The background section states:A wide variety of retailers maintain physical store locations that offer items for point of sale purchase. Consumers are able to browse items within a physical store and personally evaluate the items. A consumer may also b…Continue Reading ...
Cory Franklin discusses the Bob Dylan/Nobel Prize matter in a post in the Chicago Tribune, with text including:
Critics have been divided on whether Dylan was guilty of plagiarism. In the past his defense has been that borrowing from others is how songwriting, and especially folk music, evolved. Fair enough. But a Nobel Prize lecture is a different animal.
IPBiz notes that this event was more copying an idea, rather than an exact transcription of words from SparkNotes to the Nobel Lecture. But there are two issues here. First, the “quote” from “Moby Dick” is false; the text does not exist in “Moby Dick.” Second, the “quote” seems quite related to text that IS in SparkNotes.
–> The initial discussion of the “fake quote” appears on blogspot (!) on OCCASIONAL THINGS by Ben Greenman, which June 6 post includes the text:
Dylan then includes a quote from the novel, an aphoristic utterance from a Quaker priest to the third mate, Flask: “Some men who receive injuries are led to God, others are led to bitterness.”
When I read this paragraph, I was intrigued, both because the insight is a compelling one and because I did not remember it from the novel. In fairness, it’s been a little while since I read the whole thing straight through, and it’s a long book at that, more than 200,000 words. I went and looked, mostly around Chapter 126, “The Life-Buoy,” which contains the falling phantom in the air. I couldn’t find it. I looked at another edition, and couldn’t find it there either. I went online, found an e-text, and searched on the relevant keywords, “injuries” (which doesn’t appear, at least not in plural form) and “bitterness” (which appears only once, in relation to the resentment experienced by men who are placed in charge of men who are superior to them “in general pride of manhood”). I searched in the Kindle edition, found nothing (though there were six occurrences of “subterranean”).
It appears, from all available evidence, that Dylan invented the quote and inserted it into his reading of Moby-Dick. Was it on purpose? Was it the result of a faulty memory? Was it an egg, left in the lawn to be discovered in case it’s Eastertime too? Answering these questions would be drilling into the American Sphinx, and beside the point anyway. As it stands, it’s very much in the spirit of his entire enterprise: to take various American masterworks and absorb and transform them. The mystery of it makes a wonderful lecture even more wonderful. And it’s worth ending with a quote from Stubb, the second mate, about the transformative power of singing and its centrality to life itself:
“But I am not a brave man; never said I was a brave man; I am a coward; and I sing to keep up my spirits. And I tell you what it is, Mr. Starbuck, there’s no way to stop my singing in this world but to cut my throat. And when that’s done, ten to one I sing ye the doxology for a wind-up.”
One is totally impressed that Greenman could recognize so facilely text that is NOT in Moby Dick.
–> The “quote” of Dylan does NOT appear identically in SparkNotes. As pointed out in Slate by Andrea Pitzer:
In Dylan’s recounting, a “Quaker pacifist priest” tells Flask, the third mate, “Some men who receive injuries are led to God, others are led to bitterness” (my emphasis). No such line appears anywhere in Herman Melville’s novel. However, SparkNotes’ character list describes the preacher using similar phrasing, as “someone whose trials have led him toward God rather than bitterness” (again, emphasis mine).
If one submitted such a thing in a high school paper on Moby Dick, there might be a problem. However, one suspects this little flap is NOT going to change the opinions of many on Dylan. Recall Joe Biden’s paper as a 1L at Syracuse Law, wherein 5 of 15 pages were exactly copied; Biden still became Senator and Vice-President.
Franklin’s post includes some “re-writes” of Dylan lyrics, including
Well it ain’t no use to sit and wonder why, babe / Ifin’ you don’t know by now / An’ it ain’t no use to sit and wonder why, babe / How he wrote those words somehow / When he borrowed some phrases that were hard to find / At first the critics didn’t seem to mind / Plagiarism not that easy to define / Don’t think twice, it’s all right
link to Franklin: http://www.chicagotribune.com/news/opinion/commentary/ct-bob-dylan-plagiarism-nobel-lecture-perspec-0616-md-20170615-story.html
link to Greenman: http://occasional-things.blogspot.com/2017/06/a-whale-of-tale.html
link to Pitzer: http://www.slate.com/articles/arts/culturebox/2017/06/did_bob_dylan_take_from_sparknotes_for_his_nobel_lecture.html
***Separately, in other news related to copying, the Daily News reported that the Philippines tourism department fired McCann Worldgroup Philippines:
The tourism department on Thursday [June 15] cancelled its contract with McCann Worldgroup Philippines and demanded an apology, after deeming its just-launched promotion for the Southeast Asian nation was too similar to a 2014 South African campaign.
“It is not right that we will be paying for something delivered to us which is fraught with accusations of being a copycat version,” assistant tourism secretary Reynaldo Ching told reporters.
The ad showed an elderly tourist enjoying his trip to the Philippines and ends with him whipping out a blind man’s walking stick.
It was ridiculed in social media for what netizens described as its uncanny similarity to the “Rediscover South Africa” ad.
This was the copying of an idea, rather slavish identical copying. Did Dylan’s text bear an “uncanny similarity” to the text in SparkNotes?
link: http://www.dailymail.co.uk/wires/afp/article-4610422/Philippines-fires-ad-firm-plagiarism-row.htmlContinue Reading ...
In Lyons v. American College of Veterinary Sports Medicine the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“Board”) cancellation of Sheila Lyons’s registration of the service mark, THE AMERICAN COLLEGE OF VETERINARY SPORTS MEDICINE AND REHABILITATION (“the mark”) on the Supplemental Register on the grounds that she does not own the mark… Ownership of a service mark, as between a group and a departing member, depends on the objective intentions and expectations of the…
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The appellant Navico lost:
Navico Inc. and Navico Holding AS appeal from a Final
Determination of the United States International
Trade Commission that resulted in an exclusionary order
prohibiting importation of certain sonar imaging devices.
The Final Determination includes a finding of infringement
of U.S. Patent Nos. 8,305,840 and 8,605,550, a
determination of invalidity for some of the asserted
claims, and a finding of noninfringement of U.S. Patent
No. 8,300,499. On appeal, Navico raises several challenges
to the Commission’s Final Determination. We affirm
the Commission’s decision in these challenged aspects.
The standard of review:
Under the Administrative Procedure Act, 5 U.S.C.
§ 706(2), we review the Commission’s factual findings for
substantial evidence, and the Commission’s legal determinations
de novo. See Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1343–44, 1349 (Fed. Cir. 2010).
Under the substantial evidence standard, the court “must
affirm a Commission determination if it is reasonable and
supported by the record as a whole, even if some evidence
detracts from the Commission’s conclusion.” Spansion,
629 F.3d at 1344. This court may set aside the Commission’s
choice of remedy only if it is legally erroneous,
arbitrary and capricious, or constitutes an abuse of discretion.
Fuji Photo Film Co. v. Int’l Trade Comm’n, 386 F.3d
1095, 1106 (Fed. Cir. 2004).
Note the related case:
Our decision today in a related case, Garmin International,
Inc. v. International Trade Commission, No. 16-
1572, reverses the Commission’s finding of validity and
finds these patent claims invalid as obvious over the prior
art. Because the claims are invalid, there can be no
contributory infringement. Accordingly, we affirm the
Commission’s finding of no contributory infringement.
This is an obviousness case, and, yes, KSR is cited:
The obviousness inquiry must “guard against slipping
into use of hindsight and . . . resist the temptation to read
into the prior art the teachings of the invention in issue.”
Graham v. John Deere Co., 383 U.S. 1, 36 (1966). Further,
“when a patent claims a structure already known in
the prior art that is altered by the mere substitution of
one element for another known in the field, the combination
must do more than yield a predictable result.” KSR,
550 U.S. at 416. Similarly, § 103 usually bars patentability
when the improvement is nothing more than the
predictable use of prior art elements according to their
established functions. Id. at 417.
Obviousness is a question of law based on subsidiary
findings of fact relating to “the scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill in the pertinent art,
and any objective indicia of non-obviousness.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
Whether there would have been a motivation to combine
multiple references is also a question of fact. S. Ala. Med.
Sci. Found. v. Gnosis S.p.A., 808 F.3d 823, 826 (Fed. Cir.
2015). If all elements of the claims are found in a combination
of prior art references, as is the case here, the
factfinder should further consider whether a person of
ordinary skill in the art would be motivated to combine
those references, and whether in making that combination,
a person of ordinary skill would have a reasonable
expectation of success. Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1164 (Fed. Cir. 2006).
The arguments against obviousness:
Navico argues for reversal of the Commission’s finding
of obviousness on four grounds. First, Navico argues
that Tucker discloses sidescan, not downscan, sonar.
Thus, Navico argues, the Commission should not have
used Tucker as prior art for the downscan linear transducer
Second, Navico argues that the combination of Tucker
and Betts renders both references inoperable for their
intended purposes. See In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (finding that a modification which renders
the invention inoperable for its intended purpose is
not obvious because it teaches away from the invention).
Third, Navico argues that there was no motivation to
combine the Tucker and Betts references. Navico suggests
that because Betts was a simple, fixed system and
Tucker was a complex, customizable system, there would
be no motivation to combine them. It “can be important
to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements
in the way the claimed new invention does.” KSR,
550 U.S. at 418.
Fourth, Navico argues that the Commission consideredContinue Reading ...
the objective indicia of non-obviousness as a mere
afterthought after making a prima facie case. We have
held that such an analysis is improper, and a fact finder
must “consider all evidence relating to obviousness before
finding a patent invalid on those grounds.” In re Cyclobenzaprine,
676 F.3d 1063, 1075 (Fed. Cir. 2012). Objective
indicia of non-obviousness are vital to an obviousness
determination and must be considered, not ignored as a
mere afterthought. See, e.g., Leo Pharm. Prods., Ltd. v.
Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“Whether
before the Board or a court, this court has emphasized
that consideration of the objective indicia is part of the
whole obviousness analysis, not just an afterthought.”); In
re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[W]hen
secondary considerations are present, though they are not
always dispositive, it is error not to consider them.”);
Stratoflex v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983); In re Depomed, Inc., No. 2016-1378, 2017 WL
676604, at *5 (Fed. Cir. Feb. 21, 2017) (Reyna, J., concurring).
1. Vincent Angwenyi published an article titled Hold-up, Hold-out and F/RAND: The Quest for Balance in the February 2017 issue of GRUR Int. (pp. 105-14). Here is the abstract:
Hold-up and hold-out by analogy can be regarded as two sides of the same coin. The coin in this case can be said to represent the patent or the technology in question, the ultimate beneficiary of which should be society. A healthy patent ecosystem can be maintained in part by ensuring that innovators are motivated to continue creating new technology and implementers to convey the benefits of the innovation to society. An ideal situation is one that balances the interests of innovators and implementers as much as possible.2. Jorge Contreras and Michael Eixenberger have posted a paper on ssrn titled The Anti-Suit Injunction – A Transnational Remedy for Multi-Jurisdictional SEP Litigation, to be published in the forthcoming Cambridge Handbook of Technical Standardization Law – Patent, Antitrust and Competition Law (Jorge L. Contreras, ed.). Here is a link, and here is the abstract:
Litigation concerning standards-essential patents (SEPs) has become increasingly global, with parallel litigation occurring over the same issues in multiple jurisdictions throughout North America, Europe and Asia. As a result, litigants have sought mechanisms to coordinate these actions both to manage costs and to avoid inconsistent and incompatible results. One little-known procedural mechanism that has long been available to manage multi-jurisdictional litigation, and which is growing in popularity in SEP disputes, is the anti-suit injunction.
An anti-suit injunction is an interlocutory remedy issued by a court in one jurisdiction which prohibits a litigant from initiating or continuing parallel litigation in another jurisdiction or jurisdictions. Anti-suit injunctions thus contain litigation costs and reduce the likelihood of inconsistent results by ensuring that issues are resolved in one jurisdiction before they are litigated elsewhere. In the standards context, anti-suit injunctions can be particularly powerful tools for prospective licensees alleging that SEP holders have failed to comply with their FRAND licensing obligations. Specifically, a court reviewing a SEP holder’s compliance with a FRAND licensing commitment may issue an anti-suit injunction to prevent the SEP holder from bringing foreign patent infringement claims (including injunctions against the sale of infringing products) until the FRAND licensing dispute has been resolved in the issuing jurisdiction.
This chapter discusses the historical development and procedural requirements for anti-suit injunctions in both the United States and Europe. It also reviews recent SEP cases in which anti-suit injunctions have been granted, including Microsoft v. Motorola, Vringo v. ZTE and TCL v. Ericsson.
3. Alexander Galetovic and Stephen Haber have published a paper titled The Fallacies of Patent-Holdup Theory, 13 J. Comp. L. & Econ. 1 (2017). Here is a link to the article, and here is the abstract:
Patent-holdup theory avers that the patent system threatens the rate of innovation in the U.S. economy, particularly in information technology industries that are heavily reliant on standard-essential patents. We show that arrays of empirical tests falsify the core predictions of the theory. We therefore examine the logic of patent-holdup theory. We show that patent-holdup theory conflates two mutually inconsistent economic mechanisms: holdup (the appropriation of a quasi rent) and the exercise of monopoly power (to set the market price to extract a monopoly rent). Moreover, three fallacies underpin patent-holdup theory: (1) that patent holdup is a straightforward variant of holdup as it is understood in transaction-cost economics; (2) that royalty stacking is holdup repeated multiple times on the same product; and (3) that standard-essential patents contribute little or no value to the markets they help create. These fallacies give rise to a theory that is logically inconsistent and incomplete, and that ignores economic fundamentals. The flaws in logic of patent-holdup theory, and its lack of fit with the evidence, suggest that a new theory about the mechanics and dynamics of SEP-intensive IT industries is called for, both as a matter of science and as a guide to antitrust and patent policies.4. Jens Leth Hougaard, Chiu Yu Ko, and Xuyao Zhang have posted a paper on ssrn titled A Welfare Economic Interpretation of FRAND. Here is a link to the article, and here is the abstract:
Setting an industry-wide standard is crucial for information and communication technologies for interoperability, compatibility and efficiency. To minimize holdup problems, patent holders are often required to ex-ante commit to licensing their technologies under Fair, Reasonable and Non-Discriminatory (FRAND) terms. Yet, there is little consensus, in both courtrooms and industries, on the exact meaning of FRAND. We propose a welfare economic framework that enables a precise distinction: fairness in the distribution of royalty payments among patent users, and reasonableness in setting the size of the compensation to the patent holder, where both the size and the distribution of payments are determined in a non-discriminatory way making sure that similar firms are treated similarly. We illustrate our approach in various classic models from industrial organization, and discuss further potential applications.
5. Anne Layne-Farrar and Koren W. Wong-Ervin have posted a paper on ssrn titled Methodologies for Calculating Frand Damages: An Economic and Comparative Analysis of the Case Law from China, the European Union, India, and the United States, forthcoming in the Jindal Global Law School Law Review (2017). Here is a link to the paper, and here is the abstract:
In the last several years, courts around the world, including in China, the European Union, India, and the United States, have ruled on appropriate methodologies for calculating either a reasonable royalty rate or reasonable royalty damages on standard-essential patents (SEPs) upon which a patent holder has made an assurance to license on fair, reasonable and non-discriminatory (FRAND) terms. Included in these decisions are determinations about patent holdup, licensee holdout, the seeking of injunctive relief, royalty stacking, the incremental value rule, reliance on comparable licenses, the appropriate revenue base for royalty calculations, and the use of worldwide portfolio licensing. This article provides an economic and comparative analysis of the case law to date, including the landmark 2013 FRAND-royalty determination issued by the Shenzhen Intermediate People’s Court (and affirmed by the Guangdong Province High People’s Court) in Huawei v. InterDigital; numerous U.S. district court decisions; recent seminal decisions from the United States Court of Appeals for the Federal Circuit in Ericsson v. D-Link and CISCO v. CSIRO; the six recent decisions involving Ericsson issued by the Delhi High Court; the European Court of Justice decision in Huawei v. ZTE; and numerous post-Huawei v. ZTE decisions by European Union member states. While this article focuses on court decisions, discussions of the various agency decisions from around the world are also included throughout.
In Credit Acceptance Corp. v. Westlake Servs. the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (“Board”) in a Covered Business Method (“CBM”) review proceeding, agreeing with the Board that petitioner Westlake was not estopped from maintaining a CBM review of the challenged claims and confirming that the challenged claims are unpatentable under 35 U.S.C. § 101… Dissenting-in-part, Judge Mayer would have held that the Court does not have jurisdiction to review a…
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The World Health Organization announced yesterday that it has begun work on a list of essential diagnostics, as an echo of its Model List of Essential Medicines.Continue Reading ...
42 U.S.C. § 262(l) of the Biologics Price Competition and Innovation Act of 2009 (BPCIA) regulates “biosimilars,” biological products that are highly similar to FDA-approved biological products. Section 262(l) has two notification requirements that are important to this case… The second question addressed by the Court was whether the applicant must provide notice after the FDA licenses its biosimilar, or if it may provide notice before the FDA licenses its biosimilar. The Court concluded that…
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Guest post by Josh Landau, Patent Counsel for CCIA It seems like a truly simple question to answer: where is an act of infringement committed? And it’s one that became more important after TC Heartland’s decision that venue is proper “in the judicial district where the defendant resides, or where the defendant has committed acts of […]Continue Reading ...
By Kevin E. Noonan — The National Academy of Inventors and the Intellectual Property Owners Association released a report last week on the top 100 universities worldwide granted patents in 2016. Overall, universities were granted 6,768 patents; the To…Continue Reading ...
A new group of professional, large scale, content creators has formed to fight online piracy: Alliance for Creativity and Entertainment (ACE). The new group, with around 30 members, includes Netflix, Amazon and many well-known entities such as BBC Worldwide, Paramount, HBO, Univision and Telemundo. The press releasenotes that there are “480 online services worldwide available for consumers to watch films and television programs legally on demand.” The press release further ties the problem of piracy to jobs and even the danger of identity theft. The press release notes:
Films and television shows can often be found on pirate sites within days – and in many cases hours – of release. Last year, there were an estimated 5.4 billion downloads of pirated wide release films and primetime television and VOD shows using peer-to-peer protocols worldwide. There were also an estimated 21.4 billion total visits to streaming piracy sites worldwide across both desktops and mobile devices in 2016.
ACE states that it “will conduct research, work closely with law enforcement to curtail illegal pirate enterprises, file civil litigation, forge cooperative relationships with existing national content protection organizations, and pursue voluntary agreements with responsible parties across the internet ecosystem.” It’ll be interesting to see ACE, particularly with Internet companies, Amazon and Netflix, pitted against Google/YouTube and other platforms. Do non-professional/smaller scale content creators have a lobbying/litigation group?
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EMERACHEM HOLDINGS, LLC, v. VOLKSWAGEN GROUP OF AMERICA, INC.: No. 2016-1984; June 15, 2017. Before Moore, Clevenger, and Chen. Takeaway: An uncorroborated declaration by an interested inventor may not be sufficient to show that a reference is not “by another” for the purposes of removing the reference as prior art …
The post Unsupported Declaration by an Interested Party is Insufficient to Remove § 102(e) Prior Art Reference appeared first on CAFC Blog.Continue Reading ...
Unified Patents challenges patents by filing inter partes review proceedings. They tout on their website that they are “the only entity that challenges bad patents and never pays.” They also explain that they do settle post grant challenges provided the settlement will remain confidential and further provided the patent owner agrees to provide a no-cost license… How is a no-cost license given to an IPR petitioner anything other than complete and total capitulation? Complete and total…
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The caption for the “intervenor” in EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM is of interest:
JOSEPH MATAL, PERFORMING THE FUNCTIONS
& DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT & TRADEMARK
The result was a mixed bag:
EmeraChem Holdings, LLC (“EmeraChem”) appeals
from a decision of the Patent Trial and Appeal Board
(“Board”) that claims 1–14 and 16–20 of U.S. Patent
No. 5,599,758 (“the ’758 patent”) would have been obvious
over U.S. Patent No. 5,451,558 (“Campbell ’558”), Japanese
Patent Application No. 62-106826 (“Saito”), and U.S.
Patent No. 5,362,463 (“Stiles”). For the reasons set forth
below, we affirm the Board’s decisions as to claims 1–2, 4–
14, and 17–19 and vacate and remand as to claims 3, 16,
The technical area:
The ’758 patent claims methods for regenerating a
devitalized catalyst/absorber that has absorbed and
oxidized nitrates and nitrites after extended exposure to
pollutants in the combustion gases of engines.
Of inventor declaration:
The Campbell Declaration by itself fails to demonstrate
that the portions of Campbell ’558 relied upon as
prior art and the subject matter at issue in the ’758 patent
share a common inventive entity. In addition to
declaring “Eugene D. Guth and I are the sole inventors of
all inventions claimed in U.S. Patent No. 5,599,758,”
Mr. Campbell stated, “Eugen [sic] D. Guth and I solely
conceived of and invented the following subject matter
disclosed in U.S. Patent No. 5,451,558.” J.A. 1105. This
declaration amounts to a naked assertion by an inventor
that he and a co-inventor are the true inventors of the
passages cited. Nothing in the declaration itself, or in
addition to the declaration, provides any context, explanation,
or evidence to lend credence to the inventor’s bare
We do not hold that corroboration of an inventor’s declaration
is required in every case, but we recognize that
corroborating an inventor’s testimony is a wellestablished
principle in our case law. See e.g., Coleman v.
Dines, 754 F.2d 353, 359 (Fed. Cir. 1985); Price v. Symsek,
988 F.2d 1187, 1194 (Fed. Cir. 1993);
DeBaun does not stand for the proposition that a declaration
alone is always sufficient to support an inventor’s
claim to inventorship. The CCPA recognized that “it was
incumbent on appellant to provide satisfactory evidence,
in light of the total circumstances of the case, that the
reference reflected his own work.” Id. at 463. It concluded
that Mr. DeBaun had successfully done so
In re Katz is mentioned:
In holding that the publication was not prior art, the
CCPA relied on Mr. Katz’s explanation that his coauthors
were students under his direction and supervision:
“This statement is of significance since it provides a
clear alternative conclusion to the board’s inference that
their names were on the article because they were coinventors.”
Id. at 455. Based on this record and the totality
of the circumstances, it concluded Mr. Katz made a sufficient
showing that the publication disclosed his invention.
Id. at 456.
The intervenor (Matal) did not fare well:
We reject Volkswagen and PTO Intervenor’s arguments
that EmeraChem had sufficient notice because the
petition for IPR included broad, general statements
concerning obviousness that mention Stiles. Although
Volkswagen’s petition stated broadly that “[c]laims 1–14
and 16–20 are obvious under 35 U.S.C. § 103(a) over the
combination of Campbell [’558] and either Hirota or Saito,
in view of Stiles,” J.A. 81, 114, it went on in a detailed
claim chart to identify, claim-by-claim and element-byelement,
the specific portions of the prior art references it
believed supported obviousness. For claim 3, Volkswagen
cited Saito as disclosing the claim’s carbon dioxide gas
limitation. J.A. 123. For claims 16 and 20, it cited to a
different portion of Saito as disclosing the claims’ steam
limitation. J.A. 127, 129. For these dependent claims,
Saito was the only reference listed. Yet for claim 17,
Volkswagen cited to portions of Saito, Hirota, and Stiles
as disclosing the claim’s nitrogen and hydrogen gas limitations.
We likewise reject Volkswagen and PTO Intervenor’s
argument that the Institution Decision provided EmeraChem
with sufficient notice of the Board’s reliance on
We also reject Volkswagen and PTO Intervenor’s arguments
that EmeraChem had sufficient notice because
the petition block quoted the portion of Stiles the Board
ultimately relied upon in its final written decision.
Genzyme v. Biomarin arises:
Relying on Genzyme, Volkswagen contends that the
Board can rely on prior art references that were not cited
in the Institution Decision. Genzyme Therapeutic Products
L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366
(Fed. Cir. 2016) (“There is no requirement . . . for the
institution decision to anticipate and set forth every legal
or factual issue that might arise in the course of the
trial.”). We do not agree that Genzyme permits the Board
to rely on Stiles to reject claims 3, 16, and 20. In Genzyme,
the patent owner alleged the Board violated the
APA’s requirements of notice and an opportunity to
respond because the Board cited two references in its final
written decisions (Kikuchi and van der Ploeg ’91) that
were not specifically included in the combinations of prior
art on which the Board instituted review. Id. at 1366.
By holding EmeraChem did not receive adequate notice
or opportunity to respond with regard to Stiles, we do
not hold that the Board is constricted in its final written
decision to citing only the portions of a reference cited in
its Institution Decision. We do not require “word-for-word
parity between the institution and final written decisions.”
Genzyme, 825 F.3d at 1368 n.4. But in the case
before us, the question is not whether the Board cited a
different passage of Stiles than what it specifically cited in
the Institution Decision. Cf. id. The question is whether
the Board provided adequate notice and opportunity to
respond to Stiles being used to reject claims 3, 16, and 20,
given the specificity with which the Board itemized the
challenged claims with specific grounds for rejection in
the Institution Decision. On this question, we find it did
The fact that neither party ever mentioned Stiles in
the context of discussing claims 3, 16, and 20, helps make
the point that neither party was on notice that Stiles was
at issue as to those challenged claims.
For the foregoing reasons, we hold that Campbell ’558Continue Reading ...
is prior art under 35 U.S.C. § 102(e) and affirm the
Board’s decision as to claims 1–2, 4–14, and 17–19. We
hold that the Board violated the APA’s requirements of
notice and an opportunity to respond with regard to
Stiles. EmeraChem agues Stiles was not a part of the
grounds for rejection of claims 3, 16, and 20 in either the
petition or the Institution Decision. Nor was it the subject
of any parties’ briefing before the Board in this IPR.
Under these circumstances, EmeraChem argues the
Board’s final written decision should be reversed. While
Volkswagen and PTO Intervenor dispute whether there
was sufficient notice, neither dispute the proper remedy.
Therefore, we consider them to have waived any argument
that any remedy other than reversal is appropriate
when a new rationale for unpatentability is adopted by
the Board in its final written decision. Because we are
unable to discern whether the Board found Saito does not
disclose the dependent limitations in claims 3, 16, and 20,
we vacate the Board’s decision as to these claims and
remand for clarification.
MilliporeSigma, the life science business of Merck KGaA, said today it has been awarded its first patent for CRISPR technology—an Australian patent relating to the use of CRISPR in a genomic integration method for eukaryotic cells.
Patent Application No. 2013355214 was filed December 5, 2013, and accepted on May 22, according to an online search of the Australian Patent Office’s online database AusPat. The patent consists of 14 method claims.
MilliporeSigma said in May that it had developed the alternative CRISPR genome-editing method, called proxy-CRISPR, a month after publishing the results of its research in Nature Communications. According to the company, proxy-CRISPR differs from other genome editing systems in its ability to cut previously unreachable cell locations, making CRISPR more efficient, flexible, and specific, and giving researchers more experimental options.
Since 2012, MilliporeSigma has filed multiple CRISPR patent filings, including its filings related to proxy-CRISPR technology.
link: http://www.genengnews.com/gen-news-highlights/milliporesigma-wins-its-first-crispr-patent-in-australia/81254508Continue Reading ...
A number of outlets have posted on the Gene Simmons (KISS) trademark application for a hand gesture (“sign of the horns”)
[US serial no. 87482739 for a service mark. Filed 9 June 2017 via law firm GORDON, HERLANDS & RANDOLPH LLP].
From the New York Post, Gene Simmons trying to trademark rock ‘n’ roll hand gesture
The long-tongued frontman [Simmons] has filed an application with the US Patent and Trademark Office, seeking trademark ownership of the iconic hand gesture.
He claims the “devil horns” became a part of the band’s act during its Hotter Than Hell tour — on Nov. 14, 1974 to be exact.
While it is used in American Sign Language to represent “I love you,” most know it as the international symbol of rock.
Many music fans have been blasting Simmons for the trademark request, citing all the different places they’ve seen the symbol being used.
Some have even noted how it’s very similar to the motion Spider-man is known to make in movies and his comics, while others have pointed to an album cover for the Beatles’ 1966 single, Yellow Submarine/Eleanor Rigby — which shows John Lennon throwing up the gesture long before KISS was formed.
Yes, there is a New Jersey connection. The owner is listed as Simmons, care of Joseph Young Associates, Ltd., Pine Brook, NEW JERSEY UNITED STATES 07058. The description: The mark consists of a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.
Yes, NPR is still confused on trademarks (vs. patents). See post Gene Simmons Wants To Patent Hand Gesture.Continue Reading ...
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