Thursday, February 22, 2018

Is the PTAB bound by USPTO guidance?


The discussion at Patent Docs on Ex parte Lukyanov, U.S. Appl. Ser. No. 11/607,828 at
Who's in Charge Here? Or Is the PTAB Bound by USPTO Guidances?

Note text:


It seems curious, and the source of inconsistent policy, for the PTAB to take the position that the Board can choose to ignore USPTO Guidances at its leisure (if not its whim) in view of the stance the Office has taken with regard to the importance of maintaining consistency in its policies in other situations. For example, in convening an expanded panel for deciding whether filing a lawsuit asserting a patent waives sovereign immunity as a grounds to dismiss an inter partes review before the Board

Google loses appeal in AT HOME BONDHOLDERS' case; CAFC observes: Silence is not a genus.


Google lost its appeal of adverse IPR decisions at the CAFC


Google LLC (“Google”) appeals from two final written
decisions of the United States Patent and Trademark
Office Patent Trial and Appeal Board (“the Board”) resulting
from four inter partes review (“IPR”) proceedings
concluding that claims 49–53, 55–59, 61–67, and 69–73 of
U.S. Patent 6,286,045 (“’045 patent”) and claims 1–3, 5–7,
9, 11–20, 22, 24–31, 34–39, 41–47, and 49 of U.S. Patent
6,014,698 (“’698 patent”) are not unpatentable as obvious.
See Google Inc. v. At Home Bondholders’ Liquidating Tr.,
Nos. IPR2015-00657, IPR2015-00660, 2016 WL 5104863,
slip op. at 61 (P.T.A.B. Aug. 10, 2016) (“’045 Decision”);
Google Inc. v. At Home Bondholders’ Liquidating Tr., Nos.
IPR2015-00662, IPR2015-00666, 2016 WL 8969204, at
*24 (P.T.A.B. Aug. 10, 2016) (“’698 Decision”). Because
the Board did not err in its decisions, we affirm.



GARLAND STEPHENS of Weil represented the successful appellee.

Of relevance:


We first address the disclosure of Angles, which is key
to this appeal. Google argues that the Board erred in
determining that Angles did not disclose a non-blockable
request by failing to assess it from the perspective of a
person of ordinary skill in the art. As support for its
position, Google contends that requests for CGI scripts
are non-blockable by default. And because Angles uses a
standard web server, a person of ordinary skill in the art
would have had no reason to consider that Angles referred
to anything other than standard CGI requests, which are
“typically” non-blockable. Appellant’s Br. 31.

(...)

At Home responds that substantial evidence supports
the Board’s finding that Angles does not disclose a nonblockable
request. Specifically, At Home argues that the
Board found persuasive the 1996 textbook, the 1995 W3C
publication, and Dr. Almeroth’s testimony, all of which
confirm that requests to CGI scripts can be blockable, and
are therefore not necessarily non-blockable. Based on this
evidence, At Home contends that the Board correctly
determined that Angles was at best inconclusive, and a
person of ordinary skill in the art would not have automatically
assumed that the mere mention of a CGI request
would also be a disclosure of a non-blockable
request.


We agree with At Home that the Board’s determination
that a person of ordinary skill would not have understood
Angles to disclose a non-blockable request was
supported by substantial evidence. The Board found
persuasive the 1996 textbook and 1995 W3C publication,
which disclosed CGI requests that were blockable. See
’045 Decision, slip op. at 23–25. The Board also credited
Dr. Almeroth’s testimony, which stated that the 1996
textbook and 1995 W3C publication represent how a
person of ordinary skill would have understood CGI
requests. See id. Based on that evidence, the Board
found that a person of ordinary skill would not assume
that Angles disclosed a non-blockable request.
See id.
Without more, such as specifics regarding the advertisement
request’s functionality or syntax, the Board found
Angles “inconclusive.” Id. at 21–23.

We see no error in the Board’s analysis of the cited
references or its decision to credit Dr. Almeroth’s testimony.
We therefore conclude that the Board’s finding that
Angles does not disclose the non-blockable limitation was
supported by substantial evidence.



At this point, the opinion has some interesting writing:




At oral argument, Google characterized a “request” as
a genus consisting of two species: blockable requests and
non-blockable requests. See Oral Argument at 3:31–4:17,
Google LLC v. At Home Bondholders’ Liquidating Tr.,
Nos. 16-2727, 16-2729 (Fed. Cir. Jan. 8, 2018),
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-2727.mp3. According to Google, because Angles discloses
a CGI request, which can only be blockable or nonblockable,
Angles must disclose a non-blockable request
by virtue of disclosing a generic CGI request. See id.
That argument, while a good try, ultimately misses the
mark.
The genus-species analysis is not applicable here.
Silence is not a genus. The issue here is whether there is
any disclosure of a non-blockable request at all. As discussed
above, the Board properly determined that there
was not. See ’045 Decision, slip op. at 20–30.

Wednesday, February 21, 2018

Gilenya of Novartis




Novartis’s (NVS) Gilenya reported sales of $825 .0 million in 4Q17, which is a year-over-year (or YoY) drop of 1.0% on a constant currency basis. On April 12, 2017, the United States Court of Appeals for the Federal Circuit ruled against Novartis.

The court declared that Gilenya’s formulation patent protecting the drug until 2026 is invalid. So, Gilenya is protected from generic erosion in the relapsing-remitting multiple sclerosis (or RRMS) indication until 2019.
(...)
Novartis has submitted applications to regulatory bodies in the US and the European Union (or EU) seeking approval for Gilenya in pediatric multiple sclerosis (or MS) indication.

In the first completed Phase 3 trial, PARADIGMS, in thepediatric MS patient population, Gilenya demonstrated an 82.0% drop in the relapse rate compared to interferon β-1a. Additionally, Gilenya scored better on parameters such as MRI lesions, brain shrinkage rate, and safety profile.





link: https://marketrealist.com/2018/02/novartis-focused-expanding-multiple-sclerosis-portfolio-2018

Tuesday, February 20, 2018

Interesting "improper attribution" case brewing


See the piece by Colleen Flaherty titled ‘Here We Are Again’ relating to a post at IEEE [Did You Know? Computer Matchmaking Started in the 1960s ] relating to lack of attribution of research for the book
Programmed Inequality: How Britain Discarded Women Technologists and Lost Its Edge in Computing (MIT Press) .

Arendi loses appeal in matter of US Patent 6,323,853


The outcome


The Petitioners Google LLC, Motorola Mobility LLC,
and Samsung Electronics Co., Ltd. requested inter partes
review of Claims 1-79 (all the claims) of U.S. Patent No.
6,323,853 (“the ’853 patent”) owned by Arendi S.A.R.L.
(“Arendi”).1 The Patent Trial and Appeal Board (“PTAB”)
instituted review on the ground of obviousness, and after
trial the PTAB held all of the claims unpatentable.2 On
Arendi’s appeal, we affirm the PTAB’s decision, based on
the PTAB’s alternative claim construction.



As to the alternative:


The PTAB alternatively held that even if the prosecution
disclaimer were accepted, the claims are unpatentable
for obviousness in view of Goodhand. PTAB Op. at
*21. The PTAB compared Goodhand with the ’853 pa-
tent’s specification and construed the claims in accordance
with the disclaimer, and found that “Goodhand’s
processing involves essentially the same textual analysis
as disclosed in the ’853 patent, and not user text selection,
as argued by Patent Owner.” PTAB Op. at *21.

(...)

In sum, the PTAB found that Goodhand shows all of
claim 1’s limitations, when giving effect to the prosecution
disclaimer and limiting the scope of the “single entry”
command. This finding is supported by substantial
evidence. On the PTAB’s findings, the alternative conclusion
of unpatentability on the ground of obviousness in
view of Goodhand is sustained.



Separately, on 20 Feb 2018


Monday, February 19, 2018

IAM blog quotes Lemley


From IAM's Patent owners in the US get a big boost after the Federal Circuit hands down a key 101 decision


Just how significant might this shift be? Well, Stanford Law School’s Professor Mark Lemley immediately took to Twitter to label the decision in Berkheimer a “blockbuster”. That’s because the three-judge panel in the case ruled that patent eligibility should not simply be viewed as a legal question. “Whether a claim recites patent eligible subject matter is a question of law which may contain disputes over underlying facts,” Judge Moore wrote in the opinion (she also wrote the majority opinion in Aatrix).

That’s significant because it means that district courts may increasingly be forced to consider patentability at trial and not at an earlier stage in summary judgment. In recent years, so-called Alice motions have handed defendants a particularly effective means of knocking out a patent that has been asserted against them. Critics contend that they have become a means for district court judges to clear their dockets of patent disputes and have become representative of how the US system has swung against IP owners.

If those motions become much harder to bring then, theoretically, more patent disputes could get to the courtroom floor; or defendants might have more incentive to settle and agree to take a licence rather than rely on a lengthy and expensive trial.

According to Lemley, it might also mean that Alice loses some of its edge. “If this approach becomes widespread it will be impossible to resolve patentable subject matter before trial, and Alice will become irrelevant as a practical matter,” he says


Sunday, February 18, 2018

DNJ analyzes "puffery" in WILLIAM T. HOEY v. INSMED INCORPORATED


On the subject of "puffery," note a recent decision in the District of New Jersey in the case
WILLIAM T. HOEY v. INSMED INCORPORATED, 2018 U.S. Dist. LEXIS 24907, which included text:


Lead Plaintiff Bucks County Employees Retirement Fund ("Plaintiff") brings this putative class action, on behalf of itself and all other similarly situated individuals and entities, against Insmed Incorporated ("Insmed"), a biopharmaceutical company, as well as Insmed's Chief Executive and Financial Officers, William H. Lewis ("Mr. Lewis") and Andrew T. Drechsler ("Mr. Drechsler"), respectively, alleging violations under various provisions of the applicable federal securities laws.1 Plaintiff's action is based on Defendants' alleged misrepresentations and omissions in connection with Insmed's target drug, Arikayce, and the results of its Phase 2 Trial, which, ultimately, failed to support regulatory approval. In the instant matter, Defendants moves for dismissal of the Amended Complaint, arguing, inter alia, that the challenged representations are not actionable because a duty to disclose was absent, the material statements constitute permissible opinions or corporate puffery, and Plaintiff has failed to adequately plead scienter. For the reasons set forth below, Defendant's Motion to Dismiss is GRANTED.




There is relevance to Bridgewater, New Jersey: Insmed, a publically traded biopharmaceutical company, principally located in Bridgewater, New Jersey, specializes in the development and commercialization of inhaled therapies for patients with serious lung diseases.

Further, as to puffery:


In addition, like forward-looking statements, opinions, and beliefs, a defendant may not be held liable for an alleged misrepresentation that consists of nothing more than vague and nonspecific expressions of corporate optimism. In re Advanta, 180 F.3d at 538. Such statements "constitute no more than 'puffery' and are understood by reasonable investors as such." Id. (quoting Burlington, 114 F.3d at 1428 n. 14). Thus, if a false or misleading statement is "too vague to ascertain anything on which a reasonable investor might rely," it is inactionable as corporate [*25] puffery. In re Aetna, 617 F.3d at 284.

(...)

As articulated by the Third Circuit, material representations contrasted with statements of subjective analysis or extrapolations, such as opinions, motives and intentions, or general statements of optimism, "constitute no more than 'puffery' and are understood by reasonable investors as such." In re Aetna, 617 F.3d at 283 (internal quotations and citation omitted). In the same vein, "[a] representation is immaterial if the statement at issue is too vague to be actionable," and, in turn, cannot form the basis of a claim for securities fraud. Id. (internal quotations and citations omitted).

(...)

Likewise, Plaintiff fails to state a claim under the second subset of statements, wherein Insmed merely described the EMA as, inter alia, "collaborative and supportive," as well as "enthusiastic" about the results of the trial. Based on Plaintiff's pleadings, it appears that "support" and "enthusiasm" were expressed by the EMA during the applicable time period. In fact, Insmed, following discussions with the EMA, was confident in submitting an MAA based solely on the Phase 2 Trial, which was not initially intended to support regulatory approval. That decision, which was made after Insmed's discussions with the EMA, is suggestive of Insmed's positive interactions with that agency. These representations, therefore, cannot serve as a basis for Plaintiff's securities claims. Gillis, 197 F. Supp. 3d at 589 (holding that the challenged statements [*52] were statements of opinion, because they did not "address[] existing objective facts," but rather "express[ed] [the defendants'] views, either as to the FDA's actions and communications, or as to [its drug's] prospects."); Kleinman, 706 F.3d at 153 ("We have also held that words like 'encouraging' are the type of 'expressions of puffery and corporate optimism' that do not generally 'give rise to securities violations.'") (quoting Rombach v. Chang, 355 F.3d 164, 174 (2d Cir. 2004))).

Lastly, the third group of statements, with respect to Arikayce's approvability, are both forward looking and inactionable as corporate puffery. For instance, the statement, given by Mr. Lewis during Insmed's first investor conference in March of 2015, reads, in pertinent part: "I think one of the nice things about this company two and a half years ago when I had the privilege to talk to the board and to look at the opportunity was, I saw an approvable drug, bottom line." Pl.'s Opp'n, at 14; AC ¶ 50. This statement suffers from the same flaw in Plaintiff's previous arguments; in demonstrating falsity, Plaintiff references concerns which were raised after the fact. And, more to the point, a reasonable investor would not rely on this statement. Indeed, it clearly embodies the opinion [*53] of Mr. Lewis, and amounts to nothing more than a "gut feeling" stemming from a vaguely described interaction with Insmed's corporate board, at a time before conducting a Phase 2 Trial. Statements of this kind are a paradigm of corporate puffery, and, therefore, they cannot serve as the basis for § 10(b) liability. Vallabhaneni v. Endocyte, Inc., No. 14-1048, 2016 U.S. Dist. LEXIS 673, at *47 (S.D. Ind. Jan. 4, 2016) ("Courts frequently consider loosely optimistic statements that are so vague, so lacking in specificity, or so clearly constituting the opinions of the speaker that no reasonable investor could find them important to the 'total mix of information available' to be immaterial as a matter of law." (internal citation omitted)); Lopez v. CTPartners Exec. Search, Inc., 173 F. Supp. 3d 12, 28 (S.D.N.Y. 2016) (holding that statements which are "so broad and nebulous as to not provide any specific or concrete guarantee" are not relied on by reasonable investors); Medimmune, 873 F. Supp. at 964 ("Mere expressions of hope or expectation regarding future approval, not worded as guarantees, are not actionable.")

Patent pool for CRISPR technology?

See The competition law issues of the CRISPR patent pool

IPBiz previously discussed patent pool issues as to embryonic stem cells as well as motivations in the aviation patent pool of the early 20th century.

For example, Patent Thickets and the Wright Brothers

Also: http://ipbiz.blogspot.de/2006/07/warfthomson-patents-on-stem-cells-and.html

US District Court of Delaware rules against Merck in case related to hepatitis C drugs Sovaldi and Harvoni

On 16 February 2018, U.S. District Judge Leonard Stark of D. Delaware overturned a $2.54 billion jury verdict against Gilead and instead ruled that Merck’s patent, asserted against hepatitis C drugs Sovaldi and Harvoni, was invalid.

Of past events, see Merck wins $2.54 billion in hepatitis C drug trial against Gilead from 16 Dec 2016:


Merck on Thursday was awarded $2.54 billion in royalties by a federal jury in a patent lawsuit against Gilead Sciences over Gilead's blockbuster hepatitis C drugs Sovaldi and Harvoni.

(...)

Harvoni's list price is $1,125 per pill and $94,500 for a 12-week regimen. Foster City, California-based Gilead, one of the world's largest biotechnology companies, made nearly $20 billion on the two drugs in 2015.


See also a piece by MICHAEL HILTZIK in the October 26, 2017 Los Angeles Times:


To begin with, the evidence that Gilead itself uses its profits to "innovate" is thin at best. In 2016, the company reported profit of $13.5 billion. It spent $11 billion to repurchase its own shares, and about $2.5 billion on stock dividends. So the buybacks and dividends together came to $13.5 billion, in effect consuming 100% of the company's profit.

All that spending benefits shareholders -- the repurchases prop up the value of their shares and enhance their gains when they sell, and dividends are, of course, a direct payout. Innovation? Gilead spent $5 billion on research and development, according to its annual report.

In 2015, a similar phenomenon reigned. Gilead recorded $18.1 billion in profit, and spent $10 billion of it on buybacks and $1.87 billion on dividends. R&D cost $3 billion. Since 2011, the Gilead board has authorized stock repurchases totaling $37 billion, of which $9 billion was still unspent as of the end of 2016. Gilead declined to comment for this column.

Gilead doesn't do much research and development itself. Instead, it has acquired firms that have done the heavy lifting and market their successes. It acquired its blockbuster hepatitis C drug, Sovaldi, by paying $11 billion for the drug's developer, Pharmasset, in 2011.

(...)
Gilead rationalized the price by noting that the near-term cure of hepatitis C meant even greater savings over time from a reduction in liver disease; but that was cold comfort to public budget makers and private insurers. They were faced with the prospect of laying out millions of dollars in a single year for benefits that would appear over decades, often reaped by other insurers or programs.

The near-term consequences included rules that limited approvals for the new drug to the sickest patients -- ironically, those who probably would benefit from Sovaldi the least. Because of the price, potentially millions of hepatitis sufferers went without a cure, if temporarily, until the company and insurers were able to work out discounts.

Evidence produced in 2015 by the Senate Finance Committee showed that Gilead executives didn't spend much time on the consequences for patients deprived of the cure by budgetary pressures. Instead, they calculated how high they could set the price of Sovaldi without shrinking its potential market so much that total profits would fall. The executives concluded that Gilead could make a profit by charging $55,000 per 12-week treatment. But the company decided to charge $84,000, which would deliver higher profits, albeit from fewer patients. A follow-on drug known as Harvoni, which incorporates Sovaldi, was introduced in 2016 at a price close to $100,000 for a full treatment.

Gilead at first refused to offer anything but minimal discounts to big insurers and Medicaid programs, even though they acknowledged that thousands of patients might have to go without the treatments. The company didn't seem concerned about a public backlash over its pricing, figuring that complaints from patient advocates wouldn't lead to problems with regulators or legislators. "Let's not fold to advocacy pressure ... whatever the headlines," one top executive counseled his colleagues.

It's certainly true that drug development doesn't come cheap. But there's reason to believe it doesn't cost nearly what the industry claims, and no reason to believe that the enormous profits reaped on some drugs get funneled back into research and development. When drug companies have a potential blockbuster in hand, they'll charge whatever the market will bear to maximize profits. And funding "innovation" isn't always the goal.




BUT, Business Monitor Online discussed the cost of a drug being successful:


Since 2015, Gilead's revenue has been decreasing, following the decline of its highly successful hepatitis C virus (HCV) portfolio. The medication's high cure rates reduced the patient pool, and pricing pressures rose due to greater levels of competition. Indeed, the firm's total revenue has decreased from USD30.4bn in 2016 to USD26.1bn revenue in 2017.



Text of relevance in the 2018 D. Del. opinion:


Two limitations are of particular significance in resolving Gilead's enablement challenge.

First, the claim includes structural limitations (hereinafter, the "Structural Limitations"). The term "β-D-2'-methyl-ribofuranosyl nucleoside" encompasses any β-D-nucleoside that includes "a five member sugar ring with a methyl group in the 2' up position and non-hydrogen substituents at the 2' down and 3' down positions." (D.I. 237 at 12; D.I. 516 at 22)

Second, at Idenix's urging, the Court construed the claims to contain a functional limitation, through claim l's preamble ("A method for the treatment of a hepatitis C virus infection") and its "effective amount" term. (See D.I. 446 at 8-13) Specifically, the Court concluded that claim 1's preamble is limiting and that the term "effective amount" means "an amount [of the . . . ribofuranosyl nucleoside . . .] that is effective to treat HCV" (hereinafter, the "Functional Limitations") (D.I. 447).

Combining these two limitations, the claims cover all those nucleosides, but only all those nucleosides, that meet the Structural Limitations — including a methyl group at the 2'-up position [*29] — and the Functional Limitations of exhibiting effective anti-HCV activity. (See, e.g., D.I. 446 at 8-13; Secrist Tr. at 1576-77; Meier Tr. at 1865-66) Thus, as further explained below, the claims as construed combine Structural Limitations that are satisfied by an enormous number of compounds with Functional Limitations that are satisfied by an unknown, but far smaller, number of undisclosed compounds.

Also pertinent to the Court's analysis is what is not in its claim construction. Targeting the NS5B polymerase — which Idenix contends is the key to a compound demonstrating effectiveness in the treatment of HCV (see, e.g., D.I. 554 at 8) (identifying "a defined target (NS5B)") — is not an explicit claim limitation. The patent claims are not limited to compounds that are effective in treating HCV due to their acting on the NS5B polymerase. Nor does the patent specification even teach that to identify effective compounds a person of ordinary skill in the art ("POSA") must or even should be looking for compounds that target the NS5B polymerase. Instead, the patent explains that effective compounds can act through "inhibiting HCV polymerase, by inhibiting other enzymes needed in the replication [*30] cycle, or by other pathways."



Of note:



The Court now turns from the undisputed facts to those facts that are disputed but which, in the Court's view, present disputes on which a reasonable jury, taking the trial record in the light most favorable to Idenix and drawing all reasonable inferences in favor of Idenix, could only have found in favor of Gilead. "The rule that a jury verdict is reviewed for support by 'substantial evidence' does not mean that the reviewing court must ignore the evidence that does not support the verdict.... That is, the court should give credence to the evidence favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted and unimpeached." Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334, 1345 (Fed. Cir. 2007).

The Court concludes that while each of the following topics were disputed, they are not genuinely in dispute, in that a reasonable factfinder could only have found for Gilead on these disputes. Nor does the Court find that there are any other material factual disputes regarding enablement that are in genuine dispute. Instead, Gilead has shown that "the record is critically deficient of the minimum quantity of evidence to sustain the verdict." Accumed LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199, 211 (3d Cir. 2009) (internal quotation marks omitted).

(...)

For the reasons stated above, a reasonable jury, even taking all the evidence in the light most favorable to Idenix and drawing all reasonable inferences in favor of Idenix, could only have concluded that Idenix's '597 patent is invalid due to lack of enablement. The only reasonable finding, based on the trial record, is that Gilead met its burden to prove nonenablement by clear and convincing evidence. The trial revealed that there are no genuinely disputed material facts with respect to enablement. Accordingly, Gilead is entitled to judgment as a matter of law that the asserted claims of the '597 patent are invalid due to lack of enablement.


Footnote 13:



Neither Gilead nor its experts have endorsed the position that inventions in this area of art — or even inventions in this area of art having structural limitations that are literally satisfied by billions of compounds — are automatically non-enabled or inherently suspect. As is made clear throughout the remainder of this Opinion, the required enablement analysis must take into account numerous factors, facts, and circumstances, leading to an ultimate conclusion as a matter of law. A wide disparity between the number of compounds satisfying the Refined Structural Limitations and those also satisfying the Functional Limitations, combined with only a little bit of guidance given in the patent for how to navigate from the larger to the smaller category, are big factors (though not the sole considerations) in rendering the '597 patent invalid for lack of enablement. See generally Wands, 858 F.2d at 737 ("Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations."); but see also generally In re Fisher, 427 F.2d 833, 839, 57 C.C.P.A. 1099 (C.C.P.A. 1970) ("In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved.").


Relevant:
7,608,597
Methods and compositions for treating hepatitis C virus

CBS Sunday Morning on February 18, 2018 does puffery


The February 18 show continued the slide into puff over substance.

The Almanac feature celebrated the birthday of Vanna White, born as Vanna Marie Rosich on February 18, 1957. Not mentioned in the clip was White's foray into intellectual property. From the case:

In running a particular advertisement without Vanna White's permission, defendants Samsung Electronics America, Inc. (Samsung) and David Deutsch Associates, Inc. (Deutsch) attempted to capitalize on White's fame to enhance their fortune. White sued, alleging infringement of various intellectual property rights, but the district court granted summary judgment in favor of the defendants. We affirm in part, reverse in part, and remand.

California state law and the Midler case arose: White first argues that the district court erred in rejecting her claim under section 3344. Section 3344(a) provides, in pertinent part, that "[a]ny person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, ... for purposes of advertising or selling, ... without such person's prior consent ... shall be liable for any damages sustained by the person or persons injured as a result thereof."

White argues that the Samsung advertisement used her "likeness" in contravention of section 3344. In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), this court rejected Bette Midler's section 3344 claim concerning a Ford television commercial in which a Midler "sound-alike" sang a song which Midler had made famous.
White's loss on summary judgment was affirmed by CA9. White obtained reversal of adverse SJ decisions on right of publicity and Lanham Act claims.

Mo Rocca did a piece supposedly picking the worst president. On the internet this piece begins:


A question on this Presidents' Day weekend: Which of our former Chief Executives was the worst ever? Presidential historians have been making a list ... and our Mo Rocca may have the winner:

No survey of forgotten presidents (such as James Buchanan, Chester A. Arthur or Millard Fillmore) would be complete without our 17th president, Andrew Johnson.



On the broadcast, Warren Harding, rather than Arthur, was the second "candidate" mentioned. It appears that CBS transcripts are not really reproductions of what is broadcast.
Furthermore, whether there is an agreement that Johnson was the worst president remains to be seen.

Adding further puff to the broadcast was the Tracy Smith piece Jimmy Buffett and "Margaritaville" come to Broadway

The cover story, Infidelity: Why the oldest taboo continues to be broken by Tony Dokoupil [of Katy Tur and George Washington University, where the marketing major earned a 3.87 GPA and was named to GW's Dean's Honor List ] included favorable discussion of Ashley Madison.


The broadcast included an opinion piece by Stoneman Douglas high school senior David Hogg; for some reason, it was followed by a piece by Faith Salie, as if Hogg's thoughts needed re-enforcement. [One notes that Hogg appeared on "Face the Nation" and thereon asserted President Trump controlled the Senate and House. There was discussion of a march on March 24.]

The "moment of nature," on Everglades National Park, included a reference to Marjory Stoneman Douglas. As to "who" pushed for creation of the park, consider text from wikipedia:


The [Tropical Everglades National Park ] commission was also tasked with proposing a method to raise the money to purchase the land.[74] The search coincided with the arrival of the Great Depression in the United States, and money for land purchase was scarce.[75] The U.S. House of Representatives authorized the creation of the new national park on May 30, 1934, but it passed only with a rider that ensured no money would be allotted to the project for at least five years.[74] Coe's passion and U.S. Senator Spessard Holland's politicking helped to fully establish the park, after Holland was able to negotiate 1,300,000 acres (5,300 km2) of the park, leaving out Big Cypress, Key Largo, the Turner River area, and a 22,000-acre (89 km2) tract of land called "The Hole in the Donut" that was too highly valued for agriculture. Miami Herald editor John Pennekamp was instrumental in pushing the Florida Legislature to raise $2 million to purchase the private land inside the park boundaries.[76] It was dedicated by President Harry Truman on December 6, 1947, one month after Marjorie Stoneman Douglas' book; "The Everglades: River of Grass" was released.[77]



One notes the existence of Garald G. "Jerry" Parker, Sr. (1905–2000) who was a B.S. level hydrologist and is known as the "Father of Florida groundwater hydrology."


Friday, February 16, 2018

Snap-on wins claim construction argument at CAFC but still loses appeal

Snap-on challenged patents via IPR, lost, appealed, and then lost at the CAFC:



Snap-on Incorporated (Snap-on) appeals from the final
written decisions of the Patent Trial and Appeal
Board (Board) in the above-captioned inter partes review
proceedings (IPRs) that found certain claims of three of
Appellees’ patents to be nonobvious over prior art combinations
argued by Snap-on.



Of interest, Snap-on won on claim construction but lost
via the "substantial evidence" standard:


Snap-on also argues that the Board erred in “entirely
read[ing] out” the term “average” in its construction.
Snap-on Open. Br. 33. We agree. As a general matter, we
construe a claim term to take on its plain and ordinary
meaning to one of skill in the art when read in the context
of the specification and prosecution history. Wasica Fin.
GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1282 (Fed.
Cir. 2017). Appellees’ own cited expert testimony states:
One of ordinary skill in the art in relation to the
patents in suit would have understood that the
term “average discharge current greater than or
equal to approximately 20 amps” as used in the
patents in suit referred primarily to the capability
of providing an average discharge current of approximately
20 amps, and that it included the operational
range of currents for battery packs for
hand held power tools.

J.A. 12336–37 (emphasis added). Thus, Appellees’ own
expert included the word “average” in his stated interpretation
of the 20-Amp Limitation.

Appellees nevertheless argue that omission of the
word “average” from the Board’s construction is supported
by evidence in the record showing that batteries were
commonly tested using “[c]onstant current discharge
tests” that held current constant while measuring voltage.
Resp. Br. 42 (citing J.A. 3898–99). While this may be
true, there is no indication in the specification4 that this
sort of testing should limit the plain and ordinary meaning
of “average,” which would include situations when
current rises above and dips below the 20-amp target so
long as the average discharge current over the entire
rated capacity is 20 amps or greater.
The specification references the 20-Amp Limitation in
only one place:
In some constructions, the battery pack 30 can
power various power tools (including a driver drill
300 and circular saw 305) having high discharge
current rates. For example, the battery pack 30
can supply an average discharge current that is
equal to or greater than approximately 20 A, and
can have an ampere-hour capacity of approximately
3.0 A-h.
J.A. 267, ’290 patent col. 10 ll. 20–26. Snap-on argues,
and Appellees do not dispute, that a battery pack discharges
current in bursts when used with a circular saw,
such that the current would swing above and below 20
amps. The fact that the phrase “average discharge current”
is only used in the portion of the specification describing
an “example” of embodiments that undisputedly
discharge current at levels that swing above and below 20
amps shows that the word “average” should take on its
ordinary meaning, especially given the Board’s obligation
to use the broadest reasonable construction in IPRs.
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
(2016).
For the foregoing reasons, we hold that the correct
claim construction of the 20-Amp Limitation is: “the
battery cells, when configured together in a battery pack,
are capable of producing, on average, reasonably close to
20 amps of discharge current or greater over the course of
delivering their entire rated capacity.” Although the
Board erred in omitting the word “average” from its
construction, the Board’s fact findings regarding obviousness
are still supported by substantial evidence and the
Board’s legal determinations of obviousness are correct
under the proper claim construction.5 The harmless error
rule applies to appeals from the Board. See, e.g., In re
Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004). Re


Wednesday, February 14, 2018

Dealing with choices in disease treatment

Back in law school, I wrote a column for the University of Chicago Phoenix on the "Let's Make a Deal" problem of accepting Monty Hall's offer to switch doors. The correct answer is to switch doors, and you will win 2/3 of the time.

In the October 1998 issue of Intellectual Property Today, I reviewed the matter:


BACKGROUND

Of my columns for my law school newspaper, the most discussed was the presentation of the "Let's Make a Deal" problem. On seeing it, most people get it wrong, although on discussion, most people get it right. Some never do. On August 6, I was explaining it to a former colleague of mine as we rode the PATH to the World Trade Center. He got it wrong. More interestingly, a stranger who was listening to us, who claimed to be a Ph.D. in statistics from Harvard, intervened to argue for the wrong position. At that point, I thought it worthwhile to resurrect the material.

LET'S MAKE A DEAL

The set-up of the problem arises from a game show, begun in the 1960's and hosted by Monty Hall, entitled "Let's Make a Deal." There were three doors, behind only one of which was a valuable prize. After some preliminaries, a contestant would choose one door from among the three. The selected door remained closed. At this point, Monty would sometimes open one of the two unchosen doors, behind which was no prize. Monty would then offer the contestant the opportunity to switch choice from the initially-chosen door to the remaining unopened door. The question is simply: should the contestant switch?
Most people see the situation as one of equal probability. There are two unopened doors, and behind one of them is the prize. In fact, by switching choice, one wins two times out of three. The key point is that there are three states of the system, not two.
To work through the situation, let's assume the contestant picks door number 1. One-third of the time, the prize will be behind door number 1, and the contestant will win if does not change and he will lose if he changes. Two thirds of the time, the prize will not be behind door number 1 (one third of the time behind door number 2; one third of the time behind door number 3). The contestant will lose if he does not change and he will win if changes. One could stop here.
However, the difficulty arises when one confronts the opening of the door without a prize. There are two doors left, and one prize, ergo a seeming probability of one-half. But, because Monty cannot open the initially-selected door of the contestant, he cannot change the probability as to that door. It will remain at one third. Some people do not find this correct.
Instead of the "three door" problem, visualize a lottery with one million tickets, only one of which is a winner. You buy one ticket and put it in your pocket. Monty, who knows which ticket is a winner, tears up 999,998 losing tickets and offers to trade you his ticket for yours. There are only two tickets left and one is a winner. Do you think the probability is 50/50?
There are many messages from this problem. I'll consider two.

KNOWLEDGE IS GOOD

If you understand the problem, you will switch doors and you will win 2/3 of the time. The elimination of the one door gave added knowledge. The probabilities were not 50/50.
Did you ever wonder why appellate panels have more than one member? Assuming a district judge and an appellate judge have the same probability of "getting it right", and that the probability is greater than 50%, a panel will give the right answer more frequently than the single judge.
To take a simple case, let us assume that a given judge has a probability of getting the right answer (2/3) of the time, and that this probability is independent of the analysis of the other judges. Consider a three judge panel which requires at least a 2-1 vote for a decision. The joint probability of getting it right is 20/27 (=74.1%), which comprises the 3-0 vote (8/27=(2/3)<3>) and three 2-1 votes (each of joint probability 4/27). This is 11.1% higher than the probability the single judge will get it right ((74.1-66.7)/66.7).




An interesting twist on this involves the choice to employ a drug.

Imagine that you have a certain disease that is not life threatening but greatly diminishes quality of life. There is a treatment that will be effective in removing symptoms 2/3 of the time, but ineffective 1/3 of the time. Good idea to try it.

HOWEVER, there is an additional factor. In the 1/3 of the time the treatment does not work, you develop an additional problem.

If the problem were death, likely this would be a bad idea. But suppose the problem is the development of another disease (similar to the first), so that 1/3 of the time you don't solve the initial problem AND you develop a new problem, making your situation "twice" as bad as when you started. What do you do?

***
See also

"Let's Make a Deal" problem