• Prosecution Histories as Prior Art

    Perhaps the most debated issue in obviousness disputes is the question of whether a person of ordinary skill in the art would have been motivated to combine prior art references in order to form the invention as claimed. In KSR, the Supreme Court made the process a little bit easier for patent examiners by permitting […]

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  • Mylan calls Allergan’s patent deal with Indian tribe a “sham” transaction in PTAB hearing on sovereign immunity defense

    The tribe is raising a sovereign immunity defense in the case as the tribe is a sovereign entity which is not amenable to a suit unless it consents or Congress abrogates its immunity. Shore argued that the sovereign immunity defense is based on binding Supreme Court precedent. “It would frankly be unprecedented for the board to deny the tribe the right to seek a dismissal before conducting the hearing on the merits,” Shore said… On seven occasions during the call, Torczon called the sale of…

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  • Tribal Sovereign Immunity and Patent Law

    Guest post by Professor Greg Ablavsky, Stanford Law School

    In Property, I frequently hedge my answers to student questions by cautioning that I am not an expert in intellectual property. I’m writing on an IP blog today because, with Allergan’s deal with the Saint Regis Mohawk Tribe, IP scholars have suddenly become interested in an area of law I do know something about: federal Indian law.

    Two principles lie at the core of federal Indian law. First, tribes possess inherent sovereignty, although their authority can be restricted through treaty, federal statute, or when inconsistent with their dependent status. Second, Congress possesses plenary power over tribes, which means it can alter or even abolish tribal sovereignty at will.

    Tribal sovereign immunity flows from tribes’ sovereign status. Although the Supreme Court at one point described tribal sovereign immunity as an “accident,” the doctrine’s creation in the late nineteenth century in fact closely paralleled contemporaneous rationales for the development of state, federal, and foreign sovereign immunity. But the Court’s tone is characteristic of its treatment of tribal sovereign immunity: even as the Court has upheld the principle, it has done so reluctantly, even hinting to Congress that it should cabin its scope. This language isn’t surprising. The Court hasn’t been a friendly place for tribes for nearly forty years, with repeated decisions imposing ever-increasing restrictions on tribes’ jurisdiction and authority. What is surprising is that tribal sovereign immunity has avoided this fate. The black-letter law has remained largely unchanged, narrowly surviving a 2014 Court decision that saw four Justices suggest that the doctrine should be curtailed or even abolished.

    So let me now turn to the Allergan deal and briefly discuss its doctrinal and normative implications. First, the doctrinal. I don’t profess any insight into the IP-specific aspects of the dispute, but tribal sovereign immunity is robust. Unlike foreign sovereign immunity, there is no commercial-activity exception to tribal immunity. The lower courts have instead crafted an “arm of the tribe” test to determine if an entity may benefit from the tribe’s immunity, looking toward whether the entity is chartered under tribal law, whether its proceeds serve to further the aims of tribal self-governance, and whether the tribe intended to confer its immunity. Tribal casinos and other commercial enterprises routinely receive the benefit of sovereign immunity under this test, and I assume Allergan’s attorneys were smart enough to engineer the deal accordingly. The Court did carve out a possible workaround last Term in the wonderfully named Lewis v. Clarke when it declined to extend tribal sovereign immunity to a tribal employee sued for damages in his individual capacity. But the Court’s decision said nothing about the argument of the United States as amicus curiae that official immunity should still be available, so this issue remains undetermined. As for waiver, the Court’s jurisprudence holds that the tribe’s intent to relinquish immunity must be “clear.” This principle has generally made lower courts to be reluctant to find constructive waiver, although there is some case law that voluntary participation in bankruptcy proceedings waives tribal immunity.

    Now the normative. Many scholars are not fans of sovereign immunity in general, and their hackles may be raised still further by what may seem like tribes renting their immunity. It’s worth noting that the drug companies are latecomers to this particular scheme: payday lenders have been setting up in Indian country for a while to avail themselves of tribal immunity. There are good reasons to question whether exploiting what outsiders might read as a loophole is ultimately a wise strategic move on tribes’ part. It’s especially risky in an area of law where the federal government’s persistent tendency is to craft blanket policy for all 567 federally recognized tribes despite significant differences among them.

    But it’s also worth pausing to think about why a tribe might engage in this particular enterprise. Popular imagination might envision casino riches, but Indian gaming revenue is spread very unevenly, with only a handful of well-situated tribes bringing in large sums. For the majority of reservations, some of the highest poverty and unemployment rates in the nation remain the norm. This reality is inseparable from centuries of colonial dispossession and violence. But it is also the perverse result of federal law, which allows states to tax businesses within Indian country as long as states provide de minimis services. As a result, tribes—often forced onto remote lands—face the choice of imposing double taxation on reservation businesses or foregoing their own tax revenue. Tribal leaders are understandably anxious to make deals that will bring much-needed jobs and money to places that have long lacked both.

    If tribal sovereign immunity dramatically distorts patent law, there is a remedy available. Unlike in the state context, Congress can readily use its plenary power to abrogate tribal sovereign immunity in patent law. But I’d also urge IP scholars to look around during their virtual sojourn in Indian country. They might discover that immunity is but a small part of a patchwork of complex laws, many of which disadvantage Native peoples. To lawyers, these areas seem distinct—sovereign immunity seems distant from the criminal law complexities of jurisdiction, for instance, that have contributed both to an epidemic of sexual violence against indigenous women and some of the highest incarceration rates of any racial minority in the nation. But these issues are less much distinct for the people who experience these daily realities, and they help explain why tribal governments are scrounging for resources to try to provide desperately needed services for their citizens.

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  • The unintended consequences of eBay

    A law review article shows that the impact post-eBay on the granting of injunctions varies by industry type.
    From Table 1:

    Table 1. Industry classification and injunction grant rate by industry
    Industry Sector Grant Rate
    Other 90.6%
    Chemistry /Chemical 88.9%
    Pharmaceutical 84.2%
    Biotech 83.3%
    Consumer Goods 81.0%
    Transportation 76.4%
    Computers/Electronics 63.0%
    Software 50.0%
    Medical Devices 46.2%

    from The Unintended Consequences of the Injunction Law after eBay v. MercExchange: An Empirical Study of the Effects on Injunctions in Patent Law
    99 J. Pat. & Trademark Off. Soc’y 249 (2017)

    One recalls in 2006 LBE wrote an article titled “Will there be Unintended Consequences from the Supreme Court Decision in eBay v. MercExchange?”

    In 27 Rev. Litig. 1 (2007), Douglas Laycock wrote:

    in eBay Inc. v. MercExchange, L.L.C., n6 where the Court substantially rearranged the standards for granting permanent injunctions without appearing to realize it had changed anything. Recognizing that there can be sound reasons for limiting or refusing injunctive relief, Professor Rendleman would treat those reasons as in the nature of affirmative defenses to plaintiff’s prima facie entitlement to an injunction ordering defendant to obey the law. My own view is that his proposal states what the law has been in practice for a long time, n7 and that the Court’s opinion has now moved formal doctrine further from reality than it was before. Litigators and trial judges would be much better off if the eBay opinion could have been assigned to Professor Rendleman.

    In Modern American Remedies: Cases and Materials at 426 (4th ed. 2010) Douglas Laycock argued that there was “no traditional four-part test” and that the Supreme Court majority’s citations supporting this test are misplaced in cases related to preliminary injunctions.

    One notes also the text in 27 Rev. Litig. 161 (2008) :

    in a very different context, the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C. n13 is a spectacular example of the confusion that can result from litigating a remedies issue without a remedies specialist. But the reality is that except for consulting opportunities for law professors, the practice of law does not support remedies specialists. It is only teachers and students who have the freedom to consider remedies apart from underlying questions about liability, and thus only law professors who can specialize in remedies.

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  • –HEDRON (多)面体


    –HEDRON (多)面体

    $$ FIGS. 6a and 6b show a tetrahedron produced with three traps in a first plane (Z=0) and a single trap (Z=1) in a second plane. …

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  • Cablz loses at CAFC. Matters of waiver and motivation to combine.

    Following institution of inter partes review, the United
    States Patent Trial and Appeal Board found every
    claim of U.S. Patent No. 8,366,268 (“’268 patent”) unpatentable
    as obvious. Cablz, Inc., the owner of the ’268
    patent, appeals from this decision, arguing that substantial
    evidence fails to support the Board’s obviousness
    determination and that the Board failed to adequately
    explain a motivation to combine the prior art. Finding no
    error in the Board’s decision, we affirm

    The technology relates to holding eyeglasses on:

    The ’268 patent is entitled “Eye Wear Retention Device.”
    As the patent explains, people have long been using
    devices like chains, strings, and ropes to retain their
    glasses around their necks. A significant problem is that
    such devices rest directly against the wearer’s back or
    neck, which can cause the device to become entangled
    with clothing or coated with sweat or suntan lotion. The
    ’268 patent purports to solve the problem and discloses an
    eyewear retainer that “extends rearward from the head of
    the wearer and is suspended off the neck of the wearer.”
    J.A. 40 at Abstract.

    The cited prior art in this case is of interest.

    The topic of waiver arose:

    As an initial matter, we conclude that Cablz waived
    its argument that Monroe fails to disclose a “resilient”
    cable or member because it failed to raise this argument
    in its briefing before the IPR oral hearing. The court
    retains case-by-case discretion over whether to apply
    waiver. In re Nuvasive, Inc., 842 F.3d 1376, 1380 (Fed.
    Cir. 2016)


    As a result, we do not have the
    benefit of the Board’s informed judgment on the specific
    reading of Monroe that Cablz advances on appeal. The
    argument is thus waived. See Watts, 354 F.3d at 1368.

    Query: when the Board, or other trial court, ignores
    an argument actually presented, the reviewing court is also deprived of
    the benefit. Does the reviewing court then vacate?

    Of motivation to combine:

    We may affirm the Board’s ruling if we reasonably
    discern that it followed a proper path, even if that path is
    less than perfectly clear. Nuvasive, 842 F.3d at 1383
    (citing Bowman Transp., Inc. v. Ark.-Best Freight Sys.,
    Inc., 419 U.S. 281, 285–86 (1974)); Ariosa Diagnostics v.
    Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
    The Board’s decision provides a reasonably discernable
    path for articulating a motivation to combine the prior
    “one of skilled in the art would have ‘immediately recognized
    that a simple substitution of the eyewear retainers
    of Mackay for the attachment method employed in Monroe
    would have had various advantages.’” Chums, 2016
    WL 763054 at *5. The Board similarly summarized
    Appellee’s arguments regarding a motivation to combine
    the other prior art references. Id. at *5–6. After analyzing
    the arguments, the Board concluded that achieving
    the ’268 patent’s configuration required only “simple
    substitution.” Id. at *11.
    The Board also addressed and rejected each of Cablz’s
    arguments that there was no motivation to combine the
    prior art. First, the Board found no persuasive reason
    why the cited combinations “taught away” from the ’268
    patent’s invention. Id. at *8. Second, the Board rejected
    Cablz’s argument that Mr. Sosin failed to recognize and
    solve the “being in the way problem.” Id. at *8–9. Third,
    the Board found the age of the references and the fact
    that Appellees did not combine the references to create
    their own product did not preclude a motivation to combine
    the prior art. Id. at *9–10. Ultimately, the Board
    concluded that Appellees provided “strong evidence of
    obviousness.” Id. at *15. Taken together, we may reasonably
    discern that the Board found a motivation to
    combine the references because doing so would have been
    a matter of simple substitution that would result in an
    eyeglass retainer with certain advantages.

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  • Claiming Said Invention

    The chart above provides an update to my prior post – looking at patents issued over the past 40 years and finding the proportion of patents that use the word “SAID” within the patent claims. During this time, there has been a general trend in legal writing toward the use of Plain English rather than legalese, and I […]

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