Friday, September 23, 2016

Nature discusses recent events in the CRISPR patent battle

Obviousness in patent law is measured relative to a person having ordinary skill in the art (sometimes designated PHOSITA).

Of the law:

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

The CRISPR patent battles will, in part, turn on the level of skill.

* Nature wrote of the Doudna (Berkeley) vs. Zhang (Broad) patent dispute:

Berkeley argues that the application of CRISPR–Cas9 to eukaryotic cells was obvious and that “persons of ordinary skill”, such as a postdoc with relevant expertise, could have made the leap. Berkeley points to the swift success of several teams — led by Doudna; Zhang; Church (at Harvard Medical School in Boston, Massachusetts); and genome engineer Jin-Soo Kim at the Institute for Basic Science in Seoul — that applied CRISPR to human cells. The Broad countered that these scientists are all leaders in their field and could hardly be considered ‘ordinary’.

Surprising accusations have been interwoven with the scientific arguments. Berkeley has submitted an e-mail from Shuailiang Lin, who was a visiting student in Zhang’s lab in 2011–12. Lin claims that the lab took inspiration from Doudna and Charpentier’s paper1, rather than working out the system independently. The Broad countered that Lin made this assertion while asking Doudna for a job.

Berkeley asked to subpoena Lin (who has since been employed at the University of California, San Francisco), but USPTO judges denied that request on 14 September. A more complete response from the Broad could come when the two sides file replies to previous motions in late September.

In the meantime, the Broad petitioned the USPTO judges to ignore testimony from two of Berkeley’s scientific witnesses. The law firm that collected their depositions had previously worked for the Broad, and therefore may have been privy to confidential information, the Broad argued. USPTO judges disagreed. “Broad’s request amounts to merely a fishing expedition,” they wrote on 24 August.

One of the most aggressive and risky moves was Berkeley’s decision to subpoena Church, Sherkow says. Berkeley has submitted e-mails from Church congratulating Doudna and Charpentier on their 2012 paper, acknowledging that it inspired his team to try the system in eukaryotic cells. But Church, who has laboured for years to move a different gene-editing system from bacteria to human cells, told Nature in August that such a shift is “anything but obvious”.

The USPTO denied the subpoena on 14 September. Church says that he has not spoken to Berkeley’s lawyers, but was surprised by the judges’ ruling. “I imagined my observations would be considered quite relevant,” he says.

A position of "anything but obvious" would seem to support Broad.

Within the Nature article is a quote: “What is really behind this is not the academic institutions, it is the commercial interests”. One recalls the Merck kGa v. Integra case, wherein the named parties were the commercial interests but the actual inventive entities were academics. [See for example the IPBiz post:
Merck v. Integra and patents on research tools ]

link to Nature:

Some previous IPBiz posts on the CRISPR patent battle:

CAFC affirms D. Delaware in Roche v. Lifescan: the meaning of "microelectrode"

Roche Diagnostics Operations, Inc. and Corange International
Limited (“Roche”) appeal from the United
States District Court for the District of Delaware’s grant
of summary judgment in favor of Lifescan Incorporated
and Nova Biomedical Corporation (“Defendants”). The
district court entered judgment of non-infringement after
construing the term “electrode” in a way that excluded
Defendants’ products. The district court’s claim construction
was correct and we therefore affirm the court’s judgment
of non-infringement.

Of procedural matters:

Roche appealed to this court and repeated the argument
it had first raised in its motion for reconsideration:
it asserted that microelectrodes included electrodes up to
1,000 μm in width. Roche Diagnostics Operations, Inc. v.
Lifescan Inc., 452 F. App’x 989, 994–95 (Fed. Cir. 2012)
(Roche I). Defendants opposed Roche’s arguments, but
did not challenge whether these arguments were properly
before the court. Id. at 994–97.
As the district court had not previously addressed the
parties’ arguments regarding 1,000 μm microelectrodes,
we declined to address them and remanded so that the
district court could consider them in the first instance.

[from footnote 3]

3 On appeal previously, this court noted uncertainty
as to whether Roche’s motion for reconsideration was
procedurally appropriate. Roche I, 452 F. App’x at 994.
On remand, the case was assigned to a different district
court judge. The district court judge stated that it appeared
that Roche’s motion for reconsideration had originally
been denied on procedural grounds, but that it was
uncertain whether Defendants waived procedural challenges
to arguments first asserted in Roche’s reconsideration
motion by not raising them before this court on
appeal. Remand Op., 2014 WL 6871579, at *3–4.
On appeal now, Defendants contend that Roche’s current
claim construction arguments, which are premised
on microelectrodes including electrodes up to 1000 μm in
width, are procedurally barred because they were first
raised in Roche’s reconsideration motion, and Roche did
not appeal the district court’s denial of that motion in the
prior appeal. Roche asserts that Defendants have waived
procedural challenges to these arguments by not raising
them when this case was previously on appeal. Roche
also argues that the district court erred in applying the
Third Circuit’s standards for motions for reconsideration.
We need not address these procedural issues, because
we affirm the district court’s claim construction even
when we consider Roche’s arguments.

Roche's arguments:

Roche presents several arguments why the district
court improperly construed “electrode.” First, Roche
argues that the district court based the construction on a
width the shared specification describes as a preferred
embodiment. Second, Roche asserts that the district court
erred in its analysis of diffusion, examples 3–5 of the ’146
patent, and claim 48 of the ’146 patent. Finally, Roche
claims that “microelectrode” has an ordinary meaning of
any electrode measured in micrometers or μm, up to
1,000 μm.

The CAFC noted:

Considering the specifications as a whole, we agree
with the district court that the language it cited defines
how a microelectrode can be distinguished from a macroelectrode.
See, e.g., Phillips, 415 F.3d at 1315 (The specification
is “the single best guide to the meaning of a
disputed term.”). While other parts of the shared specification
refer to various widths including 100 μm as being
“preferred,” see, e.g., ’146 patent col. 3 ll. 9–12, this does
not prevent the portion of the shared specification that
the district court’s interpretation relied on from providing
a definition of microelectrodes.

Of extrinsic evidence:

We find that the court did not clearly err in finding
Roche’s extrinsic evidence unpersuasive. In fact, Roche’s
extrinsic sources do not demonstrate that microelectrode
has an ordinary meaning of any electrode measured in
micrometers, up to 1,000 μm. For example, one of the
sources Roche cites is the Kirk-Othmer Encyclopedia of
Chemical Technology. This encyclopedia states that
“[s]mall, referring to the diameter of the electrode, is
about a millimeter for microelectrodes.” 9 Raymond E.
Kirk et al., Kirk-Othmer Encyclopedia of Chemical Technology,
97, 4th ed. (1994). This statement arguably
supports Roche’s proposed construction, as it mentions
1,000 μm microelectrodes. (1 millimeter is equal to 1,000
μm.) However, it appears to declare that a 1,000 μm
electrode is a small microelectrode. As Defendants note,
the encyclopedia cites 15 R. Mark Wightman and David
O. Wipf, Voltammetry at Ultramicroelectrodes (1989) as
support for this statement.

[But note also] The article further states that “[t]his area is still
sufficiently new that a uniform nomenclature for these
electrodes has not yet been developed.”

[In passing, R. Mark Wightman was the grad student of
Royce W. Murray.]

CAFC in WesternGeco: After Halo, the objective reasonableness of the accused infringer’s positions can still be relevant for the district court to consider when exercising its discretion.

The CAFC on the Supreme Court in Halo:

But, the Court held, “[t]he principal problem with
Seagate’s two-part test is that it requires a finding of
objective recklessness in every case before district courts
may award enhanced damages.” Id. In particular, the
Court rejected Seagate’s strict requirement that a patentee
prove the objective unreasonableness of an infringer’s
defenses. Id.; see WBIP, LLC v. Kohler Co., No. 15-1038,
2016 WL 3902668, at *15 (Fed. Cir. July 19, 2016) (under
Halo, “[p]roof of an objectively reasonable litigationinspired
defense to infringement is no longer a defense to
willful infringement”). At the same time, Halo did not
disturb the substantive standard for the second prong of
Seagate, subjective willfulness. Rather, Halo emphasized
that subjective willfulness alone—i.e., proof that the
defendant acted despite a risk of infringement that was
“‘either known or so obvious that it should have been
known to the accused infringer,’” Halo, 136 S. Ct. at 1930
(quoting Seagate, 497 F.3d at 1371)—can support an
award of enhanced damages. “The subjective willfulness
of a patent infringer, intentional or knowing, may warrant
enhanced damages, without regard to whether his
infringement was objectively reckless.” Id. at 1933; see
also id. at 1930 (describing the second prong of Seagate as
an evaluation of the infringer’s “subjective knowledge”).

Additionally, the Court stressed throughout Halo
that, if willfulness is established, the question of enhanced
damages must be left to the district court’s discretion.
So too, Halo stressed that “[a]wards of enhanced
damages . . . are not to be meted out in a typical infringement
case, but are instead designed as a ‘punitive’ or
‘vindictive’ sanction for egregious infringement behavior.”
Id. at 1932. “[N]one of this is to say that enhanced damages
must follow a finding of egregious misconduct. As
with any exercise of discretion, courts should continue to
take into account the particular circumstances of each
case in deciding whether to award damages, and in what
amount. Section 284 permits district courts to exercise
their discretion in a manner free from the inelastic constraints
of the Seagate test.” Id. at 1933–34. On remand
from the Supreme Court, our court recently reconsidered
enhanced damages in the case of Halo itself and, in returning
the issue to the district court, emphasized the
district court’s discretion. Halo Elecs., Inc. v. Pulse Elecs.,
Inc., No. 13-1472, 2016 WL 4151239, at *10 (Fed. Cir.
Aug. 5, 2016).

After Halo, the objective reasonableness of the accused
infringer’s positions can still be relevant for the
district court to consider when exercising its discretion.
Halo looked to Octane Fitness for the relevant standard.
Halo, quoting Octane Fitness, held that there is “‘no
precise rule or formula’” to determine whether enhanced
damages should be awarded and that district courts
should generally “‘exercise[] [their discretion] in light of
the considerations’ underlying the grant of that discretion.”
Halo, 136 S. Ct. at 1932 (quoting Octane Fitness,
134 S. Ct. at 1756). Octane Fitness in turn held that, in
determining whether to award attorney’s fees under
§ 285, a district court should “consider[] the totality of the
circumstances.” Octane Fitness, 134 S. Ct. at 1756. In
that connection Octane Fitness relied on “the comparable
context of the Copyright Act,” id., noting that “[i]n Fogerty
v. Fantasy, Inc., for example, [the Court] explained that in
determining whether to award fees under a similar provision
in the Copyright Act, district courts could consider a
‘nonexclusive’ list of ‘factors,’ including ‘frivolousness,
motivation, objective unreasonableness (both in the factual
and legal components of the case) and the need in particular
circumstances to advance considerations of compensation
and deterrence,’” id. at 1756 n.6 (emphasis added and
internal citation omitted). Thus, objective reasonableness
is one of the relevant factors.

As to the WesternGeco case:

Here, in granting ION’s motion for JMOL of no willful
infringement, the district court found that WesternGeco
had not proved that ION’s defenses to infringement were
objectively unreasonable and consequently concluded that
the first, objective prong of the Seagate test had not been
met. WesternGeco I, 953 F. Supp. 2d at 751. As Halo has
rejected the Seagate rule that a patentee’s failure to
establish the objective recklessness of the defendant’s
infringement precludes a finding of willfulness, we must
vacate the district court’s determination of no willful
infringement by ION

Judge Wallach dissented in part:

I join the majority’s opinion to the extent it applies
the Supreme Court’s decision in Halo on the issue of
enhanced damages for willful infringement under 35
U.S.C. § 284 (2012). See Halo Elecs. Inc. v. Pulse Elecs.,
Inc., 136 S. Ct. 1923 (2016). However, for the reasons
articulated in my original dissent, see WesternGeco L.L.C.
v. ION Geophysical Corp. (WesternGeco II), 791 F.3d 1340,
1354–64 (Fed. Cir. 2015) (Wallach, J., dissenting-in-part),
I dissent-in-part from today’s panel opinion, which
reinstates our earlier opinion “in all other respects.” Maj.
Op. at 2.

The majority misunderstands the import of its prior
holding, stating that my original dissent-in-part was from
the panel’s “holding that WesternGeco was not entitled to
lost profits resulting from foreign uses of its patented
invention.” Id. at 4. It is of course uncontroversial that
patentees are not entitled to lost profits resulting from
foreign uses of a patented invention. See Brown v.
Duchesne, 60 U.S. (19 How.) 183, 195–96 (1856) (“[T]he
use of [the invention] outside of the jurisdiction of the
United States is not an infringement of his rights, and he
has no claim to any compensation for the profit or
advantage the party may derive from it.”).

Judge Wallach stated:

The key issue left unaddressed in the now-reinstated
opinion’s analysis is: When a patent holder successfully
demonstrates both patent infringement under United
States law and foreign lost profits, what degree of
connection must exist between the two before the foreign
activity may be used to measure the plaintiff’s damages?

Footnote 1 observes:

According to the majority, “the issue of lost profits
is not properly before [this court],” Maj. Op. at 5 n.1,
because “[t]he scope of the Supreme Court’s [grant
certiorari, vacate, and remand (‘GVR’)] order was limited
to the second question [presented],” i.e., “‘[w]hether the
Court should hold this Petition for Halo and Stryker
[Corp. v. Zimmer, Inc., 136 S. Ct. 356 (2015) (mem.)],’” Id.
(quoting Petition for Writ of Certiorari, WesternGeco LLC
v. ION Geophysical Corp., No. 2015-1085, 2016 WL
792196, at *1 (U.S. Feb. 26, 2016)). However, the
majority reads the Supreme Court’s GVR Order too
narrowly. First, although the Supreme Court did not
grant certiorari on the question of foreign lost profits in
Halo, “a denial of certiorari has no precedential value.”
Cty. of Sonoma v. Isbell, 439 U.S. 996, 996 (1978).
Second, the Order does not limit this court’s review to a
specific issue or question presented, as many GVR orders
do. See, e.g., Herrmann v. Rogers, 358 U.S. 332, 332
(1959) (limiting the appellate court’s review on remand to
a finite issue of Idaho property law).

Judge Wallach mentions creative lawyers:

In reinstating its earlier decision, the majority
expresses no concern for the consequences that may result
from that decision. Creative lawyers, for example, may
seek to insulate their clients from infringement liability
by structuring market transactions so as to distance the
infringer from the foreign activities, seeking to mirror the
present case in which ION sells the device in question “to
its customers, who perform surveys” on the high seas “on
behalf of oil companies.” WesternGeco II, 791 F.3d at
1343. When done for liability-avoidance reasons, such a
change in form can increase costs without altering the
underlying economic substance of the transaction.

Of evidentiary standards, Judge Wallach wrote:

The importance of such complex factual issues to the
damages calculation explains why discretion is afforded to
district courts and juries in arriving at an appropriate
damages figure. See AstraZeneca AB v. Apotex Corp., 782
F.3d 1324, 1333 (Fed. Cir. 2015) (“The amount of damages
awarded to a patentee . . . is . . . reviewed for clear error,
while the methodology underlying the court’s damages
computation is reviewed for abuse of discretion.”
(emphases added)); Lucent Techs., Inc. v. Gateway, Inc.,
580 F.3d 1301, 1310 (Fed. Cir. 2009) (“We review the
jury’s determination of the amount of damages, an issue
of fact, for substantial evidence.” (emphasis added)). An
unduly rigid rule barring the district court from
considering foreign lost profits even when those lost
profits bear a sufficient relationship to domestic
infringement improperly cabins this discretion,
encourages market inefficiency, and threatens to deprive
plaintiffs of deserved compensation in appropriate cases.
Accordingly, I again respectfully dissent-in-part.

Thursday, September 22, 2016

CAFC affirms PTAB in Classco v. Apple: We find that those contentions do not show that the Board’s approach is inconsistent with KSR .

From the decision:

Contrary to ClassCo’s argument, KSR does not require
that a combination only unite old elements without
changing their respective functions. KSR, 550 U.S. at
416. Instead, KSR teaches that “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.”
Id. at 421. And it explains that the ordinary
artisan recognizes “that familiar items may have obvious
uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Id. at
420. The rationale of KSR does not support ClassCo’s
theory that a person of ordinary skill can only perform
combinations of a puzzle element A with a perfectly
fitting puzzle element B. To the contrary, KSR instructs
that the obviousness inquiry requires a flexible approach.
Id. at 415. Here, the Board faithfully applied this flexible
approach to find that the combination of Fujioka and
Gulick “would have resulted in no more than [a] predictable
result.” J.A. 6.

Tuesday, September 20, 2016

CAFC sustains reasoning of Achates in Wi-Fi v. Broadcom

The outcome: This is an appeal from a decision of the Patent Trial
and Appeal Board in an inter partes review. The Board
held various claims of a patent owned by Wi-Fi One, LLC
(“Wi-Fi”), to be anticipated. We affirm.

Judge Reyna wrote separately:

I agree with the majority that Wi-Fi One has neither
shown Broadcom to be in privity with the Texas Defendants
nor a real party in interest in the Texas litigation.

I write separately to convey my sense that this Court
has jurisdiction to address the time bar question despite
the statutory requirement that the Board’s institution
decisions “shall be final and nonappealable.” 35 U.S.C.
§ 314(d). I believe that the legal distinction that exists
between an “institution” decision and a final decision
compels that the decision in this case is a final decision,
not an institution decision. A final decision concerning
the time bar set forth by 35 U.S.C. § 315(b) should be
subject to review.

Twists in patent interferences: Yeda v. Abbott and Seed v. Westerman

Abbott prevails over Yeda at CAFC case on Tumor Necrosis Factor α (“TNFα”), with the CAFC writing:

Whether the ’915 patent [of Abbott] is entitled
to benefit from the ’072 application’s filing date
depends on whether the ’072 application provides adequate
written description support for the invention
claimed in the ’915 patent.

We affirm the district court’s 2015 decision that Abbott’s
’915 patent is supported by the written description
of the ’072 application.

Some of the legal issues:

Yeda argues that the district court failed to apply the
correct test for determining the sufficiency of the written

According to Yeda, Abbott must show that at
the time the ’072 application was filed, a person of ordinary
skill in the art would have understood that the
partial N-terminus sequence in the ’072 application
included the additional amino acids identified in the ’915
patent claims at issue.

Abbott responds that the district
court correctly held that the ’072 application need only
describe and enable the TBP-II protein, and that a protein
can be adequately described when a partial amino acid
sequence is disclosed along with other biological characteristics.
Under the doctrine of inherent disclosure, when a
specification describes an invention that has certain
undisclosed yet inherent properties, that specification
serves as adequate written description to support a subsequent
patent application that explicitly recites the
invention’s inherent properties. See Kennecott, 835 F.2d
at 1423.


Therefore, the ’072 application inherently
discloses the remaining amino acids in the N-terminus
sequence of TBP-II and serves as adequate written description
support for the patent claiming TBP-II. It is not
necessary for an application to disclose a protein’s complete
N-terminus sequence in order to provide an adequate
written description of that protein.

The case originated out of an interference:

In 1996, the Board declared Interference No. 103,625
between Abbott’s ’915 patent and Yeda’s Application No.
07/930,443. The Board assigned Abbott the May 1990
filing date of the application that became the ’915 patent
and held that the ’915 patent was invalid as anticipated
by Engelmann. Abbott filed suit in federal district court
seeking review of the Board’s final decision. In 2008, the
district court granted summary judgment for Abbott,
holding that the ’089 patent inherently discloses the
TBP-II protein and provides an adequate written description
of the invention claimed in the ’915 application. The
district court vacated the Board’s decision and remanded
for further proceedings.
On remand, the Board reversed course. In 2010, the
Board held that the ’072 application sufficiently disclosed
TBP-II for the ’915 patent to benefit from the ’072 application’s
May 1989 filing date. Yeda filed a district court
action seeking review of the Board’s 2010 determination.
In 2015, the district court affirmed the Board’s decision
and granted Abbott summary judgment.

**In passing, PatentlyO discusses some interesting aspects arising
out of another patent interference.

Judgmental Immunity in Patent Malpractice Cases

There are many twists in Seed Co. v. Westerman, (D.C. Cir. Aug. 12, 2016). The U.S. patent applicant Seed was claiming priority to a Japanese application, through a PCT application (written in Japanese). The asserted malpractice was because the patent attorneys provided to the USPTO an English translation of the Japanese application BUT NOT of the PCT (also written in Japanese), and Seed lost the interference. Seed went after the patent attorneys. By spending more money at the PCT stage, Seed got extra time to prosecute the case, but by spending less money in not doing the translation of the PCT in Japanese, Seed lost the case.

Wednesday, September 14, 2016

Walmart's published patent application US 20160260161, and others

Michael T. Atchley is the first named inventor on US application 20160260161, published on September 8, 2016 and titled SHOPPING FACILITY ASSISTANCE SYSTEMS, DEVICES AND METHODS, with first published claim:

A system for bringing a shopping container to a customer in a shopping space comprising: a plurality of sensors; a plurality of motorized transport units; and a control circuit communicatively coupled to the plurality of sensors and the plurality of motorized transport units, the control circuit being configured to: receive a shopping container request from a user interface device associated with the customer; determine at least one available shopping container among a plurality of shopping containers based on data collected by the plurality of sensors, the at least one available shopping container being empty and not used by another customer; select an available shopping container from the at least one available shopping container based at least on a location information of the user interface device; select a motorized transport unit from among the plurality of motorized transport units to transport the available shopping container; and provide instructions to the motorized transport unit to bring the available shopping container to the customer.

The background section states:

In a modern retail store environment, there is a need to improve the customer experience and/or convenience for the customer. Whether shopping in a large format (big box) store or smaller format (neighborhood) store, customers often require assistance that employees of the store are not always able to provide. For example, particularly during peak hours, there may not be enough employees available to assist customers such that customer questions go unanswered. Additionally, due to high employee turnover rates, available employees may not be fully trained or have access to information to adequately support customers. Other routine tasks also are difficult to keep up with, particularly during peak hours. For example, shopping carts are left abandoned, aisles become messy, inventory is not displayed in the proper locations or is not even placed on the sales floor, shelf prices may not be properly set, and theft is hard to discourage. All of these issues can result in low customer satisfaction or reduced convenience to the customer. With increasing competition from non-traditional shopping mechanisms, such as online shopping provided by e-commerce merchants and alternative store formats, it can be important for "brick and mortar" retailers to focus on improving the overall customer experience and/or convenience.

Separately, the first claim of published application 20160260159 :

An apparatus comprising: a plurality of lockers; a plurality of motorized transport units; a central computer system having a network interface such that the central computer system wirelessly communicates with the plurality of motorized transport units, the central computer system being configured to: determine which of the plurality of lockers has been previously associated with a particular authorized recipient; select a particular one of the plurality of motorized transport units to thereby provide a selected motorized transport unit; cause the selected motorized transport unit to retrieve the locker that has been previously associated with the particular authorized recipient and to make that locker available to the particular authorized recipient such that the authorized recipient can retrieve from that locker at least one item.

The first claim of published application 20160260049:

A method comprising: loading a plurality of motorized terrestrial transport units into a mother vehicle; loading into the mother vehicle a plurality of items to be delivered to various corresponding different recipients; moving the mother vehicle to a first delivery location; dispatching a first of the motorized terrestrial transport units carrying at least a first of the items to leave the mother vehicle and transport the first of the items to effect delivery to a first of the recipients; prior to the first of the motorized terrestrial transport units returning to the mother vehicle, moving the mother vehicle to a second delivery location and dispatching a second of the motorized terrestrial transport units carrying at least a second of the items to leave the mother vehicle and transport the second of the items to effect delivery to a second of the recipients; recovering at least the first of the motorized terrestrial transport units at a first recovery location into the mother vehicle.

The first claim of published application 20160259345:

A shopping facility assistance system comprising: a plurality of motorized transport units located in and configured to move through a retail store space; a plurality of user interface units, each corresponding to a respective motorized transport unit; and a central computer system having a network interface such that the central computer system wirelessly communicates with one or both of the plurality of motorized transport units and the plurality of user interface units, wherein the central computer system is configured to control movement of the plurality of motorized transport units through the retail store space based at least on inputs from the plurality of user interface units such that a given one of the plurality of motorized transport units selectively: leads a user to a destination within the retail store; or follows the user within the retail store; as determined by the central computer system.

Tuesday, September 13, 2016

USPTO Director Michelle Lee before Congressional committee as to examiner hours issue

Lisa Rein covered the appearance of Michelle Lee before a Congressional committee on 13 Sept 2016:

U.S. Patent and Trademark Office Director Michelle K. Lee told lawmakers Tuesday that she and her team “do not tolerate any kind of attendance abuse” and promised that employees who commit fraud are disciplined.

“It’s not fair to the American public,” Lee told members of the House Judiciary Committee in response to queries from Republicans about an inspector general investigation released in August.


[David] Smith’s office determined that the full scale of fraud — about 2 percent of the total hours worked by the examining corps — is likely double those numbers, because investigators analyzed the data conservatively to give employees the benefit of the doubt.

On Tuesday, Rep. Darrell Issa (R-Calif.) chairman of Judiciary’s subcommittee on courts, intellectual property and the internet, said that “while a great many examiners work diligently to do their jobs,” time fraud is an offense to American inventors.


See also:

Self-driving car in Japan in 2017 and ready for 2020 Olympics?

The Japanese Cabinet Office’s Cross-ministerial Strategic Innovation Promotion Program is funding 3D map programs, part of an effort to have self-driving cars on the road before the start of the Tokyo Summer Olympics in 2020.

From ExtremeTech:

The 2017 Nissan Serena minivan will be the first Japanese car with autonomous driving. It arrives in August. The Nissan ProPilot system provides self-driving at speeds suited for Japanese roads, between 30 and 100 kph, or 19 to 62 mph. It will follow the vehicle in front, slow to a stop then come to speed again, stay centered in lane, and deal with cut-ins, the cars that squeeze into the space between you and the car in front.

Nissan ProPilot uses both radar and camera systems. It’s partnering with Israel’s MobileEye, which provides much of the technology behind Tesla Autopilot, as well as systems by GM, BMW, and Volvo. Speaking of Autopilot, Nissan at its press conference today in Yokohama made clear what ProPilot can and cannot do, including no lane changes. That comes in 2018.


**Note separately

Walmart granted patent that could bring self-driving shopping carts to its stores

The job of "cart retriever" could be threatened:

The system could manage the entire shopping cart inventory, moving them around as needed. It would replace the jobs of the cart retrievers who currently walk to shopping cart corrals and move long trains of empty carts back to store entrances.

Is it collaboration, or plagiarism (re-visited)?

Approximately six years ago, in July 2009, IPBiz had a post which included the text:

Surprise! On July 21, Mike Masnick had a post Is It Cheating Or Is It Collaboration? with much of the same text from Scott, with a conclusion:

Well said. Again, I don't think that "cheating" is the problem here. The problem is this focus on not teaching people how to work together to solve problems and assuming that everything needs to be done by the individual themselves. That's not how things work in the real world, and it does children a disservice to downplay collaboration and reinforce the idea that building off the works of others is somehow wrong. Standing on the shoulders of giants is important, or we're always reinventing the wheel.


In September 2016, within a post titled Gwinnett County plagiarism probe: Dozen of students suspended , one finds the text:

LaRosa acknowledged her teen boy will have to serve a one-day suspension for it what his father called collaboration: Using FaceTime with a friend to complete the assignment.

“If they caught him cheating or if they don't follow policy, give him a zero, that's fine. But don't suspend him. And also don't put it on his permanent record. I mean this is not a math test that's being done in a final at a school. It was a summer reading assignment,” said Mill Creek High School parent Marc LaRosa.

A spokesperson called the cheating serious and upsetting that so many pupils violated the honor code

Back in 2007, IPBiz had a post
Is everyone burning their pajamas at age 8?
, which included

The "red flag" was the appearance of hundreds of applications mentioning "burning a hole in pyjamas at age eight" working with a chemistry set.


Here's the spin that TechDirt [Masnick] put on the story:

However, a more reasonable way of looking at it, is that it's teaching students the value of collaborative work, and building on the ideas of those who have come before them. That's a valuable lesson. None of this, of course, excuses passing off someone else's work as your own -- especially in a situation like a personal statement to gain admission into a university. However, it could help to explain the issues of plagiarism in students that shows it's not all about just getting off easy by copying content, and more about a more collaborative approach to content. If that's the case, the response shouldn't be to focus on the moral or ethical issues of "copying," but simply doing a better job of teaching students the borderline between collaborative work and independent work.

CAFC reverses CD California on 101 issue; CAFC says claims patent eligible and FRCP 12(c) judgement reversed.

In the case, MoloLamken LLP, Washington, DC, argued for plaintiff-appellant,
and prevailed over a stellar array of patent attorneys representing the various

The CAFC, in overturning a 101 ineligibility finding, mentioned the
words "unconventional rules":

This appeal is from a grant of judgment on the pleadings
under Fed. R. Civ. P. 12(c) that the asserted claims of
U.S. Patent Nos. 6,307,576 (‘‘the ’576 patent’’) and
6,611,278 (‘‘the ’278 patent’’) are invalid. The United
States District Court for the Central District of California
found that the asserted claims are directed to patentin eligible
subject matter and are therefore invalid under
35 U.S.C. § 101 (“§ 101”). McRO, Inc. v. Sony Computer
Entm’t Am., LLC, 55 F. Supp. 3d 1214 (C.D. Cal. 2014)
(“Patentability Op.”). We hold that the ordered combination
of claimed steps, using unconventional rules that
relate sub-sequences of phonemes, timings, and morph
weight sets, is not directed to an abstract idea and is
therefore patent-eligible subject matter under § 101.
Accordingly, we reverse.

As to the subject matter: The ’576 patent and the ’278 patent
were both issued to Maury Rosenfeld and are both titled
“Method for Automatically Animating Lip Synchronization and Facial
Expression of Animated Characters.”


Essentially, the patents aim to automate a 3-D animator’s
tasks, specifically, determining when to set
keyframes and setting those keyframes. This automation
is accomplished through rules that are applied to the
timed transcript to determine the morph weight outputs.
The patents describe many exemplary rule sets that go
beyond simply matching single phonemes from the timed
transcript with the appropriate morph target. Instead,
these rule sets aim to produce more realistic speech by
“tak[ing] into consideration the differences in mouth
positions for similar phonemes based on context.” Id. at
col. 10 ll. 6–7.

One exemplary set of rules provided and applied in
the specification of the ’576 patent is for a character
transitioning from silence through saying “hello.” See
’576 patent col. 7 l. 36 to col. 9 l. 22. This exemplary set of
rules provides for inserting a transition starting shortly
before the first syllable after a silence. Id. at col. 8 ll. 24–

**Of the district court's analysis:

On July 10, 2014, all Central District of California defendants
from both tracks (“Defendants”) jointly filed a
motion for judgment on the pleadings that the asserted
claims were directed to patent ineligible subject matter
under § 101. Patentability Op., 55 F. Supp. 3d at 1216.
After a hearing, the district court granted the motion on
September 22, 2014, finding the asserted claims unpatentable.
Id. at 1230.

The district court’s analysis loosely tracks the twostep
framework laid out by the Supreme Court in Alice
Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)
(“Alice”). First, the district court discussed the claims
generally: “Facially, these claims do not seem directed to
an abstract idea. They are tangible, each covering an
approach to automated three-dimensional computer
animation, which is a specific technological process.”
Patentability Op., 55 F. Supp. 3d at 1224.


In the district court’s view,
because the claims were not limited to specific rules,7 but
rather “purport to cover all such rules,” the claims merely
call for application of the abstract idea of using rules. Id.
at 1227 (citing Alice, 134 S. Ct. at 2358). The district
court found that, “while the patents do not preempt the
field of automatic lip synchronization for computergenerated
3D animation, they do preempt the field of such
lip synchronization using a rules-based morph target
approach.” Id. at 1227. The court concluded that the
claims were unpatentable because “the novel portions of
[the] invention are claimed too broadly.” Id. at 1230.

The legal background:

The parties’ principal dispute is over the meaning and
application of two Supreme Court cases in light of Alice:
Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) and Diamond
v. Diehr, 450 U.S. 175 (1981) (“Diehr”). Both cases
addressed the patentability of process claims that include
steps requiring calculation.

The position of defendant-appellees:

Defendants argue that Flook controls because the
claims are unpatentable algorithms that “can be performed
solely with pencil and paper.” Defs.’ Br. 28. The
claims, in Defendants’ view, “merely purport to take a
preexisting process and make it faster by automating it
on a general-purpose computer.” Defs.’ Br. 19. Defendants
argue that these claims fail even under Diehr because
they do not result in any tangible product, instead
only producing a “stream of output morph weight sets”
that are applied “to produce lip synchronization” without
requiring the production of anything tangible like a video.

Ariosa is cited:

We also review de novo whether a claim is invalid
under the judicially created exceptions to § 101. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375
(Fed. Cir. 2015).

[Later -->]

Even so, we have recognized that “the absence
of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The narrower
concern here is whether the claimed genus of rules
preempts all techniques for automating 3-D animation
that rely on rules.

As to claim interpretation:

we note that, in this case, claim
construction is helpful to resolve the question of patentability
under § 101. Specifically, the parties’ dispute about
whether the “first set of rules” must evaluate sequential
phonemes or can evaluate individual phonemes is resolved
by the claim language. We agree with McRO that
the claims are limited to rules that evaluate subsequences
consisting of multiple sequential phonemes.
This limitation is apparent on the face of the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc). In particular, the intermediate morph
weight sets and transition parameters are generated “by
evaluating said plurality of sub-sequences against said
first set of rules.” ’576 patent, cl. 1, col. 11 ll. 36–39.10
This limitation could not be satisfied by rules that only
evaluate individual phonemes. Instead, the claimed “first
set of rules” must be formulated to evaluate subsequences
of phonemes.11

Genus/species arose:

Claims to the genus of an invention, rather than a
particular species, have long been acknowledged as patentable.
E.g., Diamond v. Chakrabarty, 447 U.S. 303,
305 (1980) (patentable claim to “a bacterium from the
genus Pseudomonas containing therein at least two stable
energy-generating plasmids, each of said plasmids providing
a separate hydrocarbon degradative pathway.”).
Patent law has evolved to place additional requirements
on patentees seeking to claim a genus; however, these
limits have not been in relation to the abstract idea
exception to § 101. Rather they have principally been in
terms of whether the patentee has satisfied the tradeoff of
broad disclosure for broad claim scope implicit in 35
U.S.C. § 112. E.g., Carnegie Mellon Univ. v. Hoffmann-La
Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008). It is
self-evident that genus claims create a greater risk of
preemption, thus implicating the primary concern driving
§ 101 jurisprudence, but this does not mean they are


We therefore look to whether the claims in
these patents focus on a specific means or method that
improves the relevant technology or are instead directed
to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016) (“Enfish”);

As to the appellees:

Defendants’ attorney’s argument that any rules-based
lip-synchronization process must use the claimed type of
rules has appeal, but no record evidence supports this
conclusion. Defendants again rely only on the patents’
description of one type of rules, but the description of one
set of rules does not mean that there exists only one set of
rules, and does not support the view that other possible
types of rules with different characteristics do not exist.
The only information cited to this court about the relationship
between speech and face shape points to the
conclusion that there are many other possible approaches
to automating lip synchronization using rules. For example,
Amicus cites Kiyoshi Honda, Physiological Processes
of Speech Processing, in Springer Handbook of Speech
Production 7 (Jacob Benesty et al. eds., 2008) (“Honda”),
as support for the proposition that the claimed rules
reflect natural laws. Amicus Public Knowledge Br. 12.
Honda shows, however, that the interaction between
vocalization and facial expression is very complex, and
there are relationships present other than those required
by the claimed rules.


Here, the structure of the limited rules reflects a specific
implementation not demonstrated as that which “any
[animator] engaged in the search for [an automation
process] would likely have utilized.” Myriad, 133 S. Ct. at
2119–20 (quotation marks omitted). By incorporating the
specific features of the rules as claim limitations, claim 1
is limited to a specific process for automatically animating
characters using particular information and techniques
and does not preempt approaches that use rules of a
different structure or different techniques. See Morse, 56
U.S. at 113. When looked at as a whole, claim 1 is directed
to a patentable, technological improvement over
the existing, manual 3-D animation techniques. The
claim uses the limited rules in a process specifically
designed to achieve an improved technological result in
conventional industry practice. Alice, 134 S. Ct. at 2358
(citing Diehr, 450 U.S. at 177). Claim 1 of the ’576 patent,
therefore, is not directed to an abstract idea.
Because we find that claim 1 is not directed to ineligible
subject matter, we do not reach Alice step two. Enfish,
822 F.3d at 1339.


Monday, September 12, 2016


Dynamic 3D Geosolutions LLC (“Dynamic 3D”), along
with Acacia Research Corporation and Acacia Research
Group LLC (collectively, “Acacia”), appeal from the decision
of the United States District Court for the Western
District of Texas disqualifying counsel and dismissing its
patent infringement complaint without prejudice. Dynamic
3D Geosolutions LLC v. Schlumberger Ltd., No. A-
14-CV-112-LY, 2015 WL 4578681 (W.D. Tex. Mar. 31,
2015) (“Order”). Because the district court did not err in
disqualifying Dynamic 3D’s counsel and in dismissing the
complaint, we affirm.

The CAFC vacates treble damages and attorneys' fees in Stryker case

On remand, we recalled our mandate and reopened
the case. Because Halo was limited to the questions of
willfulness and enhanced damages, it left the judgments
on other issues undisturbed. For the reasons stated
below, we therefore reaffirm the jury’s findings that
Stryker’s patents were valid and infringed. In light of the
new willfulness standard articulated by the Supreme
Court, we also affirm the jury’s finding of willful infringement.
However, we vacate and remand the district
court’s award of treble damages. Finally, we vacate and
remand the district court’s finding that this was an exceptional
case and its award of attorneys’ fees.

As to infringement of the '807 patent:

The district court noted that, in its view, “Zimmer’s
reading of ‘receive’ is artificially narrow.” Stryker Corp. v.
Zimmer, Inc., No. 10-1223, slip op. at 8 (W.D. Mich. Nov.
29, 2012), ECF No. 247 (“Summary Judgment Order II”).
Instead, the district court reasoned that “[t]he word
“receives” in this context can only mean that one part of
the device connects directly with another part of the
device.” Id. Thus, the district court found that Zimmer
infringed. While it is a close case, we do not find that the
district court erred in granting summary judgment of
infringement based on the record before it.

Of enhanced damages:

After taking into consideration the circumstances of a
particular case, a court may exercise its discretion and
award enhanced damages under 35 U.S.C. § 284. Halo
Elecs., Inc., 136 S. Ct. at 1933. “[H]owever, such punishment
should generally be reserved for egregious cases
typified by willful misconduct.” Id. at 1934.


On appeal, Zimmer did not appeal the jury’s finding of
subjective willfulness under the Seagate test. On the
record in this case, willful misconduct is sufficiently
established by the jury’s finding. The jury made its
determination under the clear and convincing evidence
standard, which is a higher standard than is now necessary.
We therefore affirm the jury’s finding of willful
In doing so, we think the best course is to vacate the
award of enhanced damages and remand to the district
court for consideration of this issue. As Halo makes clear,
the decision to enhance damages is a discretionary one
that the district court should make based on the circumstances
of the case, “in light of the longstanding considerations
. . . as having guided both Congress and the
courts.” Id. at 1934. Thus, it is for the district court to
determine whether, in its discretion, enhancement is
appropriate here. We therefore vacate the district court’s
award of enhanced damages and remand to the district
court so that it may exercise its discretion.

Of attorneys fees:

The district court’s award of attorneys’ fees was based
solely on its determination that Zimmer was liable of
willful infringement. Though we uphold the district
court’s willfulness determination, it does not necessarily
follow that the case is exceptional. As with the determination
of whether enhanced damages are appropriate,
“[d]istrict courts may determine whether a case is ‘exceptional’
in the case-by-case exercise of their discretion,
considering the totality of the circumstances.” Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct.
1749, 1756 (2014). Because there exist further allegations
of litigation misconduct in this case and because the
standard for finding an exceptional case has changed
since the district court issued its ruling regarding attorneys’
fees, we also remand this issue for further consideration
by the district court.
For the aforementioned reasons, we affirm the jury’s
verdict of infringement and validity of all three patents at
issue, as well as its award of lost profits and its willfulness
determination. However, we vacate and remand the
district court’s award of trebled damages. We also vacate
and remand the district court’s finding of an exceptional
case and its award of attorneys’ fees. The case is remanded
for further proceedings consistent with this opinion.


Sunday, September 11, 2016

CBS Sunday Morning on September 11, 2016 quotes Ferrari: If you can dream it, you can do it.

Charles Osgood hosted the 9/11/2016 show on the 15th anniversary of the attacks. Lee Cowan does the cover story on the Smithsonian African-American Museum. Michelle Miller interviews Wendy Williams. Tracy Smith interview Demi Lovato. Martha Teichner does the 15th anniversary of 9/11. Anthony Mason on driving in style. Headlines: President Obama observed a moment of silence in the White House. Lanterns in Shanksville, PA. Hillary Clinton on "basket of deplorables." Major Garrett on Trump supporters. Hinckley released. Cease fire in Syria on 9/12. NFL season. Weather: northeast cools off. September 11 is decreed "Patriot Day."
The Lee Cowan story begins with Quincy Jones at the piano. Jones has 27 Grammies. Now, Jones is producing the dedication ceremony for the African-American Museum. Lonnie Bunch is the founding director. Sammy Davis' tap shoes when he was a baby. The museum has 11 galleries and 30,000 artifacts. The museum is over 400,000 square feet. The stools from the Woolworth lunch counter. PT Sterman biplane flown by Tuskegee Airmen. Chuck Berry's 1973 Cadillac. Jones was born in Chicago. Toured with Lionel Hampton. A bible belonging to Nat Turner. Mark Persons. As much as 80% of museum's artifacts were donated.
Almanac. Henry Hudson takes Manhattan. September 11, 1609. Hudson was looking for the northwest passage. Mannahatta. New Amsterdam in 1625.
Pulse. Favorite summer month. September 32%.
Anthony Mason on 19 classic automobiles to Frist Center for Visual Arts: Italy's contribution to car design. Wedge car, Stratos. Mark Scala. Berlinetta designed by Scalioni. Lincoln Indianapolis. Ken Gross. Lincoln was working on two seater coupe. Chrysler Guia Gilder. Lancia Stratos appeared in Michael Jackson's moon walk. Stratos is only 33 inches high. Lanzo Ferrari said: If you can dream it, you can do it.

Tracy Smith on Demi Lovato. First gold record in 2008. Speech at Democratic National Convention on bipolar disorder. At age 10, with Barney. Camp Rock: child actor to teen superstar. Unbreakable. "Inner Dude" Cast Centers. People Magazine noted on September 9, 2016:

In an interview with Tracy Smith for CBS Sunday Morning, the 24-year-old revealed that she co-owns CAST Centers, a Los Angeles mental health and wellness treatment center where she was a patient in 2013. When asked why she decided to partner with the organization, her answer was simple: "It just feels good!"


Death of Greta Zimmer Friedman at age 92. See also 2010 post on IPBiz:

Steve Hartman on goose Kyle at Lake Oswego outside of Portland, Oregon.

Michelle Miller on Wendy Williams. Say it like you mean it. Be prepared for people who judge. "Ask Wendy." My gift is fearlessly talking. She has 2.5 million viewers every day. Can't fool viewers for 8 years. She lives in Livingston, NJ. A foodie. Mink slippers. TMTFTL. Radio personna. Bill Cosby was an enemy in 1990. Interrogation of Whitney Houston in 1993. Breast implants. Cocaine addiction. Kevin Hunter. Historically black colleges.

The moment of nature was on Vortex Spring in Florida. Wikipedia notes: Vortex Spring is a cold, freshwater spring that produces approximately 28 million US gallons (110,000 m3) of water daily. The spring consists of a 200 ft (61 m) basin with sloping sides and an underground cave which links the spring to the Floridan aquifer.