Friday, August 26, 2016

Why do we have suddenly increasing drug prices?

Timothy Holbrook has an interesting post The real reason the EpiPen and other off-patents are so expensive , which raises issues with the role of the FDA in pricing issues for drugs.



Interestingly, though, the patent system is not to blame for many of these price hikes we hear about in the news. Instead, these drugs, such as the EpiPen, are off-patent, suggesting that generic competition should help keep prices lower.

(...)

But even absent consolidation, there is another barrier that appears to be in play: regulations by the FDA, and the huge backlog. Even generic drugs need regulatory approval to be sold, which makes sense: we don’t want fly-by-night companies selling impure or otherwise harmful drugs.

But obtaining approvals does add costs and time to competitors attempting to enter the market. One potential EpiPen competitor, Teva Pharmaceuticals, failed to obtain regulatory approval, delaying their entry into the market Another competitor, Sanofi, recalled its competing epinephrine delivery device because it may be delivering in incorrect dosage. That leaves Mylan alone in the market, with the power to raise prices, which is what it did.



A different issue with the FDA, not mentioned by Holbrook, can be found in recent litigations over
colchicine.
See http://ipbiz.blogspot.bg/2015/05/takeda-v-hikma-tour-of-hatch-waxman.html
http://ipbiz.blogspot.com/2011/05/colchicine-patent-wars.html

Thursday, August 25, 2016

Teva loses on 40mg Copaxone (for MS) at PTAB


Finance.yahoo noted a PTAB ruling on some of Teva's Copaxone patents:


Teva Pharmaceutical Industries Ltd. today [August 24, 2016] confirmed the Patent Trial and Appeal Board (PTAB) decisions from an Inter Partes Review (IPR) to invalidate all claims of the ‘250 and ‘413 patents for 40 mg COPAXONE® (glatiramer acetate injection). Teva plans to appeal to the United States Court of Appeals for the Federal Circuit



link: http://finance.yahoo.com/news/teva-confirms-ptab-decisions-two-214600255.html

The demise of claims in the '250 patent [US Patent 8,232,250 to Ety Klinger, which is a continuation of US 8,399,413] was based on obviousness; from the final written decision in IPR2015-00643:


In sum, upon considering the evidence as a whole, we determine that the combination of Pinchasi and the 1996 SBOA teaches or suggests each limitation of claims 1 and 19, that a person of ordinary skill in the art would have had a reason to combine the references and would have had a reasonable expectation of success in dosing 40 mg GA three times over a seven-day period.


One notes that the use of the SBOA [ Summary Basis of Approval (“SBOA”) for the New Drug Application for 20 mg daily Copaxone ® (NDA #20-622) ] amounted to the use of Teva's information against Teva. [ PTAB noted: the 1996 SBOA was publicly accessible at least by July 17, 2007, more than one year before the earliest possible priority date of the ’250 patent (i.e., August 20, 2008) ] The other key reference was Irit Pinchasi, WO 2007/081975 A2, published July 19, 2007. Pinchasi was mentioned in a 2011 post at Law360 as a former Teva scientist [ http://www.law360.com/articles/257148/ex-teva-scientist-testifies-in-copaxone-patent-battle ].

Of some importance to the outcome was the use of a REVIEWER COMMENT in the SBOA: a reviewer of the 1996 SBOA “recommend[ed] that [Teva] evaluate the necessity of daily [subcutaneous] injections as opposed to more infrequent intermittent administration of the drug.” Id. at 43 (citing Ex. 1007, 252).
And later in the written decision: the 1996 SBOA must still be read in the context of the prior art as a whole, which suggested less frequent dosing of GA was desirable. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986

Of some relevance to a different PTAB matter involving Kyle Bass, in which PTAB dismissed the significance of MRI in evaluating disease-modifying MS treatments, note the text:


In particular, we credit the testimony of Dr. Green, who notes that Pinchasi demonstrates increased efficacy with 40 mg GA when compared to 20 mg GA with no significant difference in side effects. Ex. 1004 ¶¶ 61, 95, 99. Indeed, Pinchasi concludes: The increased efficacy observed with 40 mg/day GA in reducing MRI-measured disease activity and relapse rate indicates that it is well tolerated and can improve the treatment of RRMS patients. The improvement in efficacy, however, is not accompanied by a corresponding increase of adverse reactions which would be expected upon a doubling of the administered dose.



One notes an interesting position taken by Teva:


Patent Owner argues that a person of ordinary skill in the art would not have used 40 mg of GA because a later phase III clinical trial (the “FORTE trial”) demonstrated that 40 mg of GA was not more effective than 20 mg of GA, and 40 mg of GA was associated with more frequent adverse events. PO Resp. 17–20. Upon considering the evidence as a whole, we are not persuaded. The FORTE trial found that “the 40 mg dose did not demonstrate increased efficacy in reducing the relapse rate.” Ex. 2001, 1 (emphasis added). At the same time, however, it noted that “the higher [40 mg] dose maintained the favorable safety and tolerability profile of COPAXONE® 20mg.”




PTAB brought up "teaching away" issues:


Because nothing in FORTE criticizes, discredits, or discourages the use of 40 mg of GA, we determine that FORTE does not teach away from the use of 40 mg of GA.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”



Obsolete technology arose: In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (“[A] reference which disclosed obsolete technology remained in the prior art. This court considered the reference for what it disclosed in relation to the claimed invention.”)

As to predictability: we keep in mind that an obviousness inquiry does not require absolute predictability. In re Longi, 759 F.2d 887, 896 (Fed. Cir. 1985). Indeed, as the Federal Circuit has explained, simply because the formation and properties of a new drug must be verified through testing does not mean that the formulation would have not been obvious, “since the expectation of success need only be reasonable, not absolute.”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)





**Back on Jan. 28, 2014, Teva Pharmaceutical Industries Ltd.announced that the U.S. Food and Drug Administration (FDA) has approved the Company’s supplemental new drug application (sNDA) for three-times-a-week COPAXONE® 40mg/mL, a new dose of COPAXONE®.

link: http://www.tevapharm.com/news/teva_announces_u_s_fda_approval_of_three_times_a_week_copaxone_glatiramer_acetate_injection_40mg_ml_01_14.aspx

And, one year ago, in August 2015, FiercePharma had written:


What does that mean for Teva? A review of the third patent is likely on the way, and "the odds of invalidation in this case are close to even," Ronny Gal wrote.

That's not great news to Teva, which scrambled to convert 70% of its patient pool over to the successor drug as it awaited word on the fate of original Copaxone. After a lower court dismissed the drug's patents, Teva scored a Supreme Court victory--only to see the case remanded and recently decided again in its rivals' favor.

Now, if Teva does lose its patents, Momenta --which developed the Sandoz knockoff--will "very likely" win FDA approval on a 40 mg generic by January 2017, the point at which copycats can legally enter the market, Gal figures. And the "critical question," as he sees it, is how many of the other four generic filers will get their own green lights and enter the market at the same time.

Whatever happens with Copaxone, though, Teva's in a better spot now than it was when the franchise first encountered IP trouble. Recently, it inked a $40.5 billion pact to buy Allergan's generics business, leaving it less reliant on the MS star. The way Gal sees it, the downside is "limited" for the company; "Teva earnings will trough at $50 in 2017, and the company has a reasonable growth trajectory from there," he wrote.



link: http://www.fiercepharma.com/legal/u-s-patent-office-puts-new-copaxone-s-ip-shield-under-lens

[The US Supreme Court case concerned the 20mg dose.]

Related to US 8,969,302 see IPR2015-00830:
http://fishpostgrant.com/wp-content/uploads/IPR2015-00830.pdf

Harsh penalty dealt to student copying from wikipedia

Ten years ago, in August 2006, in a post titled Plagiarism in academic contexts: a look at the past , IPBiz discussed several academic plagiarism cases, including a certain case at Princeton University, 186 N.J. Super. 548; 453 A.2d 263.

In August 2016, the blog PatentlyO, authored by a 1997 graduate of Princeton, has some discussion of an Illinois case, Drobetsky v. Chicago School of Prof. Psych. The Drabetsky case, involving copying of fragments of wikipedia text into a paper for a class (based on viewing a movie; here, The Curious Case of Benjamin Button) bears some haunting similarities to the earlier case of Alison Routman, who was "expelled" from Semester at Sea for copying wikipedia fragments into a paper about the movie Europa Europa. [For details, see the 2008 IPBiz post UVa expels plagiarizing OhioU student from ship! ]

Apart from the factual similarities [fragmentary copying from wikipedia of facts into a course paper based on viewing of a movie; harsh penalty], there is an interesting attitudinal issue. Several students were caught copying at Semester at Sea (same crime), but only those who did not repent were expelled (different punishment for same crime). As to the Drobetsky matter, from the decision:


Dr. Koonce explained that the reason why plaintiff was dismissed after having been found to have committed plagiarism, instead of being allowed to participate in the academic development plan like the other five or six students, is because of her conduct at the hearing, in which she was argumentative, interrupted questions posed to her by the committee members, and "did not address her behavior or conduct as it
related to the allegation of plagiarism."



[In passing, one recalls Joe Biden was caught copying 5 pages of a 15 page paper as a 1L at Syracuse Law, and flunked (and repeated) the course, but was not expelled, and went onto to bigger things. The plagiarizing Princeton undergrad (who applied to law school) sustained only a delayed graduation.]

As to standards of review, the Drobetsky court cited to an earlier decision involving the University of Chicago:


Plaintiff bears the "heavy" burden of establishing arbitrary, capricious, or bad-faith
conduct, and to meet the burden she must show that her dismissal was " 'without any discernible
rational basis.' " Id. (quoting Holert v. University of Chicago, 751 F. Supp. 1294, 1301 (N.D. Ill.
1990)). A dismissal is without a discernible rational basis when " 'it is such a substantial
departure from accepted academic norms as to demonstrate that the person or committee
responsible did not actually exercise professional judgment.' " Raethz, 346 Ill. App. 3d at 732
(quoting Regents of the University of Michigan v. Ewing, 474 U.S. 214, 225 (1985)). When, in
dismissing a student, the private college or university substantially complied with its own
standards and procedures for student discipline, no breach of contract action will lie if the
dismissal had a rational basis. See Holert, 751 F. Supp. at 1301.



As to legal matters, the reviewing court in Drobetsky sustained the outcome (Drobetsky loses), but not for the reasons articulated by the trial court:


In conclusion, we find that the trial court's finding that plaintiff met her heavy burden of
proving that defendant acted arbitrarily, capriciously, or in bad-faith by dismissing her without
any discernible rational basis was against the manifest weight of the evidence.

The trial court found that plaintiff's failure to appeal her dismissal to the dean of
academic affairs, as provided for under the academic catalog, necessitated judgment in favor of
defendant on plaintiff's breach of contract action, notwithstanding its earlier findings that
defendant had acted arbitrarily and capriciously when conducting the hearing and in dismissing
her.

(...)

We may affirm the trial court's judgment after a bench trial on any basis in the record,
regardless of whether the trial court relied on that basis or whether the trial court's reasoning was
correct. Northwestern Memorial Hospital v. Sharif, 2014 IL App (1st) 133008, ¶ 25. We affirm
the trial court's judgment in favor of defendant on plaintiff's breach of contract action, not on the
grounds stated by the court (which were based solely on plaintiff's failure to appeal her dismissal
to the dean of academic affairs and on the lack of proof of damages) but rather on plaintiff's
failure to meet her heavy burden of proving that defendant acted in an arbitrary, capricious, or
bad-faith manner by dismissing her without any discernible rational basis.



Thus, it might seem that a school's dismissing a student who copied fragments from wikipedia, and argued about the significance thereof, is not arbitrary, capricious, or in bad-faith.


An interesting line from the reviewing court:


On appeal to this court, the parties struggle to explain the basis of the trial court's
decision.


Also, as to the definition of plagiarism, from the school:


"Plagiarism is intentionally or unintentionally representing words, ideas, or data
from any source as one's own original work. The use or reproduction of another's work
without appropriate attribution in the form of complete, accurate, and properly formatted
citations constitutes plagiarism. Examples of plagiarism, include but are not limited to,
copying the work of another verbatim without using quotation marks, revising the work
of another by making only minor word changes without explanation, attribution, and
citation, paraphrasing the work of another without the appropriate citation. Students are
expected to produce original work in all papers, coursework, dissertation, and other
academic projects *** and to follow appropriate rules governing attribution that apply to
the work product. (...) Further, a single example of failing to
use quotation marks appropriately may be considered plagiarism."



[One recalls in the case of Glenn Poshard at Southern Illinois University, much was made of the defense of "unintentional" plagiarism, which might not have been effective at Chicago School of Prof. Psych. See the IPBiz post
Poshard: unintentional plagiarism?
BUT self-plagiarism might get a pass at Chicago School of Prof. Psych. See IPBiz post
Self-plagiarism and the "repurposing" of research
]

Background on Princeton case PRINCETON PLAGIARISM PENALTY UPHELD

Tuesday, August 23, 2016

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


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


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



The CAFC noted:


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

(...)

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

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




Footnote 1 of the CAFC decision references a footnote:



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



The CAFC invoked Johns Hopkins:


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

(...)

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

(...)

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


The bottom line:

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

Monday, August 22, 2016

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

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

The Times article observed:


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

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



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


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



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


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





Of copying of work by an ex-President


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





Of the person who reviewed the work of Nieto:


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




Of other "victims" of Nieto:


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



The name of Benito Juarez appears:


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



There is a matter of copying the citations of others:


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



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

**Update. Within the post Plagiarism? Hey, You Try To Write 200 Pages On Álvaro Obregón, Buddy! , one finds the text



It’s a law thesis — there was sure to be some boilerplate in there. I mean, how much can one say about Obregón’s betrayal of his own roots in putting down the Yaqui rebellion of 1926-27? Am I right?



Given that Nieto's paper is about "presidentialism," and that Obregon was president between 1920 and 1924, one suspects Obregon's Yaqui matter, with Obregon's military period against the Yaqui's being between October 1926 to April 1927 is not relevant to Nieto's thesis; the answer is "no, not right."

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

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

The Times article observed:


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

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



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


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



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


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





Of copying of work by an ex-President


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





Of the person who reviewed the work of Nieto:


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




Of other "victims" of Nieto:


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



The name of Benito Juarez appears:


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



There is a matter of copying the citations of others:


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



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

**Update. Within the post Plagiarism? Hey, You Try To Write 200 Pages On Álvaro Obregón, Buddy! , one finds the text






Thursday, August 18, 2016

TenSec prevails at CAFC in appeal against Adobe


From the decision


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

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




Background of the issue


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



An issue which the CAFC did NOT address:


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



A problem with the district court analysis:



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

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

(...)

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


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



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

**Separately on 18 August 2016:

Wednesday, August 17, 2016

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


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

Of the PTAB case:


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



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

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

http://www.jonesday.com/obviousness-in-iinteri-partes-review-proceedings-02-05-2016/

Tuesday, August 16, 2016

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



Apotex tried IPR to invalidate a Wyeth patent.


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


From the decision:


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



Note that there was an "incorrect translation" issue:


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



Apotex had two arguments:



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


As to the first, the CAFC observed:


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



Of the second, as to the Senju case:


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

Monday, August 15, 2016

Scriptpro wins reversal of D. Kansas at CAFC


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


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



The Gentry case arose and was distinguished:


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

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




Footnotes 2 and 3:

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

Saturday, August 13, 2016

More on the CRISPR patent wars


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


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



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


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




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


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

Friday, August 12, 2016

CAFC to tackle some issues in amending claims in IPR


The CAFC will address issues of amending claims during IPR in the
case In re Aqua Products, 2015-1177.

The issues in Aqua:


(1) The petition for rehearing en banc filed by Appellant
Aqua Products, Inc. is granted.
(2) The court’s opinion in In re Aqua Products, Inc., 823
F.3d 1369 (Fed. Cir. 2016) is vacated, and the appeal is
reinstated.
(3) The pending petition for rehearing en banc in Prolitec,
Inc., v. ScentAir Technologies, Inc., 807 F.3d 1353 (Fed.
Cir. 2016), has been stayed by the court pending resolution
of the issues of this rehearing en banc.
(4) The Appellant and Intervenor are requested to file
supplemental briefs. The briefs should address the following
questions:
(a) When the patent owner moves to amend
its claims under 35 U.S.C. § 316(d), may the PTO
require the patent owner to bear the burden of
persuasion, or a burden of production, regarding
patentability of the amended claims as a condition
of allowing them? Which burdens are permitted
under 35 U.S.C. § 316(e)?
(b) When the petitioner does not challenge
the patentability of a proposed amended claim, or
the Board thinks the challenge is inadequate, may
the Board sua sponte raise patentability challeng-
es to such a claim? If so, where would the burden
of persuasion, or a burden of production, lie?
Briefing should be limited to these questions.
(5) The supplemental en banc briefs and briefs of any
amici curiae shall be electronically filed in the ECF system,
and thirty paper copies of each brief shall be filed
with the court. Two paper copies of all filings shall be
served on opposing counsel. Briefs shall adhere to the
type-volume limitations set forth in Federal Rule of
Appellate Procedure 32 and Federal Circuit Rule 32.
(6) The supplemental brief of Appellant must be filed by
noon on Monday, September 26, 2016. Any amicus brief
supporting Appellant’s position or supporting neither
position must be filed by noon on Wednesday, October 5,
2016. Intervenor’s supplemental brief must be filed by
noon on Wednesday, October 26, 2016. Any amicus brief
supporting Intervenor’s position must be filed by noon on
Wednesday, November 2, 2016. Appellant’s reply brief
must be filed by noon on Thursday, November 10, 2016.
No extensions will be allowed.
(7) In addition, the Appellant and Intervenor are directed
to file with the court thirty paper copies of their original
briefs and any Appendix within 17 days from the date of
this Order.
(8) The court invites the views of amici curiae.


A tale of two Pop-Tarts


FoodBusinessNews reported in March 2016:


Battle Creek, Mich.-based Kellogg released a statement to Food Business News revealing plans to label products to be sold nationwide as “Produced with Genetic Engineering” as early as mid-April, in order to comply with Vermont's labeling law, "until a federal solution is reached." Kellogg’s brands include Froot Loops, Special K, Cheez-It, Pop-Tarts and Pringles.

"At Kellogg, we strongly believe in transparency, and that people should know what’s in their food and where it comes from," said Paul Norman, president, Kellogg North America. "We continue to strongly urge Congress to pass a uniform, federal solution for the labeling of G.M.O.s to avoid a confusing patchwork of state-by-state rules



But FoodBusinessNews commented on August 9 on the new federal law signed by Obama on July 29, 2016:


President Barack Obama on July 29 signed into law an act of Congress requiring the mandatory disclosure of foods containing bioengineered ingredients. The law’s most immediate effect was nullification of Vermont’s on-the-package mandatory G.M.O. labeling law that took effect July 1.

(...)
The law specifies food manufacturers must disclose bioengineered foods by way of on-the-package text, a symbol or electronic or digital link with language on the package such as “scan here for more food information.” The U.S.D.A. will determine the appropriate language for an on-the-package text disclosure and develop a symbol that may be used for
disclosure. The department also will develop standards that must be observed in disclosing bioengineered foods by means of electronic or digital link.

The option for food manufacturers to disclose bioengineered foods electronically or digitally was perhaps the most controversial provision in the act from the point of view of G.M.O. opponents who sought nothing less than universal on-the-package text disclosure.



link: http://www.foodbusinessnews.net/Opinion/Jay-Sjerven/President-Obama-signs-mandatory-GMO-foods-disclosure-act.aspx

The comment about the impact of the federal law on the Vermont law relates to the concept of pre-emption.

Attached please find pictures of two distinct boxes of Pop Tarts. Can you see the difference?

--Pop Tart top view

--

Same Pop Tart boxes, side view

--

--

Wednesday, August 10, 2016

CAFC affirms SD Texas in Vapor Point case. Inventorship issues.


The background:


Vapor Point, L.L.C., Keith Nathan (“Nathan”), and
Kenneth Matheson (“Matheson”) (collectively “Vapor
Point”) sued Elliott Moorhead (“Moorhead”), NanoVapor
Fuels Group, Inc., and Bryant Hickman (“Hickman”)
(collectively “NanoVapor”) in the United States District
Court for the Southern District of Texas, seeking to have
Nathan and Matheson recognized as joint inventors under
35 U.S.C. § 256 on NanoVapor’s U.S. Patent Nos.
7,727,310 (“the ’310 patent”) and 8,500,862 (“the ’862
patent”). NanoVapor responded by suing Vapor Point,
seeking to have Moorhead recognized as a joint inventor
under 35 U.S.C. § 256 on Vapor Point’s U.S. Patent Nos.
7,740,816; 7,803,337; 8,337,585; 8,337,604; 8,337,763 and
for declaratory relief regarding inventorship of
NanoVapor’s ’310 and ’862 patents.



One of the issues was "stealing" technology:


NanoVapor alleged that Nathan and Matheson “plotted
to steal [NanoVapor’s] technology and destroy
[NanoVapor’s] business when [Nathan and Matheson]
developed the commercial embodiment of NanoVapor’s
patent-pending concept.” Id. According to NanoVapor,
“an outside group conducted due diligence testing that
exceeded expectations,” after which Nathan and Matheson
“decided to steal the technology and associated trade
secrets.” Id. NanoVapor asserts that Nathan and Matheson
“each requested a 20% stake in NanoVapor, which
[NanoVapor] rejected.” Id.



Some complexities:


In addition to its requests to correct the inventorship
of NanoVapor’s patents, Vapor Point also asserted a
number of state law claims against NanoVapor: commonlaw
fraud, fraud by nondisclosure, unjust enrichment,
tortious interference, misappropriation of trade secrets,
and the Texas Theft Liability Act. First Amended Complaint
at ¶¶ 61–104 (Counts III–VIII), Vapor Point (S.D.
Tex. Aug. 16, 2013), ECF No. 151. NanoVapor, in turn,
asserted a number of affirmative defenses to the claims in
Vapor Point’s First Amended Complaint, including that
“[Vapor Point] cannot prevail because [Vapor Point has]
an obligation to assign any invention to NanoVapor Fuels
Group, Inc.”



Some of the technology



In that decision, the district court addressed the “four
key concepts in the ’310 and ’862 patents”: (1) using
biodiesel as a vapor capture medium; (2) removing VOCs
from a vessel containing fuel vapors and introducing them
into a vapor capture medium (such as biodiesel); (3) using
a particulatizer to create micro-sized VOC particles for
treatment; and (4) using diffusion plates to distribute
micro-sized particles across the vapor capture medium.
Id. at 11. The district court found that Nathan contributed
to the conception of the first three of these four key
concepts and that Matheson contributed to the third and
fourth concepts. See id. at 16–24. The district court
denied NanoVapor’s claim that Moorhead should be a
named inventor on Vapor Point’s patents. See id. at 24–
26.


Of inventorship


NanoVapor argues, inter alia, that the district court’s
determinations on inventorship were not supported by
clear and convincing evidence. See Appellant’s Br. at 23–
30.
For the most part, we disagree. Given the evidence
adduced, we find that the district court was correct to
conclude that both Nathan and Matheson should be listed
as inventors on the ’310 patent, which is the only patent
asserted in NanoVapor’s infringement claim. All inventors,
even those who contribute to only one claim or one
aspect of one claim of a patent, must be listed on that
patent. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d
1456, 1460 (Fed. Cir. 1998) (“[A] co-inventor need not
make a contribution to every claim of a patent. A contribution
to one claim is enough.”) (citation omitted). The
district court’s findings that Nathan contributed to three
of the four key aspects of the invention are supported by
substantial evidence. And, substantial evidence supports
the district court’s conclusion that Matheson contributed
to the conception of the use of diffusion plates, as recited
in claims 11 and 12 of the ’310 patent. While we agree
with NanoVapor that the district court erred in finding
that Matheson contributed to the conception of the use of
a particulatizer to create micro-sized VOC particles for
treatment and the use of diffusion plates to distribute
micro-sized particles across the vapor capture medium,
that error does not change the validity of the ultimate
judgment because Matheson was still properly found to be
an inventor of the diffusion plates.2
These findings are sufficient to support the district
court’s inventorship judgment. Co-inventors need not
“physically work together or at the same time,” “make the
same type or amount of contribution,” or “make a contri-
bution to the subject matter of every claim of the patent.”
35 U.S.C. § 116. “[I]nventorship is determined on a claimby-
claim basis.” Trovan, 299 F.3d at 1302 (citing Ethicon,
135 F.3d at 1460).



As a footnote, LBE once was confronted by a scientist
who asserted that conception, in the absence of reduction to practice,
was insufficient to establish inventorship. Note the text of
the decision:


And, substantial evidence supports
the district court’s conclusion that Matheson contributed
to the conception of the use of diffusion plates, as recited
in claims 11 and 12 of the ’310 patent.

(...)

Matheson was still properly found to be
an inventor of the diffusion plates

CAFC addresses the meaning of "common sense" in Arendi case; Apple loses

From the beginning of the case:


On December 2, 2013, Apple Inc., Google, Inc. and
Motorola Mobility LLC (collectively “Appellees”)) filed a
petition for inter partes review (“IPR”) of U.S. Patent No.
7,917,843 (the “’843 patent”), which is owned by appellant
Arendi S.A.R.L. (“Arendi”). On June 9, 2015, the Patent
Trial and Appeal Board (“Board”) issued a decision finding
claims 1-2, 8, 14-17, 20-21, 23-24, 30, 36-39, and 42-43
would have been obvious. Because the Board misapplied
our law on the permissible use of common sense in an
obviousness analysis, we reverse.



The issue


The Board further explained that the obviousness inquiry
“not only permits, but requires consideration of
common knowledge and common sense.” Id. at *14 (citing
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006); Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009)). It rejected Arendi’s argument, relying
on K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d
1362, 1365 (Fed. Cir. 2014), that “common sense” may
only be applied when combining references that disclose
all the required limitations. The Board stated that the
conclusion of obviousness follows from the readily apparent
benefit provided by the retrieval and display of preexisting
information to a user. The Board found, in any
event, that in this case, “a claimed structural feature is
not missing from the applied prior art.” Arendi, 2015 Pat.
App. LEXIS 6053, at *15.



The CAFC observed:


The single question at issue here is whether the
Board misused “common sense” to conclude that it would
have been obvious to supply a missing limitation in the
Pandit prior art reference to arrive at the claimed invention.
It is true that common sense and common
knowledge have their proper place in the obviousness
inquiry. We stated in Perfect Web that “[c]ommon sense
has long been recognized to inform the analysis of obviousness
if explained with sufficient reasoning.” 587 F. 3d
at 1328. And we stated in Randall that “[i]n KSR, the
Supreme Court criticized a rigid approach to determining
obviousness based on the disclosures of individual priorart
references, with little recourse to the knowledge,
creativity, and common sense that an ordinarily skilled
artisan would have brought to bear when considering
combinations or modifications.” Randall Mfg. v. Rea, 733
F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR, 550 U.S. at
415-22); see also DyStar, 464 F.3d at 1367. Hence, we do
consider common sense, common wisdom, and common
knowledge in analyzing obviousness.



HOWEVER, the CAFC then noted:

But there are at least three caveats to note in applying
“common sense” in an obviousness analysis.



First,
common sense is typically invoked to provide a known
motivation to combine, not to supply a missing claim
limitation. In DyStar, a pre-KSR case, we held a patent
obvious where “all claim limitations [were] found in a
number of prior art references,” 464 F.3d at 1360, and a
person of ordinary skill in the art would have combined
the references to achieve a “cheaper, faster, and more
convenient” process. Id. at 1371 (quoting Sandt Tech.,
Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1355
(Fed. Cir. 2001)). We stated that: “an implicit motivation
to combine exists not only when a suggestion may be
gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination
of references results in a product or process that is
more desirable.” DyStar, 464 F.3d at 1368. Similarly, in
Randall, we invoked common sense to vacate the Board’s
determination of non-obviousness where “the Board failed
to consider a wealth of well-documented knowledge that is
highly material to evaluating the motivation to combine
references.” Randall, 733 F.3d at 1356. There, the
Board’s decision to ignore the existence of a “prevalent,
perhaps even predominant method” of achieving the
limitation at issue was prejudicial error. Id. at 1363.



The case relied on by Apple et al. was dismissed:


Second, in Perfect Web, the only case Appellees identifies [sic]
in which common sense was invoked to supply a
limitation that was admittedly missing from the prior art,
the limitation in question was unusually simple and the
technology particularly straightforward. “The patented
invention involves comparing the number of successfully
delivered e-mail messages in a delivery against a predetermined
desired quantity, and if the delivery does not
reach the desired quantity, repeating the process of
selecting and e-mailing a group of customers until the
desired number of delivered messages has been achieved.”
Perfect Web, 587 F.3d at 1326. There, the missing claim
limitation—step D of steps A-D—was nothing more than
an instruction to repeat steps A, B, and C until a particular
quantity of email was sent in accordance with the
claim. By contrast, the missing search at issue here
“plays a major role in the subject matter claimed” and
“affects much more than step (i).” Appellant’s Br. 24.
That is—if the search in step (i) is missing, then “the
claims would be almost void of content” because the
premise of the patent is to use information in a first
program to find related information in a second program.
Id. at 25. Thus, the facts in Perfect Web are distinguishable
from the case at bar and ought to be treated as the
exception, rather than the rule.




And finally a reasoned explanation is required:


Third, our cases repeatedly warn that references to
“common sense”—whether to supply a motivation to
combine or a missing limitation—cannot be used as a
wholesale substitute for reasoned analysis and evidentiary
support, especially when dealing with a limitation
missing from the prior art references specified. Indeed,
we stated that although there is no problem with using
common sense “without any specific hint or suggestion in
a particular reference,” the Board’s “utter failure to
explain the ‘common knowledge and common sense’ on
which it relied” is problematic. DyStar, 464 F.3d at 1366
(explaining our reasoning in In re Lee, 277 F.3d 1338,
1341, 1344 (Fed. Cir. 2002)). See also In re Zurko, 258
F.3d 1379, 1383, 1385 (Fed. Cir. 2001) (reversing Board
where it adopted examiner’s unsupported assertion that
claim limitation missing from cited references was “basic
knowledge” and it “would have been nothing more than
good common sense” to combine the references).



The conclusory statements of In re Lee are to be avoided:


In re Lee, 277 F.3d 1338,
1341 (Fed. Cir. 2002). We vacated the Board’s decision,
holding that “[c]onclusory statements such as those here
provided do not fulfill the agency’s obligation” to explain
all material facts relating to a motivation to combine. Id.
at 1344.



Hear-wear arose:


Hear-
Wear, 751 F.3d at 1365 (emphasis added). We distinguished
KSR, finding that “the present case does not
present a question” regarding “combining or modifying
references” but “[i]nstead, it is about whether the Board
declined to accept a conclusory assertion from a third
party about general knowledge in the art without evidence
on the record, particularly where it is an important
structural limitation that is not evidently and indisputably
within the common knowledge of those skilled in the
art.” Id. at 1365-66 (emphasis added and deleted).



The CAFC also noted:


The “use of common sense does not require a ‘specific
hint or suggestion in a particular reference,’ only a reasoned
explanation that avoids conclusory generalizations.”
Perfect Web, 587 F.3d at 1329 (quoting DyStar, 464
F.3d at 1366); see also Plantronics, Inc. v. Aliph, Inc., 724
F.3d 1343, 1354 (Fed. Cir. 2013) (“the mere recitation of
the words ‘common sense’ without any support adds
nothing to the obviousness equation.”); Ball Aerosol &
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) (“the analysis that ‘should be
made explicit’ refers not to the teachings in the prior art
of a motivation to combine, but to the court’s analysis.”).
But conclusory statements and unspecific expert testimony
regarding searches in general are precisely what the
Board relied upon in drawing its conclusion that it would
have been “common sense” to search a database for a
telephone number to be added. In so doing, the Board
ignored Arendi’s arguments regarding the differences
between searching for duplicate entries with a telephone
number versus with a name or address. And these errors
were particularly problematic considering the fact that a
key limitation of the ’843 patent was missing from the
prior art reference in dispute.







Tuesday, August 09, 2016

CAFC in Warsaw





Based on two petitions filed by NuVasive, Inc.
(“NuVasive”), the United States Patent and Trademark
Office’s (“USPTO”) Patent Trial and Appeal Board
(“PTAB”) instituted inter partes reviews of claims 1–30 of
U.S. Patent No. 8,251,997 (“the ’997 patent”). In separate
Final Written Decisions, the PTAB found claims 1–8 and
17–23 obvious and therefore invalid. See NuVasive, Inc.
v. Warsaw Orthopedic, Inc. (NuVasive I), No. IPR2013-
00208, 2014 WL 3422010 (P.T.A.B. July 10, 2014) (addressing
claims 1–8); NuVasive, Inc. v. Warsaw Orthopedic,
Inc. (NuVasive II), No. IPR2013-00206, 2014 WL
3422008 (P.T.A.B. July 10, 2014) (addressing claims 9–
30).



Logical and rational?


Nevertheless, as we stated above, the PTAB maintains
the independent “obligation . . . to make the necessary
findings and to provide an administrative record
showing the evidence on which the findings are based,
accompanied by the agency’s reasoning in reaching its
conclusions.” Lee, 277 F.3d at 1342 (emphasis added)
(citations omitted). As for its reasoning, the PTAB “must
articulate ‘logical and rational’ reasons for [its] decisions.”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309,
1322 (Fed. Cir. 2016) (citation omitted). We may affirm
the PTAB’s finding “if we may reasonably discern that it
followed a proper path, even if that path is less than
perfectly clear.” Ariosa Diagnostics v. Verinata Health,
Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (citation omitted).



link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1050.Opinion.8-5-2016.1.PDF

CAFC in CSB-System: BRI is not a monolithic standard



The issue was "what standard" of review is applied in re-exams, when the patent has expired:


The ’953 patent expired on May 20, 2014, after the
examiner issued a final rejection but before consideration
by the Board. The Board’s decision acknowledged that
the patent had expired, but nevertheless applied the BRI
standard. The Board contended that employing BRI was
proper because CSB had the opportunity to amend its
patent claims while they were pending before the examiner
in the reexamination, as the patent had yet to expire.
We disagree with the Board’s approach. When a patent
expires during a reexamination proceeding, the PTO
should thereafter apply the Phillips standard for claim
construction. We hold as much regardless of whether this
means that the Board applies a different standard than
the examiner. Our decision in In re Rambus, Inc. (Rambus
II), 753 F.3d 1253 (Fed. Cir. 2014) is instructive. In
Rambus II, the patent undergoing reexamination expired
after the examiner issued a right of appeal notice. See id.
at 1255–56; Rambus II Joint Appendix at 64, 130. While
the Board’s decision did not indicate whether it reviewed
the examiner’s claim construction under the BRI standard
or the Phillips standard,see Rambus II Joint Appendix at
1–54, on appeal we indicated that we must use the Phillips
standard because the patent had expired during the
appeal before the Board. Rambus II, 753 F.3d at 1256; see
also Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x
864, 868–69 (Fed. Cir. 2014) (non-precedential) (applying
Phillips standard when patent expired after the Board’s
reexamination decision pending appeal to the Federal
Circuit).

The PTO argues that because the Board operates as a
tribunal of review for the examiner’s work, the Board
must scrutinize claims consistent with the standard used
by the examiner in the first instance, even after a patent
has expired. But, if anything, the Phillips standard
would result in a more narrow claim scope and, consequently,
we see little chance of the Board issuing new
grounds of rejection based on a narrower claim scope. See
Facebook, 582 F. App’x at 869 (explaining that construction
of term under the BRI standard “cannot be narrower”
than that under the Phillips standard). In many cases,
the claim construction will be the same under the Phillips
and BRI standards. See, e.g., Proxyconn, 789 F.3d at 1302
n.1 (noting that the claim term under review had the
same construction under the BRI and Phillips standards);
Facebook, 582 F. App’x at 869 (“The broadest reasonable
interpretation of a claim term may be the same as or
broader than the construction of a term under the Phillips
standard.”).

We are also not persuaded by the PTO’s argument
that BRI should apply here because the patent owner
could have amended its claims while before the examiner.
The policy underlying our embrace of BRI in limited
circumstances does not extend to cases where a patent
expires during a reexamination because the patent owner’s
ability to amend is substantially diminished when
this occurs regardless of the stage of the reexamination.
Under the PTO’s regulations, a patentee may not amend a
claim that expires during prosecution. 37 C.F.R.
§ 1.530(j) (“No amendment may be proposed for entry in
an expired patent.”). Moreover, patents that expire
during an appeal to the Board, as in this case, will not be
issued with amended claims even if the patent owner
amended them while before the examiner. See Institut
Pasteur & Universite Pierre Et Marie Curie v. Focarino,
738 F.3d 1337, 1343 (Fed. Cir. 2013) (holding that, under
§ 1.530(j), (k), “the PTO may not issue the amended claim
now that the patent has expired” after the Board issued a
reexamination decision). Because it is not always clear
how much time a Board appeal will take and at what
point a patent owner can reopen prosecution and amend
its claims, and we do not think an inquiry into whether or
not a patent owner could have amended its claims, or
speculation as to whether the patent owner could in the
future have an opportunity to amend its claims, should
resolve the question.

In sum, we hold that BRI is not a monolithic standard
that the Board can use even after a patent expires.
Rather, consistent with our prior precedent and customary
practice, we reaffirm that once a patent expires, the
PTO should apply the Phillips standard for claim construction.

Monday, August 08, 2016

Charles Osgood host of Sunday Morning on August 7, 2016

Charles Osgood hosted Sunday Morning on August 7, 2016. Included in the headlines were Michael Phelps, the death of Pete Fountain, and a new Lucille Ball statue.

The cover story was by Lee Cowan, titled --Senior athletes: Going the distance -- One Orville Rogers was interviewed:


"To this day, Lee, I'm the only man in the world who's run a 10-minute mile after age 90," he said. "And I'm the only man in the world who has run a 15-minute mile after age 95. I'm bragging, aren't I?"



There was discussion with Loretta DiPietro, professor and chair of the Exercise and Nutrition Department at George Washington University. A senior named Dixon Hemphill was given a VO2 Max test, to determine how efficiently oxygen was being used by his body.

The almanac noted August 7 is "Purple Heart Appreciation Day," related to an event on August 7, 1782.

A story on Andrew Lloyd Webber was recycled from Dec. 13, 2015.


See also

https://archive.org/details/KPIX_20160807_130000_Sunday_Morning

Santos-Dumont at the Olympics. But patents establish who was first.


Sports.yahoo wrote of the mention of Santos-Dumont during the opening ceremonies at the Olympics:


Ask any American who invented the airplane and they would say the Wright brothers, but Brazilians would have a different answer. In the Opening Ceremony of the Olympics on Friday, Brazil continued that claim by honoring Alberto Santos-Dumont, the man they credit with the invention.

In 1906, Santos-Dumont flew his plane on the outskirts of France and was recognized around Europe as the creator of the airplane. But Orville and Wilbur Wright later proved that their first flight came three years earlier in 1903.



link: http://sports.yahoo.com/news/opening-ceremony-stirs-up-debate-who-invented-flight-012342156.html

The Santos-Dumont flight was on On 23 October 1906.

The Wright Brothers patent US 821,393 issued, and was publicly available, on May 22, 1906. It was directed to three-dimensional control in a flying machine, Claim 1 is directed to a normally flat aeroplane in a flying machine with certain properties.

The famous Wright flight was Dec. 17, 1903, and many flights were made in 1904 and 1905.

Wikipedia notes:



The Santos-Dumont 14-bis airplane was modified to add ailerons in late 1906, though it was never fully controllable in flight, likely due to its unconventional surfaces arrangement.


link: https://en.wikipedia.org/wiki/Wright_brothers_patent_war

As the Wrights noted many times, the issue was creating controlled flight.

Thursday, August 04, 2016

Former Richmond food critic comments on the exposed plagiarism



The plagiarizing food critic in Richmond sent out an open letter which said in part:




There is no excuse but there is an explanation.

I read every food writer’s words the minute they are available. I have alerts set on my phone and computer letting me know which days and which publications have food reviews or food related-news and content coming out. As a major fan-girl of Jonathan Gold’s, I carry his book in my purse. It’s filled with notes and highlighted passages. I have lines, quotes, filling my notebooks of people’s words that I love and am inspired by.

It was not intentionally deceitful or steal-y. But I sent it into the world, it is my fault and I am mortified.

What I have to say is, that in a flurry of desperation, time management, lack of good judgment, I unwittingly put someone else’s words into work under my name.

Did I have malicious intent? No.

Did I even recognize what I was doing was plagarism? I did not.

But to see now, that I have taken words from one of the people I most respect hurts my soul.

So.

Here I am now. Staring down the proverbial faces of those who trusted me to put credible words in their publications. I’m staring down restaurant owners, chefs and servers who went on whatever roller coaster ride of emotions, from elation to anger, from reading my words. If they were positive, those words are sadly, invalidated. If negative, irrelevant to begin with.

I’m staring down a city of readers I have greatly disappointed.

And I stare at the person whose words I used as my own.




As a comment, Scott Edmonds wrote:



"Did I have malicious intent? No." The PIAPS defense. Otherwise known as, the "I didn't intend to maliciously drive over the girl on that bicycle" defense.

"Did I even recognize what I was doing was plagarism? I did not." Otherwise known as the "I didn't even recognize the fact that I was drunk when I killed her" excuse.

Did anyone at the RTD ask you to offer your definition of plagarism during your interview process?

No?

Then everyone who interviewed you should be fired too.


link: http://www.richmond.com/food-drink/article_7f7d7062-35cb-5c47-9eea-fcc1da416d7b.html

Wednesday, August 03, 2016

VirnetX loses in Texas in Apple case


From CNET, on the voiding of a verdict for VirnetX of $625.6 million against Apple :


US District Judge Robert Schroeder in Tyler, Texas, who voided the verdict, said combining two lawsuits into a single trial confused the jurors and was unfair to Apple. He ruled that both case need to be tried separately with the first starting on September 26.

Both Apple and VirnetX didn't immediately return requests for comments.





link: http://www.cnet.com/news/apple-virnetx-federal-judge-threw-out-verdict-625-million-patent-infringement/

Tuesday, August 02, 2016

Restaurant reviewer in Richmond terminated over plagiarism


From imdeiaethics :



The Richmond Times-Dispatch fired freelance dining critic Elliott Shaffner for plagiarism and deleted all of her reviews for the newspaper. The plagiarism, unpublishing and firing was announced in a note to readers from executive editor Paige Mudd. What did Shaffner in was a July 28 review that lifted from Los Angeles Times‘ restaurant critic Jonathan Gold’s review for L.A. Weekly. iMediaEthics has contacted Mudd and Shaffner for more information. -



link: http://www.imediaethics.org/food-writer-elliott-shaffner-fired-plagiarism-richmond-times-dispatch-style-weekly-unpublish/

Monday, August 01, 2016

Wi-Lan v. Apple at CAFC


From the decision



We reject Apple’s argument that Wi-LAN waived the new
construction of “UL connections” that it raised for the first
time on its motion for reconsideration of summary judgment.
We affirm the district court’s construction of “UL
connections.” Because we affirm both constructions
against Wi-LAN’s challenges, we also affirm the district
court’s grant of summary judgment of noninfringement.


link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1256.Opinion.7-29-2016.1.PDF

CAFC in Murata: stay vs. preliminary injunction

From the decision


This is an interlocutory appeal from a patent infringement
lawsuit that Murata Machinery USA and
Murata Machinery, Ltd. (collectively “Murata”) filed
against Daifuku Co., Ltd. and Daifuku America Corp.
(collectively “Daifuku”) in the United States District
Court for the District of Utah. Daifuku petitioned for
inter partes review of all of the asserted patents, and the
district court then stayed the litigation. Murata moved to
lift the stay and for entry of a preliminary injunction, but
the district court denied the motions in a single order. We
hold that the district court did not err in refusing to lift
the stay, but that its cursory denial of the preliminary
injunction did not satisfy Rule 52(a)(2) of the Federal
Rules of Civil Procedure, which requires that a court state
findings and conclusions supporting denial of a preliminary
injunction. Thus, we affirm the district court’s order
as it pertains to the stay, but vacate the order with respect
to the preliminary injunction and remand for proceedings
consistent with this opinion

Electric Power Group loses on 101 issue



This case involves the eligibility for patenting, under
35 U.S.C. § 101, of certain claims of three of Electric
Power Group, LLC’s patents, U.S. Patent Nos. 7,233,843;
8,060,259; and 8,401,710. Those patents describe and
claim systems and methods for performing real-time
performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the
data, and displaying the results. See ’710 patent, col. 1,
lines 27–30; id., col. 2, lines 43–49. Electric Power Group
sued Alstom S.A., Alstom Grid, Inc., Psymetrix Limited,
and Alstom Limited (collectively, Alstom) in the Central
District of California, alleging infringement of various
claims of the three patents. The district court granted
Alstom summary judgment that the subject matter of
Electric Power Group’s asserted patent claims fails the
tests for patent eligibility under governing precedent.
We affirm. Though lengthy and numerous, the claims
do not go beyond requiring the collection, analysis, and
display of available information in a particular field,
stating those functions in general terms, without limiting
them to technical means for performing the functions that
are arguably an advance over conventional computer and
network technology. The claims, defining a desirable
information-based result and not limited to inventive
means of achieving the result, fail under § 101.

Apple wins at CAFC

From the decision:



GPNE Corp. (“GPNE”) appeals from a final decision of
the United States District Court for the Northern District
of California. GPNE Corp. v. Apple Inc., 108 F. Supp. 3d
839 (N.D. Cal. 2015). Following a seven-day jury trial,
the district court held that the asserted claims of U.S.
Patent No. 7,570,954 (“’954 patent”) and U.S. Patent No.
7,792,492 (“’492 patent”) (collectively, “patents at issue”)
were not infringed by Apple, Inc. (“Apple”). We affirm


What was argued:


On appeal, GPNE argues that the district court’s noninfringement
judgment should be reversed because (1) it
is based on an erroneous construction of “node;” and
(2) the court violated O2 Micro International Ltd. v.
Beyond Innovation Technology Co., 521 F.3d 1351, 1362
(Fed. Cir. 2008), by allowing the jury to decide the meaning
of “pager.” Apple responds that the district court
handled these issues correctly and also offers several
alternative grounds to affirm the district court’s noninfringement
judgment.



The issue of waiver arose:


On appeal, Apple argues that GPNE waived its ability
to raise an O2 Micro challenge because it never requested
a construction for “pager” and the concerns it expressed at
Markman were insufficient to put this issue in dispute.
We disagree. In general, “litigants waive their right
to present new claim construction disputes if they are
raised for the first time after trial.” Lazare Kaplan Int’l,
Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed.
Cir. 2010) (internal quotation marks omitted); Broadcom
Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir.
2008) (finding waiver where parties did not propose that a
term be construed at Markman and plaintiff argued for a
construction in its post-trial motions). As just noted, that
is not what happened here. And when GPNE sought a
clarifying instruction on “node” before the case went to
the jury, it was hardly reversing course on a point it had
“implicitly conceded” earlier. Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1360 (Fed. Cir. 2004) (finding
implicit concession on need for construction by failure to
seek any construction before evidence closed). To the
contrary, at Markman, the parties disputed the construction
of “node,” including whether “pager” would be an
appropriate word to help define the scope of “node.” The
parties presented opposing views on this point: GPNE
argued that the parties would “get into the definition of,
what is a pager?,” while Apple responded that the parties
were not “setting up a situation where we construe the
construction.” J.A. 1568, 1571. The district court was
aware of this dispute, as it itself pressed Apple on this
point. J.A. 1569–70. In these circumstances, we find no
waiver by GPNE of the objections it raised to the construction
of “node” before the case went to the jury.



BUT...



According
to GPNE, because the district court allowed these
arguments, the jury was left to determine the meaning of
“pager,” which violated O2 Micro.
We disagree. In O2 Micro, we held that “[w]hen the
parties present a fundamental dispute regarding the
scope of a claim term, it is the court’s duty to resolve it.”
521 F.3d at 1362. This is because “the ultimate question
of construction [is] a legal question,” which “is for the
judge and not the jury.” Teva Pharm. USA, Inc., 135 S.
Ct. at 838, 842. This duty, however, is not without limit.
Where a district court has resolved the questions about
claim scope that were raised by the parties, it is under no
obligation to address other potential ambiguities that
have no bearing on the operative scope of the claim. Eon
Corp. IP Holdings v. Silver Spring Networks, 815 F.3d
1314, 1318 (Fed. Cir. 2016) (“[A] court need not attempt
the impossible task of resolving all questions of meaning
with absolute, univocal finality.”); see also Function
Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1326 (Fed.
Cir. 2013) (“Nearly every patent case will involve some
amount of ‘word games,’ because claims and claim constructions
are, after all, just words.”); Acumed LLC v.
Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007) (“[A]
sound claim construction need not always purge every
shred of ambiguity.”); Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
those terms need be construed that are in controversy,
and only to the extent necessary to resolve the controversy.”).



link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1825.Opinion.7-28-2016.1.PDF