• More on copying by Dylan and McCann

    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.html

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  • Federal Circuit Affirms Service Mark is Owned by Group, Not by Departing Group Member

    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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  • CAFC discusses obviousness in Navico v. ITC

    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
    component. (…)

    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 considered
    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).

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  • New Papers on FRAND, SEPs, Holdup & Holdout, Part 1

    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 FRANDHere 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.

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  • Federal Circuit Affirms CBM Unpatentability Holding; Finding Estoppel Did Not Apply

    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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  • SCOTUS says OK to give notice of commercial marketing before FDA license under Biologics Price Competition and Innovation Act

    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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  • The Alliance for Creativity and Entertainment: What About the Little People?

    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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  • Unsupported Declaration by an Interested Party is Insufficient to Remove § 102(e) Prior Art Reference

    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.

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  • Capitulation Settlements in IPR are No Win for Patent Owners

    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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  • CAFC discusses APA’s requirements of notice and an opportunity to respond in Emerachem case

    The caption for the “intervenor” in EMERACHEM HOLDINGS, LLC v. VOLKSWAGEN GRP. OF AM is of interest:


    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,
    and 20.

    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.
    J.A. 128.
    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.

    The conclusion

    For the foregoing reasons, we hold that Campbell ’558
    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.

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  • Australian patent on CRISPR to MilliporeSigma

    From GEN:

    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/81254508

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  • Gene Simmons tries to trademark "sign of the horns" hand gesture

    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.

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