• Allowing Amendments in AIA Trials

    Prolitec v. Scentair Tech (Fed. Cir. 2017) [ProlitecDecision] In a one paragraph en banc order, the Federal Circuit has vacated the panel’s decision here and remanded to allow claim amendments. The court writes: In light of this court’s en banc decision in Aqua Products, Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed. Cir. Oct. 4, 2017) […]

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  • In US, New Legal Ploy May Protect Bad Patents

    It had been a bad three months for Allergan, Inc. The drug maker’s stock price had fallen over 20 percent, as the company faced two legal challenges to the patents on its blockbuster drug, Restasis. Then, on 16 October, Allergan lost one of those challenges. A US court found the patents invalid. Allergan vowed to appeal, thus maintaining its monopoly on the drug until a final court determination, which could be over a year away. But Allergan’s monopoly could collapse far sooner, if the company were to lose the second challenge to the patents, before the USPTO. Such a loss was probable, as the agency had already found a “reasonable likelihood” that prior art invalidated the patents on Restasis. So back in September, Allergan employed an innovative legal strategy: The company gave its patents to a Native American tribe, and the tribe claimed its sovereign immunity prevented the USPTO from reviewing the patents’ validity. If this strategy were to succeed, it will do far more than just boost Allergan’s bottom line. The new strategy will increase the power of patent owners, help patent trolls, and dramatically alter the US patent system.

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  • Qualcomm files suit in China seeking to ban iPhone sales by asserting three non-SEPs

    A major legal battle over patented technologies in the mobile device communication sector between San Diego, CA-based semiconductor developer Qualcomm Inc. and Cupertino, CA-based consumer tech giant Apple Inc. took a new turn as multiple news reports indicated that Qualcomm had filed suit in China seeking a ban on the sale and manufacture of iPhones. Qualcomm’s court filing in China is the latest salvo in a barrage of legal challenges between both company’s over licensing activities between…

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  • OUTLET 出口


    OUTLET 出口

    (— OUTLET)
    $$ Housing 112 could be adapted to lead the `pure cold` water outlet 44 to a second outlet pipe connection. (USP8020779)


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  • COACH prevails in SD Texas; Huawei prevails in ED Texas

    In Coach v. Trendy Texas, 2017 U.S. Dist. LEXIS 171103 :

    Pending before the court is a motion for default judgment and permanent injunction against

    defendant Trendy Texas, Inc. (“Trendy”). Dkt. 20. Trendy has not responded to the motion. Having

    considered the motion and applicable law, the court is of the opinion that the motion should be


    Trademarks and copyright were involved:

    Plaintiffs Coach, Inc. and Coach Services, Inc. (collectively, “Coach”) own the trade name

    “COACH” and the trademark for various different distinctive marks relating to that name. See

    Dkt. 20 (listing different marks that are registered with the U.S. Patent and Trademark Office).

    Coach contends that it has continuously used and never abandoned the marks at issue in this case.

    Id. Coach also has valid copyrights for the following designs: “Legacy Stripe” design, “Signature

    C” design,”Op Art” design, and “Horse & Carriage” design. Id. (listing the registration numbers).

    On or about August 10, 2016, undercover officers entered Trendy’s location at 7171 Harwin

    Drive, Suite 103, Houston, Texas, and purchased several allegedly counterfeit items that were for

    sale. Id.; Dkt. 22 (affidavit of investigator). Investigators confirmed the items were counterfeit, and

    then police officers [*2] re-entered with a search warrant and seized 371 purportedly Coach-trademarked

    items. Dkts. 20, 22. Coach contends that Trendy has no license, authority, or permission from

    Coach to use its trademarks, trade dress, copyrights, or design elements. Dkt. 20. Coach asserts that

    Trendy has engaged in illegal counterfeiting and infringing activities negligently or knowingly and

    intentionally and with reckless disregard or willful blindness, or with bad faith. Id. Moreover,

    Coach alleges that Trendy’s activities are likely to create a false impression and deceive consumers

    into believing its products have a connection with Coach. Id.

    Separately, Huawei did well against T-Mobile in ED Texas ( 2017 U.S. Dist. LEXIS 170481 ):

    It is ORDERED:

    (1) Huawei’s motion to strike portions of Dr. Lyon’s invalidity reports, Dkt. 243, is GRANTED. Paragraphs 157-159, and 211-214 in Dr. Lyon’s ‘575 Patent Invalidity Report, Dkt. 243-2, and paragraphs 103 (only the discussion of the Nortel reference), 179-182, 315-346, and 537-552 in Dr. Lyon’s ‘675 and ‘627 Patent Invalidity Report, Dkt. 243-3, are STRICKEN from the reports.

    (2) T-Mobile and Intervenors’ Daubert motion to exclude Dr. Leopold’s Opinions Concerning Prior Art, Dkt. 247, is DENIED.

    (3) Huawei’s motion for leave to supplement Dr. Leopold’s and Dr. Wells’ expert reports, Dkt. 336, is GRANTED. T-Mobile and Intervenors are given leave to promptly supplement the report of their expert, Dr. David Lyon, with a response to the new opinions.

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  • CAFC affirms 101 patent ineligibility in SECURED MAIL SOLUTIONS LLC

    A decision of CD Cal was affirmed by the CAFC in Secured Mail Solutions, 2017 U.S. App. LEXIS 20105.

    Alice is cited:

    In Alice, the Supreme Court applied a two-step framework for analyzing whether claims are patent-eligible under section 101. First, we determine whether the claims at issue are “directed to” a judicial exception, such as an abstract idea. 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to be directed to an abstract idea we next consider under step two whether the claims contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2355.

    Enfish is discussed:

    On appeal, Secured Mail argues that its claims are patent-eligible under Enfish, an opinion issued after the district court’s decision in this case. In particular, the district court quoted the since-reversed district court decision in Enfish to hold that courts “should recite a claim’s purpose at a reasonably high level of generality.” Secure Mail, 169 F. Supp. 3d at 1048 (quoting Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d 1167, 1173 (C.D. Cal. 2014), rev’d, 822 F.3d 1327 (Fed. Cir. 2016)). The Federal Circuit in Enfish held that the district court had described the claims at too high a level of abstraction, and “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” 822 F.3d at 1337. Here, despite the district court’s statement that “a reasonably high level of generality” should be used, the district court’s analysis correctly found that Secured Mail’s claims are directed [*9] to an abstract idea.

    The court in Enfish held the claims relating to a computer database implementation to be patent-eligible under Alice step one because the claims focused on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. Id. at 1332-33. The claims in Enfish related to organization of data in a table in computer memory and a system for indexing that data. Id. at 1332-332. In contrast, the claims of Secured Mail’s patents are not directed to an improvement in computer functionality. For example, the claims are not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality.

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  • CAFC affirms PTAB’s inter partes review decisions in Boundary Solutions

    Within Boundary Solutions v. CoreLogic, 2017 U.S. App. LEXIS 20214 (CAFC) :

    Rather than look to whether individual elements of the Asserted Claims are present in the prior art, the actual question we must address is whether the PTAB’s determination, that the “subject matter as a whole” would have been obvious, 35 U.S.C. § 103(a), is supported by substantial evidence. “[T]he test for obviousness is what the combined teachings of the references would have suggested to [a PHOSITA].” In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (emphasis added); see In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) (“[One] cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.”). Through this lens, we address BSI’s conten-tion that the combined teachings of Harder and Longley do not disclose a “jurisdiction look up table.”


    We do not agree with BSI’s contention that there is nothing to support a finding that a PHOSITA would be motivated to combine Harder and Longley. See Appel-lant’s Br. 29; Reply Br. 22-25. As CoreLogic’s expert, Michael Goodchild, explained, and the PTAB found per-suasive, see J.A. 21-22, it would have been obvious to a PHOSITA to modify the GIS database system of Harder to use an index for locating jurisdictional identifiers associated with parcel data in the database as disclosed by Longley “to more easily manage parcel information across multiple jurisdictions” and make “searching parcel data more efficient,” J.A. 416-17. On appeal, BSI avers that its expert, Mr. William Huxhold, offered more accurate testimony regarding the motivation to combine. See Appellant’s Br. 32-34. However, we have repeatedly stated that “[w]e may not reweigh evidence on appeal.” Warsaw, 832 F.3d at 1333. CoreLogic’s expert testimony, along with the PTAB’s other findings, is sufficient to support a conclusion that a PHOSITA would have been motivated to combine Harder and Longley.

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    An upcoming law review article in the Marquette law journal by Judge John J. Mulrooney had the distinction of being cited by “60 Minutes” on Sunday, 15 October 2017.


    The conclusion of this article:

    As administrative litigation regarding practitioner sanctions has become increasingly complex and nuanced, a greater degree of specialized knowledge of the practice and advance preparation are required to avoid unintended, adverse results. An unprepared or unschooled counsel can unwittingly choose a tactic or make a concession that can result in the loss of a medical or pharmaceutical practitioner’s livelihood. Gone are the days when an able litigator can step in at the last minute with a plan no more complex than testing the other side’s evidence and realistically anticipate a good result. The stakes are simply too high, and many of the tried and true tactical allies of the experienced trial lawyer operate in a different dimension in these proceedings. An ill-advised concession can be as disastrous as an across-the-board demurer. [*396] Representation in this forum requires a skillful trial attorney who, at a minimum, has acquired an understanding of the CSA, its attendant regulations, and the circuit and Agency precedents that serve as the navigation points through the murky, drug-infested waters of diversion litigation.

    Footnote 444 discusses arbitrary and capricious:

    Humphreys v. DEA, 96 F.3d 658, 660 (3d Cir. 1996) (citing 5 U.S.C. § 706(2)(A) (2012)); Trawick v. DEA, 861 F.2d 72, 77 (4th Cir. 1988); accord Craker v. DEA, 714 F.3d 17, 26 (1st Cir. 2013) (“[An agency] decision is arbitrary and capricious “if the agency has relied on factors which Congress has not intended it to consider, entirely failed to consider an important aspect of the problem, offered an explanation for its decision that runs counter to the evidence before the agency, or is so implausible that it could not be ascribed to a difference in view or the product of agency expertise.'” (quoting Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983))); Morall, 412 F.3d at 178.

    Of the article to be published in Marquette Law Review and mentioned on “60 Minutes”, the Milwaukee Journal Sentinel noted:

    But a soon-to-be-published article in the review has emerged as a key piece in an explosive investigative report that claims Congress helped disarm the Drug Enforcement Administration even as the country was dealing with a spiraling opioid crisis.

    The article, to appear in the review’s winter issue, was written by DEA Administrative Law Judge John J. Mulrooney II, and his former legal clerk, Katherine E. Legel, a recent Marquette University Law School graduate.

    Mulrooney and Legel sought to detail the impact of an April 2016 law passed by Congress that critics say diminished the agency’s authority over drug distributors.

    “If it had been the intent of Congress to completely eliminate the DEA’s ability to ever impose an immediate suspension on distributors or manufacturers, it would be difficult to conceive of a more effective vehicle for achieving that goal,” the article says, according to a draft.

    In a joint investigation, the Washington Post and CBS News’ “60 Minutes” found “a handful of members of Congress, allied with the nation’s major drug distributors, prevailed upon the DEA and the Justice Department to agree to a more industry-friendly law, undermining efforts to stanch the flow of pain pills.”

    link: http://www.jsonline.com/story/news/2017/10/16/marquette-law-review-article-buttresses-investigation-disarming-dea-ability-go-investigations-opioid/768357001/

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  • Do you get the Gist: Tracking Mail is an Abstract Idea

    Secured Mail v. Universal Wilde (Fed. Cir. 2017) The district court dismissed this case for failure to state a claim upon which relief can be granted – R.12(b)(6) – after finding that the claims of all seven asserted patents were ineligible under 35 U.S.C. 101.  On appeal, the Federal Circuit has affirmed.  U.S. Patent Nos. 7,814,032, 7,818,268, and […]

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  • Allergan’s RESTASIS® patents declared invalid by Eastern District of Texas

    Judge William C. Bryson of the United States Federal District Court for the Eastern District of Texas found that Allergan’s RESTASIS® patents were infringed by Teva Pharmaceuticals USA, but that Teva had demonstrated invalidity of those patents by clear and convincing evidence… In a separate Order dealing with the issue of whether the Saint Regis Mohawk Tribe should be joined as co-plaintiff, Judge Bryson acknowledged that “the sovereign immunity issue is not presented in this case,” but…

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