• More Briefs in Support of ending IPRs

    Oil States v. Greene’s Energy (Supreme Court 2017) Briefing continues in the Oil States constitutional challenge to the IPR System.  Amicus briefs supporting either the petitioner or neither party were due August 31 with at least 31 filings –  Respondents’ brief (both Greene’s Energy and USPTO) will be due October 23 with supporting amicus shortly […]

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  • Jepson Claims (Part II)

    by Dennis Crouch In an earlier post, I wrote about the Code of Federal Regulations’ requirement that patent claims “should” be drafted in Jepson form. 37 C.F.R. 1.75(e).  This claim structure uses the preamble to particularly identify the elements of the invention known in the art with the body simply reciting the “portion of the claimed […]

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  • PTAB Abused Discretion by Failing to Consider Material Evidence

    Under Patent Office regulations, a party seeking to submit supplemental information more than one month after the date an IPR is instituted must request authorization to file a motion to submit the information. 37 C.F.R. § 42.123(b). The request to submit new information must show: (1) why the supplemental information reasonably could not have been obtained earlier, and (2) that consideration of the supplemental information would be in the interests of justice. Id. The Court found that…

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  • Making a Federal Case out of Trade Secrets

    “The most important change was that DTSA allowed someone claiming their trade secret was being used improperly to go into a federal court,” explained Jacoby. “In most situations, the employer and the employee in a trade secret dispute are likely to be in the same state. Usually, two citizens of the same state can’t bring a lawsuit into a federal court unless an independent basis for federal jurisdiction over the case exists. So, if my client wants to sue the business next door to his yoga…

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  • NantKwest panel decision on USPTO attorneys’ fees goes en banc at CAFC

    An order at the CAFC on August 31, 2017 noted:

    A sua sponte request for a poll on whether to reconsider this case was made. A poll was conducted and a majority of the judges who are in regular active service voted for sua sponte en banc consideration.

    The question presented:

    The parties are requested to file new briefs. The briefs should address the following issue: Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the United States Patent and Trademark Office’s attorneys’ fees?

    See previous post on IPBiz

    CAFC in Nantkwest: “[a]ll expenses of the proceedings” under § 145 includes the pro-rata share of the attorneys’ fees the USPTO incurred to defend applicant’s appeal.


    Kevin Noonan at Patent Docs begins his post on the en banc order:

    The first scene in the iconic dystopian 1985 sci-fi movie Brazil by Terry Gilliam (one of the Monty Python troop) is of a peaceful citizen being snatched from his comfy chair by jackbooted, black-clad members of a SWAT team, who unceremoniously stuff him into a body bag-restraint as they take him away. As a final insult, they leave something behind for his wife and family — a bill, for the cost of taking him into custody.

    Of the word “dystopian,” one finds mention in case law. For example, from footnote 4 of the 7th Circuit case, National Power, 864 F.3d 529 (CA7 2017) :

    National Power cites to a Wikipedia article about Judge Dredd to claim that the penalty imposed was arbitrary and capricious and as if “a police officer arrested a bank robber, summarily declared the robber’s guilt and sentenced him to prison time … .” Judge Dredd, both in the pages of comic books and on the screen, is a “street judge” in a dystopian future who is empowered to summarily arrest, convict, sentence, and execute offenders. See https://en.wikipedia.org/wiki/Judge_Dredd (visited July 18, 2017). It is obvious to us that the Administrator did not engage in the type of justice Judge Dredd embodies. The Administrator did not arbitrarily declare, “I am the law!” and hand down a penalty without considering all of the relevant factors.

    In the context of copyright [320 F. Supp. 2d 84 ]:

    Finally, it bears emphasis that The Forest’s alteration of the tone, lyrics and musical features of Wonderful World makes clear that the song itself is a target of parodic criticism, and that the creators of The Forest are not merely using the original song as an ironic or satirical device to comment on what they view as a less than wonderful world. The latter kind of use, which typically requires licensing, can be illustrated by the song’s use in certain films. For example, in Terry Gilliam’s 12 Monkeys, the Armstrong recording of Wonderful World is played over the final credits, ironically contrasted with the film’s depiction of a distinctly dystopian science fiction future, and in Barry Levinson’s Good Morning, Vietnam, the song is played on the sound track accompanying scenes of wartime violence and destruction. In these cases, the original song itself is used (essentially in its entirety) to comment on negative aspects of the real or imagined worlds depicted by the filmmakers, but the song itself is not parodied.
    Sony concedes that Wonderful World is a significantly creative work, and therefore resides within the core of copyright protection. (Def. Mem. at 14-15.) This does not weigh heavily against a finding of fair use, however, because in the context of parody, HN15Go to this Headnote in the case.this factor “is not much help … in separating the fair use sheep from the infringing goats … since parodies almost invariably copy publicly known, expressive works.” Campbell, 510 U.S. at 586; Leibovitz, 137 F.3d at 115.

    [In passing, recall “We’ll meet again,” at the end of Dr. Strangelove.]

    Also in the context of copyright [ 2016 U.S. Dist. LEXIS 92516 ]:

    Accordingly, the elements of a dangerous maze and robotic creatures are unprotectable scenes a faire, as these elements often recur in science fiction, dystopian, and horror genres. The Court, therefore, finds the Complaint lacks any allegations, beyond Plaintiffs’ conclusory statement, that Defendants infringed on Plaintiffs’ protectable expressions of a giant maze and robotic creatures. Thus, Plaintiffs’ Count I is subject to dismissal with prejudice under Rule 12(b)(6). See Brereton v. Bountiful City Corp., 434 F.3d 1213, 1219 (10th Cir. 2006) (“A dismissal with prejudice is appropriate where a complaint fails to state a claim under Rule 12(b)(6) and granting leave to amend would be futile.”).

    Separately, the word “dystopian” appeared in an August 31, 2017 post by K. Hill:

    Deliberately manipulating search results to eliminate references to a story that Google doesn’t like would be an extraordinary, almost dystopian abuse of the company’s power over information on the internet. I don’t have any hard evidence to prove that that’s what Google did in this instance, but it’s part of why this episode has haunted me for years: The story Google didn’t want people to read swiftly became impossible to find through Google.

    This sort of thing would be like what IPBiz has referenced as a Sikahema, in homage to the disappearance of the “Rutgers is Wrong” rant.

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    $$ For example, the visual indicator may become obscured by another body, or a cabin crew member may be distracted when approaching the door and forget to check its status. / たとえば、場合によっては目視指示器が他の乗務員によって覆い隠されることになり、あるいは扉に接近する際に注意散漫になり、扉の状態の点検を忘れる乗務員もいる。(USP8121438)

    $$ Equally the user-activated devices rely on a consumer remembering to activate the device upon opening their product, this is easily forgotten and could leave unaffected exactly the problems they are intended to address. / 同様に、ユーザが起動する装置は、製品の開封時に消費者が装置を忘れずに起動することに依存しており、これは容易に忘れられ、対処しようとするまさにその問題をそのまま放置する虞がある。(USP8104949)

    $$ If he has forgotten the location–or the existence–of a particular electronic file, that file could be "lost" within the computer system. / ユーザがある特定の電子ファイルの記憶場所、あるいは存在を忘れてしまった場合、このファイルはコンピュータシステム内で「失われて」しまうであろう。(USP7578441)

    $$ Good CQ’s from previous writes of a rewritten CQ set are forgotten (whereas in a conventional system, once a CQ set has been rewritten a maximum of n times, where n=no. of tracks-1, the CQ set is considered to be `good` and will not be rewritten again). (USP03030932)

    $$ A result of this action is sometimes that the able-bodied attendant forgets to unplug the appliances from the domestic mains output sockets, re-plug them into the switching devices, and plug the switching devices into the domestic mains output sockets before the disabled user returns to the room. (USP4979094)


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  • Federal Circuit Orders Rehearing En Banc on Question of Fee Award to USPTO Director

    Thecase is Nantkwest Inc. v. Matal (available here).  As I explained in my blog post on the panel opinion from this past June:

    The examiner and the PTAB rejected the inventor’s patent application on nonobviousness grounds, and rather than immediately appealing to the Federal Circuit (which is one option under these circumstances) the applicant initiated a lawsuit against the director in the U.S. District Court for the Eastern District of Virginia (which is another, less commonly invoked, option).  The district court ruled in favor of the director, and in May the Federal Circuit affirmed (here).  The district court also awarded the director expert witness fees but denied a request for attorney’s fees. On appeal of this matter, the Federal Circuit (in an opinion by Chief Judge Prost) concludes that the relevant statute–which in the present context is not35 U.S.C. § 285, but rather 35 U.S.C. § 145–requires the court to award both expert and attorneys’ fees–and, although it isn’t at issue in this case, since the director won–the rule applies regardless of outcome
    The per curiam order issued this morning states:
    This case was argued before a panel of three judges on February 9, 2017. A sua sponte request for a poll on whether to reconsider this case was made. A poll was conducted and a majority of the judges who are in regular active service voted for sua sponte en banc consideration.
    (1) The panel opinion of June 23, 2017 is vacated, and the appeal is reinstated.
    (2) This case will be heard en banc sua sponte under 28 U.S.C. § 46 and Federal Rule of Appellate Procedure 35(a). The court en banc shall consist of all circuit judges in regular active service who are not recused or disqualified.
    (3) The parties are requested to file new briefs. The briefs should address the following issue:
    Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the United States Patent and Trademark Office’s attorneys’ fees? . . .
    I don’t know off the top of my head how many actions are filed annually under 35 U.S.C. § 145, but I suspect it isn’t many, so whatever the outcome is here won’t affect a whole lot of cases–though a result consistent with the panel opinion in June presumably would reduce that number to an even smaller amount.

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