Friday, April 20, 2018

CAFC addresses 101 issues in "Voter Verified" case from ND FL

Voter Verified, Inc. (“Voter Verified”) appeals from the
United States District Court for the Northern District of
Florida’s dismissal under Fed. R. Civ. P. 12(b)(6) of its
claim for patent infringement, holding that the claims of
U.S. Reissue Patent RE40,449 (“the ’449 patent”) are
directed to patent-ineligible subject matter and are thus
invalid under 35 U.S.C. § 101. See Voter Verified, Inc. v.
Election Sys. & Software LLC, No. 1:16-cv-267, 2017 WL
3688148, at *2 (N.D. Fla. Mar. 21, 2017) (“Voter Verified
NDFL”). For the reasons that follow, we affirm.

There was an issue preclusion matter in the history of the case:

The district court granted Election Systems’s motion
to dismiss. See Voter Verified NDFL, 2017 WL 3688148,
at *2. The court concluded that the “two-step analysis”
recited in Alice Corp. v. CLS Bank International, 134 S.
Ct. 2347 (2014), constituted a “substantial change” in the
law such that “the issue of patent validity is not precluded
from further litigation.” Voter Verified NDFL, 2017 WL
3688148, at *1–2. The district court therefore did not
reach an issue preclusion analysis under Eleventh Circuit
law. The court then proceeded to analyze the claims of
the ’449 patent under the two-step § 101 framework.
First, the court determined that the patent was based on
the abstract idea of “vote collection and verification.” Id.
at *2. Second, the court determined that the voting
system was made up of “generic computer components
performing generic computer functions,” and that this was
insufficient to transform the abstract idea into patenteligible
subject matter. Id. As a result, the court held
that all the claims of the ’449 patent were directed to
patent-ineligible subject matter and thus invalid under
§ 101. Id.

Of issue preclusion:

Before we reach the merits of the § 101 issue, we must
first determine whether the district court properly concluded
that the § 101 judgment from the prior litigation
does not have preclusive effect in this case for the reason
that Alice was an intervening change in the law. See
Wright et al., 18 Fed. Prac. & Proc. Juris. § 4425 (3d ed.)
(“Preclusion is most readily defeated by specific Supreme
Court overruling of precedent relied upon in reaching the
first decision.”); see also Dow Chem. Co. v. Nova Chems.
Corp. (Can.), 803 F.3d 620, 628–29 (Fed. Cir. 2015);
Wilson v. Turnage, 791 F.2d 151, 157 (Fed. Cir. 1986)


The district court held that Alice was a “substantial
change” in the law such that issue preclusion does not
apply here. See Voter Verified NDFL, 2017 WL 3688148,
at *1. On appeal, Voter Verified argues that issue preclusion
should apply because there was no change in the law,
and Alice merely applied a rule from Bilski v. Kappos, 561
U.S. 593 (2010), which it states was the controlling law at
the time the district court in the prior litigation entered
summary judgment on the § 101 issue. Election Systems
counters that there was a change in the law, because “the
two-step analysis [was] established in Mayo and further
refined in Alice.” Appellee’s Br. 23; see also Oral Arg. at
23:34–25:25, Voter Verified, Inc. v. Election Sys. & Software
LLC, No. 17-1930 (Fed. Cir. Feb. 9, 2018),

We agree with Voter Verified to the extent that it argues
that Alice was not an intervening change in the law,
so that it does not exempt a potential application of issue
preclusion. However, we ultimately conclude for the
reasons that follow that issue preclusion does not apply in
this case.


We agree with Election Systems on both points. First,
the § 101 issue was not actually litigated. It was in fact
barely considered. The district court disposed of the § 101
issue when Election Systems chose not to respond. From
the court’s opinion, it appears, as Election Systems has
argued, that the § 101 issue was never “actually litigated,”
because the court did not evaluate that question. See
Restatement (Second) of Judgments § 27, cmt. e (1982)
(“A judgment is not conclusive in a subsequent action as
to issues which might have been but were not litigated
and determined in the prior action.”).
Second, the § 101 issue of invalidity was not necessary
to the judgment in the first district court action. Whether
issues of invalidity are critical or necessary to a judgment
holding that a defendant is not liable for infringement is
an aspect that is “special or unique” to patent cases.


We therefore conclude that issue preclusion does not
apply in this case, not because there was a change in law
as the district court held, but because the issue of patent
eligibility under § 101 was not actually litigated and it
was not necessary to the judgment rendered.

As to 101:

In response, Election Systems argues that the claims
are directed to the abstract idea of “voting and checking
the accuracy of a paper election ballot.” Appellee’s Br. 30.
Furthermore, Election Systems contends that this represents
only a well-established human activity. Because the
patent only discloses use of general purpose computers,
Election Systems argues that this is nothing more than
automating a fundamental human activity, which is
insufficient to transform the claimed abstract idea into
patent-eligible subject matter under step two.

(...) [The CAFC noted:]

First, the claims as a whole are drawn to the concept
of voting, verifying the vote, and submitting the vote for
tabulation. Humans have performed this fundamental
activity that forms the basis of our democracy for hundreds
of years. See ’449 patent col. 2 ll. 62–66 (stating
that the “voting process is ultimately founded upon the
law which governs elections”); see also U.S. Const. art. I,
§ 1, cl. 1 (1789) (conveying a right in the “People of the
several States” to vote). Even Voter Verified characterized
these steps as “human cognitive actions.” Appellant’s
Br. 11. These steps are therefore nothing more than
abstract ideas. Cf. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[M]ethods
which can be performed entirely in the human mind are
the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men
and reserved exclusively to none.” (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972))).
Second, there is no inventive concept in the claims
sufficient to transform them into patent-eligible subject

CAFC examines inventor rights, "hired to invent" doctrine in James case

The CAFC reversed CD Cal in the James case, which involved correction of inventorship:

In this action against j2 Cloud Services, LLC and Advanced
Messaging Technologies, Inc. (AMT), Gregory
James asserts a claim for correction of inventorship under
35 U.S.C. § 256, as well as various state-law claims. The
district court dismissed the correction-of-inventorship
claim for lack of jurisdiction and, consequently, dismissed
the state-law claims. We reverse the jurisdictional dismissal
and remand for further proceedings.

The district court ruled on standing:

On August 3, 2016, Mr. James brought the present
action. The operative (first amended) complaint asserts a
claim for correction of inventorship under 35 U.S.C. § 256,
along with state-law claims for unjust enrichment, conversion,
misappropriation, and unfair competition. In
October 2016, j2 and AMT filed a motion requesting,
among other things, that the case be dismissed on the
ground that the court lacks jurisdiction because Mr.
James has no Article III standing to bring the action.2
On December 19, 2016, the district court agreed with
the Article III standing argument and granted the motion
under Rule 12(b)(1) of the Federal Rules of Civil Procedure.
It concluded that Mr. James lacks a stake in the
controversy because he “fail[ed] to allege facts sufficient to
show that he has an ownership or financial interest in the
’638 patent.” James v. j2 Cloud Servs. Inc., No. 2:16-cv05769,
2016 WL 9450470, at *5 (C.D. Cal. Dec. 19, 2016).
Accordingly, the court also dismissed the state-law claims.
Id. The dismissal was entered on December 22, 2016.

Chou vs. The University of Chicago is cited:

We review without deference the ruling before us: the
district court’s Rule 12(b)(1) dismissal for lack of standing.
See Chou v. Univ. of Chicago, 254 F.3d 1347, 1357
(Fed. Cir. 2001); Cedars-Sinai Medical Ctr. v. Watkins, 11
F.3d 1573, 1580 (Fed. Cir. 1993) (citing Love v. United
States, 915 F.2d 1242, 1245 (9th Cir. 1989)).

As to standing:

To have Article III standing, the “plaintiff must have
(1) suffered an injury in fact, (2) that is fairly traceable to
the challenged conduct of the defendant, and (3) that is
likely to be redressed by a favorable judicial decision.”
Spokeo, 136 S. Ct. at 1547 (citing Defenders of Wildlife,
504 U.S. at 560–61); see Chou, 254 F.3d at 1357. “The
benefit of the suit to the plaintiff must relate to the alleged
injury.” Huster v. j2 Cloud Servs., Inc., 682 F. App’x
910, 914 (Fed. Cir. 2017) (citing Vermont Agency of Natural
Resources v. United States ex rel. Stevens, 529 U.S.
765, 772–73 (2000)). In conducting the standing analysis,
we “assume[] the merits of a litigant’s claim and determine[]
whether even though the claim may be correct the
litigant advancing it is not properly situated to be entitled
to its judicial determination.” Rocky Mountain Helium,
LLC v. United States, 841 F.3d 1320, 1325 (Fed. Cir.
2016) (internal quotation marks omitted); see 13A Charles
Alan Wright & Arthur R. Miller, Federal Practice and
Procedure §§ 3531, 3531.4 (3d ed. 2008 & Supp. 2016).

The error of the district court:

The district court held specifically that, even if Mr.
James was an inventor (even the sole inventor), he had
assigned, or obligated himself to assign, his patent rights
to JFAX. James, 2016 WL 9450470, at *3–5. The court
relied on two related sources for that conclusion: (1) the
SDA; and (2) the “hired-to-invent doctrine.” Neither
source, we conclude, properly supports the conclusion of
assignment or obligation to assign at this stage of the
The district court concluded that “the SDA necessarily
precludes plaintiff from retaining ownership of the patent
rights.” James, 2016 WL 9450470, at *5. We disagree.
Under the standards appropriate at this stage of the
proceedings, which require that “the court construe[] all
factual disputes in favor of” Mr. James, id. at *3, we
cannot conclude that the SDA precludes Mr. James from
retaining ownership rights in patents on his inventions—
either as itself an assignment or as a contract to assign.
The Patent Act provides that patents and patent applications
are “assignable in law by an instrument in
writing.” 35 U.S.C. § 261. “Although state law governs
the interpretation of contracts generally,” whether a
contract “creates an automatic assignment or merely an
obligation to assign” is a matter of federal law. DDB
Techs., L.L.C. v. MLB Advanced Media, L.P., 517 F.3d
1284, 1290 (Fed. Cir. 2008); see Abraxis Bioscience, Inc. v.
Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010);
Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1253 (Fed.
Cir. 2000). On the automatic-assignment side of the line
is a “contract [that] expressly conveys rights in future
inventions.” Abraxis, 625 F.3d at 1364. On the other side
of the line is a “mere promise to assign rights in the
future.” Id. at 1365. “In construing the substance of [an
alleged] assignment, a court must carefully consider the
intention of the parties and the language of the grant.”
Israel Bio-Eng’g Project v. Amgen, Inc., 475 F.3d 1256,
1265 (Fed. Cir. 2007) (citing Vaupel Textilmaschinen KG
v. Meccanica Euro Italia SPA, 944 F.2d 870, 874 (Fed.
Cir. 1991)).
The SDA is amenable to the construction that it does
not assign, or promise to assign, patent rights that would
otherwise accrue to Mr. James as an inventor. The dis-
trict court relied in its ultimate analysis on the SDA’s
preamble, which states that the contract set the terms on
which GSP “will develop software solutions for the exclusive
use of JFAX Communications.” J.A. 53; see James,
2016 WL 9450470, at *5 (rejecting Mr. James’s position
because it “would, for example, enable plaintiff to license
the rights in contravention of JFAX’s exclusive use”). But
that language is not itself a conveyance of any rights and,
in any event, does not clearly go beyond GSP-developed
specific software products to encompass also any underlying
patentable methods embodied in the specific code. It
can be read as indicating that it is only the specific code
that will be for JFAX’s exclusive use.

Of note:

Further support for Mr. James’s view of the SDA is
found in the SDA’s express reference to copyrights and
complete silence about patents. As already noted, SDA
Section 3, after stating that JFAX will become the owner
of “all code and compiled software solutions,” adds that
“GSP shall assign to JFAX all copyright interests in such
code and compiled software.” Copyright extends only to
the expression in source code or its compiled version, i.e.,
object code, not to the underlying (potentially patentable)
methods. See, e.g., Oracle America, Inc. v. Google Inc.,
750 F.3d 1339, 1354–55 (Fed. Cir. 2014); Sony Computer
Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599,
602, 605 (9th Cir. 2000); Atari Games Corp. v. Nintendo of
Am. Inc., 975 F.2d 832, 839–40 (Fed. Cir. 1992). Moreover,
the operative complaint alleges, with support from
documents attached to the complaint, that Mr. James
actually executed assignments of copyrights in the specific
software for the three systems furnished to JFAX. There
is nothing comparable for patents, which are not mentioned
at all in the SDA.

Of the "hired to invent" argument

The district court’s second basis for its decision, which
is related to the first, likewise does not support the Rule
12(b)(1) dismissal for lack of standing. The court invoked
the “hired to invent” doctrine of United States v. Dubilier
Condenser Corp., 289 U.S. 178, 187 (1933), and Standard
Parts Co. v. Peck, 264 U.S. 52, 59–60 (1924). In accordance
with those decisions, we have summarized the
doctrine as recognizing that an employer may “claim an
employee’s inventive work where the employer specifically
hires or directs the employee to exercise inventive faculties.”
Teets, 83 F.3d at 407 (citing Dubilier, 289 U.S. at
187, and Standard Parts, 264 U.S. at 59–60). In certain
circumstances involving employment, we have explained,
“the employee has received full compensation for his or
her inventive work.” Id.
Because this “hired-to-invent” rule is “firmly grounded
in the principles of contract law,” Banks v. Unisys
Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000), its applicability
depends on the particular relationship between the
“employee” and “employer” in a given case where the rule
is invoked.


The problem with this argument is essentially the same
as the problem we have already identified as defeating
the SDA-contract argument for Rule 12(b)(1) dismissal.
Based on the provisions and arguments presented to us,
the SDA is readily capable of being read not to assign or
to promise to assign the patent rights at issue. Because
the SDA largely or even wholly defines the terms of
JFAX’s alleged “hiring” of Mr. James (actually of GSP),
there is at least a factual dispute about any implied
assignment or promise to assign. And that conclusion,
though sufficient on its own case-specific terms, may be
further supported by cases recognizing a general legal
principle that tightly limits the finding of an implied-infact
contract where an express contract governs the
parties’ relationship. See Atlas Corp. v. United States,
895 F.2d 745, 754 (Fed. Cir. 1990); Chase Manhattan
Bank v. Iridium Afr. Corp., 239 F. Supp. 2d 402, 409 (D.
Del. 2002) (citing Atlas, 895 F.2d at 754). Accordingly, it
was improper to dismiss the case under Rule 12(b)(1) for
lack of standing based on the hired-to-invent principle.

One notes, that at the bottom of all this, the only thing mentioned
in the assignment was copyright rights, not patent rights.

NASA pick Bridenstine confirmed by Senate in 50-49 vote

Bridenstine studied economics, business and psychology at Rice University in Houston, Texas and was later a Navy pilot. As to Florida senators, he was opposed by Nelson but got the vote of Rubio.

Thursday, April 19, 2018

Droplets case clearly establishes the need to claim priority to get priority

The outcome

By statute, a claim for benefit of the filing date of an
earlier application must include “a specific reference to
[an] earlier filed application.” 35 U.S.C. § 120. We agree
with the Board that incorporation by reference cannot
satisfy this statutory requirement. Because the ’115
Patent expressly claims priority only to an immediately
preceding application, and not the provisional application
before that, the Board correctly determined that an
earlier-filed reference—an international publication with
the same specification—invalidated all claims of the ’115
Patent. We therefore affirm the Board’s decision finding
all claims of the ’115 Patent invalid as obvious.

CAFC 2016-2504, 2016-2602
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No.

Equitable estoppel issue in John Bean case

From the beginning of the decision:

John Bean Technologies Corp. appeals from a decision
by the United States District Court for the Eastern District
of Arkansas holding that its patent infringement
claims are barred by the affirmative defenses of equitable
estoppel and laches.1 Because the asserted claims in this
action were substantively amended or added following ex
parte reexamination in 2014, and the plaintiff only sought
damages for infringement of the reexamined claims, the
district court abused its discretion in finding equitable
estoppel based on activity beginning in 2002, twelve years
prior to the issuance of the reexamination certificate. We
therefore reverse the district court’s grant of summary
judgment based on its finding of equitable estoppel, and
remand for proceedings consistent with this opinion.

One legal issue is addressed in footnote 1:

Following the district court’s grant of summary
judgment, the Supreme Court issued its decision in SCA
Hygiene Products Aktiebolag v. First Quality Baby Products,
LLC, 137 S. Ct. 954 (2017), holding that laches
cannot be asserted as a defense to infringement occurring
within the six-year period prior to the filing of a complaint
for infringement as prescribed by 35 U.S.C. § 286. As the
allegedly infringing activity for which John Bean seeks
damages started on May 9, 2014, and John Bean filed its
complaint for patent infringement on June 19, 2014, we
hold, and the parties agree, that SCA Hygiene bars Morris’s
laches defense. Appellant’s Br. 41; Appellee’s Br. 1
n.2. We thus reverse the district court’s grant of summary
judgment based on Morris’s affirmative defense of

Of equitable estoppel

Equitable estoppel serves as an absolute bar to a patentee’s
infringement action. Aukerman, 960 F.2d at
1041. The defense consists of three elements: (1) the
patentee engages in misleading conduct that leads the
accused infringer to reasonably infer that the patentee
does not intend to assert its patent against the accused
infringer; (2) the accused infringer relies on that conduct;
and (3) as a result of that reliance, the accused infringer
would be materially prejudiced if the patentee is allowed
to proceed with its infringement action. Scholle, 133 F.3d
at 1471. Misleading conduct may include the patentee’s
“specific statements, action, inaction, or silence where
there was an obligation to speak.” Id.
This case presents an unusual situation where the
district court has found that equitable estoppel bars an
infringement action based on activity prior to the issuance
of the asserted reexamination claims. Here, the reexamined
claims did not exist in their present form in 2002
at the time Morris sent the Demand Letter to John Bean.
These claims first issued in May 2014 following reexamination.
We have no precedent that presents this factual
scenario and provides a clear solution. Under the circumstances
presented here, we find that the district court
abused its discretion in extending equitable estoppel to
the reexamined claims.
Our resolution of this matter lies in the principles undergirding
the issuance of reexamination claims. First,
claims amended and issued during reexamination cannot
be broader than the original claims. 35 U.S.C. § 305; 37
C.F.R. § 1.552(b). While claim broadening can result in
the invalidation of the claims under § 305, claim narrowing
means that the scope of what is and is not an infringing
product can change. See Predicate Logic, Inc. v.
Distributive Software, Inc., 544 F.3d 1298, 1302 (Fed. Cir.
2008). And when claims are narrowed during reexamination
to overcome prior art, as is the case here, any validity
analysis of the newly issued claims differs from that of the
original broader claims. Thus, Morris’s challenge to the
validity of the ’622 patent claims in the Demand Letter
may no longer be accurate. Indeed, it would not be wrong
for John Bean to narrow its claims in response to the
Demand Letter.

Wednesday, April 18, 2018

The CAFC upholds challenge to Philips patent in LED application area

A use of a light emitting diode in traffic lights was at issue:

The ’988 patent describes a circuit arrangement for a
signaling light, such as a traffic light, that uses a light emitting
diode (LED), rather than a traditional incandescent
lamp, as its light source. ’988 patent, col. 1, lines 21–
31. Typically, a signaling light in a traffic light system is
regulated by a control unit having a solid-state relay—an
electronic switch that turns on and off the power supplied
to the light. Id., col. 1, lines 32–34; see also id., col. 3,
lines 21–25. The control unit conducts status tests of the
relay and of the signaling light at the connection terminals
to make sure that multiple traffic lights (e.g., red and
green) are not on at the same time. See id., col. 1, lines

At the Board [PTAB]:

Wangs Alliance Corporation filed a petition for an inter
partes review of the ’988 patent under 35 U.S.C.
§§ 311–19. The Board instituted a review of claims 1
and 2 as likely unpatentable for obviousness under 35
U.S.C. § 103 based on the combination of U.S. Patent
No. 5,661,645 (Hochstein) and U.S. Patent No. 5,075,601
(Hildebrand). Institution Decision, 2015 WL 9599171, at
*9. The Board issued a final written decision on November
23, 2016, concluding that both claims 1 and 2 are
unpatentable for obviousness based on the Hochstein/
Hildebrand combination. J.A. 1–55 (Final Written Decision,
Wangs Alliance Corp. v. Koninklijke Philips N.V.,
No. IPR2015-01287 (P.T.A.B. Nov. 23, 2016), Paper No. 60
(Board Decision)).

"Design choice" arose:

On appeal, Philips does not dispute the Board’s finding
that the invention in claim 1 of the ’988 patent is
disclosed by the combination of Hochstein and Hildebrand—i.e.,
by using Hochstein’s group of components,
including an LED, but with Hildebrand’s sequencing
(current-conducting network after the input filter).
Philips argues, however, that the Board improperly failed
to identify an “affirmative reason” to combine Hochstein
and Hildebrand and instead relied solely on the notion
that choosing the order of components was a matter of
“design choice.” Philips’s Br. 23. We disagree with
Philips’s reading of the Board decision, and we conclude
that the Board’s rationale for the combination was sufficient
under KSR International Co. v. Teleflex Inc., 550
U.S. 398 (2007).

The Board did not rely on a broad notion of “design
choice” as sufficient to find that a skilled artisan would
have combined the references; to the contrary, it refused
to adopt a “mere[] asserti[on]” of “design choice” and
insisted on reviewing the context-specific evidence for the
soundness of that rationale in the particular circumstances
of this review. Board Decision at 36. The Board first
found that both references address the same problem (i.e.,
leakage current in traffic signal systems employing a light
source different from traditional incandescent lamps) and
propose similar solutions (i.e., similar circuitry—adaptive
clamp circuit in Hochstein, and dynamic load circuit in
Hildebrand). Id. at 32–35.


The Board considered, but rejected, Philips’s argument
that a skilled artisan would not place Hochstein’s
input filter before the adaptive clamp circuit because that
modified configuration would expose the adaptive clamp
circuit to malfunctioning noise from the converter. See id.
at 43 (noting that Philips’s expert Dr. Regan Zane testified
in his deposition that a skilled artisan would not
know how to address any noise issues and speculated that
such noise “could cause undesirable behavior,” but not
testifying as to what level of noise would be generated by
the converter or its result) (quoting J.A. 1246–47). The
Board was persuaded by the record evidence, including
the testimony of Wangs’s expert Mr. Tingler, that, even if
the adaptive clamp would be exposed to noise from the
converter, the noise from the converter would not be a
“malfunctioning” noise that would counsel against the
adoption of a filter-first configuration by a relevant skilled
artisan, who would be able to identify and mitigate any
noise. Id. at 42–43.3 The Board ultimately found “that it
is highly unlikely that [the] adaptive clamp circuit would
be affected by noise, and thus malfunction.” Id. at 45.
Philips complains that the Board did not identify the
specific “affirmative reason” for a person of skill looking at
Hochstein to adopt the alternative configuration in Hildebrand.
But in the circumstances of this case, we conclude,
Philips is demanding too much. Under KSR, we see no
need for more than what the Board found in this case,
including that (1) there were just two obvious design
choices in the respect put at issue (Hochstein and Hildebrand),
which solve the same problem in the same way
but with the filter and current-conducting network
swapped in their locations, (2) the two references “show
the demand for designs that solve the known problem,” id.
at 33; (3) Hildebrand’s location choice was a common and
approved design that could be used in Hochstein; and
(4) Hochstein would not malfunction if modified to use
such a design. These findings suffice to establish a reason
for a skilled artisan, seeking to solve the status-test
problem, to use a three-component circuit arrangement as
found in both references and to choose either of the two
disclosed orders of the first two components within that
arrangement—specifically, the order that is especially
common in the art and that is used in the ’988 patent.
See KSR, 550 U.S. at 416 (combining “familiar elements
according to known methods is likely to be obvious when
it does no more than yield predictable results”).
For those reasons, we conclude that substantial
evidence supports the Board’s finding of a motivation to

The losing appellant Philips Lighting was represented by
Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC

Apator case deals with "catch-22" of missing email attachments

Corroboration of inventor testimony was at issue:

An inventor can swear behind a reference by proving
he conceived his invention before the effective filing date
of the reference and was diligent in reducing his invention
to practice after that date. Perfect Surgical Techniques,
Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir.
2016) (citing 35 U.S.C. § 102(g)1). It is well established,
however, that when a party seeks to prove conception
through an inventor’s testimony the party must proffer
evidence, “in addition to [the inventor’s] own statements
and documents,” corroborating the inventor’s testimony.
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed.
Cir. 1996); Hahn v. Wong, 892 F.2d 1028, 1032 (Fed. Cir.
1989). While the requirement of corroboration exists to
prevent an inventor from “describ[ing] his actions in an
unjustifiably self-serving manner,” Chen v. Bouchard, 347
F.3d 1299, 1309 (Fed. Cir. 2003), “[e]ven the most credible
inventor testimony is a fortiori required to be corroborated
by independent evidence,” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1171-72 (Fed. Cir. 2006).
The sufficiency of the proffered corroboration is determined
by a “rule of reason” analysis in which all pertinent
evidence is examined. In re NTP, Inc., 654 F.3d
1279, 1291 (Fed. Cir. 2011).

Of the evidence:

Substantial evidence supports the Board’s finding
that Apator failed to sufficiently corroborate
Mr. Drachmann’s testimony of conception prior to the
effective filing date of Nielsen. Apator has failed to
proffer any evidence of Mr. Drachmann’s conception that
is not supported solely by Mr. Drachmann himself.
In the first Tunheim email, for example,
Mr. Drachmann writes, “I have found the basis for the
mechanical assembly of the meter” including “several new
things that I didn’t have before.” J.A. 808. He writes, “[a]
sample is attached” and references “completely new
mechanical solutions (as seen in the picture).” J.A. 808.
The Drachmann Declaration then states that the first
Tunheim email attached the mechanics6 file. J.A. 795,
809. Apator contends this evidence corroborates
Mr. Drachmann’s testimony that he conceived of the
meter depicted in the mechanics6 file by the February 15,
2010, date of the first Tunheim email and prior to Nielsen’s
effective filing date. But as the Board noted, “there
are no indicia in either the body or header of the email
indicating a file is attached, let alone a file entitled ‘mechanics6’.”
J.A. 13.


The evidence proffered by Mr. Drachmann is stuck in
a catch-22 of corroboration: Apator attempts to corroborate
Mr. Drachmann’s testimony with the emails and the
drawings, but the emails and drawings can only provide
that corroboration with help from Mr. Drachmann’s
testimony. The first Tunheim email states that “[a]
sample is attached,” but we must rely on
Mr. Drachmann’s testimony to learn that the first Tunheim
email has an attachment, and we must rely on his
testimony again to learn that that attachment is the
mechanics6 file. The second Tunheim and Bjerngaard
emails suffer from the same problem: while the emails
reference a “presentation,” it is only by resort to
Mr. Drachmann’s testimony that we can know either
email has an attachment and that attachment is the
UFM++ venture file.

CAFC addresses "prevailing party" concept in Raniere v. Microsoft. Inland Steel case "abrogated."

The outcome was affirmance of an award of attorneys fees:

Keith Raniere (“Raniere”) appeals from the district
court’s decisions awarding attorney fees and costs to
Microsoft Corporation and AT&T Corporation (together,
“Appellees”). Raniere v. Microsoft Corp., Nos. 15-0540 &
15-2298, 2016 WL 4626584 (N.D. Tex. Sept. 2, 2016) (Fees
Decision); Raniere v. Microsoft Corp., Nos. 15-0540 & 15-
2298, slip op. (N.D. Tex. Dec. 22, 2016) (J.A. 34–40).
Because the district court did not err in finding that
Appellees are prevailing parties under 35 U.S.C. § 285
(2012), and did not abuse its discretion in awarding
attorney fees and costs under that provision, we affirm.

Of note as to "exceptional case"

The district court next concluded that this case was
exceptional because it stood out from other cases “with
respect to the unreasonable manner in which it was
litigated. [Raniere]’s conduct throughout this litigation,
culminating in his untruthful testimony at the hearing on
the motion to dismiss, demonstrates a pattern of obfuscation
and bad faith.” Id. at *5. The district court noted
that Raniere promised repeatedly that he could produce
evidence that would cure the standing defect identified by
Appellees and the district court. Id. But Raniere failed to
satisfy these promises, according to the district court, as
“[d]espite numerous representations, [Raniere] failed to
produce any written document or other credible evidence
that he had an interest in GTI that would allow him to
transfer the patents to himself.” Id. Raniere’s conduct
required Appellees “to expend significant resources to
oppose [Raniere]’s arguments, which the Court now finds
were made in bad faith to vexatiously multiply these
proceedings and avoid early dismissal.” Id.

Zealous pursuit was rejected:

[a claim of] “zealous pursuit of his good faith claim of
ownership,” [rejected] noting its finding that Raniere “made false
and misleading representations to Defendants and the
Court that resulted in, among other things, prejudice to
Defendants in the form of significant legal fees incurred
in defending this action.” Id. The district court awarded
fees and non-taxable costs for the period of time between
the Federal Rule of Civil Procedure 16 conference and the
district court’s order of dismissal. Id.

Winning on an issue of standing can make a party a "prevailing party:"

We reach the same conclusion our sister circuits have
reached regarding CRST, which clarified the application
of Buckhannon to defendants seeking prevailing-party
status. The relevant inquiry post-CRST, then, is not
limited to whether a defendant prevailed on the merits,
but also considers whether the district court’s decision—
“a judicially sanctioned change in the legal relationship of
the parties”—effects or rebuffs a plaintiff’s attempt to
effect a “material alteration in the legal relationship
between the parties.” CRST, 136 S. Ct. at 1646, 1651.
And the same policy rationales the CRST Court emphasized
in support of its holding underscore § 285 actions:
the statute deters filing of “exceptional” cases—those
“that stand[] out from others with respect to the substantive
strength of a party’s litigating position (considering
both the governing law and the facts of the case) or the
unreasonable manner in which the case was litigated.”
Octane Fitness, 134 S. Ct. at 1756.


defendants need not prevail on the merits to be classified as a “prevailing
party.” To the extent inconsistent with this conclusion,
our prior case law to the contrary—Inland Steel
and its progeny—is abrogated accordingly.

Monday, April 16, 2018

CAFC does organic chemistry enantiomers in SUMITOMO case; "organic chemistry textbooks as irrelevant"

Initially, the CAFC noted:

This Hatch-Waxman appeal requires us to construe
the scope of a claim depicting a compound’s chemical
structure. Although the compound can exist in two different
three-dimensional orientations that are mirror images
of each other [enantiomers], only one is portrayed in the claim. The
district court construed the claim to cover the two threedimensional
orientations in isolation—both the one shown
in the claim and its mirror image—as well as mixtures of
the two in any ratio. The parties then stipulated to
infringement and the entry of an injunction. We agree
that, at a minimum, the claim encompasses the specific
orientation depicted.


As explained below, the plain claim language and
specification demonstrate that, at a minimum, claim 14
covers what it depicts: the (–)-enantiomer. This suffices
to resolve the parties’ dispute because Appellants concede
that the district court’s judgment can be affirmed if we
conclude that claim 14 at least covers the (–)-enantiomer.
See Oral Arg. at 8:40–9:10, http://oralarguments.

Of past history:

This outcome comports with previous cases rejecting
similar attempts to limit claims to racemic mixtures.
Although differences in the patents’ specifications make it
such that they are not factually identical to the current
appeal, this does not detract from the convincing intrinsic
evidence we have required in cases confining otherwiseunrestricted
claims to racemic mixtures. For example, in
Pfizer, Inc. v. Ranbaxy Laboratories Ltd., Ranbaxy sought
to limit a claim depicting a specific three-dimensional
orientation to a racemic mixture. 457 F.3d 1284, 1288–89
(Fed. Cir. 2006). The compound at issue had four isomers:
R-trans, S-trans, R-cis, and S-cis.1 The specification
disclaimed the R-cis and S-cis isomers, and it only disclosed
reaction sequences that produced racemic mixtures.
Ranbaxy argued that the specification’s disclosure,
combined with the convention that a racemate is often
represented by drawing one of the constituent enantiomers,
justified limiting the claim to a racemic mixture.
We rejected these arguments because the claim itself
depicted the R-trans enantiomer, and unlike other claims
in the same patent, it was not limited by the “trans-(±)”
designation. Id. at 1289.


Appellants’ claim construction arguments conflict
with Pfizer and other precedent because they seek to
import limitations from the specification into the claim.

Of textbooks:

Finally, Appellants’ organic chemistry textbooks and
expert testimony do not compel a different result. Extrinsic
evidence is, in general, “less significant than the
intrinsic record in determining ‘the legally operative
meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 862 (Fed. Cir. 2004)). This is particularly so here,
where the intrinsic record demonstrates that claim 14’s
structure covers at least the (–)-enantiomer. See Vitronics
Corp., 90 F.3d at 1583 (“In most situations, an analysis of
the intrinsic evidence alone will resolve any ambiguity in
a disputed claim term. In such circumstances, it is improper
to rely on extrinsic evidence.”). In any event, we
see no clear error in the district court’s rejection of the
organic chemistry textbooks as irrelevant or contradictory
to Appellants’ construction. See Teva, 135 S. Ct. at 841.
And while Appellants’ expert contends that it is conventional
in the art to use a single enantiomer as shorthand
for a racemic mixture, he does not state that a person of
ordinary skill would always understand the depiction of a
single enantiomer to exclude the very enantiomer depicted.
See J.A. 1015–16 ¶ 27

Sunday, April 15, 2018

Hobart President Vincent resigns on Friday, April 13, 2018 after plagiarism charges

President Vincent at Hobart has resigned. Previously, IPBiz had discussed accusations against Vincent of plagiarism in his Ph.D. thesis:
Anonymous accuser asserts copying in doctoral thesis of Gregory J. Vincent

The New York Post/AP noted on 14 April 2018:

Hobart and William Smith Colleges announced Friday that Gregory Vincent has resigned as president effective immediately.

The Finger Lakes Times gave some background on plagiarism:

And by a college president? It’s exponentially worse.

The 1983 HWS graduate took over as president in July 2017 after serving most recently as a law professor and vice president at the University of Texas at Austin.

It was a sweet homecoming to Geneva for Vincent to be named the first HWS graduate and first African-American to be president of the Colleges.

Besides his HWS bachelor’s degree, Vincent earned a law degree from Ohio State and an education doctorate from the University of Pennsylvania. The dissertation for that EdD is at the center of the HWS trustees’ plagiarism investigation.

Students at the campus newspaper (Herald) provided some further detail, as given in the FL Times article:

But the students landed a big journalistic fish by getting Vincent to explain publicly what he believes might have happened.

“As my dissertation advisor recently confirmed, I had to change the citation style within a very short period of time after my committee approved the dissertation, which led to inadvertent errors in how some of the work was quoted and paraphrased,” Vincent told The Herald. “I deeply regret the extent to which this has caused confusion or misled anyone. I eagerly await the findings of the investigation.”

Anyone who ever dipped their toe into the murky waters of graduate-level academic writing knows citations and references can be logistical nightmares, requiring mind-numbing attention to detail to avoid plagiarism as well as the confusion Vincent cites.

Article in Finger Lakes Times on 13 April 2018. The plagiarism thicket at HWS

Saturday, April 14, 2018

Vanda v. West-Ward. Hatch-Waxman issues AND inducement AND 101

D. Delaware was affirmed:

West-Ward Pharmaceuticals International Limited
and West-Ward Pharmaceuticals Corp. (collectively,
“West-Ward”) appeal from the decision of the United
States District Court for the District of Delaware holding,
after a bench trial, claims 1–9, 11–13, and 16 (“the asserted
claims”) of U.S. Patent 8,586,610 (“the ’610 patent”)
infringed and not invalid. See Vanda Pharm. Inc. v.
Roxane Labs., Inc., 203 F. Supp. 3d 412 (D. Del. 2016)
(“Opinion”). For the following reasons, we affirm.

We first address whether, beyond the jurisdictional
question, a claim for infringement of the ’610 patent
under 35 U.S.C. § 271(e)(2)(A) can lie where the ’610
patent issued after the original ANDA was submitted and
Vanda sued West-Ward for infringement of the asserted
claims prior to West-Ward submitting a Paragraph IV
certification. The district court held that West-Ward’s
submission of the Paragraph IV certification for the ’610
patent was an act of infringement. See Opinion, 203 F.
Supp. 3d at 433. We review the district court’s statutory
interpretation without deference. Warner–Lambert, 316
F.3d at 1355.

Vanda argues that it proved an act of infringement
under 35 U.S.C. § 271(e)(2). According to Vanda, “[w]here
a patent issues after an ANDA is filed but before FDA
approval, and where—as here—the applicant submits a
Paragraph IV certification directed at the new patent,
that amendment of the ANDA is an act of infringement
under Section 271(e)(2).” Appellee Br. 60

West-Ward responds that there can be no infringement
under § 271(e)(2) because the ANDA was filed
before the ’610 patent issued. West-Ward contends that
the statutorily defined act of infringement excludes
amendments to an ANDA and “only reaches ANDAs
submitted ‘for a drug claimed in a patent or the use of
which is claimed in a patent’—not a drug that might or
might not later be claimed in a patent or one that has
been claimed in a provisional patent application or a
patent-pending.” Reply Br. 33 (emphases in original)
(quoting 35 U.S.C. § 271(e)(2)(A)) (other internal quotation
marks omitted).

The CAFC observed:

Although we agree with West-Ward that only an issued
patent can give rise to a valid infringement claim
under § 271(e)(2)(A), we disagree that that conclusion
precludes Vanda’s infringement claim in this case. The
’610 patent is a patent “for a drug . . . the use of which is
claimed in a patent,” 35 U.S.C. § 271(e)(2)(A), as contemplated
in the Act even though it issued after West-Ward
filed its ANDA. West-Ward subsequently amended its
ANDA to include a Paragraph IV certification for the ’610
patent after it issued. The infringement analysis under
§ 271(e)(2)(A) “require[s] consideration of the amended
ANDA.” Ferring B.V. v. Watson Labs., Inc.-Fla., 764 F.3d
1382, 1390 (Fed. Cir. 2014). “There is no support for the
proposition that the question of infringement must be
addressed solely based on the initial ANDA filing, given
that the statute contemplates that the ANDA will be
amended as a matter of course.”


Here, it is undisputed that West-Ward amended the
ANDA by submitting a Paragraph IV certification regarding
the ’610 patent after that patent issued. J.A. 19696;
J.A. 6414–15; Appellant Br. 10; Appellee Br. 59. Such an
act is a qualifying act of infringement under
§ 271(e)(2)(A).6 A filer of an ANDA is therefore subject to
a § 271(e)(2)(A) infringement claim on a patent that
issues after the filing of the ANDA, but before FDA approval.
The resolution of infringement claims under
§ 271(e)(2)(A) for patents that issue after an ANDA is
submitted, but before it is approved, “facilitates the early
resolution of patent disputes between generic and pioneering
drug companies” in accordance with the purpose
of § 271(e)(2)(A). Caraco I, 527 F.3d at 1283.
The FDA regulatory framework and the legislative
history further demonstrate that West-Ward is incorrect
in asserting that “application” in § 271(e)(2)(A) excludes
amendments to the ANDA.


Thus, the district court properly conducted its
infringement analysis for the ’610 patent pursuant to 35
U.S.C. § 271(e)(2)(A).

As to 101:

We next address whether the asserted claims are directed
to patent-eligible subject matter. West-Ward
argues that the asserted claims are ineligible under § 101
because they are directed to a natural relationship between
iloperidone, CYP2D6 metabolism, and QT prolongation,
and add nothing inventive to those natural laws
and phenomena. West-Ward contends that the asserted
claims are indistinguishable from those held invalid in
Association for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576 (2013) and Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).
Vanda responds that the asserted claims are patenteligible
under § 101 at both steps of Mayo/Alice. Vanda
contends that the district court erred in holding that the
asserted claims are directed to a law of nature.

CJ Prost dissenting:

I would find the asserted patent claims to be directed
to a law of nature. The majority finds the claims herein
are not directed to a natural law at step one of the § 101
analysis, but its efforts to distinguish Mayo cannot withstand
scrutiny. The majority relies on the claims’ recitation
of specific applications of the discovery underpinning
the patent to find no natural law is claimed. But it conflates
the inquiry at step one with the search for an

Thursday, April 12, 2018

Publication etiquette for SSRN?

In a discussion of the "Bitcoin" plagiarism flap, there is a reference to papers published on SSRN:

His claim that his paper was simply a “draft” doesn’t hold up under scrutiny. The paper was published, under his name, nearly nine months before the alleged plagiarism was discovered. The SSRN website is often used for preprints of academic journals. However, that does not mean you can publish someone else’s work there.

Preprints are generally for finished or nearly finished articles so that they can be peer-reviewed and then edited before sending them to an academic journal. They are not a place to dump notes or copies of another person’s work that need to be later turned into an original piece.


**Separately, of things vanishing from the internet, how about papers vanishing from SSRN?
Think also of the Noji saga.

**Separately, from blawgsearch on 12 April 2018: