congress," he said. "I think it's unprecedented to have something this close to the election, but at the same time I think the American people just need to know kind of where the FBI is."


Back in 1963, the FBI was monitoring Lee Harvey Oswald, but the extent of "what happened" was withheld from the Warren Report. In March 1963, Agent James P. Hosty was ordered to keep Oswald under observation. Hosty visited the Paine house and talked to Marina. Lee Harvey Oswald went to the FBI office and asked to see Hosty. All of this was concealed from the Warren Commission.

Apart from the issue that the FBI knew about Oswald being in Dallas more than six months before the assassination in November 1963, the humor was that Hosty was trying to find out from Marina where Lee Harvey was, which caused Lee Harvey to march into the Dallas FBI headquarters and leave a note for Hosty. Hosty would come face to face with Oswald after the assassination of Kennedy and before Oswald's death.

Friday, October 28, 2016

CAFC discusses Nautilus "zone of uncertainty" in GE case; '999 patent survives

From the case:

As the district court recognized, “[t]he claims, specification
and prosecution history demonstrate[] that any
amount of heat transfer is sufficient for ‘heat sink (verb).’”
J.A. 25–26 (emphasis added). And that is true even if a
lamp’s design seeks to minimize heat transfer. J.A. 27
(“[A]s [heat sinking] is used in the ’999 Patent, an object
that is shielded from receiving heat is still ‘heat sinking.’”).
Thus, whether a component heat sinks another
component is an objectively defined fact: either heat is
transferred between the components and heat sink, or it
is not. Because “to heat sink” creates no “zone of uncertainty,”
see Nautilus, 134 S. Ct. at 2129, we conclude that
the asserted claims of the ’999 patent are not indefinite.3

Monday, October 24, 2016

Bloomberg quotes former judge Davis on ED Texas and the "troll problem"

Although the Reuters article on Spears / Timberlake spoke disparagingly of ED Texas, note the text
at Bloomberg published about at the same time:

“The district has been the poster child for the ‘troll problem,”’ said retired
District Judge Leonard Davis, who served there from 2002 to 2015 and thinks
the criticism is unfair. “I think the ‘troll problem” would exist
even if we weren’t around. We’re trying to solve it and I think we’re making good progress.”

Note also

The number of patent lawsuits nationwide -- and in Texas -- is down this year,
according to analyst firm Lex Machina. Of the 3,376 lawsuits filed in the
first nine months, 35.4 percent were filed in the Eastern District,
compared to 43 percent of all new complaints a year ago.


CAFC vacates award of attorneys fees in Large Audience Display

The CAFC noted in vacating a decision by CD Cal awarding
attorneys fees against Large Audience Display:

the circumstances upon
which a district court relies must actually exist, and
findings that such circumstances do exist must be justified
by the record. Here, many of the “circumstances”
deemed dispositive by the district court, including but not
limited to those noted, supra, either did not occur or were
given undue weight. Thus, we must vacate the trial
court’s finding of exceptionality and award of fees and
costs under § 285. On remand, the district court shall
reconsider whether this case was exceptional. The district
court may properly consider the totality of the circumstances
in making its determination, including
LADS’s use of the Langsam email to oppose Appellees’
motion for attorney’s fees, its opposition to the motion to
transfer venue to the Central District of California, and
the objective reasonableness of LADS’s claims given the
standards and burdens that apply in district court, including
the reasonableness of LADS’s proposed claim constructions.
3 But the district court must assure both that
the circumstances on which it relies are accurate and that
the court affords only the appropriate measure of weight
to each.

Reuters reported on the connection to Spears and Timberlake:

A federal appeals court has vacated a $750,000 attorneys' fee award to performers
Britney Spears and Justin Timberlake after their successful defense of a
patent-infringement lawsuit, saying the award was improperly based in part
on the fact that the plaintiff was a shell corporation headquartered in the
patent-plaintiff-friendly Eastern District of Texas


Sunday, October 23, 2016

Ontario College of Teachers begins review of Spence plagiarism matter

IPBiz covered the Toronto / Spence plagiarism matter in 2013,
(see ). On October 21, 2016 the Toronto Sun ran a blistering followup in the post Ex top educator accused of plagiarism liked to be in Star

The piece in the Sun suggests the UToronto Ph.D. of Spence is now under review:

It wasn’t just a few words here or there, mistakenly ingested while rummaging through old research and then innocently repeated. This was someone with a U of T doctorate in education — that, too, is now under review — who blatantly copied other people’s phrasing over and over again.

One notes that it was merely a reader, not an academic, who first flagged Spence's plagiarism problem:

The newspaper’s public editor called Bird to let him know a reader had complained Spence’s piece had large sections copied from others, including the New York Times. Had he ever questioned Spence’s sources? “He has a doctorate and he was a published author. I wouldn’t think to ask him about sources,” Bird told the hearing.

As to "what happened after the plagiarism," Spence is alive and well in Chicago:

No wonder he didn’t show up. Spence — who now works as Chicago’s head of Social Services-Family Matters — betrayed the trust of students, colleagues and parents. If found guilty of professional misconduct, the serial plagiarizer should lose his licence to teach.

One recalls that Joe Biden, who was caught plagiarizing at Syracuse Law, went on to become Vice-President.

CBS Sunday Morning on 23 October 2016: treating genetic based diseases

Martha Teichner did the cover story Fighting genetic disease with help from HIV virus, which highlighted the work of Dr. Alessandra Biffi, who is now the leader of the gene therapy program at Dana-Farber/Boston Children’s Cancer and Blood Disorders Center. The big take home message of the piece: "So far, not a single gene replacement therapy has been approved by the FDA."

Other stories Jim Axelrod on Phil Collins, receding glaciers at Glacier National Park in Montana, Lee Cowan on the "Seven Magic Mountains" off I-15 near Las Vegas, Anthony Mason on lawyer John Gresham, Mo Rocca on Maureen Dowd.

Almanac was the first plastic surgery on October 23, 1814.

There was a "buzzword" feature on the word "pivot."

Moment of nature was on the White Mountain National Forest in New Hampshire.

"Seven Magic Mountains" was created by Ugo Rondinone. It is about 10 miles south of Las Vegas, near Jean Dry Lake. Earlier, near Jean Dry Lake, there was "Rift," the first of a 530-mile-long series of sculptures Michael Heizer dubbed "Nine Nevada Depressions." Related to "Sunday Morning's" previous discussion of bumper stickers, Magic Mountain uses Day-Glo colors [The Day-Glo colors — brilliant pinks, deep blues and bright greens, eye-searing yellow-orange, Silver State silver, black and white — from review-journal]

Of gene therapy, a paper by Kaufmann et al. [ EMBO Mol Med. 2013 Nov; 5(11): 1642–1661 ] notes

China was the first country to introduce a gene based-drug (Gendicine®), into the market in 2004. Gendicine is an adenovirus-p53 based gene therapeutic approved for the treatment of patients with head and neck squamous cell carcinoma (Wilson, 2005). With more than 10,000 treated patients no overt adverse side effects have been reported for Gendicine®. However, the therapeutic efficacy of this drug is still controversial (Sheridan, 2011; Shi & Zheng, 2009). In Europe, alipogene tiparvovec (also known as Glybera®) was approved for the treatment of familial lipoprotein lipase deficiency (LPLD) at the end of 2012, and thus, was the first commercially available gene therapeutic product in the Western world (Büning, 2013; Miller, 2012; Ylä-Herttuala, 2012). The marketing authorization for Glybera® clearly represents a milestone in the development of gene therapy as an accessible therapeutic option for LPLD patients. The Glybera® example also revealed the multiple layers of complexity that have to be solved before a drug-based product reaches the market. In addition to patent issues, the costs for adequate production of the advanced therapy medicinal product (ATMP) according to good-manufacturing practice (GMP) requirements are enormous. Moreover, costly and extensive pharmacology and toxicology studies have to be conducted in the absence of clearly defined standards, even in cases where very similar vector backbones are used. In addition, the review process and eventual authorization by the respective agencies adds another layer of complexity as exemplified by the hurdles encountered during the review process for Glybera® (as reviewed elsewhere (Bryant et al, 2013)). Thus, there are still multiple issues to be addressed in gene therapy before gene-based products enter routine clinical application to provide safe and affordable therapeutic drugs for otherwise non-treatable overt and chronic diseases.

Kaufmann cites a paper by Biffi: Biffi A, Montini E, Lorioli L, Cesani M, Fumagalli F, Plati T, Baldoli C, Martino S, Calabria A, Canale S, et al. Lentiviral hematopoietic stem cell gene therapy benefits metachromatic leukodystrophy. Science. 2013;341:1233158

In passing, a claim from US Patent 8957044 , related to gene-based therapy:

A method of treating a an X-linked myotubular myopathy (XLMTM) in a mammal in need thereof, the method comprising systemically administering to the mammal a composition that increases expression of myotubularin in a muscle of mammal, wherein the composition comprises an adeno-associated viral (AAV) vector comprising a nucleic acid sequence encoding the myotubularin gene (MTM 1) operably linked to a muscle specific promoter, further wherein the function of the diaphragm of the mammal is improved, as compared to the diaphragm of the mammal in the absence of administration of the composition, wherein strength is increased in the muscle.

Friday, October 21, 2016

Can an individual, unaffiliated scientist have ground-breaking ideas? Television shows say "yes".

In an earlier post, IPBiz discussed the "Callisto" episode of the CBS show "Bull," the plot of which involved a case of alleged patent infringement. Although many of the legal details were a bit sketchy, the accused infringer was an individual scientist who "improved upon" an invention disclosed in an issued US patent. Whether or not the work of the accused infringer fell within the scope of an issued claim was not discussed.

However, the idea of work of an individual (unaffiliated) scientist being of interest appeared in 1963 in an early episode of "The Avengers" titled "The Golden Eggs," with Patrick Macnee and Honor Blackman. In the initial scene in Steed's apartment, Steed (Macnee) notes to Gale (Blackman) that the scientist (Ashe) had his own lab and rarely published results. Although the scientist did not publish, someone had broken into the scientist's lab. The viewing audience knows the scientist was attacked and some eggs were taken, although a newspaper account available to Steed says nothing was taken. Gale tries to get more information from the scientist by posing as a reporter for 'Galileo,' trying a personal approach to science, seeking to know what scientists are thinking and who they are instead of just what they're doing. The scientist tells her it's a 'frightful idea' - scientists are boring, narrow-minded and self-opinionated. [We learn later that the eggs contain a virus, Verity Prime, a sample of which Ashe obtained from a colleague at a conference years earlier. The virus itself was not the invention.]

The theft was orchestrated by a criminal (character Redfern) who paid a lower level criminal ( DeLeon ) to steal the eggs, based on information obtained by bribing Ashe's assistant (Diana).

An interesting exchange: Ashe shows Gale some of his research and laughs at Gale's suggestion that he turn it over to the government.

An interesting twist in the ending. Ashe destroys his research and when Gale tries to return the eggs, Ashe says he won't be needing them anymore.

Returning to "Callisto," there was not much discussion of how an individual unaffiliated scientist could accomplish so much, and there was a suggestion of access to the patentee's work. The accused copyist in "Callisto" was working for the greater good, but the thief in "The Golden Eggs" was working for personal gain (what motivated Ashe was not clear). Neither the scientist/copyist in "Callisto" nor the scientist in "The Golden Eggs" disclosed publicly the results of the work, clearly lost in the case of "The Golden Eggs." The idea of disclosing the work in "The Golden Eggs" to the government was considered laughable, but the scientist/copyist in "Callisto" kept the information as a trade secret.

A link for "The Golden Eggs":

**Another 1963 episode of "The Avengers" titled "The Undertakers" contained the following text:

John Steed: Now the inventor's royalties alone could amount to, wow, a million pounds!
Mrs. Renter: But I already have a million.
John Steed: I'm sure another one wouldn't be in the way, huh?
Mrs. Renter: Well, I'm not so sure. What with death duties, being rich hardly seems worthwhile.

Thursday, October 20, 2016

The CAFC discusses 35 U.S.C. § 314(d) in Medtronic v. Bosch: institution decisions still final and nonappealable

The bottom line outcome was "final and nonappealable" even after Cuozzo:

The original panel decision, following our decision in
GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir.
2015), held that a determination by the Patent Trial and
Appeal Board (“Board”) to discontinue inter partes review
proceedings was not reviewable on appeal under 35
U.S.C. § 314(d). The question is whether that decision is
correct in light of the Supreme Court’s decision in Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
which issued after our panel decision.
We now reaffirm our earlier order. The Board’s vacatur
of its institution decisions and termination of the
proceedings constitute decisions whether to institute inter
partes review and are therefore “final and nonappealable”
under § 314(d). Nothing in Cuozzo is to the contrary.

The problem here was NOT naming the real party in interest:

Thereafter the Board granted-in-part Bosch’s motions
seeking additional discovery regarding Cardiocom’s status
as a real party in interest. Based on that discovery, Bosch
moved to terminate the proceedings because Medtronic
had failed to name all real parties in interest.1 The Board
granted Bosch’s motions, “persuaded [by the collective
evidence] that Medtronic [was] acting as a proxy for
Cardiocom,” J.A. 35, including evidence that Cardiocom
was the defendant in district court infringement suits
concerning the two patents, that Cardiocom had previously
filed its own petitions for inter partes review, that
Cardiocom’s senior executives communicated with Medtronic
while Medtronic’s petitions were being prepared,
and that Cardiocom paid a portion of the fees for preparing
Medtronic’s petitions. The Board vacated the institution
decisions and terminated the proceedings because of
Medtronic’s failure to comply with the requirement that
all real parties in interest be disclosed.

Footnote 1:

If Cardiocom were a real party in interest, the petition
would be time-barred under 35 U.S.C. § 315(b).

Tuesday, October 18, 2016

"Callisto" episode of CBS show "Bull" does patent law, sort of, on 18 October 2016

The technology at issue in a small Texas town involves blood clotting. The patentee Windermere is suing a woman who furthered his research and Bull and team are working defense. The case seems to be in state court (municipal court) and the voir dire is informal. Two tornado alerts occur during the proceedings, one of which is real and one of which is staged by the Bull team.

Early on, there is talk of the patent being "obvious," and the patent for the pop-up toaster is referenced.

Later, when the plaintiff's attorney asks defendant what defendant has done, the defendant invokes trade secret.

The defense shifts to the "apple strudel" defense. A million ways to combine the ingredients but only one works like that in the local eatery.

Then, during the fake tornado alert, plaintiff and defendant end up in the same basement room, and defendant explains what she has done to the plaintiff. Back upstairs, the plaintiff drops the suit.

For trivia people, the patent number is mentioned, something like 8 117 293, but maybe one needs to listen again.

[from -- Okay. And Mr. Windemere's drug, recognized by United States patent number 6-B 117293, dated August 11, 1999, counteracts this process. It does. His synthetic clotting factor, under certain circumstances, increases the efficacy of coagulation. Diana: Ms. Ketchum's product utilizes the same factor? Yes. So they're the same.--

One notes US patent 6117293, titled Method for producing hydrophilic monomers and uses thereof , was issued Sep 12, 2000.

link: ]

Not a good presentation of how patent litigation works, but some interesting views about how tv writers view patent law.

Patent applicant CONSTANTIN EFTHYMIOPOULOS loses at CAFC, but Judge Newman dissents

The ’141 application of CONSTANTIN EFTHYMIOPOULOS relates
to methods of treating or
preventing influenza by administering the drug
zanamivir1 by oral inhalation.

Judge Newman's dissent in In re EFTHYMIOPOULOS concludes:

It was undisputed that, at the time of this invention,
it was believed that the influenza virus infected primarily
the upper respiratory tract, that is, the nasal passages. It
was undisputed that there was not a reasonable expectation
that administration to the lower respiratory tract by
oral inhalation would be effective. The Von Itzstein
references do not show or suggest oral inhalation, either
for zanamivir or for any related compounds. The Board’s
statement that inhalation is “reasonably understood” to
include oral inhalation, PTAB Op. 12, is without authority.
There was no record showing or supporting such an
understanding. There was no suggestion or hint in any
reference that treatment by oral inhalation would have a
reasonable expectation of success.

This mode of therapy is taught only by this inventor.
There was not substantial evidence to support the Board’s
ruling of obviousness. From the court’s flawed analysis
and unsupported conclusion
, I respectfully dissent.

Of expert opinion:

Hayden, who discussed a large international study in which
he participated, and concluded that the “effectiveness of
orally inhaled zanamivir as compared with nasal administration
. . . could be considered an unexpected result”:
In part because uncertainties existed regarding
the transmission and pathogenesis of influenza as
of the effective filing date of the present application,
it was unclear whether oral inhalation of
zanamivir with the dry powder inhaler device utilized
in the studies would be clinically effective
alone for prevention or treatment of naturally occurring
uncomplicated influenza. In view of this
uncertainty, the clinical effectiveness of orally inhaled
zanamivir as compared to nasal administration
for prevention of naturally occurring
uncomplicated influenza above could be considered
an unexpected result. Similarly, the effectiveness
of orally inhaled zanamivir without
intranasal zanamivir for treatment of naturally
occurring uncomplicated influenza alone could be
considered an unexpected result.

Monday, October 17, 2016

Should computers be considered inventors under US Patent Law?

Here is an interesting law review article: Ryan Abbott. I Think, Therefore I Invent: Creative Computers and the Future of Patent Law. Boston College Law Review, 57 B.C.L. Rev. 1079 (2016)
which contains within the abstract-->

this Article argues that creative computers should be considered inventors under the Patent and Copyright Clause of the Constitution. Treating nonhumans as inventors would incentivize the creation of intellectual property by encouraging the development of creative computers. This Article also addresses a host of challenges that would result from computer inventorship, including the ownership of computer-based inventions, the displacement of human inventors, and the need for consumer protection policies. This analysis applies broadly to nonhuman creators of intellectual property, and explains why the Copyright Office came to the wrong conclusion with its Human Authorship Requirement. Finally, this Article addresses how computer inventorship provides insight into other areas of patent law. For instance, computers could replace the hypothetical skilled person that courts use to judge inventiveness. Creative computers may require a rethinking of the baseline standard for inventiveness, and potentially of the entire patent system.


CAFC affirms ND Cal; Synopsys loses 35 USC 101 case

From the opinion:

Synopsys, Inc. appeals the District Court for the
Northern District of California’s grant of summary judgment
invalidating certain claims of U.S. Patent Nos.
5,530,841; 5,680,318; and 5,748,488 (collectively, the
Gregory Patents) under 35 U.S.C. § 101. See Synopsys,
Inc. v. Mentor Graphics Corp., 78 F. Supp. 3d 958 (N.D.
Cal. 2015) (Summary Judgment Order). Synopsys argues
that, contrary to the district court’s holding, the Gregory
Patents are not directed to ineligible subject matter
because they relate to complex algorithms used in computer-
based synthesis of logic circuits. We disagree. A
review of the actual claims at issue shows that they are
directed to the abstract idea of translating a functional
description of a logic circuit into a hardware component
description of the logic circuit.1 This idea of reviewing a
description of certain functions and turning it into a
representation of the logic component that performs those
functions can be—and, indeed, was—performed mentally
or by pencil and paper by one of ordinary skill in the
art. Moreover, the claims do not call for the involvement
of a computer. They therefore cannot be characterized as
an improvement in a computer as a tool. The claims add
nothing to the abstract idea that rises to the level of an
“inventive concept” as required by precedent. We therefore
affirm the district court’s grant of summary judgment
of invalidity.

From the procedural history:

The parties subsequently cross-moved for summary
judgment on Mentor Graphics’ defense that the Gregory
Patents were invalid under 35 U.S.C. § 101. The court
granted Mentor Graphics’ motion and invalidated all
asserted claims of the Gregory Patents. See Summary
Judgment Order, 78 F. Supp. 3d at 966. In reaching its
decision, the court applied the now common two-step test
described by the Supreme Court in Alice Corp. v. CLS
Bank International, 134 S. Ct. 2347 (2014). See Summary
Judgment Order, 78 F. Supp. 3d at 962–63.
The court observed that “[e]ach of the steps in the claimed
methods can be performed by a skilled designer either
mentally or with pencil and paper.” Id. at 961. Due to
the breadth of the claims, the court found, under the first
step of the Alice test, that “the claims are directed to a
mental process . . . ‘a subcategory of unpatentable abstract
ideas.’” Id. at 963 (quoting CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.


Turning to the second step of the Alice test, the court
rejected Synopsys’ argument that the claims necessarily
contained an inventive concept because Mentor Graphics
failed to present prior art that disclosed the claimed
methods. Id. at 964. The court then found that, while the
claims were directed to a “specific” mental process, they
nonetheless “preempt[ed] a building block of human
ingenuity.” Id. at 965. Finally, it found that the claims
concerned “well-understood, routine, conventional activity,
previously engaged in by those in the field.” Id. (“As
acknowledged in the specification, skilled designers had
been inferring the necessary parts and connections for ICs
long before the Gregory patents issued.”).

The CAFC observed:

While the Supreme Court
has altered the § 101 analysis since CyberSource in cases
like Mayo and Alice, we continue to “treat[] analyzing
information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016) (citations omitted).


Synopsys’ reliance on TQP Development, LLC v. Intuit
Inc., No. 2:12-cv-180-WCB, 2014 WL 651935 (E.D. Tex.
Feb. 19, 2014), is therefore misplaced. See Appellant’s
Opening Br. 39 n.8. In that case, the district court denied
the defendant’s motion for summary judgment that claims
for a specific data encryption method for computer communication
were invalid under § 101. TQP, 2014 WL
651935, at *1. It distinguished the claims at issue from
the mental processes found unpatentable in cases like
Gottschalk. It explained that unlike those “simple,”
“basic” processes, the plaintiff’s “invention involves a
several-step manipulation of data that, except in its most
simplistic form, could not conceivably be performed in the
human mind or with pencil and paper.” Id. at *4 (emphasis
added). This case is different. Representative claim 1
is directed to generating a representation of a single
specific hardware component and can be—and was—
performed mentally or with pencil and paper.

An interesting nuance:

While Synopsys may be correct that the inventions of
the Gregory Patents were intended to be used in conjunction
with computer-based design tools, the Asserted
Claims are not confined to that conception. The § 101
inquiry must focus on the language of the Asserted
Claims themselves. See Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) (admonishing that “the important inquiry for a
§ 101 analysis is to look to the claim”); see also Content
Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir. 2014) (“We
focus here on whether the claims of the asserted patents
fall within the excluded category of abstract ideas.”), cert.
denied, 136 S. Ct. 119 (2015).

On their face, the claims do not call for any form of
computer implementation of the claimed methods. Synopsys
stops short of arguing that the Asserted Claims
must be construed as requiring a computer to perform the
recited steps.


Just as we have held
that complex details from the specification cannot save a
claim directed to an abstract idea that recites generic
computer parts, the Gregory Patents’ incorporation of
software code cannot save claims that lack any computer
implementation at all. See Accenture, 728 F.3d at 1345
(“[T]he complexity of the implementing software or the
level of detail in the specification does not transform a
claim reciting only an abstract concept into a patenteligible
system or method.”).
For this reason, we need not decide whether a computer-
implemented version of the invention would not be
“directed to” an abstract idea. And, for the same reasons,
Synopsys cannot rely on our decisions in Enfish13 and
McRO14 to support the patentability of the Asserted
Claims. In Enfish, we held that claims “directed to a
specific improvement to the way computers operate” to
store and retrieve data were not unpatentably abstract.
822 F.3d at 1336. The claims were not simply drawn to a
disembodied data table.

**As to Gottschalk:

That a human circuit designer may not use the specific
method claimed when translating a functional description
of a logic circuit into a hardware component
description of the logic circuit as Synopsys contends does
not change this result. Indeed, the Supreme Court rejected
this argument in Gottschalk. There, the Court reviewed
a claimed “method for converting binary-coded
decimal (BCD) numerals into pure binary numerals.”
Gottschalk, 409 U.S. at 64. It recognized that the claimed
method had been designed for use on a computer and
“varie[d] the ordinary arithmetic steps a human would
use by changing the order of the steps, changing the
symbolism for writing the multiplier used in some steps,
and by taking subtotals after each successive operation.”
Id. at 67. It found that the claimed method, which
“c[ould] be performed without a computer,” was nonetheless
not patent-eligible. Id.

As to Alice step 2:

But, given that the claims are for a mental
process, assignment conditions, which merely aid in
mental translation as opposed to computer efficacy, are
not an inventive concept that takes the Asserted Claims
beyond their abstract idea.15 Unlike the claims at issue in
DDR Holdings and BASCOM, the Asserted Claims do not
introduce a technical advance or improvement. They
contain nothing that “amounts to significantly more than
a patent upon the [abstract idea] itself.’” Alice, 134 S. Ct.
at 2355 (citation omitted).

Sunday, October 16, 2016

Plagiarism in Russian academics?

There is an interesting piece in gulfnews titled Russian academics fight back against fraud, plagiarism

Fake dissertations, produced by copy-pasting existing texts and merely switching a few introductory pages, are common

This is predominantly about the thesis of one Vladimir Medinsky and includes text:

Among the glaring errors in the work, Medinsky — who states up front that the merit of a historical fact should be determined by whether it is in Russian national interests — implies that Catholicism is not a part of Christianity and does not appear to know that Denmark is in Scandinavia.

There is also discussion of Panfilov 28. A July 2015 post at Eurasianet stated:

The only trouble is, the legend looks to be a lie.

Some of the soldiers said to have died valiantly, in fact, lived on for years after the alleged feat, according to new documents that have come to light.

On July 8, [2015] the state archive published a scan of a formerly top secret, now declassified document from 1948 in which the chief Soviet military prosecutor informed powerful Soviet politburo member Andrei Zhdanov that the legend “does not correspond with reality,” saying it is based on the "fiction" of a Red Army journalist.

Historians have long said the legend of the 28 guardsmen contained glaring inaccuracies.

But the publication of these documents serves as long-sought hard evidence that lays to rest any remaining doubts, according to Andrei Zubov, a prominent Russian historian.


**Separately, from Blawgsearch on October 16, 2016, for the week of October 16:


*for the month-->

Patent application on the QUANTUM SPACE ENGINE (EM drive)

A story on the patent application for the EM drive contains the following text:

“The patent process is a very significant process, it’s not like an academic peer review where everyone hides behind an anonymous review, it’s all out in the open,” Shawer told Marry-Ann Russon at the International Business Times.

He went on to say that “this is a proper, professional way of establishing prior ownership done by professionals in the patent office, and in order to publish my patent application, they had to first carry out a thorough examination of the physics in order to establish that the invention does not contravene the laws of physics.”

Elsewhere in the post is a reference to SWAS:

The program delaying patent applications is called the Sensitive Application Warning System (SWAS). Usually, when an application is submitted for a patent approval, it requires a couple of examiners who work with the Patent office to go through their process of approval. This process usually takes approximately 1 to 2 years, but applications that are filed in SAWS must be approved by several people, and can be delayed for a number of years.

One great example (out of many) of delayed patent applications comes from Dr. Gerald F. Ross. He filed a patent application for a new invention he had devised to defeat the jamming of electromagnetic transmissions at specified frequencies. It was not until June 17, 2014 (almost 37 years later) that this patent was granted (source).


CBS Sunday Morning on October 16, 2016: who invented the bumper sticker and "when" was it invented?

Within the show, one had Martha Teichner doing a piece on "bumper stickers" titled -- Bumper stickers: A vehicle for political expression --. There was a sort of inventorship matter:

But then came World War II, and along with technology (including day-glo colors) and adhesive paper. It wasn’t long before somebody put them together.

That somebody was Forest Gill, of Kansas City, Missouri.

“He put the idea of the bright colors and the sticky paper together to come up with a bumper sticker,” said Gill’s son-in-law, Mark Gilman, the chairman of Gill Studios, now located in Lenexa, Kansas. “His innovation was to make the bumper sign self-sticking.”

America’s post-war love affair with the automobile guaranteed that these traveling billboards got around. But tourist attractions -- not political campaigns -- were the original users.

Not likely that Day-glo colors were used on bumper stickers in or around 1946; from an ACS publication

In 1946, the Switzer Brothers ended their agreements with Continental and founded Switzer Brothers, Inc. (now Day-Glo Color Corp.), in Cleveland. Flaw detection products continued to be a large portion of their product lines, but they also expanded their research to improve daylight fluorescent pigments for commercial uses.

After a series of developments in the field, a milestone came in 1957 with the patent for a new process for producing daylight fluorescent pigments. Combining the fluorescent dyes with a new class of polymers and then milling the composition to an appropriate particle size produced material that behaved like traditional organic and inorganic pigments in printing techniques. These new pigments could be used as traditional paint and inks and had sufficient light stability to be used outdoors.

Growth in the use of fluorescent pigments for marketing and packaging took off following the War. The company made inroads by marketing their products—DayGlo brand silk-screen inks, paint, and papers—to advertisers. Their first big break in packaging came in 1959 in an application that’s still known by its DayGlo colors today: Tide® detergent. Fluorescent boxes of Tide were soon on display on grocery shelves nationwide, and fluorescent colors began to appear on an increasing number of consumer products.


**It is interesting to note that the combination of self-adhesive and Day-glo appeared in a 2012 NYTimes piece:

Gill seized on two new technologies ­ — self-adhesive paper and Day-Glo paint — and combined them into a novelty item perfectly adapted for America’s highways. By the 1960 presidential election, bumper stickers were everywhere, rivaling buttons as a favorite way for voters to declare their intentions.


As noted, Day-Glo was not ready for "outdoor" usage (as on bumper stickers) until after 1957.

**In the "older" days of "CBS Sunday Morning", one might have expected this story to have been done by Bill Geist or Mo Rocca.

Almanac did the be-heading of Marie Antoinette.

Jane Pauley did a puff profile on Sarah Jessica Parker.

S. C. Johnson of Racine was discussed. Remember Kringles of Racine? The piece on S.C. Johnson touched on the "research tower," and thus obliquely on inventorship:

Next door is the 15-story Research Tower that Wright also designed. It opened in 1950. Its odd skeleton can best be seen at dusk.

“It has a central core that’s 13 feet in diameter, like the trunk of a tree” said Greg Anderegg, who used to work for SC Johnson and later helped with the tower’s restoration. “And all of the floors are hung off of that central core like the limbs of a tree.”

[Frank Lloyd] Wright again wanted to allow in natural light, but instead of just plates of glass, he decided to use glass tubes instead -- 17 miles of them.

“We hand-cleaned every one of them -- I might point out that we used Windex to do that!” Anderegg laughed. “And they look sparkling and look great.”

It now looks much as it did when Bob O’Brien worked here. He said, “It was always bright. But you just felt like you’re working in a snow globe.”

Despite having to wear sunglasses while formulating his products, he loved it.

“Formulation is an art. And I would come into work, and these benches in this laboratory that was our canvas, a canvas that Frank Lloyd Wright built, right? So you come in here and you just couldn’t help but feel inspired. There was just the energy.”

The Tower became integral to SC Johnson’s success -- even part of its ad campaigns. It was the womb for some of the company’s most recognizable brands, from Glade air freshener to a bug’s worst nightmare. Raid was developed by Sam Johnson, Fisk’s father. It killed bugs but not plants, which at the time was revolutionary. But it was also the first of Sam Johnson’s string of products that didn’t contain any wax.


Moment of nature did whale sharks near Isla Mujeres, which is near Cancun. Not mentioned was
MUSA (Museo Subacuatico de Arte) also nearby. Recall the December 30, 2012 Sunday Morning wherein Mo Rocca does "Sunken Treasures" in Cancun, Mexico. [ ]

Friday, October 14, 2016

Bob Dylan, the Nobel, and plagiarism

Back in September 2012, IPBiz posted on the Dylan/Timrod plagiarism controversy: Dylan: Wussies and pussies complain about that stuff.

Four years later, Dylan has the Nobel in literature and some people are still bringing up Timrod:
Five Things to Know About Bob Dylan

Creative Loafing Atlanta had a piece subtitled -- "Steal a little and they throw you in jail. Steal a lot and they make you king." — Bob Dylan, "Sweatheart Like You" --, which included the text:

The topic has been covered extensively in the press over the last decade with publications ranging from the New York Times to the Wall Street Journal debating Dylan's legacy. Apparently, it's a thin line between being dismissed as a culture vulture and hailed as a master synthesizer in the tradition of folk and blues greats and being Awarded the Nobel Prize in Literature.


In a world in which someone caught plagiarizing in law school becomes Vice-President, not really a surprise.

Wednesday, October 12, 2016

IP tiff over recipes

From time to time, IPBiz discusses intellectual property related to food [e.g., The European cookie paste wars: blog post kills patent ]

Now, one notes a post involving Chris Knight with sub-caption: An Ottawa food empire has left a bitter taste in the mouth of a cookbook author in Japan who alleges it stole and served up her recipes.

The complaining party seems to be one Nancy Singleton Hachisu and the article notes:

A lawyer for Hachisu’s publisher sent a letter in June demanding that the impugned cookbook be withdrawn from sale and any web content taken down. A letter from the Kansas City lawyer for Andrews McMeel Publishing charted alleged “infringing language” in six recipes and said the “timing, tenor and substance” of the response would help decide whether damages would be sought.

Months later, Hachisu now says she’s seeking a total of $30,000 in compensatory damages, pursuing “the principle of the matter” on her own.

But according to Gusto World Media, it will be they who file a lawsuit in Ontario shortly.

“To avoid any confusion, I wish to be clear, the One World Kitchen cookbook does not infringe any alleged rights of Ms. Hachisu,” Knight, the author of a string of cookbooks along with his work on television, said in a statement.

Knight said that Hachisu has taken her allegations to social media — her tweets use words such as “cowards” and “morally reprehensible” — instead of asserting them in court. Gusto Worldwide Media, meanwhile, “has remained patient and has taken the high road with the hope that the matter would be resolved and not escalate further.”

link to article in ottawacitizen:

Tuesday, October 11, 2016

Patentee Fairwarning loses 101 case at CAFC; McRO, Inc. v. Bandai Namco Games America Inc. distinguished

Fairwarning v Iatric was a 101 case that came out unfavorably to the patentee:

FairWarning IP, LLC, appeals a judgment of the
United States District Court for the Middle District of
Florida dismissing its suit with prejudice after holding
that the asserted patent, U.S. Patent No. 8,578,500,
claims patent-ineligible subject matter under 35 U.S.C.
§ 101. Because we agree with the district court that
FairWarning’s ’500 patent claims patent-ineligible subject
matter, we affirm.

As to Alice

Following the two-step test for patent-eligibility identified
in Alice Corp. v. CLS Bank International, 134 S. Ct.
2347 (2014), the court first found the claims were directed
to a patent-ineligible abstract idea: “the concept of analyzing
records of human activity to detect suspicious behavior.”
FairWarning IP, LLC v. Iatric Sys., Inc., No. 8:14-
CV-2685, 2015 WL 3883958, at *2 (M.D. Fla. June 24,
2015) (quotation marks omitted). This concept, the court
explained, “is a basic and well-established abstract idea.”

(...) [Of step 2 of Alice]

The court analyzed the
elements of the claim individually and as an ordered
combination, but found “nothing significantly more than
an instruction to apply the abstract idea . . . using some
unspecified, generic computer.” Id. (quoting Alice, 134
S. Ct. at 2360) (alteration in original).

The CAFC cited a September 2016 decision:

While the claims here recite using one of a few possible
rules to analyze the audit log data, this does not make
them eligible under our decision in McRO, Inc. v. Bandai
Namco Games America Inc., No. 15-1080, 2016 WL
4896481 (Fed. Cir. Sept. 13, 2016), which also involved
claims reciting rules. In McRO we held that, in analyzing
step one, “the claims are considered in their entirety to
ascertain whether their character as a whole is directed to
excluded subject matter.” Id. at *6 (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). Of course, claims cannot be directed to
“laws of nature, natural phenomena, and abstract ideas,”
but must instead “claim patent-eligible applications of
those concepts.” Alice, 134 S. Ct. at 2355 (citing Mayo,
132 S. Ct. at 1296–97). Indeed, even though a claim can
be abstracted to the point that it reflects a patent-ineligible
concept—for, “[a]t some level, ‘all inventions . . .
embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas,’” id. at 2354 (quoting
Mayo, 132 S. Ct. at 1293)—that claim may nevertheless
be patent eligible if the claim language is directed to
a patent-eligible application of that concept. See Rapid
Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050
(Fed. Cir. 2016).

( )
The claims in McRO were not directed to an abstract
idea, but instead were directed to “a specific asserted
improvement in computer animation, i.e., the automatic
use of rules of a particular type.” McRO, 2016 WL
4896481, at *8. We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and
realistic lip synchronization and facial expressions in
animated characters’ that previously could only be produced
by human animators.” Id. at *8 (quoting U.S.
Patent No. 6,307,576 col. 2 ll. 49–50). The claimed rules
in McRO transformed a traditionally subjective process
performed by human artists into a mathematically automated
process executed on computers. Id. at *8–9.
Indeed, Defendants conceded that prior animating processes
were “driven by subjective determinations rather
than specific, limited mathematical rules,” such as the
mathematical rules articulated in McRO’s claimed method.
Id. at *8. Thus, the traditional process and newly
claimed method stood in contrast: while both produced a
similar result, i.e., realistic animations of facial movements
accompanying speech, the two practices produced
those results in fundamentally different ways.
As such, we explained that “it [was] the incorporation
of the claimed rules, not the use of the computer, that
‘improved [the] existing technological process’ by allowing
the automation of further tasks.” Id. (alteration in original)
(quoting Alice, 134 S. Ct. at 2358). “This [was] unlike
Flook, Bilski, and Alice, where the claimed computer-automated
process and the prior method were carried
out in the same way.” Id. (citing Parker v. Flook, 437 U.S.
584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611
(2010); Alice, 134 S. Ct. at 2356).
The claims here are more like those in Alice than

link to decision:

Monday, October 03, 2016

CAFC: past practices in snail-mail render Intellectual Ventures claims “fundamental . . . practice[s] long prevalent” and thus abstract ideas.

A big loss for Intellectual Ventures at the CAFC; the outcome
The district court (D. Del., CJ Stark) held the asserted
claims of the ’050 patent and the
’142 patent to be ineligible under § 101, and the asserted
claim of the ’610 patent to be eligible. We affirm as to the
asserted claims of the ’050 patent and ’142 patent, and
reverse as to the asserted claim of the ’610 patent.

The CAFC wrote in IV vs. Symantec:

Here, it was long-prevalent practice for people receiving
paper mail to look at an envelope and discard certain
letters, without opening them, from sources from which
they did not wish to receive mail based on characteristics
of the mail.6 The list of relevant characteristics could be
kept in a person’s head. Characterizing e-mail based on a
known list of identifiers is no less abstract. The patent
merely applies a well-known idea using generic computers
“to the particular technological environment of the Internet.”
DDR Holdings, LLC v., L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014).

Judge Mayer wrote separately:

I agree that all claims on appeal fall outside of 35
U.S.C. § 101. I write separately, however, to make two
points: (1) patents constricting the essential channels of
online communication run afoul of the First Amendment;
and (2) claims directed to software implemented on a
generic computer are categorically not eligible for patent.

Mayer referenced Mark Lemley:

See Brief of Amicus Curiae Elec. Frontier Found. in
Support of Respondents, Alice, 134 S. Ct. 2347 (No. 13-
298), 2014 WL 828047, at *6–7 (“EFF Brief”) (“The software
market began its rapid increase in the early 1980s
. . . more than a decade before the Federal Circuit concocted
widespread software patents in 1994. . . . Obviously,
no patents were needed for software to become a $60
billion/year industry by 1994.”); Mark A. Lemley, Software
Patents and the Return of Functional Claiming,
2013 Wis. L. Rev. 905, 935 (2013) (“Software patents . . .
have created a large number of problems for the industry,
particularly for the most innovative and productive companies.
. . . [T]he existence of a vibrant open source
community suggests that innovation can flourish in
software absent patent protection.” (footnote omitted))


Software patents typically do not include any actual code
developed by the patentee, but instead describe, in intentionally
vague and broad language, a particular goal or
objective. See Dan L. Burk & Mark A. Lemley, Is Patent
Law Technology-Specific?, 17 Berkeley Tech. L. J. 1155,
1164–65 (2002) (“Unfortunately, the Federal Circuit’s
peculiar direction in the software enablement cases has
effectively nullified the disclosure requirement for software
patents. And since source code is normally kept
secret, software patentees generally disclose little or no
detail about their programs to the public.” (footnote
omitted)). Here, for example, the ’610 patent discusses
the objective of “screen[ing] computer data for viruses . . .
before communicating the computer data to an end user,”
’610 patent, col. 1 ll. 59–61, but fails to disclose any specific,
inventive guidance for achieving that goal. In effect,
the ’610 patent, like most software patents, describes a
desirable destination but neglects to provide any intelligible
roadmap for getting there.


The journal Fortune paid much attention to Mayer's separate concurring opinion:

Friday’s ruling is also significant because Judge Mayer eschews the insider baseball language that typically dominates patent law, and addresses patents in the broader context of technology and government monopolies.

Pointing out that intellectual property monopolies can limit free speech, Mayer notes that copyright law has built-in First Amendment protections such as “fair use” and that patent law must include similar safeguards. He suggests that the safeguard comes in the form of a part of the Patent Act, known as “Section 101,” which says some things—including abstract ideas—simply can’t be patented in the first place

IPBiz questions "insider baseball language"???


Saturday, October 01, 2016

The CAFC discusses discovery issues in Drone v. Parrot

The argument of appellant Parrot

Parrot raises three issues on appeal. First, it contends
that Drone did not have standing to sue and that,
therefore, the district court should have dismissed Drone’s
suit for lack of jurisdiction. Second, Parrot argues that
the court abused its discretion in directing Parrot to turn
over its on-board source code and then sanctioning Parrot
by entering a default judgment against it when it failed to
do so. Finally, Parrot urges that, even if the default
judgment of liability is allowed to stand, the award of
damages should be vacated because the district court
misapplied the law on damages and abused its discretion
in allowing the jury to consider certain evidence on damages.

The CAFC observed as to the standing issue raised because of
an inventorship question:

Under § 281, “[a] patentee shall have remedy by
civil action for infringement of his patent.” 35 U.S.C.
§ 281 (2012) (emphasis added). A “patentee” is not limited
to the person to whom the patent issued, but also
includes “successors in title to the patentee.” 35 U.S.C.
§ 100(d) (2012) (emphasis added); see also H.R. Techs.,
Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1384 (Fed. Cir.
2002) (“In order to have standing, the plaintiff in an
action for patent infringement must be a ‘patentee’ pursuant
to 35 U.S.C. §§ 100(d) and 281 . . . .”). A party may
become the successor in title to the original patentee by
assignment, 35 U.S.C. § 261 at ¶ 2 (“[P]atents, or any
interest therein, shall be assignable in law by an instrument
in writing.”), and then may sue for infringement in
its own name, Propat Int’l Corp. v. RPost, Inc., 473 F.3d
1187, 1189 (Fed. Cir. 2007); Morrow, 499 F.3d at 1339–40
(explaining that a plaintiff that “hold[s] all legal rights to
the patent as the patentee or assignee of all patent rights
. . . is one entitled to sue for infringement in its own

When multiple inventors are listed on the face of a patent,
“each co-owner presumptively owns a pro rata
undivided interest in the entire patent, no matter what
their respective contributions.” Isr. Bio-Eng’g Project v.
Amgen, Inc., 475 F.3d 1256, 1263 (Fed. Cir. 2007) (internal
quotation marks and citation omitted). Consequently,
if a co-inventor assigns his or her ownership interest to a
third party, the assignee cannot sue infringers “[a]bsent
the voluntary joinder of all co-owners.” Id. at 1264–65.


Parrot does not cite any controlling authority suggesting
that we must undertake the review it seeks; namely, a
substantive examination of inventorship in order to resolve
an issue of standing in an infringement action
where the plaintiff’s claim to title is not otherwise in
dispute. Parrot’s reliance on Pandrol USA, LP v. Airboss
Railway Products, Inc., 320 F.3d 1354 (Fed. Cir. 2003), in
support of its position is misplaced. In Pandrol, we found
that “the defendants waived the right to contest the
plaintiffs’ title to the patent, insofar as lack of ownership
is viewed as a defense to the claim of infringement.” Id.
at 1367. We explained, however, that “the defendants’
waiver of the defense of lack of patent ownership did not
waive the defendants’ ability to challenge the plaintiffs’
standing to sue.” Id.

As to the discovery rulings of WD Pa (CA3):

Parrot’s main argument on appeal is that the district
court twice abused its discretion: first, when it directed
Parrot to turn over its on-board source code; and, second,
when it sanctioned Parrot by entering a default judgment
against it after it failed to produce the source code.
Discovery in patent cases in the Western District of
Pennsylvania is governed by the Federal Rules of Civil
Procedure and the district’s local patent rules. See W.D.
Pa. LPR (effective Dec. 1, 2009). Pertinent to the issue
before us is Local Patent Rule 3.1 (“LPR 3.1”). (...)

Discovery began on June 11, 2014, when Parrot
served on Drone its “Initial Disclosures,” which included
over two-thousand pages of documents. The parties
immediately began to dispute whether Parrot’s production
met the requirements of LPR 3.1, with Drone insisting
that Parrot was required to produce “source code, specifications,
schematics, [and] flow charts” relating to the
accused products and Parrot contending that its production
was “sufficient to show the operation of the accused
products as required by LPR 3.1.” J.A. 609–14. After a
series of email exchanges and a fruitless meet and confer,
Drone moved the district court to compel Parrot to produce
the requested information (the “Initial Motion”). In
the Initial Motion, Drone reiterated its belief that, under
LPR 3.1, Parrot was required to produce source code,
specifications, schematics, and flow charts. J.A. 578–83.
Noting that Parrot’s products use off-board and on-board
source code, Drone asserted that the former was critically
important to its case because that code permits users to


For its part,
Parrot did not dispute that it had not produced any source
code. It instead argued that LPR 3.1 did not include a
requirement to produce source code, or any other particular
kind of document. J.A. 604–05. According to Parrot,
Drone did not even dispute that Parrot had complied with
LPR 3.1 by producing documents “sufficient to show” the
operation of the accused products. J.A. 601. Parrot also
contended that Drone had failed to establish that any of
Parrot’s source code was necessary to show the operation
of the accused products or to prove infringement of any
claim. J.A. 602–04.
The district court sided with Drone, issuing a onepage
order on July 1, 2014 (the “July 1 Order”). In the
July 1 Order, the court compelled Parrot to “produce all
source code, specifications, schematics, [and] flow
charts . . . relating to the operation of the accused products
(Parrot’s AR.Drone, AR.Drone 2.0, MiniDrone[s], and
Bebop Drone) . . . on or before July 9, 2014.” J.A. 5. The
court provided no analysis or reasoning in the July 1
Order. See J.A. 5. Two days later, Parrot filed an emergency
motion for clarification and reconsideration of the
July 1 Order. In it, Parrot made three requests. J.A. 698.
First, Parrot asked the court to allow it to make available
for inspection its on-board source code, which it said is
“extremely sensitive technical information.” J.A. 703–04.
Second, it requested that it be able to produce documents
on a rolling basis beginning on July 9. J.A. 704–06. And
third, it sought permission to not produce documents
relating to the Bebop Drone and MiniDrones because, in
its view, those products were not accused of infringement.
J.A. 706–07. On July 8, 2014, the court denied Parrot’s
emergency motion in a text order (i.e., a text-only entry on
the court’s docket that does not include a written analysis).


Having determined that WD Pa abused its discretion in the discovery
orders, the CAFC had to determine whether or not the Poulis factors had
to be evaluated on appeal.

Before examining the district court’s sanctions ruling,
however, we address the preliminary question of whether,
in fact, a Poulis analysis is required in this case. Specifically,
it could be argued that, having ruled that the district
court abused its discretion in issuing the July 1 and
July 25 Orders, we should automatically vacate the
district court’s entry of a default judgment against Parrot
for its failure to comply with those orders. There is authority
supporting that approach. See, e.g., EEOC v. First
Nat’l Bank of Jackson, 614 F.2d 1004, 1007–08 (5th Cir.
1980) (reversing dismissal sanction for refusal to comply
with a discovery order because the sought-after information
was “not properly discoverable” and thus “the
district court should not have imposed a Rule 37 sanction
upon appellant for refusing to reveal the information”)
(citing Dunbar v. United States, 502 F.2d 506, 509 (5th
Cir. 1974)); Dole v. Local 1942, Int’l Bhd. of Elec. Workers,
870 F.2d 368, 376 (7th Cir. 1989) (reversing dismissal
sanction for refusal to comply with a discovery order
because “the district court abused its discretion by compelling
discovery” and “such an abuse of discretion will
not support a Rule 37(b) dismissal”). If followed, that
course would obviate the need for a Poulis analysis.

HOWEVER, in view of no on-point Third Circuit law, the CAFC decided
to conduct a Poulis analysis:

The Third Circuit, whose law controls here, does not
appear to have spoken on this question. Indeed, it did not
state in Poulis (nor has it stated in any case since as far
as we can tell) that a determination that a discovery order
was an abuse of discretion obviates the need for a Poulis
analysis when assessing a default or dismissal sanction
that is based at least in part on failure to comply with the
discovery order. We recognize that the Circuit has said
that the validity of a civil contempt order is predicated on
the merits of the underlying order that was violated. See,
e.g., In re Grand Jury Proceedings Harrisburg Grand
Jury 79-1, 658 F.2d 211, 217 n.13 (3d Cir. 1981) (“It is a
well established principle that an order of civil contempt
cannot stand if the underlying order on which it is based
is invalid.”) (quoting ITT Cmty. Dev. Corp. v. Barton, 569
F.2d 1351, 1356 (5th Cir. 1978)); John T. ex rel. Paul T. v.
Del. Cty. Intermediate Unit, 318 F.3d 545, 559 (3d Cir.
2003) (“[I]t is well settled that the viability of a civil
contempt order entered either to remedy past noncompliance
or to coerce future compliance with a preliminary
injunction hinges on the validity of the underlying
injunction.”). However, this case does not involve a civil
contempt order. See Drone Techs., 303 F.R.D. at 265
(explaining that “treating [Parrot’s] actions as contempt of
court pursuant to Rule 37 would not meet the goals of
sanctions”). Under these circumstances, and in view of
the fact that neither Drone nor Parrot has presented
argument on the question, we think the prudent approach
is to conduct a Poulis analysis.

Of the analysis by WD Pa:

In assessing the propriety of sanctions,
the court balanced the six “Poulis” factors. See
Poulis v. State Farm Fire & Cas. Co., 747 F.2d 863, 867
(3d Cir. 1984) (enumerating factors for courts to consider
in sanctioning parties). Considering the Poulis factors,
the court found that they weighed in favor of imposing a
default sanction instead of holding Parrot in contempt.
303 F.R.D at 265–66. Concluding that “lesser sanctions”
would have been inadequate, the court entered a default
judgment against Parrot as to liability and struck its
answer and counterclaims. Id. at 266; J.A. 42.

The CAFC did not agree with WD Pa on the Poulis analysis:

As seen below, based upon
that analysis, we conclude that the district court abused
its discretion in imposing upon Parrot the sanction of a
default judgment.

As to --Meritoriousness of claims or defenses -- the CAFC
noted: -- The district court did not need to fully assess
the merits of the parties’ claims and defenses; it only
needed to look to the pleadings. See Poulis, 747 F.2d at
869–70 (“A claim, or defense, will be deemed meritorious
when the allegations of the pleadings, if established at
trial, would support recovery by plaintiff or would constitute
a complete defense.”). --

As to prejudice to Drone, the CAFC stated

As for prejudice to Drone, we think the district court
erred by concluding that this factor “weighs heavily
toward the imposition of severe sanctions.” Drone Techs.,
303 F.R.D. at 262. The court found that Parrot’s noncompliance
with the July 1 and July 25 Orders prejudiced
Drone by (1) preventing Drone from reviewing information
before the claim-construction hearing scheduled
for October 24, 2014, (2) inhibiting Drone’s ability to
prepare its case for trial, and (3) causing Drone to “expend
substantial funds, time, and energy” on motions practice.
Id. In our view, the record does not support the court’s
findings. Although the court did not specify what information
Drone needed but did not receive, it presumably
was referring to the on-board source code and documents
relating to the Bebop Drone and MiniDrones. However,
as discussed above, Drone has not shown that this information
is relevant or necessary to its case, so the record
does not support a finding that lacking this information
prejudiced Drone in any way, whether for claimconstruction
purposes or for trial.

The CAFC had discussed "relevant or necessary":

Federal Rule of Civil
Procedure 26(b)(1) allows a party to obtain discovery
“relevant to any party’s claim or defense.”12 Fed. R. Civ.
P. 26(b)(1); see also Micro Motion, Inc. v. Kane Steel Co.,
894 F.2d 1318, 1323 (Fed. Cir. 1990) (explaining that
discovery may not be had unless it is relevant to the
subject matter of the pending action). However, “[e]ven if
relevant, discovery is not permitted where no need is
shown.” Micro Motion, 894 F.2d at 1323; Am. Standard
Inc. v. Pfizer Inc., 828 F.2d 734, 743 (Fed. Cir. 1987)
(“Where proof of either relevance or need is not established,
discovery is properly denied.”). Drone’s Initial
Motion was virtually silent on the subject of the Bebop
Drone and MiniDrones, offering no explanation as to how
these non-accused products were relevant or necessary to
any of its infringement claims. See J.A. 578–83. The only
mention of these products, in fact, appears in the proposed
order attached to Drone’s Initial Motion. J.A. 597.
Notwithstanding that the Bebop Drone and MiniDrones
seemed to have slipped into the fold, the court’s July 1
and July 25 Orders failed to address the relevance of, or
need for discovery relating to, these products. J.A. 5, 9

Footnote 12 states:

The Federal Rules of Civil Procedure, particularly
the rules regarding discovery, were amended effective
December 1, 2015. Because the old rules governed the
proceedings below when the district court issued the
July 1 and July 25 Orders, we review the district court’s
actions based on the rules then in effect.

Of the new rules, SWLaw wrote:

Two changes to Rule 26 contained within these amendments will go far to rein in overly broad discovery requests that are expensive to address and distracting from the merits of the litigation. First, Rule 26(b)(1) will delete the longstanding provision that information “reasonably calculated to lead to the discovery of admissible evidence” may be discovered. Instead, the revised rule will define the scope of discovery based on matters specifically relevant to the claims and defenses asserted in the case. Amended Rule 26(b)(1) will link this more sharply focus scope of discovery with a requirement that discovery be “proportional to the needs of the case.”

While current Rule 26(b)(2)(C)(iii) contains several discovery-limiting considerations, federal courts have often overlooked these considerations and rarely invoked them to tighten the scope of discovery. By explicitly linking a proportionality mandate to a narrowed scope of discovery, the 2015 Rule 26(b)(1) amendments recognize that discovery necessarily involves a balancing of interests and need not stretch beyond the particular needs of the claims and defenses actually asserted.

The proportionality and scope considerations of Rule 26(b)(1) will be buttressed by an addition to Rule 26(c)(1)(B) that will authorize protective orders that include “allocation of expenses” arising from discovery. This new provision will provide a basis for recourse to those parties who face abusive discovery purposely served to drive up the cost of litigation to painful levels. Further, connecting the cost of discovery to the party who seeks to benefit from the discovery will cause parties to consider more closely whether those requests or interrogatories are truly necessary to support the propounding party’s case.

Also, from Judge Mayer in IV v. Symantec:

See Dan L. Burk & Mark A. Lemley, Is Patent Law Technology-Specific?, 17 Berkeley Tech. L. J. 1155, 1164–65 (2002) (“Unfortunately, the Federal Circuit’s peculiar direction in the software enablement cases has effectively nullified the disclosure requirement for software patents. And since source code is normally kept secret, software patentees generally disclose little or no detail about their programs to the public.” (footnote omitted)). Here, for example, the ‘610 patent discusses the objective of “screen[ing] computer data for viruses … before communicating the computer data to an end user,” ‘610 patent, col. 1 ll. 59–61, but fails to disclose any specific, inventive guidance for achieving that goal. In effect, the ‘610 patent, like most software patents, describes a desirable destination but neglects to provide any intelligible roadmap for getting there.