• Cleveland Clinic Foundation "Ariosa’d" by CAFC

    The Cleveland Clinic Foundation lost:

    The Cleveland Clinic Foundation and Cleveland
    Heartlab, Inc. accused True Health Diagnostics LLC of
    infringement of three patents that claim methods for
    testing for myeloperoxidase in a bodily sample and a
    fourth patent that claims a method for treating a patient
    that has cardiovascular disease. The United States
    District Court for the Northern District of Ohio found that
    the asserted claims of the three testing patents are not
    directed to patent-eligible subject matter and that Cleveland
    Clinic failed to state a claim of contributory or induced
    infringement of the fourth patent. For the reasons
    explained below, we affirm.

    The background

    In 2003, researchers at the Cleveland Clinic Foundation
    developed methods for detecting the risk of cardiovascular
    disease in a patient. When an artery is damaged
    or inflamed, the body releases the enzyme myeloperoxidase,
    or MPO, in response. MPO is an early symptom of
    cardiovascular disease, and it can thus serve as an indicator
    of a patient’s risk of cardiovascular disease.
    The prior art taught that MPO could be detected in an
    atherosclerotic plaque or lesion that required a surgically
    invasive method. Another prior art method indirectly
    detected for MPO in blood. Yet another known method
    could detect MPO in blood but yielded results that were
    not predictive of cardiovascular disease. The inventors
    here purportedly discovered how to “see” MPO in blood
    and correlate that to the risk of cardiovascular disease.

    As to procedure, using 101 to dismiss is all right:

    As to Cleveland Clinic’s second procedural challenge,
    we have repeatedly affirmed § 101 rejections at the motion
    to dismiss stage, before claim construction or significant
    discovery has commenced. See, e.g., Genetic Techs.
    Ltd. v. Merial L.L.C., 818 F.3d 1369, 1373–74 (Fed. Cir.
    2016) (“We have repeatedly recognized that in many cases
    it is possible and proper to determine patent eligibility
    under 35 U.S.C. § 101 on a Rule 12(b)(6) motion.”); OIP
    Techs, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed.
    Cir. 2015) (similar); Content Extraction, 776 F.3d at 1349
    (similar); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
    1355 (Fed. Cir. 2014) (similar).

    As to 101:

    To determine whether a claim is invalid under § 101,
    we employ the two-step Alice framework. In step one, we
    ask whether the claims are directed to ineligible subject
    matter, such as a law of nature. Alice, 134 S. Ct. at 2355;
    Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
    U.S. 66, 75–77 (2012), McRO, 837 F.3d at 1311–12; Ariosa
    Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1375
    (Fed. Cir. 2015). While method claims are generally
    eligible subject matter, method claims that are directed
    only to natural phenomena are directed to ineligible
    subject matter. Ariosa, 788 F.3d at 1376. If the claims
    are directed to eligible subject matter, the inquiry ends.
    Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349
    (Fed. Cir. 2017).
    The claims of the testing patents are directed to
    multistep methods for observing the law of nature that
    MPO correlates to cardiovascular disease.

    This case is similar to our decision in Ariosa. In Ariosa,
    the ineligible claims were directed to a method of
    detecting paternally inherited cell-free fetal DNA, which
    is naturally occurring in maternal blood. 788 F.3d at
    1376. The inventors there did not create or alter any of
    the genetic information encoded in that DNA. Id. Likewise,
    here, the testing patents purport to detect MPO and
    other MPO-related products, which are naturally occurring
    in bodily samples. The method then employs the
    natural relationship between those MPO values and
    predetermined or control values to predict a patient’s risk
    of developing or having cardiovascular disease. Thus, just
    like Ariosa, the method starts and ends with naturally
    occurring phenomena with no meaningful non-routine
    steps in between—the presence of MPO in a bodily sample
    is correlated to its relationship to cardiovascular disease.
    The claims are therefore directed to a natural law.

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  • CAFC discusses motivation to combine; copying from a party’s brief in Outdry

    The appellant Outdry lost at the CAFC:

    Outdry Technologies Corp. (“Outdry”) appeals from
    the Patent Trial and Appeal Board’s (“Board”) inter
    partes review decision holding that claims 1–15 of U.S.
    Patent No. 6,855,171 (“the ’171 patent,” directed to
    methods of waterproofing leather) would have been
    obvious over a combination of prior art. For the reasons
    discussed below, we affirm.

    Of the law:

    We review the Board’s legal determination of obviousness
    de novo and its factual findings for substantial
    evidence. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
    1073 (Fed. Cir. 2015). In IPR proceedings, the Board
    gives claims their broadest reasonable interpretation
    (“BRI”) consistent with the specification. In re Cuozzo
    Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015).
    We review claim construction de novo except for subsidiary
    fact findings, which we review for substantial evidence.
    Id. at 1280.

    Preamble significance arose:

    Outdry also argues that the “process for waterproofing
    leather” limitation is not disclosed in Thornton. This
    language is in the preamble of the claim. And like most
    preambles is simply a statement of intended use, not a
    separate claim limitation. See Boehringer Ingelheim
    Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339,
    1345 (Fed. Cir. 2003) (“[A] preamble simply stating the
    intended use or purpose of the invention will usually not
    limit the scope of the claim, unless the preamble provides
    antecedents for ensuing claim terms and limits the claim
    accordingly.”). Satisfaction of the claimed steps necessarily
    results in satisfying a “process for waterproofing leather.”
    This is not a separate limitation that must be
    disclosed in Thornton in order to uphold the Board’s
    obviousness determination.

    Of motivation:

    Outdry argues the Board failed to adequately articulate
    why a person of ordinary skill in the art would have
    been motivated to combine Thornton’s process with Scott
    and Hayton’s disclosure of the density and size of the glue


    The Board’s motivation to combine finding is reviewed
    for substantial evidence. Belden, 805 F.3d at 1073. The
    Board must support its finding that there would have
    been a motivation to combine with a reasoned explanation
    to enable our review for substantial evidence. In re
    NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). This
    necessitates that the Board “not only assure that the
    requisite findings are made, based on evidence of record,
    but must also explain the reasoning by which the findings
    are deemed to support the agency’s conclusion.” In re Lee,
    277 F.3d 1338, 1344 (Fed. Cir. 2002). Under this framework
    “we will uphold a decision of less than ideal clarity if
    the agency’s path may reasonably be discerned,” but “we
    may not supply a reasoned basis for the agency’s action
    that the agency itself has not given.” Bowman Transp.,
    Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285–86
    We have criticized the Board for failing to adequately
    explain its findings. Missing from those Board decisions
    were citations to evidence, reasoned explanations, or
    explicit findings necessary for us to review for substantial

    For example, in Rovalma, we vacated the
    Board’s obviousness decision where “the Board did not
    cite any evidence, either in the asserted prior-art references
    or elsewhere in the record, with sufficient specificity
    for us to determine whether a person of ordinary skill in
    the art would have been so motivated.” Rovalma, S.A. v.
    Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1025–
    26 (Fed. Cir. 2017). In Van Os, we held the Board’s
    finding that it would have been intuitive to combine prior
    art lacked the requisite reasoning because “[a]bsent some
    articulated rationale, a finding that a combination of prior
    art would have been ‘common sense’ or ‘intuitive’ is no
    different than merely stating the combination ‘would have
    been obvious.’” In re Van Os, 844 F.3d 1359, 1361 (Fed.
    Cir. 2017); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d
    1355, 1362 (Fed. Cir. 2016) (“[R]eferences 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 . . . .”);
    Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
    (Fed. Cir. 2016) (vacating the Board’s decision where the
    Board summarized the parties’ arguments and rejected
    the arguments of one party but did “not explain why it
    accept[ed] the remaining arguments as its own analysis”).
    In NuVasive, we vacated the Board’s decision because the
    Board “never actually made an explanation-supported
    finding” that a person of ordinary skill in the art would
    have been motivated to combine the prior art. 842 F.3d
    at 1384. In Icon Health, we held that the Board failed to
    make requisite fact findings and provide an adequate
    explanation to support its obviousness determination
    where it merely agreed with arguments made in the
    petitioner’s brief for which no evidence was cited. Icon
    Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034,
    1042–48 (Fed. Cir. 2017) (holding that attorney argument
    is not evidence and the Board’s adoption of petitioner’s
    brief did not “transform [the petitioner’s] attorney argument
    into factual findings or supply the requisite explanation
    that must accompany such findings”).

    [ BUT ]

    The Board’s decision here does not suffer from similar
    deficiencies. The Board clearly articulated Geox’s arguments
    for why a person of ordinary skill in the art would
    have been motivated to modify Thornton’s process of
    adhering dots to create waterproof and breathable leather
    with Hayton and Scott’s disclosed glue patterns.

    The Board recited Geox’s argument that “the
    discontinuous glue pattern is a matter of optimization as
    taught by Scott, which teaches optimizing the amount of
    glue necessary to provide sufficient adhesion to bond the
    two layers while minimizing the area of blocked micropores.”

    It explained Geox’s position that Scott and Hayton are from
    the same field of endeavor and that both disclose fabrics
    that are water impermeable and vapor permeable.

    It recited Geox’s
    argument for a motivation to combine based on this
    evidence: “Scott provides a reason for optimizing the
    amount of adhesive that Thornton and Hayton teach to
    apply to a semi-permeable membrane, which is to provide
    good adhesion while maintaining vapor permeability.”

    It then expressly
    adopted Geox’s rationale and found that this provided a
    motivation to combine Thornton with Scott and Hayton.
    The Board found that Geox “provided a rational underpinning
    for combining the disclosures of Scott and Hayton,
    which provide guidance for the density and size of
    adhesive dots to adhere a semi-permeable membrane to a
    porous layer.”

    The Board engaged in reasoned
    decisionmaking and sufficiently articulated its analysis in
    its opinion to permit our review. It contains a clear and
    thorough analysis.

    The CAFC does not conceal that PTAB basically adopted the
    position of a party.

    In fact, the CAFC then stated:

    The Board’s reliance on Geox’s arguments does not
    undermine its otherwise adequate explanation for finding
    a motivation to combine. The Board did not reject Outdry’s
    positions without clarity as to why it found Geox’s
    arguments persuasive. It did not incorporate Geox’s
    petition by reference, leaving uncertainty as to which
    positions the Board was adopting as its own. Nor is this a
    situation where “a particular fact might be found somewhere
    amidst the evidence submitted by the parties,
    without attention being called to it,” such that it is unclear
    what evidence the Board may or may not have relied
    on to find a motivation to combine. See Rovalma, 856
    F.3d at 1029. The Board is “permitted to credit a party’s
    argument as part of its reasoned explanation of its factual
    ; it simply must “explain why it accepts the
    prevailing argument.” Icon, 849 F.3d at 1047 (alteration
    omitted). In this case, the Board articulated Geox’s
    arguments with evidentiary support and expressly adopted
    them to find there would have been a motivation to
    combine. The Board sufficiently explained why it found
    that Geox’s arguments supported finding a motivation to

    Also on motivation:

    The Board was not required to limit its motivation to combine
    inquiry to the problem faced by the inventor of the
    ’171 patent. The Supreme Court expressly rejected this
    argument in KSR: “the problem motivating the patentee
    may be only one of many addressed by the patent’s subject
    matter.” KSR Int’l Co v. Teleflex Inc., 550 U.S. 398,
    420 (2007). Outdry appears to interpret KSR’s use of the
    phrase “addressed by the patent” to suggest the problem
    must be identified within the patent. Neither KSR nor
    our post-KSR precedent limits the motivation to combine
    inquiry in this manner. See, e.g., Par Pharm., Inc. v. TWI
    Pharm., Inc., 773 F.3d 1186, 1197 (Fed. Cir. 2014) (“Par’s
    argument, however, ignores that we are not limited to the
    same motivation that may have motivated the inventors.”);
    Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362,
    1368 (Fed. Cir. 2012) (“We have repeatedly held that the
    motivation to modify a prior art reference to arrive at the
    claimed invention need not be the same motivation that
    the patentee had.”). “The obviousness analysis cannot be
    confined by a formalistic conception of the words teaching,
    suggestion, and motivation, or by overemphasis on the
    importance of published articles and the explicit content
    of issued patents.” KSR, 550 U.S. at 419. Any motivation
    to combine references, whether articulated in the references
    themselves or supported by evidence of the
    knowledge of a skilled artisan, is sufficient to combine
    those references to arrive at the claimed process. The
    motivation supported by the record and found by the
    Board need not be the same motivation articulated in the
    patent for making the claimed combination. The Board’s
    fact finding regarding motivation to combine is supported
    by substantial evidence. We see no error in the Board’s
    conclusion that the claims would have been obvious to a
    skilled artisan based on the facts presented.

    A claim at issue

    1. A process for waterproofing leather (1), comprising
    directly pressing on an internal surface of
    the leather (1) at least one semi-permeable membrane
    (2) whose surface contacting the leather (1)
    is provided with a discontinuous glue pattern to
    adhere the leather to the semi-permeable membrane,
    wherein the glue pattern is formed of a
    multiplicity of dots having a density included between
    50 dots/cm2 and 200 dots/cm2.

    The Board found U.S. Patent No. 5,244,716
    (“Thornton”) discloses all elements of claims 1 and 9
    except the density of the dots (claim 1) and the sizes of the
    dots (claim 9). Thornton is directed to “waterproof but
    breathable articles of clothing” including stockings,
    gloves, and hats.

    For disclosure of the density and sizes of the dots, the
    Board relied on “Coated and Laminated Fabrics” in
    Chemistry of the Textiles Industry (“Scott”) and U.S.
    Patent No. 6,139,929 (“Hayton”). Scott discloses adhering
    a waterproof, vapor permeable membrane to fabric for
    rainwear in which there is “sufficient adhesive to bond the
    hydrophobic ‘non-stick’ film to a textile fabric, but the
    adhesive dot coverage has to be kept low to minimize the
    area of blocked micropores.”


    “Motivation to combine” is reviewed for substantial evidence.

    Of something to think about–>

    In Bright v. Westmoreland County, 380 F.3d 729, 731 (CA3 2004), the Third Circuit stated:
    Here, however, we are not dealing with findings of fact. Instead, we are confronted
    with a District Court opinion that is essentially a verbatim copy of the appellees’ proposed opinion.


    Judicial opinions are the core work-product of judges. They are much more than findings of fact and
    conclusions of law; they constitute the logical and analytical explanations of why a judge arrived
    at a specific decision. They are tangible proof to the litigants that the judge actively wrestled
    with their claims and arguments and made a scholarly decision based on his or her own reason and logic.
    When a court adopts a party’s proposed opinion as its own, the court vitiates the vital purposes served by judicial opinions.

    Also from a 2011 post on the Volokh Conspiracy about Cojocaru v. British Columbia Women’s Hospital & Health Center —>

    Rather, the problem, as the B.C. Court of Appeal panel majority understood it, is that a judge is supposed to “independently and impartially considered the law and the evidence and arrived at his own conclusions on the complex issues before him,” and simply adopting hundreds of paragraphs of a party’s papers casts doubt on that. It’s of course possible, as Prof. Poser suggests, that a judge may well consider the matter thoroughly but think one party’s analysis is precise enough. But the verbatim copying gives reason to doubt that, especially since a party’s analysis — even when generally sound — will almost always be framed in the way that’s most favorable to that party, and will thus very rarely be the way that a neutral arbiter would characterize the matter. (This is also an issue in plagiarism by students, where verbatim copying suggests that the student didn’t fully confront the issue; but that’s only a part of the objection to academic plagiarism.)

    Volokh quoted Bill Poser: “Judges, unlike authors of fiction, are not paid to be original. If one party states the facts or the law clearly and accurately, by all means the court should make use of the work that party’s attorneys have already done rather than spending time rephrasing it.”

    But, of course, it the facts and law relied upon by the copying judge are NOT accurate, the act of copying is especially pernicious.

    Sadly, citations to the Cojocaru appellate decision are likely to fall on deaf ears.

    link to Volohk post: http://volokh.com/2011/04/15/judge-copies-most-of-his-decision-from-a-partys-briefs-why-is-that-wrong/

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    $$ .sup.1 H NMR was found to be in accordance with…

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  • $430 Million Public/Private Investment in Exascale Computing in U.S.

    The U.S. Department of Energy announced on June 15, 2017 the award of $258 million in research funding to six U.S. companies: Advanced Microsystems, Cray, Intel, HP, NVIDIA, and IBM.  The research funding is to support the development of the exascale supercomputer ecosystem.  An exascale computer is 50 times faster than today’s super computers.  The U.S. has five of the world’s top-ten fastest computers, but the U.S.’s fastest computer is third after the top two located in China.  The six companies will provide additional funding to make the investment close to $430 million in total.  The press release is available, here. 

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  • Even Groundbreaking Medical Discoveries May Not Be Patentable

    THE CLEVELAND CLINIC FOUNDATION, CLEVELAND HEARTLAB, INC., v. TRUE HEALTH DIAGNOSTICS LLC: No. 2016-1766; June 16, 2017.  Before Lourie, Reyna, and Wallach. Takeaway: Patent claims directed to observing a law of nature are patent-ineligible subject matter even if based on a valuable discovery. Service providers cannot be liable for contributory infringement if …

    The post Even Groundbreaking Medical Discoveries May Not Be Patentable appeared first on CAFC Blog.

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  • The Board’s Decision Finding Waterproof Leather Claims Unpatentable as Obvious Affirmed by the CAFC, a Person of Ordinary Skill Need Not Have the Same Motivation as the Patent’s Inventor

    OUTDRY TECHNOLOGIES CORPORATION, v. GEOX S.P.A.: No. 2016-1769; June 16, 2017.  Before Dyk, Moore, and Rena. Takeaway: The motivation to combine inquiry is not limited to the problem faced by the inventor of a patent. Procedural Posture: Outdry appealed from the Board’s decision in an IPR finding that claims 1-15 of its …

    The post The Board’s Decision Finding Waterproof Leather Claims Unpatentable as Obvious Affirmed by the CAFC, a Person of Ordinary Skill Need Not Have the Same Motivation as the Patent’s Inventor appeared first on CAFC Blog.

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  • SEP Injunctions and the Balance of IPRs and Competition in India

    Professor V.K. Unni of the Indian Institute of Management, Calcutta has authored a short and concise opinion paper titled, Promoting Innovation: Moving Towards a Better Intellectual Property Regime, in the Financial Express.  His paper discusses the importance of finding the right balance between patent rights and competition law with respect to standard essential patents for India.  Interestingly, he observes that in India injunctive relief has been granted relatively frequently with respect to standard essential patents held by Ericsson against Indian companies, particularly when compared to pharmaceuticals.  He notes that, “the Delhi High Court [recently] held that laws dealing with protection of IPR and competition do not have any irreconcilable repugnancy or conflict, and upheld the jurisdiction of the [Competition Commission of India] to entertain complaints dealing with abuse of dominance against the patent holder.”  The article is available, here. 

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  • Use of ‘Means’ with term that Designates Structure Does Not Invoke § 112 ¶ 6

    MindGeek and Playboy filed an IPR petition. The Board determined that § 112 ¶ 6 did not apply because “‘wireless device means’ is not purely functional language, but rather is language that denotes structure.” In the alternative, Skky argued that the “wireless device means” term should be construed to require multiple processors or a specialized processor. The Board found Skky’s alternative argument unconvincing. The claims were held invalid in light of prior art that disclosed a “wireless…

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  • CAFC: Exclusive license must include provisions establishing minimum contacts for personal jurisdiction

    In New World International v. Ford Global Techs, FGTL sued New World for patent infringement in Michigan. New World countersued in Texas, seeking a declaratory judgment that FGTL’s patents are invalid and were not infringed. FGTL moved to dismiss the Texas action for lack of personal jurisdiction. New World argued that Texas had specific personal jurisdiction over the declaratory judgment action, because LKQ, FGTL’s exclusive licensee, had sent multiple cease and desist letters to New World in…

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