Friday, December 29, 2017

The patent story with rectangular rapid flashing beacons [RRFBs]

Back in 2012, IPBiz quoted Judge Richard Posner on the industry standard/patent interface:

“Once a patent becomes essential to a standard, the patentee’s bargaining power surges because a prospective licensee has no alternative to licensing the patent; he is at the patentee’s mercy.”

See Posner on industry standard patents

Flash forward to 2017, and one has an interesting situation with rectangular rapid flashing beacons or RRFBs for short. A 29 December 2017 story in the Ann Arbor News, Federal rules, patent issues put brakes on Ann Arbor's crosswalk plans , outlines part of what has been going on.

The intellectual property relates to U.S. Patent Nos.
8,081,087 and 9,129,540.

Thursday, December 28, 2017

Of interest in Nintendo v. iLife

Nintendo argues that under our opinion in PowerOasis,
the Board was required to review the new disclosure
added to the continuation-in-part application and determine
whether that content corresponds to the particular
claim limitations in dispute. This misreads our precedent.
PowerOasis, along with our other written description
precedent, explains that “[t]o satisfy the written
description requirement the disclosure of the prior
application must ‘convey with reasonable clarity to
those skilled in the art that, as of the filing date sought,
[the inventor] was in possession of the invention.’” 522
F.3d at 1306 (emphasis added) (quoting Vas–Cath, 935
F.2d at 1563–64). Thus, the key question is whether the
descriptive matter is present in the original application,
not whether it is also present in any added disclosure.

CAFC vacates PTAB in Takeda v. Array

The one ground for the decision that was explained was erroneous, and alternate grounds were not explained:

Typically, “[t]he agency
tribunal must make findings of relevant facts, and present
its reasoning in sufficient detail that the court may
conduct meaningful review of the agency action.” In re
Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017) (internal
quotation marks and citation omitted). Here, the PTAB
did not provide an opinion as to any of Array’s alternative
grounds for affirmance, and therefore did not make factual
findings necessary for this court to conducting meaningful
review. See generally Array, 2016 WL 8999741. In
such a situation, where the PTAB’s “action is potentially
lawful but insufficiently or inappropriately explained, we
have consistently vacated and remanded for further
proceedings.” Van Os, 844 F.3d at 1362 (internal quotation
marks and citation omitted); see SEC v. Chenery
Corp., 318 U.S. 80, 94 (1943) (“[We] cannot exercise [our]
duty of review unless [we] are advised of the considerations
underlying the action under review.”); NuVasive,
842 F.3d at 1385 (stating that when the PTAB fails to
articulate its rationale, “judicial review cannot meaningfully
be achieved” (internal quotation marks, brackets,
and citation omitted)). Vacating and remanding is appropriate
here, where the PTAB provided only an erroneous
basis to reject the Asserted Claims and did not make
factual findings relevant to alternate grounds for rejection.

The one ground relied upon was erroneous:

The PTAB, after finding that proposed substitute
claim 18 lacked written description support pursuant to
37 C.F.R. § 42.121(b),3 Array, 2016 WL 8999741, at
*17−19, the PTAB explained that “proposed claims 19–29
depend from independent claim 18” and, thus, “are also
unsupported for at least the same reasons,” id. at *19.
This was error, as both parties acknowledge. See Appellant’s
Br. 13 (arguing that the PTAB’s finding was based
on “an erroneous premise”); Appellee’s Br. 15 (stating “the
rationale articulated by the [PTAB] was misplaced” and
characterizing the error as a “harmless misstatement”).
Although the PTAB is correct that proposed claims 19–25
depend from proposed claim 18, the Asserted Claims do
not. Compare J.A. 312–13 (claims 19–25), with J.A. 314–
17 (Asserted Claims). Instead, proposed claims 26 and 28
are independent claims, from which proposed claims 27
and 29 depend, respectively. See J.A. 314–17. Accordingly,
the PTAB’s determination that the Asserted Claims
lack written description support is based on an error and
is not supported by substantial evidence.

Judge Newman's dissent in Microsoft/Biscotti case

Judge Newman's dissent in Microsoft v. Biscotti begins:

I respectfully dissent. The Kenoyer reference describes
the same invention that is claimed in claims 6 and
69, the only claims of Biscotti’s ’182 patent that are reviewed
by the court. These claims recite no new components
or functions or technology; they directly read on,
and are anticipated by, the prior art system described in
the Kenoyer reference.

As I shall illustrate, every claim clause is shown in
Kenoyer. Every claim component was previously known,
and performs the same function in the same way in the
same combination. The claims at issue are “anticipated,”
under the most rigorous application of the law of anticipation.


The law of anticipation is clearly met, for on any view
of Kenoyer, Kenoyer “sufficiently describe[d] the claimed
invention to have placed the public in possession of it.” In
re Donohue, 766 F.2d 531, 533 & n.7 (Fed. Cir. 1985). See
generally Kennametal, 780 F.3d at 1381 (“However, a
reference can anticipate a claim even if it ‘d[oes] not
expressly spell out’ all the limitations arranged or combined
as in the claim, if a person of skill in the art, reading
the reference, would ‘at once envisage’ the claimed
arrangement or combination.” (quoting In re Petering, 301
F.2d 676, 681 (CCPA 1962))). Kenoyer shows the same
components, having the same function, combined in the
same way for the same purpose. Substantial evidence
does not support the panel majority’s ruling that the ’182
claims are not anticipated.

Footnote 1 of the dissent:

The panel majority states that my criticism is
unwarranted, and that the majority raised this aspect
only in connection with the set-top box. Maj. Op. at 40–
41, n.1. This does not resolve the concern that the majority
appears to hold that known technological information
must be presented in full scientific detail, contrary to, e.g.,
Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1368 (Fed.
Cir. 2006) (the “forced recitation of known sequences . . .
would only add unnecessary bulk to the specification”).

Friday, December 22, 2017

CAFC in Bosch re-iterates Aqua Products, 872 F.3d at 1311 -- “[W]here the challenger ceases to participate in the IPR and the Board proceeds to final judgment, it is the Board that must justify any finding of unpatentability by reference to the evidence of record in the IPR.”

The appellant lost on obviousness of the old claims BUT did prevail as to the amendment issue:

This appeal arises from the inter partes review (IPR)
of U.S. Patent No. 6,904,796 (the ’796 patent) owned by
Bosch Automotive Service Solutions LLC (Bosch). The
Patent Trial and Appeal Board (Board) granted the IPR
petition filed by Autel U.S. Inc. and Autel Intelligent
Technology Co. Ltd. (Autel) and instituted the IPR on
claims 1, 4–15, and 20–22 of the ’796 patent. Bosch filed
a patent owner response and a “contingent” motion to
amend, seeking to substitute amended claims 23–38 for
original claims 1, 4–15, and 20–22 in the event that the
Board found the challenged claims unpatentable. In its
final decision, the Board found all challenged claims
unpatentable and also denied Bosch’s contingent motion
to amend. Autel U.S. Inc. v. Bosch Auto. Serv. Sols. LLC,
No. IPR2014-00183, 2015 WL 2149218 (P.T.A.B. May 5,
2015) (Final Written Decision). Bosch now appeals.1 For
the reasons below, we affirm the Board’s finding of unpatentability
of claims 1, 4–15, and 20–22, and we vacate
and remand its denial of Bosch’s motion to amend as to
proposed substitute claims 23–38.

The Board [PTAB] had denied the motion to amend:

The Board then denied Bosch’s contingent motion to
amend. First, the Board found that the proposed apparatus
claims were indefinite because the ’796 specification
fails to disclose sufficient structure corresponding to the
claimed “means for recording a most recent means for
activating signal that was utilized to successfully activate
a tire sensor.” Second, the Board found that Bosch failed
to carry its burden of proof that the proposed substitute
claims would have been patentable over the prior art.


The Board rejected proposed amended
claims 23–35 as indefinite under 35 U.S.C. § 112, ¶ 25 and
proposed amended claims 36–38 as unpatentable over the
prior art. Among other arguments, Bosch challenged the
Board’s rejection of both sets of proposed amended claims
on the grounds that the Board impermissibly placed the
burden on Bosch to establish patentability.

The CAFC noted:

We have previously held that a party challenging patent
validity on indefiniteness grounds carries the burden
of proof. See, e.g., Chicago Bd. Options Exch., Inc. v. Int’l
Sec. Exch., LLC, 748 F.3d 1134, 1141 (Fed. Cir. 2014). In
Aqua Products, Inc. v. Matal, this Court recently ruled
that the patent owner does not bear the burden of proof
on the patentability of its proposed amended claims. 872
F.3d 1290 (Fed. Cir. 2017). Rather, the petitioner bears
the burden of proving that the proposed amended claims
are unpatentable “by a preponderance of the evidence.”
35 U.S.C. § 316(e). This burden of proof allocation applies
for questions of indefiniteness, as with other questions of
In this case, the Board impermissibly assigned the
burden of proof on the issue of indefiniteness to Bosch.
See J.A. 46, 49 (“[W]e determine that Bosch has not met
its burden . . . .”). For that reason, we vacate the Board’s
denial of Bosch’s contingent motion to amend with respect
to proposed claims 23–35 and remand for the Board to
evaluate the patentability of those proposed amended
claims consistent with our direction in Aqua Products.
See Aqua Products, 872 F.3d at 1311 (“[W]here the challenger
ceases to participate in the IPR and the Board
proceeds to final judgment, it is the Board that must
justify any finding of unpatentability by reference to the
evidence of record in the IPR.”) (O’Malley, J.) (emphasis in

As to claims 36-38, the CAFC cited Aqua again:

Citing its “informative” decision in Idle Free Systems, Inc. v.
Bergstrom, Inc., No. IPR2012-00027, 2013 WL 5947697
(P.T.A.B. June 11, 2013), the Board stated that “[t]he
patent owner bears the burden of proof in demonstrating
patentability of the proposed substitute claims over the
prior art in general, and, thus, entitlement to add these
claims to its patent.” Id. For the same reasons as stated
above, we vacate the Board’s denial of Bosch’s contingent
motion to amend with respect to proposed claims 36–38
and remand for the Board to evaluate the patentability of
those proposed amended claims consistent with our
direction in Aqua Products. See Aqua Products, 872 F.3d
at 1311 (“[W]here the challenger ceases to participate in
the IPR and the Board proceeds to final judgment, it is the
Board that must justify any finding of unpatentability by
reference to the evidence of record in the IPR.”) (O’Malley,
J.) (emphasis in original).

Thursday, December 21, 2017

The saga of Bruce Wansink: an observation about academic publishing reality leads to questions in the science of pizza buffets

On the subject of "Retraction Watch," a list of the "top ten" retractions of 2017 was compiled.

One of them involved Bruce Wansink of Cornell, which illustrated the curious impact of a blog post of "spinning straw into gold" causing the gold to turn to lead. And the story also involves the issue of "proprietary" data, creating an IP slant. Retraction Watch gave background on the matter of straw to gold:

To Brian Wansink of Cornell University, a blog post he wrote in November, 2016, was a meant as a lesson in productivity: A graduate student who was willing to embrace every research opportunity submitted five papers within six months of arriving to his lab, while a postdoc who declined two chances to analyze a data set left after one year with a small fraction of the grad student’s publications.

But two months and nearly 50 comments on the post later, Wansink — known for so much high-profile nutrition research he’s been dubbed the “Sherlock Holmes of food” — has announced he’s now reanalyzing the data in the papers, and will correct any issues that arise. In the meantime, he had to decline requests to share his raw data, citing its proprietary nature.

As Wansink writes in the second addendum to the November blog post, “The Grad Student Who Never Said ‘No’:” (...)

Of the issue of possible misconduct, see Cornell finds mistakes — not misconduct — in papers by high-profile nutrition researcher

But what was the topic? Perhaps a debate in CRISPR or in superluminal propagation? No. One of
Wansinks papers shows the general area:

Eating Behaviors and the Number of Buffet Trips: An Observational Study at All-You-Can-Eat Chinese Restaurants

Of the retraction/correction issues, the problematic papers related specifically to Italian buffets.
See for example Statistical heartburn: An attempt to digest four pizza publications from the Cornell Food and Brand Lab

Jesse Singhal of The Cut wrote:

Along those same lines, lower-level researchers working at Cornell’s lab, and at others like it, face some brutal incentives of their own. Wansink himself made that clear in one of his addenda. “For Post-docs, publishing is make-or-break — it determines whether they stay in academia or they struggle in academia,” he wrote. “Metaphorically, if they can’t publish enough to push past the academic gravitational pull as a post-doc, they’ll have to unfairly fight gravity until they find the right fit. Some post-docs are willin[g] to make huge sacrifices for productivity because they think it’s probably their last chance. For many others, these sacrifices aren’t worth it.” Of course, the sacrifices also aren’t worth it if they lead to a bunch of mangled papers.

One article that was retracted: Low prices and high regret: how pricing influences regret at all-you-can-eat buffets, by Özge Siğirci and Brian Wansink in BMC Nutrition.

A post at has the text:

A lot has happened since BW [Bruce Wansink] posted the above mentioned blog post in November 2016. The short version is that we (Nick Brown, Jordan Anaya, and me) privately contacted him about a wide range of errors and inconsistencies (more on that later) that we spotted in the four papers that he mentioned in the blogpost. Although he initially responded to our emails, and even offered me to co-author a paper with him (?), he stopped replying after it was made clear that we wanted to see the data to assess the source of the apparent inconsistencies in his papers.

As BW stopped replying, we were forced to go public. After all, we have a communal responsibility to assess and verify the veracity of the scientific literature. As such, we published a pre-print detailing the more than 150 errors in the 4 papers. This report has now been published at BMC Nutrition. Wansink and his colleagues responded with a research statement, shared the data underlying these 4 papers, and issued some corrections. The released dataset and the issued corrections also contained similar inconsistencies, which we outlined in a second pre-print. Wansink, his co-authors, nor Cornell University has responded to these errors. We proceeded to check more papers, and there is a now ever-increasing list of research articles (co-)authored by Brian Wansink which have been criticized for containing serious errors, reporting inconsistencies, impossibilities, plagiarism, and data duplications.


To the best of my knowledge, there are currently:

45 publications from Brian Wansink which are alleged to contain minor to very serious issues,
which have been cited over 4000 times,
are published in over 25 different journals, and in 8 books,
spanning over 20 years of research.
This is not an exhaustive list, but only what has been reported on so far.

CATHLEEN O'GRADY -at Ars Technica wrote a post “Mindless Eating,” or how to send an entire life of research into question in April 2017 which began:

Brian Wansink didn’t mean to spark an investigative fury that revisited his entire life’s work. He meant to write a well-intentioned blog post encouraging PhD students to jump at research opportunities. But his blog post accidentally highlighted some questionable research practices that caused a group of data detectives to jump on the case.

Wansink attracted the attention because he’s a rockstar researcher—when someone’s work has had such astronomical impact, problems in their research are a big deal. His post also came at a time when his field, social sciences, is under increased scrutiny due to problems reproducing some of its key findings.

Wansink is probably regretting he ever started typing. Tim van der Zee, one of the scientists participating in the ongoing examination into Wansink’s past, keeps a running account of what’s turned up so far. “To the best of my knowledge,” van der Zee writes in a blog post most recently updated on April 6, “there are currently 42 publications from Wansink which are alleged to contain minor to very serious issues, which have been cited over 3,700 times, are published in over 25 different journals, and in eight books, spanning over 20 years of research.”

Something she said brings us to an IP topic, motivation to combine in an obviousness analysis. O'Grady wrote of publishing of a "null result":

The hypothesis [of Wansink] had been that people would eat more if they had paid more, but the study had not found that result. That’s not necessarily a bad thing. In fact, publishing null results like these is important—failure to do so leads to publication bias, which can lead to a skewed public record that shows (for example) three successful tests of a hypothesis but not the 18 failed ones. But instead of publishing the null result, Wansink wanted to get something more out of the data.

Scientists tend not to publish null results. As to "motivation to combine," this aspect can make the existence of a few successful papers establish "motivation to combine," in a world where many unsuccessful not published papers would argue against motivation to combine.

In a related vein, speculating on a negative result (in the absence of a null result) can have an adverse impact, as Doudna and the Berkeley folks learned in the CRISPR context.

On the other side, people tend not to publish "obvious" insights, so that a patent litigation attorney may have trouble "proving" an invention is obvious, simply because nobody wrote down such and such connection is obvious.

Scientists publish on what is not obvious and on results that confirm an advanced theory.

An odd event in a retraction case

A post in Retraction Watch titled Author wins judgment against Elsevier in lawsuit over retraction describes
an interesting event, wherein a publisher was required to publish part of a court decision (from Spain, not the US) in the context of a retraction.

Within the post

In October, an appeals court in Spain determined that Delibes and his co-authors had been “falsely accused of plagiarism and misappropriation of data.”

On Dec. 14, Elsevier published a note that began:

Following legal action taken by Dr Miguel Delibes, who objected to the retraction, the Sevilla Court of Appeals requires us to publish the following paragraph – contained in its ruling of October 9th 2017 – in relation to the first version of the retraction which was corrected in October 2011.

Tuesday, December 19, 2017

Senator John Kennedy and the Daubert standard

There is a posting of a video related to questioning of (now withdrawn) judicial candidate Matthew Petersen.

One of the exchanges:

Senator KENNEDY: As a trial judge, you’re obviously going to have witnesses. Can you tell me what the Daubert standard is?

PETERSEN: Sen. Kennedy, I don’t have that readily at my disposal but I would be happy to take a closer look at that. That is not something I’ve had to contend with.

One notes that Daubert relates only to the the admissibility of testimony of an expert witness, and is not about "witnesses" generally.

See for example, LBE, Frye after Daubert: The Role of Scientists in
Admissibility Issues As Seen through Analysis of
the DNA Profiling Cases

The University of Chicago Law School Roundtable: Vol. 1 : Iss. 1 , Article 19.

Video of Petersen available:

Genzyme/Reddy's case on "how much" it takes for a suggestion to have a reasonable expectation of success

The post Hypothesis alone Does not Make the Results Obvious on the Genzyme/Reddy's case has some interesting comments, including one which states:

Seems like the correct decision. The determination that there was an apparent reason to modify/combine the prior art and the determination that there was a reasonable expectation of success in so doing are separate factual inquiries. The objective evidence must support, by a preponderance, both conclusions. Too many examiners, and APJ’s, collapse both inquiries into one, meaning they conclude that because there is evidence that one of ordinary skill in the art would (at least try to) modify/combine the prior art, then that evidence also supports the conclusion that there was a reasonable expectation of success in doing so. Lots of PTAB decisions where the APJ’s conclude that appellant didn’t present any evidence that there wasn’t a reasonable expectation of success. Of course, the burden of proof on that issue is on the examiner, not the appellant.

The standard for an appellant to prevail at the CAFC on a factual determination by the district court [here, Judge Sleet of D. Del.] is "clearly erroneous," as pointed out by the CAFC in the case:

Here, the district court found that a skilled artisan would not have
had a reasonable expectation of success that plerixafor
would mobilize stem cells. DRL has not shown that this
determination was clearly erroneous.


Its view that there was no reasonable expectation
of success, based on the evidence presented at trial on a
combination of Hendrix and the ’304 Patent, was not
clearly erroneous.


After reviewing the record surrounding the prior art
and analyzing the arguments of the parties, we conclude
that the district court’s factual conclusions regarding an
insufficient reasonable expectation of success were not
clearly erroneous. That evidence is sufficient to uphold
the district court’s determination against the arguments
DRL has presented for reversal, and we need not review
the district court’s analysis of secondary considerations
that, if sound, could only further undermine DRL’s argument
for obviousness.

The CAFC is not weighing whether or not there was a preponderance of the evidence supporting Genzyme.
As the Federal Circuit has held, this Court "as part of its clear error review, must review the Board's weighing of the evidence; it may not weigh any evidence itself." Deloach, 704 F.3d at 1380
To reverse, the CAFC must have a definite and firm conviction that a mistake was made by the district court.

The CAFC did not reference Gypsum in this case. Note the case Merck v. Hospira, 874 F.3d 724
(Oct. 2017) , which stated:

On appeal from a bench trial, we review a district court's conclusions of law de novo and its findings of fact for clear error. Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed. Cir. 2004). A factual finding is only clearly erroneous if, despite some supporting evidence, we are left with the definite and firm conviction that a mistake has been made. United States v. U.S. Gypsum Co., 333 U.S. 364, 395, 68 S. Ct. 525, 92 L. Ed. 746 (1948); see also Polaroid Corp. v. Eastman Kodak [page 1493] Co., 789 F.2d 1556, 1559 (Fed. Cir. 1986) ("The burden of overcoming the district court's factual findings is, as it should be, a heavy one.").Obviousness is a question of law, based on underlying factual findings, including what a reference teaches, whether a person of ordinary skill in the art would have been motivated to combine references, and any relevant objective indicia of nonobviousness. Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047-48, 1051 (Fed. Cir. 2016) (en banc).

[Compare also the Allergan case:
A factual finding is clearly erroneous if, despite some supporting evidence, we
are left with a definite and firm conviction that a mistake
has been made. United States v. U.S. Gypsum Co., 333
U.S. 364, 395 (1948); Alza Corp. v. Mylan Labs., Inc., 464
F.3d 1286, 1289 (Fed. Cir. 2006)]

Other circuits have interesting discussions of "clearly erroneous":

The most creative (and perhaps, most
deferential) of these is the Seventh Circuit’s “dead fish” test which
states that “[t]o be clearly erroneous, a decision must strike us as
more than just maybe or probably wrong; it must, as one member
of this court recently stated during oral argument, strike us as
wrong with the force of a five-week-old, unrefrigerated dead
fish.”21 Alternatively, a two-part test arising from the Fifth Circuit
contracts deference, providing for clear error either if there is a
“definite and firm conviction of mistake” or if the “account was
implausible based upon the entirety of the record.”22

from Kenneth Jennings, 14 N.C. J.L. & TECH. ON. 301 (2013)


A clear error of judgment in weighing relevant factors is also a ground for finding an abuse of discretion. Where it is not evident that a district court has applied the correct legal standard in exercising its discretion, the Federal Circuit may vacate and remand for the district court to do so in the first instance, especially where further factual findings may be warranted under the correct legal standard.

And one recalls the Kemps case:

Needless to say, the Federal Circuit was not pleased. The court noted that "the briefing of the entire case by the USPTO under the incorrect standard was inappropriate." n67 The court faulted the USPTO for "unfairly burdening the applicant" who "felt like "a bystander to some long-running dispute to which he really is not a party.'" n68 The court also faulted the USPTO for failing to argue for en banc consideration: "the USPTO simply declared that the standard of review was "arbitrary and capricious,' briefed the case as such, and [page 1072] effectively disregarded the substantial precedent behind the court's standard of review, with only a footnote recognizing the correct standard." n69 Ultimately, the Federal Circuit concluded that this case would have been decided the same way under either standard; therefore, the issue was not ripe for decision. n70 The court concluded,

from Holbrooks, 66 Am. U.L. Rev. 1061 (2017)

See also Field, 27 Fordham Intell. Prop. Media & Ent. L.J. 555 (2017)

Note Sung has written: With regard to the Federal Circuit's review of the USPTO's factual findings, the clearly erroneous standard is more stringent than the APA's arbitrary and capricious or substantial evidence standard. from 48 Am. U.L. Rev. 1233 (1999)

Appellant Tropp prevails at CAFC in Travel Sentry case

The appellant Tropp prevailed, causing a summary judgment decision to be vacated:

Accordingly, we vacate the district court’s entry
of summary judgment of noninfringement in favor of
Travel Sentry and its licensees and remand for further
proceedings. Because Travel Sentry and its licensees are
no longer “prevailing parties” to whom an award of attorney
fees could be made under 35 U.S.C. § 285, we dismiss
their cross-appeal as moot.

Akamai arises:

The primary issue in this appeal relates to attribution:
Is there a genuine dispute of material fact regarding
whether TSA’s performance of the final two steps of the
claims the ’537 and ’728 patents is attributable to Travel
Sentry such that Travel Sentry is responsible for directly
infringing these claims? To properly frame this question,
we first examine the “governing legal framework for
direct infringement” outlined in Akamai V, 797 F.3d at
1023, and then consider how this framework was applied
both to the facts in Akamai V and to those in a more
recent decision from this court: Eli Lilly and Co. v. Teva
Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017).


We recently applied Akamai V’s “two-prong test” in
Eli Lilly, a Hatch-Waxman suit brought by Eli Lilly
against several defendants seeking to launch a generic
version of Eli Lilly’s chemotherapy drug. 845 F.3d at
1362. The claims in that case comprise three relevant
steps: (1) administering a particular dosage of folic acid
prior to the first administration of the chemotherapy drug
pemetrexed disodium; (2) administering a particular
dosage of vitamin B12 prior to the first administration of
pemetrexed disodium; and (3) administering pemetrexed
disodium. Id. at 1362. Though physicians administered
vitamin B12 and pemetrexed, their patients “selfadminister[ed]
folic acid with guidance from physicians.”
Id. Eli Lilly’s theory of infringement therefore required
establishing that physicians were liable for divided infringement,
as the defendants were accused of inducing
physicians’ direct infringement of the method claims. Id.
Following a bench trial, the district court, applying Akamai
V, concluded that the defendants would induce infringement
of the claims if their generic version of
pemetrexed was launched. Id. at 1363.

We agreed.


Akamai V and Eli Lilly highlight the importance of
correctly identifying the relevant “activity” or “benefit”
that is being conditioned upon the performance of one or
more claim steps. The cases also emphasize that the
context of the claims and conduct in a particular case will
inform whether attribution is proper under Akamai V’s
two-prong test.

The error of the district court:

We find that, under the circumstances presented here,
a reasonable jury could conclude that TSA’s performance
of the final two claim steps is attributable to Travel
Sentry such that Travel Sentry is liable for direct infringement
under § 271(a). Although the partnership-like
relationship between Travel Sentry and TSA differs in
several respects from the service provider-customer and
physician-patient relationships in Akamai V and Eli Lilly,
a common thread connects all three cases: evidence that
a third party hoping to obtain access to certain benefits
can only do so if it performs certain steps identified by the
defendant, and does so under the terms prescribed by the
defendant. The district court, however, did not make this
connection. Instead, it concluded that the “unusual
circumstances of Akamai are not mimicked here.” Travel
Sentry III, 192 F. Supp. 3d at 337.

In reaching this conclusion, the district court erred in
a number of ways.
The district court interpreted Akamai
V too narrowly when it concluded that the decision “did
not disturb” any aspects of our holdings in BMC and
Muniauction. While we did reaffirm the concept of a
single-actor theory of direct infringement, we made clear
that the restrictive view of when the acts of a third party
can be attributable to another evidenced in those cases is
no longer the governing law. In other words, we “broaden[ed]
the circumstances in which others’ acts may be
attributed to an accused infringer to support direct infringement
liability for divided infringement, relaxing
the tighter constrains on such attribution reflected in our
earlier precedents
and in the three previous rulings for
Limelight on direct infringement.” Mankes v. Vivid Seats
Ltd., 822 F.3d 1302, 1305 (Fed. Cir. 2015) (citations

Grokster is referenced:

“[P]rinciples of attribution are to be considered in the
context of the particular facts presented,” Akamai V, 797
F.3d at 1023, and we are satisfied that the context of this
case can justify attributing TSA’s performance of the final
two claim steps to Travel Sentry. Our conclusion finds
additional support in Grokster, a case on which we relied
in formulating Akamai V’s two-prong test. Indeed, immediately
after setting forth this test, we cited to Grokster, a
case concerning indirect infringement in the copyright
context, for the proposition that “an actor ‘infringes vicariously
by profiting from direct infringement’ if that actor
has the right and ability to stop or limit the infringement.”
Akamai V, 797 F.3d at 1023 (citing Grokster, 545
U.S. at 930). Here, Travel Sentry “has the right and
ability to stop or limit” TSA’s ability to practice the final
two claim steps—and thus receive the benefits that follow
from practicing those steps—through a number of means,
including terminating the MOU, discontinuing its practice
of replacing passkeys that are damaged or lost, and
changing the design of future locks such that the keys
previously provided to TSA no longer work.

Monday, December 18, 2017

HTC loses appeal at CAFC related to IPR of U.S. Patent No. 7,941,174

The outcome was that appellant HTC lost:

HTC Corporation and ZTE (USA), Inc. appeal a final
written decision of the Patent Trial and Appeal Board in
an inter partes review. Appellants argue that the Board
improperly construed the claim term “message” and erred
in finding that HTC failed to show that the prior art
anticipated or rendered obvious the challenged claims.
We find no error in the Board’s claim construction, and
substantial evidence supports the Board’s patentability
determination. We affirm.

HTC's arguments:

HTC raises three arguments on appeal.

First, HTC argues that the Board failed to construe the term “message”
according to its broadest reasonable interpretation.

Second, HTC contends that Baker anticipates the challenged
claims because it discloses reducing transmission
power at the beginning of a frame boundary in a UMTS
system, and therefore at the start of a message transmission.

Third, HTC challenges the Board’s finding that
Reed does not disclose determining a single headroom for
multiple data streams.

Within the discussion of anticipation:

The Board next considered whether Baker inherently
anticipates the “start of a message transmission” limitation.
A party seeking to establish inherent anticipation
must show that a person of ordinary skill in the art would
recognize that missing descriptive matter in a prior art
reference is nevertheless necessarily present. Cont’l Can
Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
The Board found that HTC failed to show that the Baker
reference discloses a mobile station that transmits EDCH
messages, relying on an admission from HTC’s counsel
stating that he did not know whether “Baker [is] talking
about an EDCH message and not something else that can
be more than one frame.”
Final Written Decision at *6;
J.A. 697.3

Footnote 3:

In its reply brief, HTC points to portions of CCE’s
expert declaration that generally discuss UMTS systems,
in particular that EDCH data messages can be transmitted
through DPDCH and DPCCH channels. Reply 13;
J.A. 2128, 2130. This is a new argument. HTC did not
argue before the Board that Baker teaches a mobile
station that transmits EDCH messages. J.A. 12 (“Petitioner
does not argue or identify evidence indicating that
the mobile station in Baker transmits an EDCH message.”).
We decline to consider new arguments on appeal
that were not raised below before the Board. Icon Health
& Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1040 (Fed.
Cir. 2017); see Singleton v. Wulff, 428 U.S. 106, 120

There is a theme of "HTC inconsistency" --

HTC advances inconsistent claim construction arguments.
In its opening brief, HTC argues that the Board
failed to apply the broadest reasonable interpretation of
the term “message” by defining a message by its content
and by requiring a specific beginning and endpoint.
Appellants’ Br. 37–38. During oral argument, however,
HTC stated that the Board did not construe the term
“message” as having an ending requirement. Oral Arg.
.aspx?fl=2016-1880.mp3. Similarly, HTC’s opening brief
claims that the Board’s construction of message improperly
excludes single frame messages. Yet, at oral argument,
HTC conceded that the Board’s interpretation of “message”
did not exclude single frame messages. Oral Arg.
1:45–2:21. In its reply brief, HTC takes a different tack,
arguing that the Board improperly construed the phrase
“at a start of a message transmission” and failed to distinguish
between “message transmission” and “message.”
Reply 5–6.

HTC’s expert, Dr. Tim Williams, submitted two
declarations in this matter. Because Dr. Williams’s
discussion of Reed in his second declaration was inconsistent
with his first declaration, the Board found Dr.
Williams’s second declaration lacked credibility and
afforded it little weight.

NBC News on 17 Dec. 2017 does "agrihoods," two years after "CBS Sunday Morning"

Back on November 22, 2015, CBS Sunday Morning did a feature on the growing popularity of agrihoods [See IPBiz post in November 2015].

Terry Sanders of NBC did a story on December 17, 2017 which was prefaced:

Millennials are harkening back to simpler days and creating communities on farms, surrounded by nature’s bounty and benefits. There are now more than a hundred of these neighborhoods -- called Agrihoods -- across the country,


Two years later, on December 17, 2017, NBC Nightly News is catching up to the trend.

Friday, December 15, 2017

CAFC addresses immoral/scandalous marks in Brunetti; 2(a) bar found unconstitutional

From the opening:

Erik Brunetti appeals from the decision of the Trademark
Trial and Appeal Board (“Board”) affirming the
examining attorney’s refusal to register the mark FUCT
because it comprises immoral or scandalous matter under
15 U.S.C. § 1052(a) (“§ 2(a)”). We hold substantial evidence
supports the Board’s findings and it did not err
concluding the mark comprises immoral or scandalous
matter. We conclude, however, that § 2(a)’s bar on registering
immoral or scandalous marks is an unconstitutional
restriction of free speech. We therefore reverse the
Board’s holding that Mr. Brunetti’s mark is unregistrable.

Yes, Tam is cited:

When Mr. Brunetti filed his appeal, his constitutional
argument was foreclosed by binding precedent. In
McGinley, our predecessor court held the refusal to register
a mark under § 2(a) does not bar the applicant from
using the mark, and therefore does not implicate the First
Amendment. 660 F.2d at 484. Commentators heavily
criticized McGinley and our continued reliance on it,
particularly in light of the many changes to First
Amendment jurisprudence over the last thirty years. In
re Tam, 808 F.3d 1321, 1333–34 & n.4 (Fed. Cir. 2015) (en
banc). We reconsidered McGinley en banc in Tam, which
held the disparagement provision of § 2(a) unconstitutional
under the First Amendment because it discriminated
on the basis of content, message, and viewpoint. Id.
at 1334–37, 1358. We held that, although trademarks
serve a commercial purpose as source identifiers in the
marketplace, the disparagement provision of § 2(a) related
to the expressive character of marks, not their commercial
purpose. Id. at 1337–39. As either a contentbased
or viewpoint-based regulation of expressive speech,
the disparagement provision was subject to strict scrutiny.
Id. at 1339. It was undisputed that the measure did
not survive such scrutiny. Id.

What the government argued:

The government concedes that § 2(a)’s bar on registering
immoral or scandalous marks is a content-based
restriction on speech. Oral Arg. at 11:57–12:05. And the
government does not assert that the immoral or scandalous
provision survives strict scrutiny review. Instead, the
government contends § 2(a)’s content-based bar on registering
immoral or scandalous marks does not implicate
the First Amendment because trademark registration is
either a government subsidy program or limited public
forum. Gov’t Letter Br. 14, In re Brunetti, No. 15-1109,
Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg.
at 12:06–21, 18:15–39. Alternatively, the government
argues trademarks are commercial speech implicating
only the intermediate level of scrutiny set forth in Central
Hudson. Gov’t Letter Br. 15, In re Brunetti, No. 15-1109,
Docket No. 60 (Fed. Cir. July 20, 2017); Oral Arg.
at 35:05–17. Under a less exacting degree of scrutiny, the
government argues the immoral or scandalous provision
is an appropriate content-based restriction tailored to
substantial government interests. We consider these
arguments in turn.

Footnote 1 is of interest:

The government maintains that our en banc decision
in Tam is not binding on this panel in light of the
Supreme Court’s decision in Tam. Oral Arg. at 12:23–
13:36, 15:43–54. We question the force of this assertion
because the Supreme Court did not reverse or otherwise
cast doubt on the continuing validity of our government
subsidy analysis and other aspects of our decision in Tam.
See Chen v. Allstate Ins. Co., 819 F.3d 1136, 1138 n.1 (9th
Cir. 2016); Balintulo v. Ford Motor Co., 796 F.3d 160, 166
n.28 (2d Cir. 2015). Because we independently reach the
same conclusion as the en banc court, we need not decide
whether that holding continues to bind future panel
decisions in this circuit.

As to the standard of review:

As in the case of disparaging marks, the
PTO’s rejections under § 2(a)’s bar on immoral or scandalous
marks are necessarily based in the government’s
belief that the rejected mark conveys an expressive message—namely,
a message that is scandalous or offensive
to a substantial composite of the general population. See
Tam, 808 F.3d at 1338. Section 2(a) regulates the expressive
components of speech, not the commercial components
of speech, and as such it should be subject to strict
scrutiny. See Sorrell v. IMS Health Inc., 564 U.S.
552, 565 (2011). There is no dispute that § 2(a)’s bar on
the registration of immoral or scandalous marks is unconstitutional
if strict scrutiny applies.

The Hustler case is cited:

Second, Supreme Court precedent makes clear that
the government’s general interest in protecting the public
from marks it deems “off-putting,” whether to protect the
general public or the government itself, is not a substantial
interest justifying broad suppression of speech. “[T]he
fact that society may find speech offensive is not a sufficient
reason for suppressing it.” Hustler Magazine, Inc. v.
Falwell, 485 U.S. 46, 55 (1988); Bolger v. Youngs Drug
Prods. Corp., 463 U.S. 60, 71 (1983) (“At least where
obscenity is not involved, we have consistently held that
the fact that protected speech may be offensive to some
does not justify its suppression.” (citation omitted));
Cohen v. California, 403 U.S. 15, 21 (1971) (“[T]he mere
presumed presence of unwitting listeners or viewers does
not serve automatically to justify curtailing all speech
capable of giving offense.”); Cox, 379 U.S. at 551
(“[C]onstitutional rights may not be denied simply because
of hostility to their assertion or exercise.”). “Where
the designed benefit of a content-based speech restriction
is to shield the sensibilities of listeners, the general rule is
that the right of expression prevails, even where no less
restrictive alternative exists.” Playboy, 529 U.S. at 813.

The Supreme Court’s decision in Tam supports our
conclusion that the government’s interest in protecting
the public from off-putting marks is an inadequate government
interest for First Amendment purposes.

The George Carlin case was cited:

Finally, the government does not have a substantial
interest in protecting the public from scandalousness and
profanities. The government attempts to justify this
interest by pointing to the Supreme Court’s decision in
FCC v. Pacifica Foundation, 438 U.S. 726 (1978). In
Pacifica, the Supreme Court upheld the constitutionality
of the FCC’s declaratory order determining that an afternoon
radio broadcast of George Carlin’s “Filthy Words”
monologue was indecent and potentially sanctionable. Id.
at 730–32. The Court explained “references to excretory
and sexual material . . . surely lie at the periphery of First
Amendment concern.” Id. at 742. The Court justified the
FCC’s order, however, because radio broadcasting has “a
uniquely pervasive presence in the lives of all Americans”
and is “uniquely accessible to children, even those too
young to read,” confronting Americans “in the privacy of
the home, where the individual’s right to be left alone
plainly outweighs the First Amendment rights of an
intruder.” Id. at 749. The Court stressed: “It is appropriate
to emphasize the narrowness of our holding.” Id. at
750. S

The matter of inconsistency arose:

Finally, no matter the government’s interest, it cannot
meet the fourth prong of Central Hudson. The PTO’s
inconsistent application of the immoral or scandalous
provision creates an “uncertainty [that] undermines the
likelihood that the [provision] has been carefully tailored.”
See Reno, 521 U.S. at 871. Nearly identical marks have
been approved by one examining attorney and rejected as
scandalous or immoral by another. The PTO registered
the mark FUGLY for use on clothing, but refused registration
for use on alcoholic beverages. Compare Reg.
No. 5,135,615, with Appl. No. 78,866,347. See also
COCAINE, Appl. No. 78,829,207 (rejected), COCAINE,
Reg. No. 1,340,874 (accepted). The PTO registered NO
BS! BRASS, Reg. No. Reg. No. 5,053,827, for entertainment
services but rejected NO BS ZONE, Appl.
No. 76,626,390, for internet training. NO $#!+, Appl.
No. 85,855,449, was rejected, but $#*! MY DAD SAYS,
Reg. No. 4,142,745, was allowed. See also ROLL TURD,
Appl. No. 86,448,988 (rejected), TURD HERDERS, Reg.
No. 5,180,286 (registered). Although the language in
these marks is offensive, we cannot discern any pattern
indicating when the incorporation of an offensive term
into a mark will serve as a bar to registration and when it
will not.

There was an opinion by Judge DYK concurring in the judgment.

Wednesday, December 13, 2017

The role of the "myelin sheath" in conduction and multiple sclerosis

In April 2005 in an article in "Intellectual Property Today" entitled Intellectual Property at the Supreme Court and Before Congress [available LEXIS], LBE noted some "approximations" used by lawyers to explain certain science issues in the patent context, which explanations fundamentally were incorrect:

The situation here of an obvious falsity is distinct from one in which one errs for the sake of an approximation. For example, Michael Carlson, in "An Approach to Effective Opening Statements in Patent Cases," Int. Prop. Today, pp. 10-11 (Feb. 2005) analogized rf inductance heating in the semiconductor industry to heating in microwave ovens. Although microwave ovens are tuned to (approximately) excite a rotational resonance in water (ie, operate at about 2.45 GHz though the resonance is at about 10 GHz), they are not directly analogous to induction heating, which typically operates on an electronic conductor (e.g., graphite) in the frequency range 5 to 400 kHz and relies on eddy currents induced by ac magnetic fields. RF waves are not tuned to vibrate graphite "molecules." Similarly, close packing of spheres can produce ABAB. . . stacking (hexagonal closest packing) or ABCABC. . . (cubic closest packing), neither of which represent the tetrahedral arrangement of atoms in elemental silicon. Further, even optically isotropic liquids manifest some order, as can be perceived by x-ray diffraction, so they are not "amorphous" in terms of molecular order.

In certain meetings related to "multiple sclerosis," the bad effects arising from attack on the myelin sheath of CNS nerves is frequently analogized to the breaking down of the insulation of a common electrical cord.

For example, an overview at the national MS society webpage has the text:

Most of the axons in the central nervous system are wrapped in myelin, a substance rich in lipids (fatty substances) and proteins. Like the coating around an electrical wire, myelin insulates and protects the axon and helps speed nerve transmission.


The problematic part of this text is Like the coating around an electrical wire . Although myelin is an "insulator", the manner in which it functions is unlike the "coating" around a wire which conducts electricity via the movement of electrons.

from The Myelin Sheath by Pierre Morell and Richard H Quarles in Basic Neurochemistry: Molecular, Cellular and Medical Aspects. 6th edition. :

Myelin is an electrical insulator; however, its function of facilitating conduction in axons has no exact analogy in electrical circuitry. In unmyelinated fibers, impulse conduction is propagated by local circuits of ion current that flow into the active region of the axonal membrane, through the axon and out through adjacent sections of the membrane (Fig. 4-1). These local circuits depolarize the adjacent piece of membrane in a continuous, sequential fashion. In myelinated axons, the excitable axonal membrane is exposed to the extracellular space only at the nodes of Ranvier; this is the location of sodium channels [2]. When the membrane at the node is excited, the local circuit generated cannot flow through the high-resistance sheath and, therefore, flows out through and depolarizes the membrane at the next node, which might be 1 mm or farther away (Fig. 4-1). The low capacitance of the sheath means that little energy is required to depolarize the remaining membrane between the nodes, which results in local circuit spreading at an increased speed. Active excitation of the axonal membrane jumps from node to node; this form of impulse propagation is called saltatory conduction (Latin saltare, “to jump”). Such movement of the wave of depolarization is much more rapid than in unmyelinated fibers. Furthermore,because only the nodes of Ranvier are excited during conduction in myelinated fibers, Na+ flux into the nerve is much less than in unmyelinated fibers, where the entire membrane is involved. An example of the advantage of myelination is obtained by comparison of two different nerve fibers, both of which conduct at 25 m/sec at 20°C. The 500-mm diameter unmyelinated giant axon of the squid requires 5,000 times as much energy and occupies about 1,500 times as much space as the 12-mm diameter myelinated nerve in the frog.



A model of a simple insulated electrical cord does not manifest the function of the nodes of Ranvier in myelinated axons. Voltage-gated sodium channels (Nav) clustered at nodes of Ranvier promote rapid nerve conduction in the myelinated nerves of vertebrates. The nodes of Ranvier contain Na+/K+ ATPases, Na+/Ca2+ exchangers and a high density of voltage-gated Na+ channels, which allow the generation of the action potential.
The main reason for the increased conduction velocity [CV] of myelinated axons is that it reduces effective membrane capacitance.

One does note that Ranvier himself did bring up the analogy to electrical cables:

Ranvier extended the comparison to transatlantic cables: “Electrical wires immersed in a conductive medium need to be protected from this medium by a non-conductive sheath; it is on this principle that transatlantic cables are built.” (Ranvier, 1878).

from Zalc, Brain Research, Volume 1641, Part A, 15 June 2016, Pages 4-10.

See also

Thursday, December 07, 2017

CAFC addresses obviousness, marking, damages in Arctic Cat

In the technical area of thrust steering
systems for personal watercraft (“PWC”) propelled by jet
stream, Arctic Cat sued BRP for infringement.

BRP did not do well before the jury, and sought JNOV:

At trial, the jury found both patents not invalid,
awarded a royalty consistent with Arctic Cat’s model
($102.54 per unit) to begin on October 16, 2008, and found
by clear and convincing evidence that BRP willfully
infringed the asserted claims.


After post-trial briefing, the district court denied
BRP’s renewed motion for judgment as a matter of law on
all issues. It granted Arctic Cat’s motion for an ongoing
royalty, awarding $205.08 per unit. BRP appeals the
district court’s denial of judgment as a matter of law on
validity, marking, damages, and willfulness, as well as its
grant of an ongoing royalty and decision to treble damages.

Of motivation to combine, the CAFC wrote:

Therefore, a motivation to combine can
be found explicitly or implicitly in the prior art references
themselves, in market forces, in design incentives, or in
“any need or problem known in the field of endeavor at
the time of invention and addressed by the patent.” KSR,
550 U.S. at 420–21; accord Plantronics, Inc. v. Aliph, Inc.,
724 F.3d 1343, 1354 (Fed. Cir. 2013) (“[M]otivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the ‘interrelated teachings of
multiple patents’; ‘any need or problem known in the field
of endeavor at the time of invention and addressed by the
patent’; and the background knowledge, creativity, and
common sense of the person of ordinary skill.” (quoting
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328–29 (Fed. Cir. 2009))). “The court should consider a
range of real-world facts to determine ‘whether there was
an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.’” Intercontinental
Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336,
1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
Motivation to combine is a factual determination as to
whether there is a known reason a skilled artisan would
have been motivated to combine elements to arrive at a
claimed combination. This is not the ultimate legal
determination of whether the claimed combination would
have been obvious to the ordinary artisan—meaning that
it is possible that a reason or motivation may exist, but
nonetheless the ordinary artisan would not have found
the combination obvious.

When a challenger shows that a “motivation” existed
for a relevant skilled artisan to combine prior
art in the way claimed in the patent at issue,
such a showing commonly supports and leads
readily to the further, ultimate determination
that such an artisan, using ordinary creativity,
would actually have found the claimed invention
obvious. But the latter conclusion does not follow
automatically from the former finding, and additional
evidence may prevent drawing it. . . . Even
with a motivation proved, the record may reveal
reasons that, after all, the court should not conclude
that the combination would have been obvious
. . . .
Intercontinental Great Brands, 869 F.3d at 1346–47.

BRP tried the finite, predictable solution approach from KSR:

BRP argues a skilled artisan would have selected the
Challenger system because it was one of a finite number
of identified, predictable solutions to the problem of offthrottle
steering in PWCs. See KSR, 550 U.S. at 421. The
SAE Interim and Draft Final Reports identified the
Challenger’s throttle reapplication as one of four solutions
to the problem of off-throttle steering, along with rudders,
flaps, and scoops. The National Association of State
Boating Law Administrators also explained that jet boats
and PWCs are similar and off-throttle directional control
is a problem for both. Rheault ’833 disclosed that its
steer-responsive throttle “is applicable to single-engine
personal watercraft,” and Rheault ’938 states the Challenger
jet boat’s thrust steering “is applicable to all types
of watercraft vehicles, including personal watercraft
vehicles.” J.A. 8942 at Abstract; J.A. 8920 at 8:15–17.
For these reasons, BRP argues a reasonable jury could
only have found a skilled artisan would have been motivated
to modify a PWC with Challenger’s off-throttle
thrust reapplication system, which would have combined
known elements to improve the system in the same way
and yield expected results

The "substantial evidence" standard was pivotal:

If such a fact finding is supported by substantial evidence,
we may not reverse it. In briefing and oral argument,
BRP devoted much of its argument to re-litigating its case
and its evidence rather than addressing the evidence that
could have supported the jury’s finding of no motivation to
combine. We do not reweigh the evidence and reach our
own factual determination regarding motivation. The
question for us on appeal is only whether substantial
evidence supports the jury’s presumed finding. See, e.g.,
Apple, 839 F.3d at 1052 (“Our job is not to review whether
Samsung’s losing position was also supported by substantial
evidence or to weigh the relative strength of Samsung’s
evidence against Apple’s evidence. We are limited
to determining whether there was substantial evidence
for the jury’s findings, on the entirety of the record.”). We
conclude that it does.

There was asserted ambiguity on motivation to combine:

This evidence may not rise to the level of teaching
away. Nonetheless, in light of this record, the jury’s
determination that there was no motivation to make this
particular combination is supported by substantial evidence.
Evidence suggesting reasons to combine cannot be
viewed in a vacuum apart from evidence suggesting
reasons not to combine.
In this case, the same reference
suggests a reason to combine, but also suggests reasons
that a skilled artisan would be discouraged from pursuing
such a combination. Under such circumstances, the jury’s
fact finding regarding motivation is supported by substantial
evidence. Coupled with testimony confirming the
potential problems of automatic throttle reapplication and
suggesting an alternative approach might reduce those
same problems, J.A. 2230–32, a jury could find a skilled
artisan would not have been motivated to combine the
Challenger system with a PWC to arrive at the claimed

Of some interest is the text

An internal BRP “brainstorming” session identified thirtytwo
possible designs directed to off-throttle steering. J.A.
9454. And there is evidence that other potential solutions
to the off-throttle steering problem existed but were not
fully disclosed for confidentiality and other concerns. See,
e.g., J.A. 7532 (noting that some ideas offered in response
to SAE’s inquiry “have typically either not conveyed
sufficient information or have patent, propriety, or litigation

What can happen when does not object:

BRP argues that substantial evidence does not support
the jury’s presumed factual finding that the claimed
invention received industry praise because “praise from a
Coast Guard official in Arctic Cat’s own press release” is a
“hearsay statement [that] cannot overcome persuasive
evidence that the claimed technology described the same
approach as BRP’s system.” Appellant’s Br. 35–36 (citing
J.A. 7828; J.A. 7871; In re Cree, Inc., 818 F.3d 694, 702
(Fed. Cir. 2016)). We disagree for at least two reasons.
First, Arctic Cat contends—and BRP does not contest—
that BRP failed to object to this evidence as hearsay at
trial, so the jury was entitled to credit the statement.
Appellee’s Br. 12. Second, that Captain Holmes’ statements
appear in Arctic Cat’s press release goes to evidentiary
weight. Captain Holmes’ statements and
Mr. Bernier’s testimony constitute substantial evidence to
support the jury’s presumed factual finding that the
claimed invention received praise from the industry. This
evidence of industry recognition of the significance and
value of the claimed invention weighs in favor of nonobviousness.

Of marking, note

We hold an alleged infringer who challenges the patentee’s
compliance with § 287 bears an initial burden of
production to articulate the products it believes are unmarked
“patented articles” subject to § 287. To be clear,
this is a low bar. The alleged infringer need only put the
patentee on notice that he or his authorized licensees sold
specific unmarked products which the alleged infringer
believes practice the patent. The alleged infringer’s
burden is a burden of production, not one of persuasion or
We do not here determine the minimum showing
needed to meet the initial burden of production, but we
hold in this case it was satisfied by BRP. At trial BRP
introduced the licensing agreement between Honda and
Arctic Cat showing Honda’s license to practice “Arctic Cat
patents that patently cover Arctic Cat’s Controlled Thrust
Steering methods, systems and developments.” J.A. 7830
§ 1.01. BRP identified fourteen Honda PWCs from three
versions of its Aquatrax series sold between 2002 and
2009. J.A. 3540–41 ¶ II. BRP’s expert testified that he
“review[ed] information regarding those models” and
believed if BRP’s OTAS system practiced the patents, so
did Honda’s throttle reapplication system in the Aquatrax
PWCs. J.A. 2447–49; J.A. 2482. This was sufficient to
satisfy BRP’s initial burden of production.


The district
court erred in placing this burden upon BRP and thus we
vacate and remand on marking.

Because the district court adopted this legal approach
at the summary judgment stage, it made clear to the
parties that it would be BRP’s burden to prove that the
unmarked products fell within the patent claims. Arctic
Cat, therefore, did not have a fair opportunity to develop
its case regarding the Honda PWCs at trial.
Arctic Cat was not on notice regarding its burden, and in
fact labored under the assumption that BRP had the
burden of proof, reversal would be improper. We thus
vacate the district court’s judgment as to marking and
remand so that Arctic Cat has an opportunity to proffer
evidence related to the identified Honda PWCs.2

Of making arguments in footnotes, from footnote 4 of the
CAFC opinion:

BRP states in a footnote that even if this testimony
were admissible, it is irrelevant and thus Arctic Cat
failed to provide sufficient evidence to support the jury’s
award. Appellant’s Br. 46 n.3. This single sentence,
devoid of any analysis, is insufficient for BRP to meet its
burden on appeal, and we nevertheless conclude
Mr. Bratic’s testimony constitutes substantial evidence
supporting the jury’s reasonable royalty award.

Of a decision without briefing:

Finally, the district court did not abuse its discretion
by trebling damages. While the district court initially
trebled damages without much explanation, J.A. 97–98, it
explained its decision in a subsequent thorough and wellreasoned
opinion. See J.A. 99–116 (applying the factors
outlined in Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed.
Cir. 1992)). Although the district court did not allow the
parties to brief the issue, we will not adopt a blanket rule
that a district court abuses its discretion by deciding an
issue without receiving briefing from the parties. That is
especially true where, as here, BRP attacks the district
court’s procedure but does not explain how additional
briefing would have changed the outcome. In short, BRP
has not shown that the district court’s failure to allow
briefing amounts to an abuse of discretion. We affirm the
district court’s denial of judgment as a matter of law on
willfulness and its order trebling damages.

Perry Mason does patents

In "The Case of the Irate Inventor" (first broadcast 28 May 1960), "Perry Mason" brushes with patent law.

Thirty-nine years before Pfaff, the idea of whether or not an invention was "ready for patenting" arose in determining "who owned" rights to an invention. The particular agreement in the case involved partners, and had clauses for involuntary and voluntary sale of inventions. The partners adverse to Perry's client tried to obtain the invention through an involuntary sale, but Perry got a voluntary sale done first.

Thus, Perry outmaneuvered the adverse partners, and Della Street, Perry's loyal secretary, became owner of an invention for an anti-collision device (for airplanes and possibly other vehicles). The trick: if the partnership broke up, an inventor himself owned rights in inventions not ready for patenting at the break-up time.

This is not your typical Perry Mason episode. The perp did NOT confess in court, and invoked Fifth Amendment rights against self-incrimination. Not your usual Mason with a blurting confession at the end. The details of "what happened" were not revealed until the epilog in Perry's office. As to inventors per se, the disgruntled wife of the inventor was feeding details of his invention to her lover who was his competitor. The cheating wife was the decedent in this case, but not by the victimized husband.

Berger (Talman) is in the credits, but this was near the time he was removed from the show (later to come back).

Tuesday, December 05, 2017

PTAB reversed in Hulu matter: To bar Hulu from pressing an argument it raised in a ground the Board found “redundant” and that it expressly incorporated into other proposed grounds of unpatentability on which the Board instituted would not only unfairly prejudice Hulu, ...

The decision was a mixture:

Today we decide three appeals in companion cases
from final written decisions of the United States Patent
and Trademark Office (“PTO”) Patent Trial and Appeal
Board’s (“Board”) inter partes reviews (“IPRs”) of U.S.
Patent No. 7,191,233 (“the ’233 patent”), owned by CRFD
Research, Inc. (“CRFD”). Iron Dome LLC v. CRFD Research,
Inc., No. IPR2015-00055, 2016 Pat. App. LEXIS
6855 (P.T.A.B. Apr. 22, 2016) (hereinafter “Iron Dome
Final Written Decision,” Appeal No. 16-2198); DISH
Network Corp. v. CRFD Research, Inc., No. IPR2015-
00627, 2016 Pat. App. LEXIS 7567 (P.T.A.B. June 1,
2016) (hereinafter “DISH Final Written Decision,” Appeal
No. 16-2298); Hulu, LLC v. CRFD Research, Inc., No.
IPR2015-00259, 2016 Pat. App. LEXIS 4340 (P.T.A.B.
June 1, 2016) (hereinafter “Hulu Final Written Decision,”
Appeal No. 16-2437). For the reasons stated below, we
affirm the Iron Dome and DISH Final Written Decisions,

but we reverse the Board’s determination on obviousness
in the Hulu Final Written Decision.

As to review:

We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Gartside,
203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial
evidence is something less than the weight of the evidence
but more than a mere scintilla of evidence.” In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir. 2012) (citing Gartside, 203
F.3d at 1312). It is “such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
In re Applied Materials, Inc., 692 F.3d 1289, 1294
(Fed. Cir. 2012) (quoting Consol. Edison Co. of N.Y. v.
NLRB, 305 U.S. 197, 229 (1938)). We have jurisdiction
over these appeals under 28 U.S.C. § 1295(a)(4).

Of Hulu:

Hulu appeals the Board’s determination in the Hulu
Final Written Decision that (1) claims 1–3, 23, and 24 are
not anticipated by Bates, (2) claims 1–6, 8–11, 23–25, and
29–31 would not have been obvious over Bates and Chan;
(3) claims 13, 14, 34, and 35 would not have been obvious
over Bates and Zou; and (4) claims 15, 17–20, 36, and 38–
41 would not have been obvious over Bates, Zou, and
Chan. For the reasons stated below, we reverse the
Board’s determinations of nonobviousness, ...

Hulu challenges the Board’s determination that various
claims of the ’233 patent would not have been obvious
on the grounds on which the Board instituted review. On
appeal, the only claim limitation in dispute for these
grounds is “transmitting a session history of said first
device from said first device to a session transfer module
after said session is discontinued on said first device.”
’233 patent, col. 9, ll. 35–37 (emphasis added). We conclude
that the Board erred, both in how it performed its
obviousness analysis and in the merits of its determination
of nonobviousness.
Hulu first contends the Board failed to conduct a separate
analysis on obviousness as to each of the instituted
grounds. Instead, according to Hulu, the Board improperly
relied on its finding that Bates did not anticipate
various asserted claims of the ’233 patent to support its
finding of nonobviousness without considering whether
Bates suggests transmission of session history after
We agree that the Board legally erred in its treatment
of Hulu’s obviousness challenge. Although Hulu raised
separate arguments as to the obviousness of certain
claims, the Board performed limited fact-finding in its
obviousness inquiry, only examining the level of ordinary
skill in the art and then relying primarily on its determination
that Bates did not anticipate the challenged
claims. Hulu Final Written Decision, at *28–31. But
“[t]he tests for anticipation and obviousness are different.”
Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364
(Fed. Cir. 2008). As noted, anticipation is a question of
fact, while obviousness is a question of law based on
underlying factual findings. Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).


We agree with Hulu that the Board erred on this
point, as Hulu expressly incorporated this argument as
part of other grounds of unpatentability on which the
Board instituted trial.7 Hulu relies solely on the teachings
of Bates to satisfy the transmitting limitation as to
all asserted claims. The Board, in its discretion, elected
to not institute review on Bates alone for redundancy
reasons, but instituted review on obviousness grounds
that include the only reference—Bates—cited in that
ground. To bar Hulu from pressing an argument it raised
in a ground the Board found “redundant” and that it
expressly incorporated into other proposed grounds of
unpatentability on which the Board instituted would not
only unfairly prejudice Hulu, but would also raise questions
about the propriety of the Board’s redundancy
decision. As the parties agree, our obviousness analysis
on this limitation is controlled by the teachings and
suggestions of Bates, and the Board’s decision to not
review the obviousness ground of Bates alone for redundancy
reasons cannot control the breadth of the obviousness
inquiry it took below, and that we must review here.

Monday, December 04, 2017

Microsoft v. Parallel Networks: anticipation and obviousness determinations vacated

Microsoft and IBM appealed the Board’s decisions, arguing
that the Board erred in construing the claim term
“request” and in rejecting the arguments for unpatentability.

On the construction point, Microsoft and IBM lost. But the decision of the Board
on anticipation and obviousness was vacated.

A problem was that the Board failed to address an argument, and the CAFC
found this to be error.

In re Antor, 689 F.3d 1282, was cited for presumed enablement of prior art publications.
The obviousness finding was rejected for insufficient explanation.