• Darrell Issa of California’s 49th congressional district not running for re-election

    Although known in IP circles for his patent positions, Issa was involved in the recall of then Governor Gray Davis; from wikipedia:


    Issa came to national prominence in 2003 when he contributed more than $1.6 million to help fund a signature-gathering drive for the petition to recall California Governor Gray Davis. At the time he made the contribution, it was widely believed that Issa intended to place himself on the ballot to replace Davis. However, following the entrance of fellow Republican Arnold Schwarzenegger into the race, two days before the filing deadline, Issa announced that he would not run.

    And, about one year ago in January 2017:


    President-elect Donald Trump has decided to keep former Google executive Michelle Lee on as director of the U.S. Patent and Trademark office, according to Rep. Darrell Issa, who informed tech industry organizations gathered in Washington Thursday for a breakfast event.

    Issa’s comments were confirmed by two sources in attendance and a congressional aide.

    link: https://www.politico.com/blogs/donald-trump-administration/2017/01/michelle-lee-patent-office-chief-to-stay-on-233847

    From USInventor:


    US Inventor’s Paul Morinville, along with other passionate inventors, took to the streets this weekend to protest Congressman Darrell Issa and his views on Intellectual Property policy.

    Paul writes: “Issa bullied through the America Invents Act to ingratiate his friends and contributors at the CTA. While Issa is weakening our patent system, China, Europe and other countries are strengthening theirs. It is today better to patent in China than it is to patent here. If Issa is allowed to continue, we will not only be buying goods manufactured in China, but they will be invented there as well.”

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  • Inside Views: How International IP Policy Reconfigured National Politics: An Interview With Prof. Ken Shadlen

    The recently published book Coalitions and Compliance by Professor Ken Shadlen of the London School of Economics examines how international changes can reconfigure domestic politics. Since the late 1980s, developing countries have been subject to intense pressures regarding intellectual property rights. These pressures have been exceptionally controversial in the area of pharmaceuticals. Historically, fearing the economic and social costs of providing private property rights over knowledge, developing countries did not allow drugs to be patented. Now they must do so, an obligation with significant implications for industrial development and public health. This book analyses different forms of compliance with this new imperative in Latin America, comparing the politics of pharmaceutical patenting in Argentina, Brazil, and Mexico. The book focuses on two periods of patent politics: initial conflicts over how to introduce drug patents, and then subsequent conflicts over how these new patent systems function. Intellectual Property Watch recently conducted a Q&A with Prof. Shadlen, which appears below.

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  • Federal Circuit Remands PTAB Decision to Uphold Patent Claims Challenged By Nintendo

    While the recent decision did uphold the PTAB’s finding of validity of some claims, the Federal Circuit reversed and remanded part of the decision in a way that further highlights the revolving door of validity challenges taking place between the Federal Circuit and the PTAB… The recent Federal Circuit decision on Nintendo’s appeal of the ‘796 final written decision issued by the PTAB found that substantial evidence supports the PTAB’s determination that the challenged claims of the ‘796…

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  • US IP Law: A Look At The Year Ahead

    In the coming year, one US Supreme Court case promises to dominate developments in America’s IP law. The upcoming decision in Oil States Energy Services v. Greene’s Energy Group could have major ramifications for patents, copyrights, trademarks, and the USPTO. But even as that case steals the limelight, 2018 could bring other significant changes to America’s IP law. Here are some of the key developments to watch for.

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  • Harness Dickey Elects Eight New Principals

    Harness Dickey, one of the country’s largest and most respected intellectual property law firms, announced that, as of January, 1, 2018 eight attorneys have been named newly elected Principals to the firm. Among those attorneys are Kiyoshi Kozu, Timothy Martin, Steven Wangerow, Elisabeth Koral, John Ambrose, Sung Pil Kim, Michael Teich and Michael Varco.

    The post Harness Dickey Elects Eight New Principals appeared first on IPWatchdog.com | Patents & Patent Law.

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  • Top Four Stories of 2017

    By Donald Zuhn –- After reflecting upon the events of the past twelve months, Patent Docs presents its 11th annual list of top patent stories. For 2017, we identified nineteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants. In previous posts, we counted down stories #19 to #15, stories #14 to #10, and stories #9 to #5, and today we count down the top four stories of 2017. As with our other lists (2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008,…

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  • Mixed result in Finjan case

    The outcome:


    A jury found Blue Coat Systems, Inc. (“Blue Coat”) liable
    for infringement of four patents owned by Finjan,
    Inc. (“Finjan”) and awarded approximately $39.5 million
    in reasonable royalty damages. After trial, the district
    court concluded that the ’844 patent was patent-eligible
    under 35 U.S.C. § 101 and denied Blue Coat’s post-trial
    motions for judgment as a matter of law (“JMOL”) and a
    new trial. Blue Coat appeals.

    We find no error in the district court’s subject matter
    eligibility determination as to the ’844 patent and agree
    that substantial evidence supports the jury’s finding of
    infringement of the ’844 and ’731 patents. However, we
    conclude that Blue Coat was entitled to JMOL of noninfringement
    for the ’968 patent because the accused
    products do not perform the claimed “policy index” limitation.
    On appeal, Blue Coat does not challenge the verdict
    of infringement for the ’633 patent.

    With respect to damages, we affirm the award with
    respect to the ’731 and ’633 patents. We vacate the damages
    award for the ’968 patent, as there was no infringement.
    With respect to the ’844 patent, we agree with Blue
    Coat that Finjan failed to apportion damages to the
    infringing functionality and that the $8-per-user royalty
    rate was unsupported by substantial evidence.

    We therefore affirm-in-part, reverse-in-part, and remand
    to the district court for further consideration of the
    damages issue as to the ’844 patent.

    Blue Coat, represented by Mark Lemley, prevailed on the
    ‘968 patent matter.

    From the decision:


    Blue Coat also argues that it was entitled to JMOL of
    non-infringement with respect to the ’968 patent because
    Finjan failed to introduce substantial evidence that the
    accused products implement the claimed “policy index.”
    We agree.

    The ’968 patent is directed to a “policy-based” cache
    manager that can efficiently manage cached content
    according to a plurality of security policies. The patentee
    agrees that a “policy” is a rule or set of rules that determines
    whether a piece of content can be accessed by a
    user. Different policies can apply to different users, and
    the decision of whether to let a user access content is
    made by comparing the content’s security profile with the
    policy governing the user’s access. Thus, the policy based
    cache manager in the ’968 patent is a data structure that
    keeps track of whether content is permitted under various
    policies. Claim 1, the sole asserted claim, is reproduced
    below, with key language underlined:

    1. A policy-based cache manager, comprising:

    a memory storing a cache of digital content,
    a plurality of policies, and a policy
    index to the cache contents, the policy index
    including entries that relate cache
    content and policies by indicating cache
    content that is known to be allowable relative
    to a given policy, for each of a plurality
    of policies;

    (…)

    the results of which are
    saved as entries in the policy index.

    The CAFC noted:


    As Finjan’s expert
    expressly acknowledged, however, Proxy SG does not save
    final decisions about whether content can be accessed by
    users subject to a given policy. It simply stores the evaluation
    of each individual rule that goes into making an
    ultimate policy decision. This is not what the claim language
    requires. The policy index claimed in the ’968
    patent must store the “results” of a content evaluator’s
    determination of “whether a given digital content is
    allowable relative to a given policy.”

    How Blue Coat prevailed at the CAFC is of interest:

    At summary judgment, the district court agreed that
    this claim language requires the policy index to store final
    allowability determinations and noted that “Defendant’s
    argument would likely prevail if all policies consist of
    multiple rules or conditions.” Finjan, Inc. v. Blue Coat
    Sys., Inc., No. 13-CV-03999-BLF, 2015 WL 3630000, at *9
    (N.D. Cal. June 2, 2015). The court nevertheless declined
    to grant summary judgement because “the ’968 patent
    specifically provides that a policy can be just one rule.” Id.
    If Proxy SG saved the results of applying each rule that
    makes up a one-rule policy, it would be saving final allowability
    determinations for a plurality of policies and
    thus infringing. The district court therefore gave Finjan
    the opportunity to prove at trial that “the Proxy SG policy
    cache contains a number of condition evaluations, each of
    which is determinative of whether a file is allowable
    relative to one of a plurality of single condition policies.”
    Id.

    At trial, Finjan made no such showing. There was no
    evidence indicating that the condition determinations
    stored by Proxy SG are final allowability decisions for
    users governed by single-rule policies. Indeed, Finjan’s
    expert acknowledged that Proxy SG never saves final
    allowability determinations and must instead re-evaluate
    the allowability of content each time it is requested. It is
    therefore clear that the jury’s infringement verdict was
    not supported by substantial evidence.

    Because Finjan failed to present evidence that the accused
    product ever stores final allowability determinations,
    Blue Coat was entitled to JMOL of noninfringement.

    Of damages


    Two categories of compensation for infringement are the
    patentee’s lost profits and the “reasonable royalty he
    would have received through arms-length bargaining.”
    Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324
    (Fed. Cir. 2009).
    The only measure of damages at issue in this case is a
    reasonable royalty, which “seeks to compensate the patentee
    . . . for its lost opportunity to obtain a reasonable
    royalty that the infringer would have been willing to pay
    if it had been barred from infringing.” AstraZeneca AB v.
    Apotex Corp., 782 F.3d 1324, 1334 (Fed. Cir. 2015) (citing
    Lucent Techs., 580 F.3d at 1325).

    An issue

    We agree with Blue Coat that the $8-per-user royalty
    rate employed in Finjan’s analysis was unsupported by
    substantial evidence. There is no evidence that Finjan
    ever actually used or proposed an $8-per-user fee in any
    comparable license or negotiation. Rather, the $8-per-user
    fee is based on testimony from Finjan’s Vice President of
    IP Licensing, Ivan Chaperot, that the current “starting
    point” in licensing negotiations is an “8 to 16 percent
    royalty rate or something that is consistent with
    that . . . like $8 per user fee.” J.A. 40409. Mr. Chaperot
    further testified that the 8–16% figure was based on a
    2008 verdict obtained by Finjan against Secure Computing.
    On this basis, Finjan’s counsel urged the jury to use
    an $8-per-user royalty rate for the hypothetical negotiation
    because “that’s what Finjan would have asked for at
    the time.” J.A. 41654.
    While any reasonable royalty analysis “necessarily involves
    an element of approximation and uncertainty, a
    trier of fact must have some factual basis for a determination
    of a reasonable royalty.” Unisplay, S.A. v. Am. Elec.
    Sign Co., 69 F.3d 512, 517 (Fed. Cir. 1995). Mr. Chaperot’s
    testimony that an $8-per-user fee is “consistent with”
    the 8–16% royalty rate established in Secure Computing
    is insufficient. There is no evidence to support Mr. Chaperot’s
    conclusory statement that an 8–16% royalty rate
    would correspond to an $8-per-user fee, and Finjan fails to
    adequately tie the facts of Secure Computing to the facts
    in this case.
    See LaserDynamics, 694 F.3d at 79
    (“[A]lleging a loose or vague comparability between different
    technologies or licenses does not suffice.”).
    Secure Computing did not involve the ’844 patent, and
    there is no evidence showing that the patents that were at
    issue are economically or technologically comparable.

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  • 押圧(おうあつ)

                            目次はこちら

    押圧(おうあつ)

    (PRESS)
    $$ The "key" could be a key or button or any element for providing input to the microprocessor, preferably input from a user and preferably by means of contact with and/or pressure on and/or touching of the key. / 「キー」とは、好ましくはキーに接触し及び/又はキーを押圧し及び/又はキーにタッチすることにより、マイクロプロセッサへの入力、好ましくはユーザからの入力を与えるためのキー又はボタン又は素子である。(USP6282436)

    $$ FIG. 3 shows one form of a piezo electric actuator which could be used for pressing a rotatable member against the rotatable shaft (10). / 図3は、回転可能なシャフト10に対して回転可能な部材を押圧させるために使用され得るピエゾ電子アクチュエータの一形態を示す。(USP6568293)

    $$ A further feature is a membrane (24) across the front of the piston plunger, advanceable relative to a piston seal (231) by pressure of a plunger head (21). / 本発明の更に別の特徴は、プランジャヘッド(21)を押圧することによりピストンシール(231)に対し移動可能としたピストンプランジャの前部を横切る膜状壁部材(24)にある。(USP6422434)

    (PUSH)
    $$ The region 23 consists of a push tab 24. / 領域23は押圧タブ24から構成される。(USP8479935)

    $$ Feeding of the material pushes the ring forward and the pins move into the long limbs, the starting point referred to at the beginning of this paragraph. / 材料の供給によりリングが前方に押圧され、ピンが、この段落の冒頭に言及された出発点である長リム部内に移動する。(USP6287494)

    (DEPRESS)
    $$ Operation of the left hand brake pedal (not shown) alone by, for example, partially depressing the brake pedal, causes push rod assembly 30 to move to the left when viewing FIGS. 1 and 1A, thereby moving plunger 28 to the left and compressing springs 42, 43 and 44. / 例えばブレーキペダルを部分的に押圧することによる右側ブレーキペダル(図示略)単独の操作は、図1および1Aに見られているように、プッシュロッドアセンブリ30を左へと移動させ、これによって移動プランジャ28を左に移動させて、スプリング42、43および44を圧縮する。(USP8550116)

    $$ Or, the fully-primed chamber may be only partially emptied to a predetermined extent by depressing the plunger until the signal is noted. / それとも、全駆動ポンプチャンバは、プランジャを上記信号が感知されるまで押圧することにより予め定められた量だけ部分的にのみ空にすることができる。(USP6422434)

    (URGE)
    $$ Alternatively or in addition, the device may comprise a biasing means, which resiliently urges the selection means into engagement with the resistance member. / 代替的に又は追加的に、装置は、選択手段を弾性的に押圧して抵抗部材に係合させる付勢手段を更に有するのが良い。(USP8808223)

    $$ A mechanism as claimed in claim 2 including means for urging the carriage into its extended position. / 請求項2の表示機構において、前記搬送具をその伸長位置へ押圧する手段を設けてなる価格表示装置の表示機構。(USP6332283)

                            目次はこちら

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  • Federal Circuit Reverses in Part Damages Verdict, for Failure to Apportion

    In a precedential opinion published this morning, Finjan, Inc. v. Blue Coat Systems, Inc., the Federal Circuit affirmed in part and reversed in part a judgment in favor of the patent owner.  The author of the opinion is Judge Dyk, joined by Judges Linn and Hughes.  A jury found the four patents in suit, all of which relate to software used for detecting and protecting against malware, valid and infringed, and awarded reasonable royalties totaling $39.5 million.  On appeal, the Federal Circuit affirms on liability with regard to three of the four patents.  On damages, it affirms with regard to two of the these three and reverses as to the other one.  I’ll focus on the damages issues, starting with the portion of the judgment that was reversed.  
    The court begins by describing the accused product:
    WebPulse, the infringing product, is a cloud-based system that associates URLs with over eighty different categories, including pornography, gambling, shopping, social networking, and “suspicious”—which is a category meant to identify potential malware. WebPulse is not sold by itself. Rather, other Blue Coat products, like Proxy SG, use WebPulse’s category information to make allowability determinations about URLs that end users are trying to access.

    DRTR, which stands for “dynamic real-time rating engine,” is the part of WebPulse responsible for analyzing URLs that have not already been categorized. DRTR performs both infringing and non-infringing functions. When a user requests access to a URL that is not already in the WebPulse database—a brand new website, for instance—DRTR will analyze the content, assign a category or categories, and collect metadata about the site for further use. As part of that analysis, DRTR will examine the URL for malicious or suspicious code, create a kind of “security profile” highlighting that information, and then “attach” the security profile to the given URL. This infringes the ’844 patent. But the DRTR analysis also evaluates whether the URL fits into categories ranging from pornography to news. These additional categories are unrelated to DRTR’s malware identification function but are still valuable for companies trying to, say, prevent employees from using social media while on the job. DRTR also collects metadata about the URL for Blue Coat’s later use. In other words, all of the infringing functionality occurs in DRTR, but some DRTR functions infringe and some do not (p.18).

    The court then discusses what it views as wrong with Finjan’s damages methodology:
    At trial, Finjan attempted to tie the royalty base to the incremental value of the infringement by multiplying WebPulse’s total number of users by the percentage of component that performs the infringing method. DRTR processes roughly 4% of WebPulse’s total web requests, so Finjan established a royalty base by multiplying the 75 million worldwide WebPulse users by 4%. Although DRTR also performs the non-infringing functions described above, Finjan did not perform any further apportionment on the royalty base.

    Finjan argues that apportionment to DRTR is adequate because DRTR is the “smallest, identifiable technical component” tied to the footprint of the invention. . . . This argument, which draws from this court’s precedent regarding apportionment to the “smallest salable patent-practicing unit” of an infringing product, does not help Finjan. . . . [T]he fact that Finjan has established a royalty base based on the “smallest, identifiable technical component” does not insulate them from the “essential requirement” that the “ultimate reasonable royalty award must be based on the incremental value that the patented invention adds to the end product.” Ericsson, 773 F.3d at 1226. As we noted in VirnetX, if the smallest salable unit—or smallest identifiable technical component—contains non-infringing features, additional apportionment is still required. . . .

    Because DRTR is itself a multi-component software engine that includes non-infringing features, the percentage of web traffic handled by DRTR is not a proxy for the incremental value of the patented technology to WebPulse as a whole. Further apportionment was required to reflect the value of the patented technology compared to the value of the unpatented elements (19-20).

    As I have noted before (see, e.g., here), I have mixed feelings about the Federal Circuit’s SSPPU rule as embodied in Laser Dynamics and VirnetX, since (among other things) a large base multiplied by a correspondingly small rate would give you the same number as a small base multiplied by a correspondingly larger rate.  Be that as it may, the court further concludes that the rate wasn’t supported by the evidence either:
    To arrive at a lump sum reasonable royalty payment for infringement of the ’844 patent, Finjan simply multiplied the royalty base by an $8-per-user royalty rate. Blue Coat contends that there is no basis for the $8-per-user rate.

    We agree with Blue Coat that the $8-per-user royalty rate employed in Finjan’s analysis was unsupported by substantial evidence. There is no evidence that Finjan ever actually used or proposed an $8-per-user fee in any comparable license or negotiation. Rather, the $8-per-user fee is based on testimony from Finjan’s Vice President of IP Licensing, Ivan Chaperot, that the current “starting point” in licensing negotiations is an “8 to 16 percent royalty rate or something that is consistent with that . . . like $8 per user fee.” . . . Mr. Chaperot further testified that the 8–16% figure was based on a 2008 verdict obtained by Finjan against Secure Computing. On this basis, Finjan’s counsel urged the jury to use an $8-per-user royalty rate for the hypothetical negotiation because “that’s what Finjan would have asked for at the time.” . . .

    . . . Mr. Chaperot’s testimony that an $8-per-user fee is “consistent with” the 8–16% royalty rate established in Secure Computing is insufficient. There is no evidence to support Mr. Chaperot’s conclusory statement that an 8–16% royalty rate would correspond to an $8-per-user fee, and Finjan fails to adequately tie the facts of Secure Computing to the facts in this case. . . . 

    Secure Computing did not involve the ’844 patent, and there is no evidence showing that the patents that were at issue are economically or technologically comparable. . . . In any case, Mr. Chaperot’s testimony that an 8–16% royalty rate would be the current starting point in licensing negotiations says little about what the parties would have proposed or agreed to in a hypothetical arm’s length negotiation in 2008 (pp. 21-22).

    The court leaves open the question of whether Finjan will able to rectify these problems on remand:
    While it is clear that Finjan failed to present a damages case that can support the jury’s verdict, reversal of JMOL could result in a situation in which Finjan receives no compensation for Blue Coat’s infringement of the ’844 patent. Ordinarily, “the district court must award damages in an amount no less than a reasonable royalty” when infringement is found . . . , unless the patent holder has waived the right to damages based on alternate theories . . . . We therefore remand to the district court to determine whether Finjan has waived the right to establish reasonable royalty damages under a new theory and whether to order a new trial on damages (p.22).

    As for the other two patents, the court concludes that Finjan’s expert’s apportionment of the revenue comprising the royalty base between the infringing and noninfringing functionality of the accused product, Proxy SG, was supported by the evidence (pp. 23-24).  Finally, the court sees no error in the fact that the jury came back with a damages award that exceeded what Finjan requested:
    . . . Finjan’s damages expert gave a range of $2,979,805 to $3,973,073 for infringement of the ’731 patent and a range of $833,350 to $1,111,133 for infringement of the ’633 patent . . . but the jury awarded $6,000,000 for the ’731 patent and $1,666,700 for the ’633 patent, J.A. 125. We agree with Blue Coat that the statute’s direction to award damages “in no event less than a reasonable royalty” does not mean that the patentee need not support the award with reliable evidence. 35 U.S.C. § 284. A jury may not award more than is supported by the record, but here the record contains evidence that the expert’s estimates were conservative and that the underlying evidence could support a higher award (p.24 n.1).

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  • Damages Must Be Apportioned Such that Infringing and Non-Infringing Features Are Separated; Royalty Base Must Have Some Factual Basis Beyond “Starting Point” Licensing Offers

    FINJAN, INC. v. BLUE COAT SYS., INC., Case No. 2016-2520, January 10, 2018. Before Dyk, Linn, and Hughes. Takeaway: When the accused technology does not make up the whole of the accused product, apportionment is required. Historical “starting point” figures in other licensing negotiations cannot be the sole basis for …

    The post Damages Must Be Apportioned Such that Infringing and Non-Infringing Features Are Separated; Royalty Base Must Have Some Factual Basis Beyond “Starting Point” Licensing Offers appeared first on CAFC Blog .

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  • Patent Reform Advocate, Congressman Darrell Issa, Will Not Seek Re-election

    Earlier today Congressman Darrell Issa (R-CA), announced that he will not seek re-election in 2018 and will retire from Congress. Issa, who currently Chairs the House’s Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet has been an outspoken advocate for the need for more patent reform… If Republicans hold on to a majority in the House it seems likely that Congressman Doug Collins (R-GA) will take over as Chair of the House IP Subcommittee. Collins, an ally…

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  • St. Regis Tribe requests oral hearing, seeks discovery on political pressure at PTAB

    The St. Regis tribe is seeking discovery on due process concerns posed by the potential of political or third-party pressure asserted to “reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents.”… The St. Regis tribe is seeking the oral hearing to push for discovery in a total of 18 topics. These topics include the makeup of the panels in the St. Regis proceedings, the date each APJ was added to the panel, how the makeup of the panel was decided, who…

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