Thursday, February 16, 2017

Toro loses at CAFC to MetalCraft (Scag)

In MetalCraft, Judge Moore wrote an opinion denying the appeal of Toro
concerning a preliminary injunction:

The United States District Court for the Eastern
District of Wisconsin granted Metalcraft of Mayville,
Inc.’s [Scag's] motion for a preliminary injunction precluding The
Toro Company and Exmark Manufacturing Co., Inc. from
making, using, selling, and offering to sell lawnmowers
equipped with platform suspension systems that infringe
U.S. Patent No. 8,186,475 (“the ’475 patent”). We affirm.

The technical area was that of riding lawnmowers:

Metalcraft of Mayville, Inc., d/b/a Scag Power Equipment
(“Scag”), manufactures commercial riding
lawnmowers. To improve its mowers, Scag developed a
suspended operator platform, which is disclosed and
claimed in the ’475 patent.

Toro's noninfringement defense was that the accused products lacked one
claim element:

Toro did not dispute that its accused mowers meet the asserted
patent claims, except with respect to one limitation.
J.A. 374. Toro argued its accused mowers do not infringe
because the accused devices do not meet the limitation
“an entire body of an operator.” Id. It argued its mowers
lack this limitation because the steering controls of the
accused mowers are mounted to the chassis, not the
operator platform, and therefore the operator’s hands and
arms are not supported by the platform.

The reason Toro lost appears in footnote 1:

Toro relies for its claim that the district court held
that an operator’s entire body does not include an operator’s
arms or hands on one sentence in the district court’s
opinion that states “[a]ll of the accused mowers have
steering controls connected to the chassis, not the suspended
operator platform, which means that the platform
does not support the rider’s arms and hands,” to understand
that the district court made such a finding. We
decline to interpret this single sentence, located in the
middle of the court’s discussion of the parties’ arguments,
as a fact-finding. J.A. 10. We agree with Scag that this
sentence is merely part of the court’s summary of the
positions taken by each party and refers to Toro’s position.

There was a separate argument about "where" the steering controls
are mounted:

Toro also argues that the “entire body of an operator”
limitation requires the steering controls be mounted on
the operator platform or else the operator’s hands will not
be isolated from shock loads. It argues that since its
accused mowers have steering controls connected to the
chassis, its mowers do not isolate the operator’s entire
body from shock loads and therefore do not meet the
“entire body of an operator” limitation. Toro improperly
equates supporting the entire body of an operator with
isolating every aspect of an operator’s body from shock

No doubt, the ’475 patent discusses the advantages of
isolating an operator’s body from shock loads. However,
the ’475 patent treats supporting the entire body of an
operator and isolating the operator from shock loads as
two distinct aspects of the claimed invention.

Toro's argument on invalidity failed for "lack of motivation to

The district court rejected Toro’s motivation to combine
argument. It recognized that “a patent ‘composed of
several elements is not proved obvious merely by demonstrating
that each of its elements was, independently,
known in the prior art’” and that “it can be important to
identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements
in the way the claimed new invention does.”
J.A. 13–14 (quoting KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–19 (2007)). It concluded that Toro failed to
raise a substantial question of validity, stating Toro
offered “no reason, and the Court cannot imagine one,
that a person of ordinary skill in this field would combine
a motorcycle shock with a suspended truck cab and come
up with a suspended operator platform.”


We hold that the district court’s finding that there
would not have been a motivation to combine is not clearly
erroneous. The district court correctly acknowledged
that it is not enough for Toro to merely demonstrate that
elements of the claimed invention were independently
known in the prior art. Often, every element of a claimed
invention can be found in the prior art. In re Kotzab, 217
identifies a problem that Henriksson sought to solve.
However, “knowledge of a problem and motivation to
solve it are entirely different from motivation to combine
particular references.” Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363, 1373 (Fed. Cir. 2008).
We agree with the district court that Toro provides no
explanation or reasoning for concluding that one of skill in
the art would have combined these particular references
to produce the claimed invention. Without any explanation
as to how or why the references would be combined to
arrive at the claimed invention, we are left with only
hindsight bias that KSR warns against. See KSR, 550
U.S. at 421. And while we understand that “[t]he obviousness
analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation,”
we also recognize that we cannot allow hindsight
bias to be the thread that stitches together prior art
patches into something that is the claimed invention.

The CAFC did not address the anticipation issue:

We decline to address the anticipation issue. A party
may establish a likelihood of success by showing that at
least one valid and enforceable patent claim is likely to be
infringed. Abbott Labs. v. Andrx Pharm., Inc., 473 F.3d
1196, 1201 (Fed. Cir. 2007). Because asserted claim 21
covers the accused products and because we conclude that
the district court did not abuse its discretion in determin-
ing that Metalcraft established a likelihood of success as
to infringement and validity with respect to claim 21, we
need not reach the anticipation arguments regarding
claims 11 and 14 to sustain the injunction as to claim 21
which reaches all of the accused products.

Wednesday, February 15, 2017

CAFC trims sails of "Red Wing" in Xilinx v. Papst

The CAFC observed:

We disagree with Papst that this case is controlled by
Red Wing and its holding that certain types of contacts,
by themselves, are not sufficient to establish the reasonableness
of jurisdiction. As we have discussed in the
minimum contacts analysis, Papst has done more than
just send letters to Xilinx. Representatives from Papst
traveled to California to meet with Xilinx in person to
discuss Papst’s infringement contentions and licensing
offer with respect to the patents-in-suit.5 The Supreme
Court noted in Burger King that “territorial presence
frequently will enhance a potential defendant’s affiliation
with a State and reinforce the reasonable foreseeability of
suit there.” 471 U.S. at 476.

Moreover, there are other facts that, under the Burger
King analysis, confirm the view that the burden on the
defendant is not undue. For instance, the burden on
Papst is mitigated by Papst’s status as a non-practicing
patent holder residing outside the United States.
This is
not a case like Red Wing, where the defendant conducts
its affairs in one state and is called to litigate in a distant
state rather than its own residence. See 148 F.3d at 1357.
By the very nature of its business, Papst must litigate its
patents in the United States in fora far from its home
business relationship” and that the policy favoring settlement
“squarely invokes one of the considerations
enumerated by the Supreme Court for the second prong of
a proper Due Process analysis, namely, ‘the interstate
judicial system’s interest in obtaining the most efficient
resolution of controversies.’” Id. (quoting World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980)).

AND prior litigations are a factor:

The lack of significant burden on Papst is also evidenced
by Papst’s prior litigations in California itself.
Papst has repeatedly availed itself of the California
federal court system—at least seven times—by filing
patent infringement lawsuits there. In this respect, this
case is similar to Viam. In Viam, we held that requiring
an Italian patent owner and its Iowa exclusive agent to
litigate a declaratory judgment action in California was
not unduly burdensome where those entities had initiated
a suit enforcing the same patent in the same district in
California against other parties. 84 F.3d at 430. Our
reasoning that personal jurisdiction was fair rested in
relevant part on the fact that the suit demonstrated that
the patent owner “has found a way to shoulder successfully
the burden of litigating in California.” Id.
Our decision in Acorda Therapeutics Inc. v. Mylan
Pharmaceuticals Inc., 817 F.3d 755, 764 (Fed. Cir. 2016),
makes clear the relevance of a defendant’s litigations in
the forum. There we explained that the burden on an
accused infringer answering an infringement lawsuit “will
be at most modest, as [the accused infringer], a large
generic manufacturer, has litigated many . . . lawsuits in
[the forum], including some that it initiated.” Id.


Tuesday, February 14, 2017

CAFC affirms PTAB in MPHJ v. Ricoh


MPHJ Technology Investments, LLC appeals the decision
of the Patent Trial and Appeal Board (“Board” or
“PTAB”), on Inter Partes Review, that claims 1–8 of
MPHJ’s U.S. Patent No. 8,488,173 (“the ’173 Patent”) are
invalid on the grounds of anticipation or obviousness.1
On appellate review, we affirm the Board’s decision.

To determine the validity of a patented invention, the
meaning and scope of the claims are first determined. See
Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1353 (Fed. Cir. 1999) (“[T]he first step in any validity
analysis is to construe the claims of the invention to
determine the subject matter for which patent protection
is sought.”). As ratified by the Supreme Court in Cuozzo
Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016),
when unexpired patents are reviewed by the Board, the
claims are given their broadest reasonable interpretation
consistent with the specification and the prosecution
history, from the viewpoint of persons skilled in the field
of the invention.

The impact of a DELETION from a corresponding provisional
is at issue:

We agree that a provisional application can contribute
to understanding the claims. See Trs. of Columbia Univ.
in New York v. Symantec Corp., 811 F.3d 1359, 1365 (Fed.
Cir. 2016) (looking to the provisional application for
guidance as to claim construction); Vederi, LLC v. Google,
Inc., 744 F.3d 1376, 1383 (Fed. Cir. 2014) (same). In this
case, it is the deletion from the ’798 Provisional application
that contributes understanding of the intended scope
of the final application.

We conclude that a person of skill in this field would
deem the removal of these limiting clauses to be significant.
The ’173 Patent in its final form contains no statement
or suggestion of an intent to limit the claims to the
deleted one-step operation. Neither the specification nor
the claims state that this limited scope is the only intended
scope. Instead, the ’173 Patent describes the singlestep
operation as “optional.”

Inherent anticipation arose:

The Board credited Petitioner’s
expert witness’ testimony that Harkins inherently discloses
employing email protocols to transmit email. Bd.
Op. 35–36. Substantial evidence supports the Board’s
finding that Harkins contemplates the same sequential
scanning and transmission as discussed for the XNS
system, and anticipates the ’173 Patent’s claims as construed
by the Board.

The CAFC finds PTAB's obviousness reasoning in "Personal Web" inadequate; vacates and remands

The CAFC vacated and remanded in the precedential case Personal Web v. Apple :

Apple Inc. petitioned for inter partes review of various
claims of PersonalWeb Technologies, LLC’s U.S. Patent
No. 7,802,310, asserting unpatentability for obviousness
based on two prior-art references. After instituting review,
the Patent Trial and Appeal Board reviewed the
claims and agreed with Apple. PersonalWeb appeals the
Board’s construction of certain claim terms and the ultimate
obviousness determination. We affirm the Board’s
claim construction. We vacate the Board’s obviousness
determination as to the appealed claims, because the
Board did not adequately support its findings that the
prior art disclosed all elements of the challenged claims
and that a relevant skilled artisan would have had a
motivation to combine the prior-art references to produce
the claimed ’310 inventions with a reasonable expectation
of success. We remand for further proceedings.

The CAFC criticized PTAB's discussion of obviousness:
" the Board has not done enough
to support its conclusion.

On the factual components of the inquiry, we “ask[] ‘whether a
reasonable fact finder could have arrived at the agency’s
decision,’” which “requires examination of the ‘record as a
whole, taking into account evidence that both justifies and
detracts from an agency’s decision.’” Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
1366 (Fed. Cir. 2016) (quoting Gartside, 203 F.3d at

The CAFC set out what PTAB needed to have done:

Under the obviousness theory presented by Apple and
adopted by the Board, the Board had to make findings,
supported by evidence and explanation, on two points.
First, the Board had to find in Woodhill and Stefik all of
the elements of the ’310 patent claims at issue. But that
would not be enough. See In re Kotzab, 217 F.3d 1365,
1371 (Fed. Cir. 2000) (explaining that a finding of obviousness
“cannot be predicated on the mere identification
in [the prior art] of individual components of claimed
limitations”). Second, the Board had to find that a person
of ordinary skill in the art would have been motivated to
combine the prior art in the way claimed by the ’310
patent claims at issue and had a reasonable expectation of
success in doing so. See In re NuVasive, Inc., 842 F.3d
1376, 1381–82 (Fed. Cir. 2016); In re Warsaw Orthopedic,
Inc., 832 F.3d 1327, 1333–34 (Fed. Cir. 2016); Ariosa
Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1364–
67 (Fed. Cir. 2015).

And the CAFC pointed to a need for a record:

Our review of the Board is rooted not just in the law
of obviousness but in basic principles of administrative
law. We review the Board’s IPR decisions to ensure that
they are not “arbitrary, capricious, an abuse of discretion,
. . . otherwise not in accordance with law . . . [or]
unsupported by substantial evidence.” 5 U.S.C.
§ 706(2)(A), (E); see Pride Mobility Prods. Corp. v. Permobil,
Inc., 818 F.3d 1307, 1313 (Fed. Cir. 2016). Critically,
in order to “allow effective judicial review, . . . the agency
is obligated to ‘provide an administrative record showing
the evidence on which the findings are based, accompanied
by the agency’s reasoning in reaching its conclusions.’”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
1309, 1322 (Fed. Cir. 2016) (quoting Lee, 277 F.3d at
1342); see Lee, 277 F.3d at 1342 (“For judicial review to be
meaningfully achieved within these strictures, the agency
tribunal must present a full and reasoned explanation of
its decision. The agency tribunal must set forth its findings
and the grounds thereof, as supported by the agency
record, and explain its application of the law to the found
facts.”). The Board, as an administrative agency, “must
articulate ‘logical and rational’ reasons for [its] decision[].”
Synopsys, 814 F.3d at 1322; see Power Integrations, Inc. v.
Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015).

Yes, the CAFC cited SEC v. Chenery Corp., 318 U.S. 80 (1943).

The PTAB decision was inadequate:

The Board’s decision here is inadequate. The Board
did not sufficiently explain and support the conclusions
that (1) Woodhill and Stefik disclose all of the elements
recited in the challenged claims of the ’310 patent and (2)
a relevant skilled artisan would have been motivated to
combine Woodhill and Stefik in the way the ’310 patent
claims and reasonably expected success.

Of the motivation point:

The Board’s reasoning is also deficient in its finding
that a relevant skilled artisan would have had a motivation
to combine Woodhill and Stefik in the way claimed in
the ’310 patent claims at issue and would have had a
reasonable expectation of success in doing so. The Board’s
most substantial discussion of this issue merely agrees
with Apple’s contention that “a person of ordinary skill in
the art reading Woodhill and Stefik would have understood
that the combination of Woodhill and Stefik would
have allowed for the selective access features of Stefik to
be used with Woodhill’s content-dependent identifiers
feature.” Id. at *8 (emphasis added). But that reasoning
seems to say no more than that a skilled artisan, once
presented with the two references, would have understood
that they could be combined. And that is not enough: it
does not imply a motivation to pick out those two references
and combine them to arrive at the claimed invention.
See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
skilled artisan not only could have made but would have
been motivated to make the combinations or modifications
of prior art to arrive at the claimed invention.”);

The wording of the CAFC conclusion is of interest:

We conclude that the Board’s reasoning does not meet
the requirements for a sustainable obviousness determination
in this case. We do not address whether the
Board’s ultimate obviousness determination would be
permissible, or should be made, on this record. We leave
such issues for the Board to consider on remand. The
remand is not for explanation or clarification of what the
Board meant in the decision we have under review now,
or what it considered in reaching that decision.
remand is for the Board to reconsider the merits of the
obviousness challenge, within proper procedural constraints.
See id. at 1366–67.

Take note of footnote 1:

We recently held the broadest-reasonableinterpretation
standard inapplicable, outside the IPR
setting, where the patent at issue had expired in a reexamination
before the Board reviewed the examiner’s
decision. In re CSB–Sys. Int’l, Inc., 832 F.3d 1335, 1340–
41 (Fed. Cir. 2016). In the IPR setting, the PTO regulations
applicable to the present case stated simply that the
broadest-reasonable-interpretation standard applied to
“[a] claim in an unexpired patent.” 37 C.F.R. § 42.100(b)
(2015). A recent revision, not applicable to the present
case, now states that the broadest-reasonableinterpretation
standard applies to “[a] claim in an unexpired
patent that will not expire before a final written
decision is issued,” but allows an IPR party to “request a
district court-type claim construction approach to be
applied” if the patent will expire within 18 months of the
IPR petition’s filing (as further specified in the rule).
37 C.F.R. § 42.100(b) (2016). The 18-month rule, had it
been in effect, would not have applied here: the time from
the relevant filing date (September 27, 2013) to expiration
(April 11, 2015) was just over 18 months.

National Review piece on Crowley incident confuses plagiarism and copyright infringement

Within a discussion in the National Review of the Monica Crowley "plagiarism" incident in the post The Anti-Trump Media’s Attack on Monica Crowley, one finds text about Ph.D. theses:

Dissertations exist to synthesize.

In context of the Crowley matter, this is to suggest that "historical" research necessarily draws on that which is already recorded.

To synthesize is to combine (a number of things) into a coherent whole. In the realm of patent law, a combination claim is the synthesis of claim elements, each of which individually is known in the art, into
an invention which is novel and non-obvious. A point of discussion in the analysis of patentability of combination claims is whether or not they are obvious [see KSR]. An entirely different patent claim is one that comprises elements, not all of which are known in the art. One would hope there are some theses which are more than syntheses of prior art elements.

Some text about KSR appears in the 14 Feb 2017 decision in Personal Web:

The Supreme Court in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007), explained that, “because inventions
in most, if not all, instances rely upon building blocks long
since uncovered, and claimed discoveries almost of necessity
will be combinations of what, in some sense, is already
known,” “it can be important to identify a reason
that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.” Id. at 418–19.

one wonders how many fewer Ph.D.'s would be granted if the "obviousness" approach of patent law were applied. If the grad student of ordinary abilities would have been motivated to combine the same elements to reach the same conclusion,
"no Ph.D."

Moving on to the plagiarism issue, the gist of the article in the National Review is that the plagiarism charges against Crowley were a political hit job. Let's stipulate that. So were the charges against Glenn Poshard as to his Ph.D. thesis at SIU and against Joe Biden over his copying of speeches of Neil Kinnock. [But Biden's copying in law school was not a political hit job.] Apart from motivation for bringing such charges, the question as to plagiarism is whether or not there was copying of a source without attribution, such that the intended recipient would not be aware of the source. For example, Abraham Lincoln's use of "house divided" language is not plagiarism of the Bible if the audience knows of the text from the Bible. But if Biden's audience did not know about Kinnock, there would be a problem.

As has been pointed out on IPBiz previously, plagiarism and copyright infringement are not co-extensive. One can infringe a copyright without plagiarizing (copying with attribution but without permission of the copyright owner) and one can plagiarize without infringing a copyright (taking credit for text in a public domain work; see Dastar).

Thus, it was sad to see the discussion in the National Review analyzing plagiarism in terms of copyright concepts:

The match often seemed computer-generated from shared proper names and generic phrases, or news and anecdotes repeated by aggregators and editorialists. This type of material is generally considered fair use and/or public domain. As a result, this CNN list was misleadingly long, possibly a calculated attempt to condemn her with manufactured, but false, bulk.

For details of how an attributed quotation can constitute copyright infringement outside of "fair use", see New Era v. Carol (SDNY 1990).

Monday, February 13, 2017

Plagiarism issues at the National Science Foundation

In a post titled Taxpayer-Funded Scientists Caught Plagiarizing Were Allowed To Keep Researching , Daily Caller reports on 23 incidents of plagiarism by scientists seeking funding from the National Science Foundation [NSF].

Of note:

Researchers submit some dubious justifications for their plagiarism. The principal researcher on one project was caught using someone else’s material without attribution, and argued that “the use of quotation marks around directly copied text in his proposals was not required by the standards of his research community,”

The Daily Caller cites to an earlier post:

Innovation differs from invention: the case of Airbnb

In a post titled Airbnb didn't create a brand new concept. So, what made it different?, Leigh Gallagher writes:

[Airbnb's] experience shows that you don’t always have to bring to market a completely new invention in order to be significantly disruptive

The text, however obliquely, illustrates that innovation [changing the way we live] and invention
[implementing a new concept] are two different things.

Apple didn't invent the mouse, but it used the mouse to change the way "home" computers were used.

Separately, the post mentioned -- The End of Employment --

One recalls Job Shift by William Bridges. Of it, Industry Week wrote in 1994:

William Bridges, management consultant and author of Job Shift, due to be released by Addison Wesley Publishing in October [1994], contends that the jobs lost in the last recession will never return, because the U.S. is on its way to becoming a jobless society. "What's really disappearing isn't a certain number of jobs, or jobs in certain industries, or even U.S. jobs," he says. "What is disappearing is the job itself."
Instead of hiring workers to fill full-time, permanent job slots, employers are finding it's more cost-effective to expand and contract the workforce on an as-needed basis by hiring part-timers, independent contractors, and temporary employees. These workers are brought in for specific work assignments, not prepackaged jobs.

Are people who lose jobs history?
. This topic is not unrelated to the underlying motivation for some amici briefs in Washington v. Trump (2017 U.S. App. LEXIS 2369).

The Gallagher post plugs a book: Leigh Gallagher is author of the new book The Airbnb Story: How Three Ordinary Guys Disrupted an Industry, Made Billions . . . and Created Plenty of Controversy.

Separately, one can "innovate" using the patented inventions of others.
In February 2017, IPCloseUp reported:

In a well-researched post, PatentVue reports that approximately 245 of Snap’s 328 issued patents have been purchased from IBM.
Excluding the patent applications, this means roughly $36-40k per patent.

Twitter acquired 945 patents from IBM in 2014 for a reported $36 million, in an effort to settle patent infringement claims brought against it by the technology giant. This comes out to approximately $38k per patent, again, excluding patent applications.


Sunday, February 12, 2017

Yale University "expels" John C. Calhoun name

The re-naming of a residence hall at Yale University from Calhoun to Hopper was big news on 11 Feb. 2017, just one day before
Lincoln's birthday. The Washington Post, among others, discussed the matter:

Yale University will rename one of its residential colleges, replacing the name of an alumnus remembered as an advocate of slavery [Calhoun] with that of an alumna who was a pioneering mathematician and computer scientist who helped transform the way people use technology [Hopper, who obtained MS and PhD degrees from Yale].

The legacy of Calhoun, who graduated from Yale in 1804 and 1822 and served as a U.S. vice president, secretary of state, secretary of war and senator, becoming an influential champion of slavery, had been debated at the school over the years. But those discussions turned to urgent pleas in 2015 after a white man who revered the Confederacy fatally shot nine black worshipers at a church in Charleston, S.C. That led South Carolina lawmakers to take down the Confederate flag that had long flown at the state Capitol, and efforts at Yale and elsewhere to stop honoring the name of Calhoun and other people associated with slavery and white supremacy.

[link: ]

Yes, Calhoun, a Southern firebrand, graduated from Yale University (in fact, class valedictorian) and separately went to Litchfield law in Connecticut. Calhoun was vice-president TWICE under two different presidents (JQ Adams AND Jackson). His appointment as secretary of state is connected to the very unusual incident involving the USS Princeton, which has some curious New Jersey connections. Also curious is the origin of Calhoun's ideas on nullification, from the New Englanders he met at Yale, who were unhappy with life under Thomas Jefferson.

As to some invention connections, Eli Whitney, who also went to Yale, wanted to be a lawyer, but didn't have the funds, so he got an appointment in South Carolina, and on the way got the inspiration for the invention of the cotton gin. The USS Princeton was the Navy's first screw-propelled steam sloop and was designed by one John Ericsson (later the inventor of the Monitor). Ericsson also designed a novel 12 inch gun, initially called the Orator, and later the Oregon. Robert Stockton (of New Jersey fame) provided the political clout for the project but also started claiming inventorship credit. A second gun designed by Stockton {the Peacemaker), but lacking the improvements of Ericsson, exploded on February 28, 1844, killing, among others, then Secretary of State Abel Upshur, which opened that position for Calhoun. Armistead, the slave and valet of President Tyler, was also killed, and "but for" going down ship, President Tyler likely would have been killed. Stockton shifted blame for the disaster to Ericsson, who developed a distrust of the US Navy, which may have delayed adoption of Ericsson's later inventions.

** Some text about the "cotton gin":

from Joseph H. Sommer, 15 Berkeley Tech. L.J. 1145 (2000) on the relationship between the cotton gin and slavery:

In 1793, while the "peculiar institution" of slavery was quietly dying of its own economic inefficiency, Eli Whitney invented the cotton gin. Cotton became King, and slavery became profitable again. n14 Law, commerce, [p. 1152] and society rapidly adapted to the new profitability of slavery. This new technology profoundly influenced antebellum commercial law, n15 human rights law, n16 family law, n17 and potentially the law of electronic commerce. n18 In the years 1865-67, the law of the cotton gin reached as far as the U.S. Constitution, with the adoption of the Thirteenth through Fifteenth Amendments. In the latter decades of the nineteenth century, the older law of the cotton gin began to re-emerge, with the advent of Jim Crow. n19 This retrograde trend, in turn, was checked in the early twentieth century n20 and has subsequently retreated.

Accord, Stephen M. Feldman, 81 Brooklyn L. Rev. 1 (2015) :

Yet the Framers did not anticipate how important slavery would soon become. In 1793, Eli Whitney invented the cotton gin and transformed the cotton industry. n120 In short order, cotton became an incredibly profitable crop that was highly reliant on slave labor. n121

from Michael Risch. AMERICA'S FIRST PATENTS, 64 Fla. L. Rev. 1279 (2012) :

In addition to determining whether the patent covered an improvement or not, courts also considered the principles of inventions to determine what the invention was in the first place. For example, in Whitney v. Carter, a case involving the cotton gin, the court attempted to determine whether prior machines invalidated Eli Whitney's patent due to lack of novelty. n158 To make this determination, the trial court had to first decide what the invention was, and the court
agreed with the plaintiff's counsel that the legal title to a patent consists, not in a principle merely, but in an application of a principle, whether previously in existence or not, to some new and useful purpose. And [the judge] was also of opinion that the principle of Mr. Whitney's machine was entirely new . . . . n159

While the court noted that principles were not patentable, the statement was merely an aside to the important question in the case: how the patentee applied the principles and whether the prior art applied the same principles.

from Steven Cherensky, 81 Calif. L. Rev. 595 (1993) , on how Whitney's invention was what the framers had in mind when discussing patents:

Eli Whitney's invention of the cotton gin in many ways typifies late- eighteenth-century invention. n49 Whitney did not study to be an inventor; indeed, such an education would have been unavailable had he desired it. n50 While a guest at a South Carolina plantation, he heard neighboring planters discuss the difficulty of cleaning the local upland cotton of its seeds and the importance to the region of an improved cleaning machine. Whitney was persuaded to try his hand at a solution:

Whitney had never seen a cotton boll and had scarcely listened to the talk around him. But when his hostess proposed, albeit without undue urging, that he try to devise a machine, he pursued her suggestion ...

... A few days later he "involuntarily happened to be thinking on the subject and struck out a plan of a machine ...." n51

That machine, of course, was the cotton gin. Whitney built his first model from wood, wire, and other materials that were readily available on the plantation. n52

Invention has changed dramatically in the 200 years since Whitney "struck out a plan" of his machine. Whitney's development of the cotton [*608] gin is the inventorship paradigm envisioned by the drafters of the first Patent Act: the ad hoc problem-solving of the individual, generalist "hero-inventor." Organized invention was virtually unheard of at this time. n53 Although the work of independent inventors remains important, n54 most economically significant inventions today arise out of organizational environments. n55 Thus, this Comment proceeds from the assumption that the most important changes in inventorship paradigms over the last two centuries have been due to the appearance and growth of industrial laboratories and the professionalization of invention.

from Benjamin N. Roin, 81 U. Chi. L. Rev. 999 (2014) on how Whitney monetized his invention:

In 1802, South Carolina purchased Eli Whitney's patent rights on the cotton gin within the state for $ 50,000, although Whitney experienced some trouble collecting the prize. See id at 1145.

BUT see also, Elizabeth M. Thoman, 83 U. Cin. L. Rev. 989 (2015) :

Thomas Jefferson issued Eli Whitney a patent for the cotton gin [p. 993] on March 14, 1794. n17 Shortly after receiving his patent, Eli Whitney went on to be christened the first patent troll. n18 While Whitney revolutionized plantation life through his invention, his commercial success was stunted due to the simplicity of product replication and the costs associated with manufacturing. n19 Whitney spent nearly ten years in court litigating against other manufacturers of similar mechanisms, claiming that they had infringed on his rightfully possessed patent. n20

AND from Ryan Hauer, 24 DePaul J. Art Tech. & Intell. Prop. L. 367 (2014) :

In fact, some believe that the one of the first "patent trolls" was Eli Whitney, the inventor of the cotton gin. n8 Whitney's first attempts of manufacturing and selling the cotton gin proved to be commercially unsuccessful, forcing Whitney to sue plantation owners that used Whitney's patented gin in order profit from his invention. n9

AND from DAVID G. BARKER, 2005 Duke L. & Tech. Rev. 9 (2005) :

The desirability of such patent purchases is demonstrated by the conditions surrounding Eli Whitney's cotton gin. Whitney received a patent for the cotton gin in 1794. n32 Prior to Whitney's invention, one farm worker could produce one pound of cotton lint per day by hand. However, with the advent of the cotton gin, one worker was able to produce nearly fifty times that amount. n33 Before Whitney invented the gin, the South was exporting 487,000 pounds of cotton to England per year. One year after the cotton gin, that number increased to 1.6 million pounds. n34 By the time Whitney died in 1825, cotton exports to England alone reached 171 million pounds. n35 In 1850, Thomas Macaulay noted, "What Peter the Great did to make Russia dominant, Eli Whitney's invention of the gin has more than equaled in its relation to the power and progress of the United States." n36 The cotton gin was a useful, novel and nonobvious invention, meeting the criteria for patentability.

from ALAN L. DURHAM, 53 B.C. L. Rev. 489 (2012) , related to Lemley's "Myth of the Sole Inventor":

Even breakthrough inventions like Eli Whitney's cotton gin were modifications [p. 506] of existing technology. n158

from Catherine L. Fisk, 65 U. Chi. L. Rev. 1127 (1998) :

The notion that a single person was the inventor of an idea, and that he owned not only the particular thing he built (for example, the cotton gins that Eli Whitney himself made), but also the idea embodied in that thing (and thus had an exclusive right [*1142] to make any similar thing), was a conception of property in ideas, an attribution of causation, and an individuation of what is necessarily a social process. That notion of individual inventorship and of property in ideas developed over the course of several centuries. By the nineteenth century, however, it was so widely accepted as to seem a matter of natural right. n42 The legal and philosophical roots of the individual inventor's right to exclusive dominion over his ideas were deep and strong by the time courts began to combine the law of patents with the law of master and servant in the late nineteenth century.

---And as footnotes to this post

** from Mark L. Wolf, 1 B.U. J. SCI. & TECH. L. 1 (1995) :

It is, therefore, not surprising that only three patents were granted that first year, 1790. n11 Eventually, there were more patents issued during Jefferson's tenure as Secretary of State. These included Eli Whitney's cotton gin, which had such profound and dark consequences for our national history. [11]

Still seated at my desk, if I look over my right shoulder, I see a statue of Abraham Lincoln and a print that was published as a memorial after his death. Lincoln had only one reported case outside of Illinois. His fame as a lawyer was very much local, but he was known as a very effective Illinois lawyer. The one case that took him outside of Illinois was a patent case. [12]

When the patent for Cyrus McCormick's reaper was challenged in Illinois, Lincoln was hired to argue the case as local counsel. n12 Lincoln was associated in that litigation with two other lawyers, Edwin Stanton, who was nationally renowned as a general litigator, and a gentlemen named Harding, who was a leading patent lawyer of his era. n13 The case, however, was transferred to Cincinnati where it was assigned to Supreme Court Justice John McLean, who was then riding the circuit, trying cases. n14 [13]

Lincoln took this assignment very seriously. He prepared thoroughly. He arrived in Cincinnati, expecting to be a partner in the trial team. His distinguished colleagues, however, would have nothing to do with him. Stanton said, in Lincoln's presence, that he would not be professionally associated with "that Gorilla." n15 When it came time to go to the courthouse, Lincoln suggested that the three lawyers walk over together. Stanton and Harding, however, refused to be seen with him. n16 It was also the custom during that era for the lawyers who were presenting the case to dine with the judge. Nevertheless, Stanton and Harding would not let Lincoln join them and Justice McLean. n17 [14]

That experience did not turn Abraham Lincoln off on patent law. Rather, in 1859, shortly before he was elected President, Lincoln gave a talk on "Discoveries and Inventions." n18

**History of Slavery in New Jersey

Friday, February 10, 2017

The issue of standing, as discussed by CA9 in Washington v. Trump

The issue in Washington v. Trump (2017 U.S. App. LEXIS 2369) was the federal government's motion for an emergency stay of the district court's temporary restraining order [TRO] while its appeal of that order proceeds.

The Ninth Circuit Court of Appeals, in a per curiam opinion, noted that it "must consider several factors, including whether the Government has shown that it is likely to succeed on the merits of its appeal, the degree of hardship caused by a stay or its denial, and the public interest in granting or denying a stay. We assess those factors in light of the limited evidence put forward by both parties at this very preliminary stage and are mindful that our analysis of the hardships and public interest in this case involves particularly sensitive and weighty concerns on both sides. Nevertheless, we hold that the Government has not shown a likelihood of success on the merits of its appeal, nor has it shown that failure to enter a stay would cause irreparable injury, and we therefore deny its emergency motion for a stay."

Whether the states had standing to bring this case was addressed in the following:

The [federal] Government argues that the district court lacked subject matter jurisdiction because the States have no standing to sue. We have an independent obligation to ascertain our jurisdiction, Arbaugh v. Y & H Corp., 546 U.S. 500, 514 (2006), and we consider the Government's argument de novo, see, e.g., Hajro v. U.S. Citizenship & Immigration Servs., 811 F.3d 1086, 1098 (9th Cir. 2016). We conclude that the States have made a sufficient showing to support standing, at least at this preliminary stage of the proceedings.
The States argue that the Executive Order causes a concrete and particularized injury to their public universities, which the parties do not dispute are branches of the States under state law. See, e.g., Hontz v. State, 714 P.2d 1176, 1180 (Wash. 1986) (en banc); Univ. of Minn. v. Raygor, 620 N.W.2d 680, 683 (Minn. 2001).

Specifically, the States allege that the teaching and research missions of their universities are harmed by the Executive Order's effect on their faculty and students who are nationals of the seven affected countries. These students and faculty cannot travel for research, academic collaboration, or for personal reasons, and their families abroad cannot visit. Some have been stranded outside the country, unable to return to the universities at all. The schools cannot consider attractive student candidates and cannot hire faculty from the seven affected countries, which they have done in the past.

According to declarations filed by the States, for example, two visiting scholars who had planned to spend time at Washington State University were not permitted to enter the United States; one was informed he would be unable to obtain a visa.


Under the "third party standing" doctrine, these injuries to the state universities give the States standing to assert the rights of the students, scholars, and faculty affected by the Executive Order. See Singleton v. Wulff, 428 U.S. 106, 114-16 (1976) (explaining that third-party standing is allowed when the third party's interests are "inextricably bound up with the activity the litigant wishes to pursue"; when the litigant is "fully, or very nearly, as effective a proponent of the right" as the third party; or when the third party is less able to assert her own rights). Vendors, for example, "have been uniformly permitted to resist efforts at restricting their operations by acting as advocates of the rights of third parties who seek access to their market or function." Craig v. Boren, 429 U.S. 190, 195 (1976). Likewise, doctors have been permitted to assert the rights of their patients. See, e.g., Griswold v. Connecticut, 381 U.S. 479 (1965). And advocacy organizations such as the NAACP have been permitted to assert the constitutional rights of their members. See, e.g., NAACP v. Alabama, 357 U.S. 449 (1958).


We therefore conclude that the States have alleged harms to their proprietary interests traceable to the Executive Order. The necessary connection can be drawn in at most two logical steps: (1) the Executive Order prevents nationals of seven countries from entering Washington and Minnesota; (2) as a result, some of these people will not enter state universities, some will not join those universities as faculty, some will be prevented from performing research, and some will not be permitted to return if they leave. And we have no difficulty concluding that the States' injuries would be redressed if they could obtain the relief they ask for: a declaration that the Executive Order violates the Constitution and an injunction barring its enforcement. The Government does not argue otherwise.

We therefore hold that the States have standing

[Note footnote 5: The States have asserted other proprietary interests and also presented an alternative standing theory based on their ability to advance the interests of their citizens as parens patriae. Because we conclude that the States' proprietary interests as operators of their public universities are sufficient to support standing, we need not reach those arguments. ]

On 9 February 2017, the CAFC touched on the issue of standing in PPG v. Valspar, 2017 U.S. App. LEXIS 2310. The "Consumer Watchdog" case was mentioned:

The evidence presented by PPG demonstrates that it possessed more than a "general grievance concerning" these patents, sufficient to show "a particularized, concrete interest in the patentability" of the subject matter, as discussed in Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258, 1263 (Fed. Cir. 2014).
PPG's standing thus differs from the scenario we faced in Consumer Watchdog. Unlike Consumer Watchdog, PPG is and was "engaged in . . . activity involving [the patented subject matter] that could form the basis for an infringement claim," and has "other connection[s] to the [patents] or the claimed subject matter," Consumer Watchdog, 753 F.3d at 1261, sufficient to "have a particularized, concrete stake in the outcome of the reexamination," id. at 1262. This stake is enhanced by the "estoppel provisions contained within the inter partes reexamina-tion statute." Id. This is sufficient to establish PPG's standing to appeal the Board's decision.

PPG also stresses the statutory appeal paths for judicial review of PTAB decisions. It is unlikely that the legislative intent was, by silence, to limit appeals from PTAB decisions to parties then in litigation in the district court. In any event, as we recognized in Consumer Watchdog, although the immediacy and redressability requirements for Article III standing can be relaxed when Congress accords a procedural right to a litigant-e.g., the right to appeal an administrative decision-the "requirement of injury in fact is a hard floor of Article III jurisdiction that cannot be removed by statute." Id. at 1261

Of the matter of "third party standing," the Third Circuit in PENNSYLVANIA PSYCHIATRIC SOCIETY, 280 F.3d 278 has addressed the issue.

While successful third-party standing claims have involved alleged violations of third parties' constitutional rights, Singleton and its progeny have not stipulated that constitutional claims are a prerequisite. It is true that the rule against third-party standing normally bars litigants from asserting the rights or legal interests of others in order to obtain relief from injury to themselves. Furthermore, the United States Supreme Court has noted that courts must consider the relationship of the litigant to the person whose rights are being asserted, the ability of the person to advance his own rights, and the impact of the litigation on third-party interests. But the Court has not held that a constitutional claim must also be alleged. Simply raising a third party's constitutional claims will not in and of itself satisfy the requirements for third-party standing. For instance, a litigant may not assert a third party's Fourth Amendment rights against unreasonable search and seizure to prevent the admission of damaging evidence.

The Third Circuit in Amato 952 F.2d 742 observed

The longstanding basic rule of third party standing is that "in the ordinary course, a litigant must assert his or her own legal rights and interests, and cannot rest a claim to relief on the legal rights or interests of third parties." Powers v Ohio, 113 L. Ed. 2d 411, 111 S Ct 1364, 1370 (1991). The rule serves at least two judicial purposes. First, the rule fosters judicial restraint: courts faced with unsettled questions avoid pronouncements that are perhaps unnecessary and undesirable because the rightholders do not wish to assert their rights. See Secretary of State of Maryland v Munson, 467 U.S. 947, 955, 104 S Ct 2839, 81 L. Ed. 2d 786 (1984); Singleton v Wulff, 428 U.S. 106, 113-14, 96 S Ct 2868, 49 L. Ed. 2d 826 (1976) (plurality opinion). Second, the rule assures concrete, sharp presentation of the issues and enables courts to avoid ruling on abstract grievances. Generally, the third party will be the best advocate of its own position, and the plaintiff may place a slightly different, self-interested "spin" on its presentation. See Munson, 467 U.S. at 955; Singleton, 428 U.S. at 114.

The general rule against third party standing is not ironclad, however. The rule does not reflect an Article III "Case or Controversy" requirement, but stems from prudential concerns. See, for example, Caplin & Drysdale, Chartered v United States, 491 U.S. 617, 623 n. 3, 109 S Ct 2646, 105 L. Ed. 2d 528 (1989); Hodel v Irving, 481 U.S. 704, 711; 107 S. Ct. 2076 , 95 L. Ed. 2d 668 (1987); Craig v Boren, 429 U.S. 190, 193, 97 S Ct 451, 50 L. Ed. 2d 397 (1976). Accordingly, in limited circumstances where the policies supporting the general rule are not served, the Supreme Court has approved third party standing. See Singleton, 428 U.S. at 114-15. Where rightholders are unable to raise their own rights and their relationship with the plaintiff suggests an identity of interests, courts can be more certain that the litigation is necessary and that the issues will be framed clearly and effectively. See id at 114-16. Moreover, other policy considerations, notably the fear of chilling expression in First Amendment cases, may at times outweigh the policies behind the general rule against [page 749] third party standing. See, for example, Munson, 467 U.S. at 956-60.

The Supreme Court has thus recognized the dangers inherent in third party standing, yet has also recognized that third party standing may at times be appropriate. While the Justices have frequently disagreed on the proper outcomes in third party standing cases, the Court's opinions do give federal courts rather clear guidance on what factors are relevant in determining whether to make an exception to the general rule. Where a plaintiff asserting third party standing has suffered concrete, redressable injury (that is, the plaintiff has Article III standing), federal courts are to examine at least three additional factual elements before allowing the suit to proceed. Caplin & Drysdale, 491 U.S. at 623 n. 3. First, the court must examine the relationship between the plaintiff and the third party whose rights are asserted; second, the court must consider the ability of the third party to advance its own rights -- whether some obstacle impedes the rightholder's own suit; and third, the court must inquire into the impact on third party interests -- whether the plaintiff and the third party have consistent interests. Id.

Separately, from 20 F.3d 1118:

A second factor recognized by the Supreme Court as a justification for third-party standing is the existence of a substantial relationship between the litigant and the third party. As the Supreme Court recognized in Singleton, in certain circumstances "the relationship between the litigant and the third party may be such that the former is fully, or very nearly, as effective a proponent of the right as the latter." 428 U.S. at 115, 96 S. Ct. at 2874. In the past, the Supreme Court has recognized various relationships that may give rise to third-party standing. See, e.g., Griswold v. Connecticut, 381 U.S. 479, 481, 85 S. Ct. 1678, 1679, 14 L. Ed. 2d 510 (1965) (doctor-patient); United States Dep't of Labor v. Triplett, 494 U.S. 715, 721, 110 S. Ct. 1428, 1432, 108 L. Ed. 2d 701 (1990) (attorney-client); Craig v. Boren, 429 U.S. 190, 192-93, 97 S. Ct. 451, 454, 50 L. Ed. 2d 397 (1976) (vendor-vendee). Where this "congruence of interests" exists, it may be "necessary and appropriate" for the litigant to raise the rights of the third party. Powers, 499 U.S. at 414, 111 S. Ct. at 1372.

Wednesday, February 08, 2017

Does the patent system view innovation as individual endeavor?

Within the law review article titled THE EMERGENCE OF THE INNOVATIVE ENTITY: IS THE PATENT SYSTEM LEFT BEHIND? [16 J. Marshall Rev. Intell. Prop. L. 65 (2016) ] , one has text

Despite the changes the patent system has undergone over the years, one main attribute remains constant: the patent system views innovation as an individual endeavor. The innovator is the intellectual genius: "an individual who creates new ideas though his intellectual capacities." n15 American culture loves its individual innovators: Thomas Edison, Alexander Graham Bell, Henry Ford, David Packard, Steve Jobs, and Bill Gates were all given a place in the hall of fame of individual inventors. n16 The problem is however that innovation production theories do not share this view.

with footnote 16 stating:

Michael J. Meurer, Inventors, Entrepreneurs and Intellectual Property Law, 45 HOUS. L. REV. 1201, 1202-03 (2008); See, e.g., Christopher A. Cotropia, The Individual Inventor Motif in the Age of the Patent Troll, 12 YALE J.L. & TECH. 52, 54 (2009); Edward G. Greive, The Doctrine of Inventorship: Its Ramifications in Patent Law, 17 W. RES. L. REV. 1342, 1342 (1966) ("The traditional inventors were usually individuals like Thomas Edison, who alone had 1039 patents issued to him."). But c.f., Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709, 745 (2012) (claiming that the canonical story of the lone genius inventor is largely a myth, since almost all the great inventions, which were invented by individuals, were in fact invented simultaneously or nearly simultaneously by two or more people working independently of each other); and John Lienhard, Reflections on Information, Biology, and Community, 32 HOUS. L. REV. 303, 309 (1995) ("We all recite the myth of the lonely intellectual. Yet, creativity, with all its need for retreat and isolation, is not a lonely act after all. If great inventors like Edison or Bell had one overriding form of genius, it was a genius for forming communities of open and inventive collaborators around themselves. These scholars, too, treasured community.").

One might question the use of "individual," given that the patent system allows "joint" inventors. One might also question the use of "innovation" by the author. The patent system is about invention, with the issuance of patents facilitating innovation in some cases.

Separately, from 69 SMU L. Rev. 37 (2016) ,

The final argument pertains to the considerable recognition individual inventors have achieved, especially before the Second World War. As children have been taught in elementary schools--whether entirely correct or not n47--Samuel Morse invented the telegraph, Alexander Graham Bell the telephone, Thomas Edison the gramophone and the light bulb, Guglielmo Marconi the radio, and the Wright Brothers the airplane. n48 The more we focus on individual inventors and the human dimension of their inventions, the more we are ready to recognize their human rights.

with footnote 47

As Mark Lemley declared:

The canonical story of the lone genius inventor is largely a myth. Edison didn't invent the lightbulb; he found a bamboo fiber that worked better as a filament in the lightbulb developed by Sawyer and Man, who in turn built on lighting work done by others. Bell filed for his telephone patent on the very same day as an independent inventor, Elisha Gray; the case ultimately went to the U.S. Supreme Court, which filled an entire volume of the United States Reports resolving the question of whether Bell could have a patent despite the fact that he hadn't actually gotten the invention to work at the time he filed. The Wright Brothers were the first to fly at Kitty Hawk as a result of an improvement they made to a basic wing structure designed by others, but their plane didn't work very well. It was quickly surpassed by aircraft built by Glenn Curtiss and others--planes that the Wrights delayed by over a decade with patent lawsuits. And on and on.

Mark A. Lemley, The Myth of the Sole Inventor, 110 MICH. L. REV. 709, 710-11 (2012) [hereinafter Lemley, Myth of the Sole Inventor]; see also Susan Scafidi, Digital Property / Analog History, 38 LOY. L.A. L. REV. 245, 251-58 (2004) (discussing whether Guglielmo Marconi should be heralded as the "Father of Radio").

Judge Michelle Friedland of the CA9 panel on Trump immigration matter

Appointed by President Obama, Judge Friedland (now sitting on the appeal of Trump's immigration matter at the 9th Circuit Court of Appeals, has New Jersey and Stanford ties. From wikipedia:

She graduated from The Pingry School in Basking Ridge, NJ. She received a Bachelor of Science degree in ecology and population biology in 1995 from Stanford University (,,,) She received a Juris Doctor in 2000 from Stanford Law School

There is no mention of any judicial experience obtained prior to being nominated to CA9.

In oral argument on the Trump matter, Judge Friedland asked: “Are you arguing, then, that the president’s decision in that regard is unreviewable?”

As to Pingry, Wikipedia also notes: Pingry's motto is Maxima reverentia pueris debetur, a Latin phrase literally meaning "the greatest respect is owed to the boys."

Pingry grads include William ("Bull") Halsey Jr., who was a firm believer in the aircraft carrier as the primary naval offensive weapon system, and thus a major innovator in naval warfare.