Tuesday, August 23, 2016

Garlock prevails at the CAFC in Smith case, 2015-1758. WD Missouri reversed.

Garlock won a reversal of a decision by the Western District of Missouri:

This appeal arises from a jury verdict finding Garlock
Equipment Company (“Garlock”) liable for infringement
of the asserted claims of U.S. Patent No. 8,240,431 (the
“’431 Patent”), and awarding damages for lost profits and
reasonable royalties. Garlock moved for judgment as a
matter of law on both findings. The district court denied
Garlock’s motions and proceeded to issue an injunction
prohibiting infringing activities involving the accused
products. Garlock now appeals the district court’s denial
of its motions for judgment as a matter of law and the
district court’s injunction order. For the reasons set forth
below, we reverse the district court’s denial of judgment as
a matter of law regarding infringement. Because the
accused devices do not infringe the asserted claims of the
’431 patent, we vacate the jury award of damages and the
district court’s injunction order.

The CAFC noted:

A patent claim is literally infringed only if the accused
device embodies each limitation of the asserted claim.
Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d
1290, 1297 (Fed. Cir. 2005) (citation omitted). The absence
of a single limitation in the asserted claim thus
defeats literal infringement. Id.


In support of its infringement allegations, Smith
submitted Mr. Kernell as an expert to explain how the
Multi-Man performs each limitation of claim 5 of the ’431
patent. On cross examination, Garlock focused on demonstrating
that the Multi-Man does not satisfy the claim
limitation “wherein the force causes the arm to shift to
the lowered position.” In particular, Garlock asked Mr.
Kernell to explain how the Multi-Man arm “pivots.” The
following exchange is exemplary of the dialogue between
Garlock’s counsel and Mr. Kernell on this point:
A: That pulley rotates and pivots to drive that
arm down into the surface, and that is the pivotal
movement of that arm.
Q: So it’s your opinion that this arm pivots?
A: Yes. The entire assembly, that pivoting of that
arm around that pulley that is my opinion.
Q: I’m not asking about the entire assembly.
We’re talking about the arm. This item says the
arm pivots. This arm does not pivot, does it?
A: No. That’s not correct. That is not my opinion.
If you look at the claim language, you’re taking
something out of context. In the claim language it
says the arrestor assembly has this pivoting motion
with the arm, and it is the pivoting around
that pulley that causes the arrestor assembly to
shift or pivot between the raised position and the
lowered position.
Q: Sir, back to our infringement definition. Each
and every element of the patent claim must be included
in the product; and as to Claim 5, the Multi-Man
does not – Multi-Man’s arm does not pivot,
and therefore, it does not infringe, correct?

A: No. That’s not correct.
J.A. 2104-05. Notably, Mr. Kernell did not answer the
question of whether the Multi-Man’s arrestor arm itself
pivoted. Mr. Kernell instead testified that there was
some pivoting motion involved in the arrestor assembly as
a whole, and that this motion was sufficient to satisfy the
claim limitation requiring that the arm itself pivot. See

Footnote 1 of the CAFC decision references a footnote:

In a single footnote in its brief, Smith contends
that “[w]hile Plaintiffs disagree with this construction, as
the prevailing parties below, they lack standing to appeal
the district court’s claim construction order.” Appellee Br.
at 7 n.3 (citing Novartis Pharmaceuticals Corp. v. Abbott
Labs., 375 F.3d 1328, 1339 (Fed. Cir. 2004)). Smith then
stated in an isolated sentence that “if this Court is inclined
to reverse the district court’s entry of judgment, it
also should reverse the district court’s claim construction
order and hold that the phrase ‘shift to,’ as used in claim
5, must be given its common and ordinary meaning in any
retrial of this matter.” Id. Smith’s comment is appealing
on its face; the plain meaning of the term “shift” does
seem different from the term “pivot.” We nonetheless do
not have occasion to address whether the district court’s
claim construction was proper because Smith has failed to
present any argument on appeal beyond their single
conclusory statement that we “should reverse the district
court’s claim construction.” See SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) (holding that when “a party includes no developed
argumentation on a point . . . we treat the argument as

The CAFC invoked Johns Hopkins:

Our prior decision in Johns Hopkins controls the present
dispute. In Johns Hopkins, we considered infringement
of a claim to a method for mechanically fragmenting
blood clots to prevent occlusion of blood vessels.


Accordingly, we dismissed as
improper the prevailing party’s cross-appeal concerning
the claim construction, precisely because that party
prevailed before the district court. Thus, while Smith
could not have filed a cross appeal in this case concerning
the claim construction, Smith could have asserted “alternative
grounds in the record for affirming the judgment.”
Because Smith did not raise any such alternate grounds
on appeal, we cannot address the correctness of the district
court’s claim construction.


The present case does not involve a simple “battle of
the experts,” wherein the fact finder must weigh the
merits of the competing expert testimony. Here, the
record does not evidence a disagreement between the
experts as to whether the arrestor arm is pivoting. In
light of the absence in the record of any evidence that
could support the jury’s verdict of infringement, we must
reverse the district court’s denial of Garlock’s motion for
judgment as a matter of law on the issue of whether the
Multi-Man infringes claim 5. See The Shaw Group v.
Marcum, 516 F.3d 1061, 1065 (Fed. Cir. 2008) (holding
that judgment as a matter of law is appropriate where
there is a “complete absence of probative facts and only
speculation supports the verdict”).

The bottom line:

As discussed above, the district court erred in denying
Garlock’s motion for judgment as a matter of law that the
Multi-Man and Twin-Man products do not infringe the
asserted claims of the ’431 patent. Accordingly, we reverse
the judgment of the district court concerning infringement
of the asserted claims. Because the accused
devices do not infringe, we vacate the jury award of
damages and the district court’s injunction order.

Monday, August 22, 2016

The President of Mexico, Enrique Peña Nieto, accused of plagiarism while in law school

As reported by the New York Times, and others, Carmen Aristegui has written a report suggesting that
the current Mexican president, Enrique Peña Nieto, plagiarized work while a law school student.

The Times article observed:

The journalist, Carmen Aristegui, has reported on several articles that have contributed to the president’s declining public approval ratings, including the disclosure in 2014 of his wife’s questionable real estate dealings with major government contractors.

Ms. Aristegui lost her job in 2015 after her reporting on the Mexico City mansion built for the president’s wife, Angélica Rivera, by a firm that had received hundreds of millions of dollars in government contracts. Since then, Ms. Aristegui has been publishing her work on her own website.

The Times article did not disclose "how much" of Nieto's work was copied, but other sources have done so. For example, the Huffington Post noted:

Of the 682 paragraphs that made up the 200-page thesis, titled ‘Mexican Presidentialism and Alvaro Obregon,’ 197, or 28.9 percent, were found to be plagiarized, the report said

The Aristegui report is in Spanish. It notes in part:

Aristegui Noticias tuvo acceso a un amplio análisis de la tesis de Peña Nieto elaborado por un grupo de especialistas y académicos, quienes descubrieron que una buena parte de la tesis se realizó con materiales plagiados.
Este medio corroboró directamente en los libros y fuentes originales de cada uno de los párrafos analizados en el estudio y concluyó que el hoy presidente de México plagió al menos 197 párrafos de los 682 que integran el texto.
Es decir, por lo menos el 28.8 por ciento del contenido de su tesis de abogado fue robado de las obras de otros autores.

Of copying of work by an ex-President

El plagio más escandaloso es el que Enrique Peña Nieto cometió con una obra escrita por un antecesor suyo: Miguel de la Madrid Hurtado. A lo largo de su tesis nunca hizo referencia al expresidente y ni siquiera lo citó en la bibliografía.

Of the person who reviewed the work of Nieto:

El asesor de tesis del joven Peña Nieto fue el doctor en Derecho Eduardo Alfonso Guerrero Martínez, actual magistrado del Poder Judicial de la Ciudad de México. En su currículum, se afirma que el funcionario ha dirigido más de 193 tesis y ha sido jurado en más de 367 exámenes profesionales.

Of other "victims" of Nieto:

En la revisión hecha al texto se evidenció que Peña Nieto también copió de manera textual párrafos completos de libros de Linda Hall, académica de la Universidad de Nuevo México; de los historiadores Enrique Krauze, Alberto Morales Jiménez, Víctor López Villafañe, José María Calderón y Emilio Rabasa; y también de los doctores en derecho Diego Valadés, José de Jesús Orozco Henríquez, Felipe Tena Ramírez y del fallecido jurista Jorge Carpizo.

The name of Benito Juarez appears:

En el apartado 2.1 de la tesis, titulado “Benito Juárez: Dictadura Presidencial”, Enrique Peña Nieto plagió de manera casi textual seis párrafos del libro “Génesis del presidencialismo mexicano”, del historiador José María Calderón, publicado por Ediciones El Caballito en 1973.

There is a matter of copying the citations of others:

Además, en 18 ocasiones el joven Peña Nieto copió letra por letra las citas que el jurista Jorge Carpizo o el historiador José María Calderón, entre otros autores, entrecomillaron y citaron en sus libros para ilustrar sus argumentos, pero eliminó la referencia a dichos autores, por lo que aparece como si él los hubiera consultado de forma directa.

In passing, recall Joe Biden had a plagiarism issue at Syracuse Law School, copying 5 pages of a 15 page paper, without citation.

Thursday, August 18, 2016

TenSec prevails at CAFC in appeal against Adobe

From the decision

TecSec, Inc. (“TecSec”) challenges certain claim
construction rulings and appeals from a grant of summary
judgment of non-infringement by Adobe Systems, Inc.
(“Adobe”) of TecSec’s U.S. Patents Numbers 5,369,702
(“’702 patent”), 5,680,452 (“’452 patent”), 5,717,755 (“’755
patent”), and 5,898,781 (“’781 patent”), collectively the
Distributed Cryptographic Object Method patents
(“DCOM patents”). TecSec, Inc. v. Int’l Business Machines
Corp., No. 1:10-cv-115 (E.D. Va. May 7, 2015) (“TecSec
V”). Adobe contests TecSec’s arguments and asserts a
number of alternative grounds for affirmance. TecSec
also requests that the case be reassigned to a different
district judge on remand.

Because the district court erred in its construction
of “selecting a label,” because we find no merit in Adobe’s
alternate grounds for affirmance, and because we find
nothing to warrant reassignment on remand, we vacate
the district court’s summary judgment of noninfringement
and remand for further proceedings consistent
with this opinion.

Background of the issue

In its written opinion, the district court addressed
both the claim construction issues raised by Adobe and
Adobe’s motion for summary judgment of noninfringement.
In addressing claim construction, the court
began by construing “selecting a label for the object.” The
court noted that while the parties did not propose a
construction for that limitation and declined the opportunity
to brief the issue, they clearly disputed whether
selecting a label includes creating a label or selecting the
components that go into a label. For that reason, the
court stated that that it had a duty to resolve that dispute,
citing O2 Micro International, Ltd. v. Beyond Innovation
Technology Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008). TecSec V at 19. The court then concluded that
“before an object can be selected, it must first be created.”
Id. at 20. Moreover, it construed the limitation as meaning
“choosing a pre-existing label” and not merely selecting
“the components used in its creation.” Id. at 23.

An issue which the CAFC did NOT address:

TecSec first contends that the district court committed
serious procedural error when it granted summary
judgment on the basis of its sua sponte construction of
selecting a label, without providing proper notice. Because
we vacate the district court’s summary judgment on
the merits, we need not and do not address TecSec’s
assertion of procedural error, but instead turn directly to
the issues raised.

A problem with the district court analysis:

The problem with this reasoning is that first, the “selecting
an object” and “selecting a label” limitations are
separate and different limitations. Moreover, while the
doctrine of claim differentiation requires that the limitations
in a parent claim be construed to be different in
scope from those in dependent claims, it does not necessarily
mean that they are mutually exclusive. The only
requirement is that the limitation in the parent be at
least broad enough to encompass the limitation in the
dependent claim. Tr. of Columbia Univ. in City of New
York v. Symantec Corp., 811 F.3d 1359, 1370 (Fed. Cir.
2016) (“Thus, in a situation where dependent claims have
no meaningful difference other than an added limitation,
the independent claim is not restricted by the added
limitation in the dependent claim. In such situations,
construing the independent claim to exclude material
covered by the dependent claim would be inconsistent.”);
Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d
1335, 1348 (Fed. Cir. 2012) (holding that an independent
claim including the limitation “magnetic member” includes
ferromagnetic material in addition to a magnet, in
light of dependent claim limiting “magnetic member” to a
magnet); Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d
1354, 1360 (Fed. Cir. 2010) (concluding that “[u]nder the
doctrine of claim differentiation, those dependent claims
[reciting the use of particular wavelengths] give rise to a
presumption that the broader independent claims [reciting
that laser radiation be ‘absorbed substantially completely’]
are not confined to that range”).

Here, the district court’s reliance on the doctrine of
claim differentiation is flawed.


Moreover, it is beyond cavil that the plain and ordinary meaning
of the term “selecting” can naturally refer to a choice
of a not-yet extant object. Parties regularly select any
number of things that do not exist when the selection is
made and are only later made to order.

The district court also relied on the portion of the
specification that “requires a user to actively choose a preexisting
label.” TecSec V at 21. This too was error. First,
as the district court acknowledged, it is improper to
import limitations from the specification into the claims.
Second, the specification does not in any way indicate or
suggest that one cannot select a label that does not yet
exist, such as a label identifying the location of a terminal
that is not yet connected. Nothing in the intrinsic record
precludes such a possibility, or limits the meaning of
“selecting a label” to the selection of pre-existing labels.

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1686.Opinion.8-16-2016.1.PDF

**Separately on 18 August 2016:

Wednesday, August 17, 2016

CAFC affirms PTAB in Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00527; IV's claims gone in US 7,496,674

In 2015-1947, the CAFC affirmed the PTAB under Rule 36 [ AFFIRMED. See Fed. Cir. R. 36. ], meaning that patentee-appellant Intellectual Ventures lost.

Of the PTAB case:

Patent Owner had filed a Motion to Exclude information including the above-mentioned Stadler reference as well as excerpts from the cross-examination of Patent Owner’s expert, Dr. Newman. In this connection, Patent Owner had “objected to Stadler on the grounds of hearsay and lack of authenticity.” The Board disagreed with Patent Owner, accepting that the publication information on the IEEE copyright line in Stadler constituted sufficient “evidence of its date of publication and public accessibility.” The Board denied Patent Owner’s attempt to exclude excerpts of the cross-examination deposition testimony of Dr. Newman as being outside of the scope of direct examination because “[i]n the testimonial excerpts under consideration, Dr. Newman repeatedly admitted a lack of familiarity with the subject matter of the ’674 patent . . . (‘I really haven’t spent very much time looking at this . . . .’)[,]” which led the Board to conclude that “[t]his testimony goes to Dr. Newman’s credibility and, therefore, does not exceed the proper scope of cross-examination.”

from http://ptabtrialblog.com/publication-date-on-an-ieee-publication-found-to-meet-exception-to-hearsay-rule-in-final-written-decision-ipr2014-00527/

Separately, as to the obviousness issues in the case, see


Tuesday, August 16, 2016

Apotex loses appeal at CAFC; Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337, 1346 (Fed. Cir. 2015) explained

Apotex tried IPR to invalidate a Wyeth patent.

In March 2013, Apotex filed a petition to institute inter
partes review of the ’828 patent [of Wyeth]. The Board instituted
review based on one ground: that claims 1–23 would have
been obvious over the combination of Chinese Patent
Publication No. 1390550A (“CN ’550”); V. Naggar et al.,
Effect of Solubilizers on the Stability of Tetracycline, 29
PHARMAZIE 126 (1974) (“Naggar”); and E. Pawelczyk et
al., Kinetics of Drug Decomposition: Part 74: Kinetics of
Degradation of Minocycline in Aqueous Solution, 34 POL.
J. PHARMACOL. PHARM. 409 (1982) (“Pawelczyk”).

From the decision:

Apotex Inc. appeals from the U.S. Patent and Trademark
Office Patent Trial and Appeal Board (“the Board”)
final written decision in an inter partes review concluding
that claims 1–23 of U.S. Patent 7,879,828 (“the ’828
patent”) are not unpatentable as obvious. See Apotex Inc.
v. Wyeth LLC, No. 2014-00115, 2015 WL 1848261, at *14
(P.T.A.B. Apr. 20, 2015). For the reasons that follow, we

Note that there was an "incorrect translation" issue:

In its decision to institute, the Board relied on an
incorrect translation of CN ’550. See Apotex, 2015 WL
1848261, at *3–4. Apotex submitted a corrected translation
in response to Wyeth’s objections, and the Board
relied on that corrected translation in its final written
decision. See id. at *4. Discrepancies between the two
translations are not relevant to this appeal. See Appellant’s
Br. 11 n.4.

Apotex had two arguments:

Apotex challenges the Board’s conclusion regarding
obviousness in two respects. First, it contends that the
Board imported an epimeric stability limitation into the
claims, and thereby wrongly relied on the failure of CN
’550 to teach the epimeric stability of its composition.
Second, Apotex argues that the Board failed to consider
any motivation to combine the prior art of record beyond
the problem the patentee was trying to solve, in contravention
of KSR International Co. v. Teleflex Inc., 550 U.S.
398 (2007), and cases from this court. We address and
reject each challenge in turn.

As to the first, the CAFC observed:

To the extent the Board considered epimeric stability
during its obviousness analysis generally, it did so in the
context of assessing whether a skilled artisan would have
been motivated to combine references. That is not the
same as importing a limitation into the claims.

Of the second, as to the Senju case:

We further find Apotex’s invocation of Senju unpersuasive.
As an initial matter, Senju does not stand for the
general proposition that a skilled artisan would always be
motivated to try later generation compounds in an old
composition. Rather, the conclusion of obviousness in
Senju turned on the very specific factual findings made by
the district court about the teachings of the prior art and
the similarities across the quinolone family of compounds.
See, e.g., Senju, 780 F.3d at 1343 (“The ’470 patent also
teaches that each of the disclosed quinolones have ‘similar
substituents,’ and that pharmaceutical formulations of
gatifloxacin follow ‘the routes well known’ with respect to
‘oral[] and parenteral[]’ administration.” (internal citation

Monday, August 15, 2016

Scriptpro wins reversal of D. Kansas at CAFC

The outcome of Scriptpro was reversal of a district court decision:

ScriptPro, LLC and ScriptPro USA, Inc. (collectively
“ScriptPro”) appeal the United States District Court for
the District of Kansas’s grant of summary judgment that
claims 1, 2, 4, and 8 (“asserted claims”) of U.S. Patent
No. 6,910,601 are invalid for lack of written description.
We reverse and remand for further proceedings.

The Gentry case arose and was distinguished:

The ’601 patent’s express disclosure that sorting and
storing can be done in a number of ways distinguishes
this case from Gentry Gallery and ICU Medical. In those
cases, the specifications clearly limited the scope of the
inventions in ways that the claims clearly did not. Gentry
Gallery, 134 F.3d at 1479 (“the original disclosure clearly
identifies the console as the only possible location for the
controls” and the claims did not limit the location of the
controls); ICU Med., 558 F.3d at 1378 (“the specification
describes only medical valves with spikes” and the claims
did not include a spike limitation). Such is not the case
here. The ’601 specification does not limit the sorting and
storing of prescription containers by patient-identifying
information alone—any “predetermined storage scheme”
will do. ’601 patent, 8:21–24. And, as explained above,
the ’601 patent’s specification does not identify the single
purpose for the described invention as sorting and storing
prescription containers by patient-identifying information.
Multiple purposes are described, including
storing multiple prescription containers together according
to some storage scheme and creating a collating unit
that is easy to install with existing ADSs. It is certainly
reasonable that different claims could be directed to
covering these different aspects of the invention. Not
every claim must contain every limitation or achieve
every disclosed purpose.

Here, the original claims filed as
part of the application for the ’601 patent did not include
a requirement that sorting and storing be done by use of
patient-identifying information. The district court erred
when it determined that the specification limited the
invention to storing prescription containers based on
patient name and slot availability. Because the specification
does not limit the scope of the invention in the manner
the district court described, the asserted claims are
not invalid for lacking such a limitation.2
For the foregoing reasons, we reverse the district
court’s grant of summary judgment that the asserted
claims are invalid for lack of written description and
remand the case for further proceedings.3

Footnotes 2 and 3:

2 Because we determine that the district court erred
in its conclusion that the invention disclosed in the specification
was limited to sorting and storing prescription
containers by patient name and slot availability, we need
not reach ScriptPro’s alternative argument that “collating
unit” should be construed to require patient-specific
3 Though we see no triable issue of fact here, the
patentee did not move for summary judgment on this
issue before the district court. Thus, we remand this case
to the district court which is best situated to determine
how to move forward.

Saturday, August 13, 2016

More on the CRISPR patent wars

A post by statnews on the patent fights over CRISPR technology begins:

The meter is running like mad on the dispute over key patents on CRISPR genome editing. In its latest 10-Q filing with the Securities and Exchange Commission, Editas Medicine — which has licensed one of the patents in question — disclosed that it has spent $10.9 million so far this year on legal fees incurred by the Broad Institute and Harvard, mostly to defend patents awarded for CRISPR inventions by the Broad’s Feng Zhang.

Elsewhere in the post, one finds the familiar refrain "the lawyers always win":

“The thing about patent litigation is, no matter who wins, the lawyers always win,” said Sherkow. “That’s not because the attorneys are doing anything improper, but because both sides are paying their attorneys to fight vigorously. Like any war of mercenaries, their employers can call off the fight if they wish. But when both sides are invested in victory, being a soldier of fortune is lucrative.” And when someone else is footing the bill, there is little financial incentive to call off the war.

link: https://www.statnews.com/2016/08/12/crispr-patent-fight-legal-bills-soaring/

In the past, it is believed that the costs to the University of Rochester in the cox-2 patent fights were of order 10 million.