Monday, December 05, 2016

PHOSITA, the Frankenstein from the US Supreme Court?

The 717Madison blog had a post mentioning the use of the word "Frankenstein" in oral argument at the CAFC.

That appellation goes back some time, and the first court "attacked" with this verbiage was the US Supreme Court:

Prior to the establishment of the U.S. Federal Circuit, Cryil A. Soans colorfully portrayed the Supreme Court's PHOSITA interpretation in a 1966 article as a Frankenstein monster created by the Supreme Court. This mythical character with supernatural power enabling him to know all of the tools and practices known to any and all persons working in his field anywhere in the U.S. and having all of the printed publications (in his field) in all libraries of the world. He can read all languages and can understand all that he reads and never forgets. In addition, he tests the claim of inventors when they apply for patents and when they try to enforce them. n27 These characteristics did not originate with Soans, but derived from the Supreme Court's ruling in Mast-Foos & Co. v Stover. n28

From the Rutgers Law Record, 2010-11 [ 38 Rutgers L. Rec. 1 ]

AND, in footnotes from JOLT [ 23 Harv. J. Law & Tec 227 ] :

n29 Cyril A. Soans coined the term PHOSITA fourteen years later in an article in which he discussed "Mr. Phosita," a personification of the hypothetical person having ordinary skill in the art. Cyril A. Soans, Some Absurd Presumptions in Patent Cases, 10 IDEA 433, 438-39 (1966) (offering an invective against the Court-created "superhuman Frankenstein monster Mr. Phosita," who had powers extending far beyond those of the ordinarily skilled artisan).

n30 The Federal Circuit adopted the term "PHOSITA" in 1984. See Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 n.5 (Fed. Cir. 1984) (discussing Soans's article). The term PHOSITA is now firmly established in patent law scholarship, although most recent allusions to "Mr. Phosita" have dropped the honorific "Mr." and placed the remaining acronym in all capital letters.

**Separately, the "Alice" decision invited other literary comparisons

from 98 JPTOS 374 (2016)
Lewis Carroll, Alice's Adventures in Wonderland 15 (The Macmillan Company 1920) (1898). Alice's exclamation of bewilderment at the confusing world in which she finds herself aptly captures the sentiment behind the Federal Circuit's attempts to make sense of the Supreme Court's unclear decision in Alice v. CLS Bank.

**And, from 46 U. Louisville L. Rev. 113 (2007) ,

And, on the more general side, recent scholarship has examined how mentions of Kafka appear in judicial opinions, though the purpose of this survey was primarily to demonstrate ways that judges have stylistically appealed to Kafka garnish their prose. See Parker B. Potter, Jr., Ordeal by Trial: Judicial References to the Nightmare World of Franz Kafka, 3 Pierce L. Rev. 195, 196 (2005).

"Motivation to combine" analyzed by CAFC in Dako v. Leica

From the decision:

The existence of a motivation to combine is a factual
determination. Star Sci., Inc. v. R.J. Reynolds Tobacco
Co., 655 F.3d 1364, 1374–75 (Fed. Cir. 2011). Under a
substantial evidence standard of review, we must draw all
reasonable inferences in favor of the Board’s decision that
are supported by the record and should take care not to
make credibility determinations or to weigh the evidence.
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,
150 (2000). “[A]lthough the court should review the
record as a whole, it must disregard all evidence favorable
to the [appellant] that the [factfinder] is not required to
believe.” Id. at 151.


The question before us is whether, based on all of the
evidence before the Board, a reasonable factfinder could
find that there was a motivation to combine Tseung and
Muller. The answer to this question is “yes.” A motivation
to combine can be found in “any need or problem
known in the field of endeavor at the time of the invention
and addressed by the patent.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007). “[T]he analysis need not
seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
In its analysis, the Board primarily relied on Tseung’s
statement that “some staining techniques can be enhanced
by providing heat so that either incubation or
drying times are shortened, thereby increasing the speed
of the overall operation.” No. 15-1997 J.A. 17 (quoting
Tseung, col. 12 ll. 6–9). According to the Board, this both
provided a reason to use heating in Tseung and adapt it to
use Muller’s individual heaters. Given the disclosures of
Tseung and Muller, this conclusion is supported by substantial

Of the "mere existence" of a patent:

The speech does not describe the features
of the product Ventana ultimately released, and the mere
existence of Ventana’s patent does not necessarily imply
that the patent is based on the specific product referred to
in Mr. Schuler’s statement. Because a reasonable factfinder
could interpret the evidence Dako presented as
failing to provide a nexus, the Board’s conclusion is supported
by substantial evidence.

Teva v. Sandoz is cited:

Claim construction is an issue of law based on underlying
factual considerations. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 838 (2015). We review the
Board’s ultimate construction de novo, and any underlying
factual determinations for substantial evidence.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297
(Fed. Cir. 2015). In inter partes reexamination proceedings,
claims are given their “broadest reasonable interpretation”
consistent with the specification. In re Rambus,
Inc., 753 F.3d 1253, 1255 (Fed. Cir. 2014).

Thursday, December 01, 2016

Microsoft loses appeal of Enfish case at CAFC

From the decision:

Enfish, LLC owns U.S. Patent Nos. 6,151,604 and
6,163,775, which describe and claim methods and apparatuses
for storing and retrieving data using assertedly
improved database techniques. In September 2013,
Microsoft Corp. filed five petitions for inter partes review
of the ’604 and ’775 patents. After instituting review
based on those petitions, the Patent Trial and Appeal
Board concluded, in five final written decisions, that
some, but not all, of the challenged claims were unpatentable.
Microsoft and Enfish cross-appeal from selected
adverse portions of the Board’s decisions. We affirm.

Separately, from Blawgsearch on 1 December 2016

Tuesday, November 29, 2016

Patent citation analysis upheld for calculating damages in Comcast v. Sprint, 2016 U.S. Dist. LEXIS 161623 (!?!)

From Comcast v. Sprint, 2016 U.S. Dist. LEXIS 161623 (opinion by Hon. Jan E. DuBois, ED Pa) on the validity of "forward patent citation analyis" (using later citations to an earlier patent to establish value):

Forward citation analysis is a method of estimating the value of a particular patent based on the number of times the patent is cited by later patents. Comcast Mot. to Exclude, Ex. 19, Expert Report (Corrected) of Alan J. Cox in Connection With Comcast Cable Communication et al. v. Sprint Communications Company L.P. et al. (hereinafter "Cox Report") ¶ 103. Dr. Cox uses forward citation analysis to corroborate his conclusion regarding the reasonable royalty for the '870 patent. Cox Report ¶ 102. Citations are only a comparative indicator of value—"[p]atents in different technologies tend to be cited at different rates, and patents that are older tend to have more citations than patents that were issued more recently." Cox Report ¶ 105. Thus, to ascertain the relative value of the '870 patent, Dr. Cox compiled a pool of patents that are technologically similar to the '870 patent, based on International Patent Classification system labels, and published within six months before and after publication of the '870 patent. Cox Report ¶ 106. Dr. Cox next determined how many times each patent in the resultant pool was cited by later patents. [*18] Cox Report ¶ 107. Using this data, Dr. Cox determined the "percentile ranking" of the '870 patent—that is, "the percentage of categorically similar patents that had less forward citations" than the patent in question. Cox Report ¶ 107.


Comcast first argues that the Court should exclude Dr. Cox's reliance upon forward citation analysis altogether because that method has been "discredited" and therefore fails Daubert's reliability requirement. Comcast Mot. to Exclude at 13-14. In advancing this argument, Comcast relies on a recent trial court decision which it claims rejected the forward citation method as unreliable under Daubert. Comcast Mot. to Exclude at 14; Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-CV-03999-BLF, 2015 U.S. Dist. LEXIS 91528, 2015 WL 4272870 (N.D. Cal. July 14, 2015). But Finjan does not reject forward citation analysis outright—rather, that case recognizes that "a qualitative analysis of asserted patents based upon forward citations may be probative of a reasonable royalty in some instances." Finjan, 2015 U.S. Dist. LEXIS 91528, 2015 WL 4272870 at *8. Comcast also points to a recent paper published by researchers at the University of Pennsylvania in support of its argument. Comcast Mot. to Exclude at 14, Ex. 21 ("Penn Paper").7

[footnote 7: David S. Abrams, Ufuk Akeigit, and Jillian Popadak, Patent Value and Citations: Creative Destruction or Strategic Disruption?, U. Penn. (2013), available at ]

Things get interesting when the court writes:

The authors of the Penn Paper conclude some of the patents with the highest lifetime revenues have fewer citations than patents with median revenues. Penn Paper at 1. However, the forward citation method of analysis has been recognized in the academic literature as reliable since the 1990s.8 Indeed, one meta-analysis of published research on forward citation analysis, which included the Penn Paper, found "forward citation intensity is, in fact, correlated with economic value."9 In short, courts have not rejected forward citation analysis outright. This Court determines that a single academic paper—the Penn Paper—is not sufficient to rebut decades of literature supporting forward citation analysis.

[footnotes 8 and 9: 8 See, e.g., Dietmar Harhoff, Frederic Scherer, and Katrin Vopel, Citation, family size, opposition and the value of patent rights, Research Policy, 1596 (2002); Bronwyn H. Hall, Adam Jaffe, and Manuel Trajtenberg, Market Value and Patent Citations, RAND Journal of Economics 36 (1) (Spring 2005); Manuel Trajtenberg, A Penny for Your Quotes: Patent Citations and the Value of Innovations, RAND Journal of Economics 21 (1) (Spring 1990).9 Adam B. Jaffe and Gaétan de Rassenfosse, Patent Citation Data in Social Science Research: Overview and Best Practices, Nat'l Bureau of Econ. Research Working Paper Series (2016), available at .]

** On 2 June 2005, there was a post on IPBiz entitled Patent citations, again? , noting, among other things, a 2003 paper criticizing patent citation:

Of one of CHI's studies, from Lawrence B. Ebert, Say Good-Night, Gracie, Intellectual Property Today (June 2003):

** See also the 2009 IPBiz post
"Trolls on top?" or how not to cite relevant work?

** See also the 2010 IPBiz post
The citations found in patents: do references cited by the applicant matter?
, which contains a reference to a 1990s paper severely criticizing the use of patent citation analysis:

Simmons, Edlyn S.; Lambert, Nancy. "Comparing grapes and watermelons." ChemTech 23 (6), 1993, p. 51-59.

**Note separately the paper titled -- The Doctrine of Equivalents: Hilton Davis and Pioneering Patents -- [Intellectual Property Today, p. 10 (December 1996), available on LEXIS, which includes the text criticizing the patent citation work of Breitzman and Narin ("BN"):

In the March, 1996 issue of The Law Works, Breitzman and Narin ("BN") presented the argument "that very highly cited patents, patents of 'Pioneering Class' citation frequency, may be entitled to a broad interpretation of their claims, as are Pioneer patents." BN cited various studies that "support the notion of the technological importance of the inventions represented by highly cited patents." They noted that "there is a strong statistical association between pioneering patents and high citation frequency, just as there is a strong statistical association between high citation in patents and their technological importance."

In a letter in the November, 1996 issue of The Law Works, BN acknowledged that there were worthless patents that have received a lot of citations, just as there are important patents that have received few citations. Thus, the presence of many citations, by itself, does not prove value, and the absence of citations does not prove lack of value.

Nevertheless, BN find it inexplicable that 64 non-self-citations (out of 165 total cites) for US 4,105,776 don't strike me as extraordinary. My answer is that the number of citations for any patent, in the absence of an analysis of the citations, is insufficient to prove value. A few examples are in order.

In the November, 1996 letter, BN point to an article by Narin and Frame that was featured in the August 11, 1989 issue Science (which they consider "possibly the most prestigious of the thousands of U.S. research journals") n7. According to the ISI database (Dialog 434), this article has been cited 6 times. An article by Ebert in a 1990 issue of Science n8 has been cited 23 times. I would submit that the value of neither article is given by the number of citations.

n7 The Science article pertained to the growth of Japanese science. Narin's work on high citations of Japanese patents was discussed in Business Week (p. 57 of Aug. 9, 1993 issue), in the Jiji Press Ticker (May 28, 1991), Business America (Vol. 110, p. 13, Sept. 25, 1989 issue) and the New York Times (p. A1 of March 7, 1988 issue). He discussed the poor citation of Soviet work in Science, p. 629 (Feb. 8, 1985). Narin recently published an article "Biblometric Performance Measures" in Scientometrics, 1996, 36, 293-310; the abstract notes "The key measure is whether an agency is producing or supporting highly cited papers and patents."

n8 Science, 247, 1469 (1990).

BN referred to a 1986 article by Eugene Garfield, "Do Nobel Prize Winners Write Citation Classics?" For reference, I include herewith the total (first author) citation count for the three Nobel Prize winners in Chemistry in 1996, who won for their work on buckminsterfullerene (C60; "buckyball"): R.E. Smalley (1715), H. W. Kroto (3754), and R. F. Curl (1464). For comparison, I give numbers for past chemistry laureates: L. Pauling (23,187), P. J. Flory (19,173), G. A. Olah (11,795) and H. Taube (1785) and other chemistry professors J. P. Collman (9376), J. I. Brauman (1009), and N. H. Nachtrieb (351) n9.

n9 These prestigious authors presumably publish in primarily prestigious journals. Garfield has noted that only 100 journals (out of 3,400 indexed journals in SCI) account for 44% of cited articles.

In the November, 1996 letter, BN refer to the case I discussed (Gordon and Breach v. AIP) as "one rather old law suit", even though the case is still pending n10. This case was one example of many which illustrated potential issues with citation analysis n11.

n10 Summary judgment matters were disposed of in 859 F. Supp. 1521 (SD NY 1994) and in 905 F. Supp. 169 (SDNY 1995).

n11 We noted the issue of channeling in individual cites (the quote of Maddox and of Daubert) and in journal cites (Energy & Fuels). There are issues of improper cites and nonexistent cites, detailed in L. B. Ebert, FSTI, 15(3), in press, 1997. One can have cites to papers which are scientifically wrong, and perhaps even fraudulent (see C & E News, p. 7 (Nov. 4, 1996)). One notes that in the episode of the television show Law & Order which we cited in the July 1996 issue of The Law Works (p.6), as well as in the episode which aired Nov. 6, 1996, scientists who had all the superficial indicia of success, presumably including many citations, were, after detailed analysis, demonstrated to be villains. A moral of these episodes, which we adopt here, is that one has to look beyond the superficial before drawing conclusions. "Nose counts" of citations alone are just not enough to prove value.

BN made no comment about my discussion of the citation background for U.S. 3,900,554, issued on Aug. 19, 1975, "Method for the reduction of the concentration of NO in combustion effluents using ammonia" by Richard K. Lyon. In July, 1996, we noted that the patent had been cited in the "references cited" field of 92 patents, and in 133 patents overall. By October, 1996, the numbers had grown respectively to 98 and 141, with none of the recent patents by the assignee company. Although BN noted "a company that does not build on the prior art and technology that it has already patented would be one with a totally disorganized R&D effort", such arguably is the case with the '554 patent [see also Physics Today, pp. 59-60 (July 1987); Business Week, pp. 72-75 (April 2, 1990); Carbon 1995, 33, 1007-1010; Nature, 382, 17-18 (July 4, 1996)].

BN made no comments on the letters by Louis Robertson and Steve Mendelsohn in the July, 1996 issue of The Law Works. Furthermore, they have not fully responded to Paul Wille's argument in the April, 1996 issue. The patents that are listed in the "references cited" field of the first page of a patent originate from two sources: the examiner (PTO-892 form) and the applicant (PTO-1449) form. Of the first source, the examiner may cite a patent for what it teaches. There can be many uses made by the examiner of a patent reference. For example, I recently had an examiner cite a patent for its discussion of the prior art, not for the invention of the patent. Of the second source, the applicant is free to list patents for consideration by the patent office; as long as they comply with the rules, they will appear in the "references cited" field of the patent. There is no barrier to self-citation by the applicant. It is not clear that the method of BN distinguishes between references cited on a PTO-892 form and on a PTO-1449 form.

BN promise to review all the studies which have shown the importance of highly cited patents. There are many papers that have questioned the value of patent citation. n12

n12 Edlyn S. Simmons and Nancy Lambert, "Patent Statistics: Comparing Grapes and Watermelons", Proc. Montreux 1991 Int. Chemical Information Conference published in "Recent Advances in Chemical Information", Royal Society of Chemistry, Spec. Publ. 100, 1992.; see also Stuart M. Kaback, Nancy Lambert, and Edlyn S. Simmons, "Patent Citations: Source of Insight or Nothing to Get Excited About?", August 1994 meeting of American Chemical Society [this reference notes: "Patent citations turn out to be quite different in character from the citations we may be familiar with in the citation literature."]; E. Simmons, "Patent family databases 10 years later", Database, Vol. 18(3), Pg. 28, (June, 1995).

**One can find more than one paper criticizing patent citation analysis if one seriously looks.

101 invalidity found in Apple v. Ameranth case involving review PTAB decision on "covered business methods"

In this case, the CAFC was reviewing a PTAB decision on
covered business methods:

In this appeal, we review Patent Trial and Appeal
Board decisions in three Covered Business Method
(“CBM”) reviews. The decisions addressed the subject
matter eligibility of certain claims of U.S. Patent No.
6,384,850 (“’850 patent”), U.S. Patent No. 6,871,325 (“’325
patent”), and U.S. Patent No. 6,982,733 (“’733 patent”).
For the reasons explained below, we affirm-in-part and

From the conclusion:

For the reasons explained above, we affirm the
Board’s decisions finding certain claims unpatentable
under § 101, and we reverse the Board’s decisions confirming
the patentability of certain claims under § 101.
Claims 1–11 of the ’850 patent, claims 1–10 of the ’325
patent, and claims 1–16 of the ’733 patent are all unpatentable
under § 101.

The CAFC accepted Apple's " insignificant post-solution activity "

The Board found that the Apple petitioners had
“fail[ed] to provide sufficient evidence that menus having
handwriting capture or voice capture functionality were
well-known or conventional at the time of the ’733 patent
or require merely a general purpose computer.” Id.
On appeal, the Apple petitioners argue that these limitations
recite insignificant post-solution activity. We
agree that these limitations do not serve to provide an
inventive concept.

The ’733 patent refers to the use of handwriting and
voice capture technologies without providing how these
elements were to be technologically implemented. Col. 3
l. 48–col. 4. l. 9; col. 4 ll. 18–22; id. at ll. 27–37. At oral
argument, Ameranth conceded that it had not invented
voice or handwriting capture technology, and that it was
known at the time it filed its applications to use those
technologies as ways of entering data into computer
systems. Oral Arg. at 16:26–52.

In any event, in Content Extraction, we found that a
recitation of the use of “existing scanning and processing
technology to recognize and store data from specific data
fields such as amounts, addresses, and dates” did not
amount to significantly more than the “abstract idea of
recognizing and storing information from hard copy
documents using a scanner and a computer.” Content
Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014), cert.
denied, 136 S. Ct. 119 (2015). Here, Ameranth claims no
more than the use of existing handwriting and voice
capture technologies using a computer system.
These claims depend from independent claims found
to be directed to unpatentable subject matter, as is discussed
above. Appending these preexisting technologies
onto those independent claims does not make them patentable.
We reverse the Board’s finding confirming the
patentability of these claims.

Wednesday, November 23, 2016

Unwired Planet prevails over Google, with CAFC invoking image of a novel lighbulb

Unwired Planet, represented by Goodwin Procter LLP, won its appeal at the CAFC:

Unwired Planet, LLC (“Unwired”) appeals from the
final written decision of the Patent Trial and Appeal
Board (“Board”) in Covered Business Method Patent
Review No. 2014 -00006.
Google Inc. v. Unwired Planet, LLC, CBM2014-00006,
2015 WL 1570274 (P.T.A.B. Apr. 6, 2015) (“
CBM Final Decision ”). Because the Board
relied on an incorrect definition of covered business
method (“CBM”) patent in evaluating the
challenged patent, U.S. Patent No. 7,203,752 (the “’752 patent”), we
vacate and remand.

Some text:

The Board's application of the "incidental to" and "complementary to" language
from the PTO policy statement instead of the statutory definition renders
superfluous the limits Congress placed on the definition of a CBM patent.
CBM patents are limited to those with claims that are directed to methods
and apparatuses of particular types and with particular uses "in the practice,
administration, or management of a financial product or service." AIA § 18(d).
The patent for a novel lightbulb that is found to work particularly well in
bank vaults does not become a CBM patent because of its incidental or complementary use in banks.

Bottom line: We hold that the Board's reliance on whether the patent claims
activities "incidental to" or "complementary to" a financial activity as the
legal standard to determine whether a patent is a CBM patent was not in accordance with law.
We do not reach the patentability of the challenged claims under section 101.

We vacate the Board's final written decision and remand the case
for a decision in the first instance, [*15] and in accordance with this opinion,
whether the '752 patent is a CBM patent.

See: 2016 U.S. App. LEXIS 20764

Friday, November 18, 2016

Post at The Scientist related to Sarkar matter in Michigan

On 17 November 2016, Bob Grant at The Scientist posted an article PubPeer Lawyers Ask to Enter Misconduct Report into the Court Record . The newsworthy event in November 2016 was American Civil Liberties Union (ACLU) lawyers representing PubPeer filed a motion with the Michigan Court of Appeals on November 16 to enter an internal Wayne State University investigation of pathologist Fazlul Sarkar into the legal record .

This post related to a case, now at the Michigan Court of Appeals, involving Dr. Fazlul Sarkar, once of Wayne State University, a case which IPBiz has not been covering. Some of the interest of The Scientist in this case may be found in the sentence:

Previously, the ACLU legal team successfully lobbied the court to amend the record with a story that ran on The Scientist quoting summary statements from the report, obtained independently through the Freedom of Information Act, indicating that the university found Sarkar guilty of scientific misconduct. Strictly as to legal issues, we have the matter of hearsay evidence and of confidentiality.

[Update on 5 Dec. 2016: the motion to enter the misconduct report into the appellate record was denied.]

Some of the history of the case may be found in the post The Case Against PubPeer . This 2015 post separately notes

The commenters of PubPeer have been at the forefront of exposing scientific fraud, with their biggest coup being their rapid exhaustive coverage of all the flaws within Haruko Obokata's Stem Cell paper. Their criticisms triggered retractions from Nature, one of the most prestigious scientific journals out there. That such a highly regarded journal could fumble its peer review so disastrously provided more evidence that post publication peer review is crucial to science.

with the Obokata case one that IPBiz has covered. From the 2014 post by IPBiz --RIKEN investigation confirms Obokata paper on stem cells in Nature used doctored figures -- :

Normile pointed to the role of bloggers in uncovering the problems

Almost immediately after publication, bloggers in Japan and contributors to PubPeer, a website where scientists discuss published papers, started pointing out possibly manipulated images and apparently plagiarized text.

LBE separately pointed out the role bloggers played in the Hwang Woo Suk matter in the publication ``Lessons to be Learned from the Hwang Matter: Analyzing Innovation the Right Way,'' 88 JPTOS 239 (March 2006).

** The 2015 post in sciencemadeeasy also notes

Does this mean Dr Sarkar is guilty of misconduct ?

I don't think so. If you read all of the papers, you'll find one repeated sentence. "All authors contributed to this article equally". There is no way for anybody outside of his laboratory or institution to know that, and here in my country at least, we have the presumption of innocence.

The truth is that we don't know, and we may never know for sure.

If he is innocent, it won't mean he'll get off unscathed. As Ushma S. Neill points out-

When questioned about data in a paper, many senior authors feign ignorance and blame the first author or data generator, but I find that disingenuous. If you are the senior author, it is incumbent on you to verify all of the raw data yourself. There is intense pressure to produce, and to produce high-impact results. Sometimes this can lead to a student doing anything to please. If the paper goes out with your name on it, you should be able to verify every single piece of data in it and take responsibility for it.

As to how misconduct allegations, related to federally funded projects, are handled, some text from F. Lisa Murtha, HCCA 2015 Compliance Institute, which relates to inquiries related to Scientific Misconduct: (PHS) 42 CFR 93, (NSF) 45 CFR 689:

Protecting Evidence • You must take possession of all the evidence immediately • Evidence includes study records, computer hard drives, lab books, working papers, correspondence, rough drafts • The respondent is innocent until proven guilty. You must make it possible for him/her to continue working while your review is underway
The Inquiry Report • The Inquiry is analogous to a grand jury. The purpose is not determine guilt or innocence, but to determine whether there is sufficient credible evidence to warrant a full investigation • A recommendation against proceeding to an investigation is not necessarily the same as a finding of “innocence” • Must state what evidence was reviewed • Summarizes relevant interviews • Includes the conclusions of the Inquiry • The individuals against whom the allegation was made shall be given a copy of the report inquiry—their comments may be part of the record • The individuals may be given longer than 60 days to complete their response • The Inquiry is NOT intended to reach a final conclusion • Legal standard: Preponderance of the evidence to go forward


See also:

**Keep in mind, that universities may have their own policies on things related to ethics, plagiarism, etc. that can be apart from ORI mandated investigations of misconduct on projects involving federal funding.

Recall the recent IPBiz post -- Appellant Walker loses appeal against Harvard University in case involving copying of dissent in Bilski -- related to the case

Walker v. Harvard, Cosgrove, Weinreb, 2016 U.S. App. LEXIS 19164 (CA1 Oct. 24, 2016 ) which was an appeal by former law student Walker of an unfavorable summary judgment decision, which concerned a violation of the Harvard Law School Handbook of Academic Policies

Thursday, November 17, 2016

Outcome in Mann v. Cochlear: we affirm-in-part, reverse-in-part, and vacate-in-part

There was a mixed outcome in the CAFC case of

After conducting a jury trial and a bench trial on separate issues,
the district court entered judgment finding claim 10 of the ’616 patent
infringed and claim 1 of the ’616 patent and claims 6–7 of
the ’691 patent invalid for indefiniteness.
The court also granted Cochlear’s JMOL of no willful infringement and
its motion for a new trial on damages. Both parties

Because we find that the district court did not err
in its infringement determination or in finding claims 6–7
indefinite, but did err in finding claim 1 indefinite, we
affirm-in-part and reverse-in-part. We vacate and remand
the district court’s determination regarding willfulness
in light of the Supreme Court’s decision in Halo
Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. __, 136
S. Ct. 1923 (2016). We also conclude that we do not have
jurisdiction over the damages issue

Of the matter with claim 1 of US '616:

Claim 1 of the ’616 patent reads, in relevant part:

A physician’s testing system for testing a multichannel
cochlear stimulating system, comprising
a physician's tester, an external headpiece/transmitter,
and an implanted cochlear
stimulator (ICS), . . .
[c] the physician’s tester comprising:
[1] external processor means coupled to the
transmitting means of the external headpiece/transmitter
for receiving and processing
the status-indicating signals to
derive information therefrom regarding the
operation of the implanted stimulator and
its plurality of tissue stimulating electrodes;
. . . .

The CAFC noted:

Both parties’ experts testified that a person of ordinary skill
would know to apply Ohm’s law to voltage and current to
yield impedance values. See J.A. 33662 (“[Impedance] is
always calculated based on the ratio of voltage to current.
One of ordinary skill in the art would readily understand
from the disclosure in the ’616 patent that this [sic] the
algorithm is implemented. The algorithm for calculating
impedance is Ohm’s law, which is famous and well known
to a person of ordinary skill in the art.”); id. at 2586 at
(“Q: If you know what the current is that’s being
applied and you know what the voltage is being measured,
then you could use that information to put it into
the Ohm’s law equation and calculate impedance; right?
A: In this application where you want to do something
like this, you could do that. There are other things you
could do.”). The specification also discloses that impedance
is calculated based on voltage and current. ’616
patent, col. 31 ll. 55–58 (“[B]oth the stimulus voltage and
current can be measured and, thereby, the impedance of
the electrode and the tissue-electrode interface can be
measured and transmitted back to the WP.”). Because
there is “adequate defining structure to render the bounds
of the claim understandable to one of ordinary skill in the
art,” AllVoice, 504 F.3d at 1245, we reverse the district
court’s indefiniteness finding as to claim 1 of the ’616

Of the Halo issue:

Cross-Appellants argue that, at a minimum, we
should vacate and remand the court’s grant of JMOL on
willfulness in light of Halo. We agree. On remand,
mindful of Halo’s “preponderance of the evidence standard,”
136 S. Ct. at 1934, the court must consider whether
Cochlear’s infringement “constituted an ‘egregious case[]
of misconduct beyond typical infringement’ meriting
enhanced damages under § 284 and, if so, the appropriate
extent of the enhancement.” WesternGeco L.L.C. v. ION
Geophysical Corp., --- F.3d ---, 2016 WL 5112047, at *5
(Fed. Cir. Sept. 21, 2016) (quoting Halo, 136 S. Ct. at

Accordingly, we vacate the district court’s determination
that Cochlear’s infringement of the Foundation’s
patents was not willful and remand for further proceedings.

Of the damages matter:

There has not been a final decision on the damages issue.
We are not persuaded by Cross-Appellants’ argument
that the § 1292(c)(2) exception to the rule of finality
applies here. Under Bosch, the exception allows us to
consider the liability issues in this case, but does not go so
far as to permit us to consider the non-final order itself.
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 759
F.3d 1333, 1339 (Fed. Cir. 2014) (“As an exception to the
final judgment rule, § 1292(c)(2) is to be interpreted
narrowly.”). Clearly, if the parties were only appealing
the damages issue, we would not have jurisdiction under
§ 1295(a)(1). The addition of the liability issues in this
case does not change our jurisdictional reach. Orenshteyn,
691 F.3d at 1363–64 (dismissing as premature portion
of invalidity and sanctions appeal relating to
sanctions because the district court had not yet made a
final determination regarding the amount of the sanctions).

Footnote 3 observed:

Since the question of what is “final” is sometimes
a difficult question, the Supreme Court has cautioned
that the requirement of “finality is to be given a ‘practical
rather than a technical construction.’” Gillespie v. United
States Steel Corp., 379 U.S. 148, 152 (1964) (quoting
Cohen v. Beneficial Indus. Loan Corp., 337 U.S. 541, 546
(1949)). But the Supreme Court has noted that “[i]f
Gillespie were extended beyond the unique facts of that
case, § 1291 would be stripped of all significance.” Coopers
& Lybrand v. Livesay, 437 U.S. 463, 477 n.30 (1978).
We have similarly held that the “‘exception to finality
created by Gillespie is to be very rarely used beyond the
unique facts of that case.’” Spread Spectrum Screening
LLC v. Eastman Kodak Co., 657 F.3d 1349, 1356–57 (Fed.
Cir. 2011) (quoting Fairchild Republic Co. v. United
States, 810 F.2d 1123, 1126 (Fed. Cir. 1987)).

Tuesday, November 15, 2016

CAFC in Perfect Surgical : An attorney’s work in preparing a patent application is evidence of an inventor’s diligence

Of the diligence issue:

A patent owner need not prove the inventor continuously
exercised reasonable diligence throughout the
critical period; it must show there was reasonably continuous
diligence. See, e.g., Tyco Healthcare Grp. v. Ethicon
Endo-Surgery, Inc., 774 F.3d 968, 975 (Fed. Cir. 2014);
Monsanto, 261 F.3d at 1370. Under this standard, an
inventor is not required to work on reducing his invention
to practice every day during the critical period. See
Monsanto, 261 F.3d at 1369. And periods of inactivity
within the critical period do not automatically vanquish a
patent owner’s claim of reasonable diligence. For example,
in Monsanto, we held that substantial evidence
supported the jury’s presumed finding that an inventor
was reasonably diligent where there was no corroborating
evidence of any activity for a series of months. Id.
at 1370. We explained that, notwithstanding the absence
of daily notebook entries and the resulting gaps during
the critical period, “the work involved in the experiments
was continuous in nature” and therefore the reduction to
practice was “reasonably continuous.” Id. In Brown v.
Barbacid, we held that the patent owner’s evidence of
diligence during a 31-day critical period was “sufficient to
show substantially continuing activity” despite the lack of
activity during six single-day gaps. 436 F.3d at 1380–83.

Our holdings in these cases are consistent with the purpose
of the diligence inquiry. In determining whether an
invention antedates another, the point of the diligence
analysis is not to scour the patent owner’s corroborating
evidence in search of intervals of time where the patent
owner has failed to substantiate some sort of activity. It
is to assure that, in light of the evidence as a whole, “the
invention was not abandoned or unreasonably delayed.”
Id. at 1379. That an inventor overseeing a study did not
record its progress on a daily, weekly, or even monthly
basis does not mean the inventor necessarily abandoned
his invention or unreasonably delayed it. The same logic
applies to the preparation of a patent application: the
absence of evidence that an inventor and his attorney
revised or discussed the application on a daily basis is
alone insufficient to determine that the invention was
abandoned or unreasonably delayed. One must weigh the
collection of evidence over the entire critical period to
make such a determination.

Our decision in In re Mulder, 716 F.2d 1542, 1542–46
The Board
cites In re Mulder for the proposition that “[e]ven a short
period of unexplained inactivity may be sufficient to
defeat a claim of diligence.” J.A. 16. In In re Mulder, a
competing reference was published just days before the
patent at issue was constructively reduced to practice.
716 F.2d at 1544. The patent owner was tasked with
showing reasonable diligence during a critical period
lasting only two days. Id. at 1545. But the patent owner
did not produce any evidence of diligence during the
critical period. Id. Nor could it point to any activity
during the months between the drafting of the application
and the start of the critical period. Id. Although the
critical period spanned just two days, we declined to
excuse the patent owner’s complete lack of evidence. Id.
In re Mulder does not hold that an inventor’s inactivity
during a portion of the critical period can, without more
destroy a patent owner’s claim of diligence.

Here, the Board’s erroneously heightened burden of
proof infected its analysis. First, the Board did not
properly weigh PST’s evidence under a rule of reason. See
Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)
(explaining that under a rule of reason analysis, “[a]n
evaluation of all pertinent evidence must be made so that
a sound determination of the credibility of the inventor’s
story may be reached”). Rather than evaluating PST’s
evidence as a whole, the Board fixated on the portions of
the critical period where PST did not provide evidence of
Dr. Nezhat’s specific activities to conclude Dr. Nezhat’s
exercise of diligence was not “continuous.” See J.A. 21–
22. In doing so, the Board repeatedly condemned PST for
not being “sufficiently specific as to facts and dates for the
entire critical period during which diligence is required.”
J.A. 21; see also id. (noting a portion of the critical period
where “Dr. Nezhat does not identify any specific activities
undertaken or the dates of those activities”). Th
(Fed. Cir. 1983), does not instruct otherwise.

Under a rule of reason analysis, PST was not required
to corroborate every day the application was worked on,
every surgery Dr. Nezhat performed, or specify precisely
what work was done. See In re Jolley, 308 F.3d 1317,
1328 (Fed. Cir. 2002) (“[C]orroboration may be provided
by sufficient independent circumstantial evidence, and
corroboration of every factual issue contested by the
parties is not a requirement of the law.”).

The Board compounded its error by summarily dismissing
the activities of Dr. Nezhat’s attorney,
Mr. Heslin, after determining that PST’s evidence of
Dr. Nezhat’s activities did not alone establish reasonable
diligence. J.A. 22 (“[W]e also need not reach and, therefore,
do not address whether Patent Owner provides
sufficient evidence to demonstrate Mr. Heslin’s continuous
exercise of reasonable diligence for the entire critical
period.”). This was error. An attorney’s work in preparing
a patent application is evidence of an inventor’s
diligence. See Brown, 436 F.3d at 1380 (citing Bey v.
Kollonitsch, 806 F.2d 1024, 1030 (Fed. Cir. 1986)). By
preparing and filing the application that would issue as
the ’384 patent on behalf of Dr. Nezhat, Mr. Heslin was
acting as Dr. Nezhat’s agent.

As to patentee as lexicographer:

The patentee is free to
define or limit a term used in a patent. See Thorner v.
Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66
(Fed. Cir. 2012). We conclude that the specification’s
separation of the terms perforated and passages with the
disjunctive phrase “or otherwise” makes clear that the
patentee intended that the term “perforated” is not the
same as “passages.” The patentee claimed only jaws that
are “perforated”; this claim does not extend to passages.
In light of the intrinsic record, we conclude that the term
“perforated” is not coextensive with or the same as “passages.”
Thus the Board’s finding that JP ’551 disclosed at
least one “perforated” jaw because JP ‘551 referenced a
passage cannot be supported. We vacate the Board’s
decision invalidating claims 11, 38, 41–44, 46, 47, and 49
over JP ’551 and remand for proceedings consistent with
this construction.

Judge Schall dissented on the diligence question.
[ I believe the Patent Trial and Appeal Board (“Board”)
applied the correct legal standard
in finding that Perfect Surgical Techniques, Inc. (“PST”)
failed to establish that Dr. Camran Nezhat, the inventor
named on U.S. Patent No. 6,030,384 (“the ’384 patent”),
exercised reasonably continuous diligence during the
critical period. I also believe the Board’s finding on
diligence is supported by substantial evidence. ]

To establish priority of an invention, a party must
show either an earlier reduction to practice or an earlier
conception followed by a diligent reduction to practice.
Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237
F.3d 1359, 1365 (Fed. Cir. 2001); see also In re Steed, 802
F.3d 1311, 1316 (Fed. Cir. 2015) (“When the issue of
priority concerns the antedating of a reference, the applicant
is required to demonstrate, with sufficient documentation,
that the applicant was in possession of the laterclaimed
invention before the effective date of the reference.”);
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576–
78 (Fed. Cir. 1996) (explaining that a party attempting to
overcome anticipatory prior art has the burden to prove
an earlier date of invention). When a party relies on an
earlier conception (PST’s circumstance), it must “connect[]
the conception with [the inventor’s] reduction to practice
by reasonable diligence on his part, so that they are
substantially one continuous act.” Mahurkar, 79 F.3d at
1577 (quoting Christie v. Seybold, 55 F. 69, 76 (6th Cir.
1893)). The inventor must show diligence throughout the
entire critical period, which runs from a date just before
the prior art’s invention date to the inventor’s filing date.
See Creative Compounds, LLC v. Starmark Labs., 651
F.3d 1303, 1312–13 (Fed. Cir. 2011); Mahurkar, 79 F.3d
at 1578; 35 U.S.C. § 102(g) (2006) (“In determining priority
of invention . . . there shall be considered . . . the reasonable
diligence of one who was first to conceive and last
to reduce to practice, from a time prior to conception by
the other.”).

Other cases, however, have couched the test in different
terms. In Gould v. Schawlow, our predecessor court
asked whether an inventor’s testimony “support[s] a
finding of that continuity of activity which constitutes
reasonable diligence.” 363 F.2d 908, 916 (C.C.P.A. 1966)
(emphases added). In Griffith v. Kanamaru, we inquired
whether an inventor was “continuously or reasonably
diligent” during the critical period. 816 F.2d 624, 629
(Fed. Cir. 1987) (internal quotations omitted); see also
Scharmann v. Kassel, 179 F.2d 991, 996 (C.C.P.A. 1950)
(“continuing and reasonable diligence”) (citing Hull v.
Davenport, 90 F.2d 103 (C.C.P.A. 1937)). Still other cases
have used different expressions for the test. See, e.g.,
Mahurkar, 79 F.3d at 1577 (defining “reasonable diligence”
as “one continuous act”); Bey v. Kollonitsch, 806
F.2d 1024, 1030 (Fed. Cir. 1986) (requiring “reasonable
diligence during the continuous . . . critical period”). But
perhaps most importantly for our purposes here, our
predecessor court in In re McIntosh asked whether an
applicant showed “continuous exercise of reasonable
diligence.” 230 F.2d 615, 619 (C.C.P.A. 1956). This
standard is the same one recited by the Board. Ante, 7

As to review under the "substantial evidence" standard:

We review the Board’s factual findings on diligence
for substantial evidence. Monsanto, 261 F.3d at 1369.
Substantial evidence justifies a finding if a reasonable
mind might accept the evidence to support it. Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). This
standard involves an examination of the record as a
whole, taking into account evidence supporting and
detracting from an agency’s finding. Universal Camera
Corp. v. NLRB, 340 U.S. 474, 487–88 (1951). Substantial
evidence does not require the Board’s finding to be the
only one possible from the record so long as it is reasonable.
“[T]he possibility of drawing two inconsistent conclusions
from the evidence does not prevent [a] finding from
being supported by substantial evidence.” In re Gartside,
203 F.3d 1305, 1312 (Fed. Cir. 2000) (quoting Consolo v.
Fed. Maritime Comm’n, 383 U.S. 607, 620 (1966)); see also
Jolley, 308 F.3d at 1320 (“If the evidence in record will
support several reasonable but contradictory conclusions,
we will not find the Board’s decision unsupported by
substantial evidence simply because the Board chose one
conclusion over another plausible alternative.”)

Of the actions of the patent attorney:

I also agree with the majority in faulting the Board
for failing to consider Mr. Heslin’s activities during the
Third Gap. Id. 10–11. An attorney’s diligence is imputable
to the inventor. E.g., Bey, 806 F.3d at 1027. Mr.
Heslin undertook actions during the Third Gap that could
be attributed to Dr. Nezhat, such as preparing an information
disclosure statement and finalizing the application.
Ante, 11. Had the Board investigated Mr. Heslin’s
actions, it may have arrived at a different conclusion on
Dr. Nezhat’s diligence during the Third Gap. Accordingly,
I agree that it was error for the Board to disregard Mr.
Heslin’s activities during the critical period.

As to the scope of the dissent:

To conclude, I believe substantial evidence supports
the Board’s finding that Dr. Nezhat failed to demonstrate
reasonable diligence during the entire critical period. I
therefore respectfully dissent from the majority’s decision
on this point. Accordingly, while I agree that we should
vacate the Board’s decision and remand the case to the
Board for further proceedings, I would limit the remand
proceedings to determining whether, under the correct
claim construction, the invention claimed in the ’384
patent is anticipated or rendered obvious in view of JP

CAFC addresses nonanalogous art and "motivation to combine" in Unwired Planet; Google wins

Unwired Planet lost its appeal against Google:

Unwired Planet, LLC (“Unwired”) appeals from the
final written decisions of the Patent Trial and Appeal
Board (“Board”) in Inter Partes Review (“IPR”) No. 2014-
00036 and Covered Business Method (“CBM”) Patent
Review No. 2014-00005. Google Inc. v. Unwired Planet,
LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar.
30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired
Planet, LLC, CBM2014-00005, 2015 WL 1519056
(P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the
reasons stated below, we affirm the Board’s decision that
the challenged claims of U.S. Patent No. 7,024,205 (the
“’205 patent”) are invalid as obvious in the IPR appeal
and dismiss the CBM appeal as moot

This was an obviousness case, and, yes, KSR is cited:

A claim would have been obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
In order to determine if a claim would have been obvious,
“the scope and content of the prior art are to be determined;
differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill
in the pertinent art resolved.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John
Deere Co., 383 U.S. 1, 17 (1966)). Given the differences
between the prior art and the claimed invention, the
claimed combination would have been obvious only if
there was an apparent reason for a skilled artisan “to
combine the known elements in the fashion claimed by
the patent at issue.” KSR, 550 U.S. at 418.

Unwired makes three challenges to the Board’s basis
for the first ground of obviousness in the IPR. Unwired
argues (1) that Galitz is not analogous prior art, (2) that
the prior art does not teach farther-over-nearer ordering,
and (3) that a person of skill in the art would not have
been motivated to combine Brohoff with Galitz.

[As background to Galitz: Wilbert O. Galitz’s book
The Essential Guide to User Interface Design: An Introduction
to GUI Design Principles and Techniques (John
Wiley & Sons, Inc. (1997)) (“Galitz”). It discusses principles
for interface design, including discussing the advantages
of various techniques for ordering text
information and menus. Id. at 120–21, 255–56. It also
discusses the benefits and applications of several ordering
techniques, including alphabetic order. Id. at 256. Galitz
further suggests how the design principles it discusses
may be applied in designing interfaces for future, specialized
devices. Id. at 32. ]

As to the argument suggesting nonanalogous art, the CAFC stated:

Prior art is analogous and can be applied in an obviousness
combination if it either (1) “is from the same field
of endeavor, regardless of the problem addressed” or
(2) “is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992). To determine if art is analogous,
we look to “the purposes of both the invention and the
prior art.” Id. at 659. If a reference disclosure and the
claimed invention have a same purpose, the reference
relates to the same problem, which supports an obviousness
rejection. Id.

Of note:

Taken together, this evidence establishes that Galitz
is analogous prior art to the ’205 patent. The field of
endeavor of a patent is not limited to the specific point of
novelty, the narrowest possible conception of the field, or
the particular focus within a given field.
Here, both
Galitz and the ’205 patent are in the field of interface
design, with Galitz focusing on graphical user interfaces
and the ’205 patent focusing on interfaces for location-based
services. These two areas of focus overlap within
the broader field of interface design because the teachings
in graphical user interface design, including design principles
for displaying text and ordering menus, have relevance
in interfaces for location-based applications.
Likewise, a skilled artisan seeking to apply interface
design principles to display addresses—one of the particular
problems dealt with by the inventor of the ’205 patent—would
reasonably look to Galitz, which teaches
solutions to this same problem. As the Board found, Dr.
Cox’s testimony shows a skilled artisan would have
understood the applicability of Galitz’s teachings to this
problem by providing an example of conventional address
text and ordering in the location-based context.

Of "farther over nearer"

The claims only require using prioritization
information that results in a farther-over-nearer
order. ’205 patent, cl. 1, col. 10 ll. 53–55 (“wherein said
first location information is assigned a higher priority
than said second location information”). The claimed
result, where a farther first location is given priority over
a nearer second location, could result from many prioritization
schemes that do not depend on location.
It does not matter that the use of alphabetical order
for locations would not always result in farther-over-nearer
ordering. It is enough that the combination would
sometimes perform all the method steps, including farther-over-nearer
ordering. See Hewlett-Packard, 340 F.3d
at 1326. Because the use of alphabetical order as prioritization
information would sometimes meet the farther-over-nearer
claims elements, the Board was correct to
conclude that the proposed combination taught all of the
elements of claim 1.

Of motivation:

The Court in KSR described many potential rationales
that could make a modification or combination of
prior art references obvious to a skilled artisan. 550 U.S.
at 417–22; see also MPEP § 2143. KSR overturned the
approach previously used by this court requiring that
some teaching, suggestion, or motivation be found in the
prior art. 550 U.S. at 415.
Instead, the Court explained
that a rationale to combine could arise from “interrelated
teachings of multiple patents; the effects of demands
known to the design community or present in the marketplace;
and the background knowledge possessed by a
person having ordinary skill in the art.” Id. at 418. For
example, the Court stated that “if a technique has been
used to improve one device, and a person of ordinary skill
in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”
Id. at 417. For the technique’s use to be obvious, the
skilled artisan need only be able to recognize, based on
her background knowledge, its potential to improve the
device and be able to apply the technique.