• The Top 10 Things New Patent Practitioners Should Know

    One of the most common questions I receive from these individuals is this: “Once I pass the patent bar exam, how do I learn to actually start practicing?” Like so many things in life, there is no substitute for experience. Over the years I’ve advised many in various settings, and invariably as I speak with one person there will be others who begin eavesdropping. As a result, I thought I would put together a top 10 list of things that new patent practitioners should know as they prepare to…

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  • In Tinnus v. Telebrands, Federal Circuit Reverses PTAB’s Finding of Indefiniteness After PTAB Erred in Packard Analysis

    On Wednesday, May 30th, the Court of Appeals for the Federal Circuit entered a decision in Tinnus Enterprises v. Telebrands Corporation which reversed and remanded an earlier decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent covering the award-winning Bunch O Balloons toy developed by inventor Josh Malone. The Federal Circuit […]

    The post In Tinnus v. Telebrands, Federal Circuit Reverses PTAB’s Finding of Indefiniteness After PTAB Erred in Packard Analysis…

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  • The Myth of ‘Trivial’ Drug Patents

    Critics of drug patents often claim that when initial drug patents expire, drug companies stuff their patent portfolios with “trivial” patents that unjustifiably extend their patent monopoly to keep the prices up.  This argument perpetuates common myths and misunderstandings that fail on several levels… In the last decade, large molecule biological drugs have come to the fore. They provide dramatic new treatments for some conditions but can be very expensive. It is difficult to develop…

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  • FDA Attempts to Shame Pharmacuetical and Biotechnology Companies

    The U.S. Federal Drug Administration (FDA) recently decided to try to “shame” some pharmaceutical and biotechnology companies for failing to provide samples to companies who wish to produce generic versions of their pharmaceuticals.  The FDA states:

    In passing the 1984 Hatch-Waxman Amendments to the Federal Food, Drug & Cosmetic Act, Congress created a system that balances encouraging and rewarding medical innovation with facilitating robust and timely market competition. One of the primary ways that FDA facilitates a competitive marketplace is through the efficient approval of generic drugs, which are often lower-cost than brand drugs.

    Unfortunately, the process established by Congress may not always function as intended. At times, certain “gaming” tactics have been used to delay generic competition. One example of such gaming is when potential generic applicants are prevented from obtaining samples of certain brand products necessary to support approval of a generic drug. The inability of generic companies to purchase the samples they need slows down, or entirely impedes, the generic drug development process – leading to delays in bringing affordable generic alternatives to patients in need.

    As described in further detail below, these kinds of problems with generic access to necessary samples may occur when brand products are subject to limited distribution – whether the company has voluntarily adopted limitations on distribution, or the limitations have been imposed in connection with a Risk Evaluation and Mitigation Strategy (or REMS), a program that FDA implements for certain drugs to help ensure that their benefits outweigh their risks. In some cases, brand drug sponsors may use these limited distribution arrangements, whether or not they are REMS-related, as a basis for blocking potential generic applicants from accessing the samples they need.

    As part of the FDA’s Drug Competition Action Plan (DCAP), FDA is committed – among other things – to addressing and improving transparency about this and other gaming tactics that delay the generic competition Congress intended.

    There are around 50 drugs listed, including about 40 different pharmaceutical and biotechnology companies.  Do you think this tactic will work?  Interestingly, a New York Times article describes Celgene’s response, here. 

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  • Copyrighting Software: Case Likely Heading to Supreme Court

    by Dennis Crouch

    Google v. Oracle (Fed. Cir. 2018)

    Google has now filed an en banc rehearing petition in its dispute with Oracle over copyrightability of the naming system for an application programming interface — namely Oracle’s Java API that Google copied.  [Oracle Am. v. Google LLC Rehearing Petition]

    The basic issue here stems from Google’s program interface for Android App development.  Rather than creating its own set of functions and methods, Google decided to mimic the method-calls of Java.  At the time, Google’s third-party app marketplace was lagging far behind Apple’s, and the Java-API mimic was seen as a strategy to facilitate more rapid development of apps since the programming language was already so popular.  I previously explained:

    As an example, Google used the Java method header “java.lang.Math.max(a,b).”  When called, the “max” function returns the greater of the two inputs.  In Android’s API, Google copied a set of 37 different Java “packages” (such as Math) that each contain many classes and method calls (such as “max()”).  Overall, Google copied the header structure for more than six-thousand methods.

    Although Java was available for licensing, Google refused.

    Continue reading Copyrighting Software: Case Likely Heading to Supreme Court at Patently-O.

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  • Predicting Future Patent Outcomes

    In this article, I compute a “three-year grant rate” that shows the probability of obtaining a granted patent within three years of the first office action. This three-year grant rate tells you how difficult an examiner is and when you can expect to be granted a patent. The greatest benefit of the three-year grant rate is that it incorporates information about both the difficulty of the examiner and the length of time to obtain a patent into a single, easy to understand number. If your…

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  • The hazards of posting negative reviews on fora such as Yelp

    New York’s CBS Channel 2 posted a story titled Manhattan Doctor Sues Patient For $1 Million For Posting Negative Reviews Online
    about a woman, Michelle Levine , being sued by a doctor for posting negative reviews of the doctor on Yelp, Zocdoc, and Healthgrades.

    Within the CBS2 post were some suggestions for posting:

    Truth is an absolute defense,” attorney Steve Hyman said. “If you do that and don’t make a broader conclusion that they’re running a scam factory then you can write a truthful review that ‘I had a bad time with this doctor’.”

    Other experts say it’s important not to make broad generalizations.

    “If you’re going to make a factual assertion, be able to back that up and prove that fact,” Evan Mascagni from the Public Participation Project said.

    CBS2 did not get into the opinion defense. which has been covered, for example, by Reporters Committee for Freedom of the Press, in the post titled
    Opinion defense remains a strong tool in defeating defamation claims The RCPF post noted the case Milkovich v. Lorain Journal Co.:

    The Milkovich Court described two broad categories of opinion protected by the First Amendment.

    The first involves statements that are not “provable as false,” meaning the language cannot be proved true or false by a core of objective evidence. This category of opinion also involves a statement of subjective belief based on disclosed true facts. The Milkovich Court offered the following example of a statement of non-provable opinion: “In my opinion Mayor Jones shows his abysmal ignorance by accepting the teachings of Marx and Lenin.”

    The second category described by the Milkovich Court involves statements that “cannot reasonably [be] interpreted as stating actual facts,” meaning “loose, figurative, or hyperbolic language which would negate the impression that the writer was seriously maintaining” an actual fact, or where the “general tenor of the article” negates the impression that actual facts are being asserted.

    The RCPF post also gets into Mehta v. Ohio University, previously discussed on IPBiz, and of relevance to the recent Third Circuit case
    Kenny v. Denbo, CA3, No. 17-2342 [ On ending disputes prematurely. Baseball and university professors. : “The District Court arguably erred in finding
    that Denbo’s statements were mere opinion rather than factual.” ]

    **Separately, of –the language cannot be proved true or false by a core of objective evidence –, see the IPBiz post
    CAFC tackles “substantial evidence” in Ericsson v. Intellectual Ventures; PTAB reversed . The dissent believed that the objective evidence did not show the ‘480 patent disclosed frequency hopping; the majority did.

    **Of Mehta, see for example the 2006 post on IPBiz:

    ***UPDATE. 31 May 2018

    Just got an ad from PLI Press for “Sack on Defamation”, which included:

    Judge Sack pinpoints practical legal issues vital to your clients, helping you understand:

    when “truth” is not a defense
    when insults and name-calling cross the line into defamation
    when accurate repeating of another’s statements can be actionable
    when “public disclosure of private facts” becomes actionable
    when statements of “opinion” are not protected, and
    when defamatory communications are privileged.


    Plumbers’ Union Local No. 12 Pension Fund v. Nomura Asset Acceptance Corp., 632 F.3d 762, 775 (1st Cir.2011) (“An opinion may still be misleading if it does not represent the actual belief of the person expressing the opinion, lacks any basis or knowingly omits undisclosed facts tending seriously to undermine the accuracy of the statement. Liability may on this theory also extend to one who accurately described the opinion.” (citations omitted))

    Statements of opinion are actionable when the “statement was both objectively false and disbelieved by the defendant at the time it was expressed.” Fait v. Regions Fin. Corp., 655 F.3d 105, 110 (2d Cir.2011).

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  • CAFC tackles "substantial evidence" in Ericsson v. Intellectual Ventures; PTAB reversed

    The primary legal issue in Ericsson v. Intellectual Ventures [IV] involved the meaning of the substantial evidence
    standard. As to “what patents are involved”, footnote 3 is useful:

    The ’480 patent [prior art in the IPR], the ’408 patent [challenged in the IPR], and the ’435 patent
    all originated with Airnet Communications Corporation,
    and are now owned by IV.

    Procedurally, this was an appeal to the CAFC of a PTAB decision in an inter partes review, which PTAB decision
    had favored the patentee, Intellectual Ventures. This outcome did not survive the CAFC. In a 2-1 vote, the majority
    opinion written by Judge Pauline Newman, began:

    Ericsson Incorporated and Telefonaktiebolaget LM
    Ericsson (collectively, “Ericsson”) appeal the decision of
    the Patent Trial and Appeal Board (“PTAB”) on inter
    partes review, in which Ericsson is the Petitioner and
    Intellectual Ventures I LLC (“IV”) is the Patent Owner.
    The PTAB sustained the patentability of claims 1–16 of
    U.S. Patent No. 6,952,408 (“the ’408 patent”).1
    We conclude that the PTAB erred in its decision with
    respect to claim 1, the only claim whose patentability was
    analyzed by the PTAB. We reverse as to claim 1, vacate
    as to claims 2–16, and remand for determination of patentability
    of claims 2–16.

    Relevant prior art was US 6,952,408, which had claim 1, which began

    1. A method for frequency hopping in a cellular
    communications system having multiple mobile
    subscribers communicating on a plurality of different
    physical RF channels on any time division
    multiplexed scheme with a basestation having a
    broadband transceiver, said method comprising
    the steps of:

    Yes, if frequency hopping rings a patent history bell, think
    Hedy Lamarr and World War II. From wikipedia:

    During World War II, Lamarr learned that radio-controlled torpedoes,
    an emerging technology in naval war, could easily be jammed and set off course.
    She thought of creating a frequency-hopping signal that could not be tracked or jammed.
    She contacted her friend, composer and pianist George Antheil, to help her develop a device
    for doing that, and he succeeded by synchronizing a miniaturized player-piano mechanism with
    radio signals. They drafted designs for the frequency-hopping system, which they patented.
    [US 2,292,387]

    Note also the 2008 post of IPBiz
    August 11: anniversary of Hedy Lamarr’s patent

    As to this case, Ericsson’s argument is summarized:

    In brief, Ericsson argues that claim 1 is a “generic”
    statement of the known method of frequency hopping
    implemented at broadband basestations. Ericsson states
    that all the limitations of claim 1 are shown in the ’480
    patent, and that claim 1 is no more than a broad recitation
    of the general method of frequency hopping in mobile
    communications, as disclosed in the ’480 patent in general
    terms. Ericsson states that if any additional content in
    the ’408 specification may serve to distinguish the ’480
    patent, such content is not present as a limitation to
    claim 1. Thus Ericsson argues that claim 1 is anticipated
    by the ’480 patent or is obvious from the ’480 patent in
    combination with the GSM reference


    Ericsson does not disagree that the ’408 patent specification
    describes additional components used in frequency
    hopping. The PTAB stated, “comparing Figure 3 of the
    ’480 patent with Figure 8 of the ’408 patent, the two
    patents describe bus drivers with similar components.
    Nevertheless, Figure 3 of the ’480 patent lacks the DP
    RAM FHOP 312, Comparator 206, control processor 300,
    and RX Ping/PONG 304 components shown in Figure 8 of
    the ’408 patent.” PTAB Dec. 11–12. The PTAB found
    that these components “implement[] a frequency hopping
    functionality” in the ’408 patent. Id. at 12. Ericsson’s
    position is that claim 1 of the ’408 patent claims the
    general method for frequency hopping in a cellular communication
    system on a broadband basestation, and that
    this general method is disclosed in the ’480 patent reference.

    Judge Newman recited the standards of review:

    PTAB decisions are reviewed in accordance with the
    Administrative Procedure Act, 5 U.S.C. § 706(2). Agency
    findings of fact are reviewed for support by substantial
    evidence in the agency record, and agency rulings of law
    are reviewed for correctness in accordance with law. See
    In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).

    An important part of Judge Newman’s opinion:

    IV argued before the PTAB that there are differences
    in details and in performance; for example, IV’s expert
    stated that the method described in the ’480 patent cannot
    remap the incoming data fast enough to support
    frequency hopping. J.A. 403–08; J.A. 3365 (¶101). This
    contradicts the statement in the ’480 patent that the GSM
    frequency hopping standard may be used. ’480 patent,
    col. 5, ll. 4–17.

    To contradict a reference, an unsupported opinion is
    not substantial evidence.
    See Homeland Housewares,
    LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir.
    2017) (“[W]e must disregard the testimony of an expert
    that is plainly inconsistent with the record, or based on an
    incorrect understanding of the claim[s].” (citations and
    internal quotation marks omitted) (second alteration in
    original)). Although the PTAB adopted the opinion of IV’s
    expert and stated on rehearing that it found Ericsson’s
    expert lacking in credibility, this is not a matter of credibility
    but of technological evidence.

    Ericsson agrees that there are differences in the disclosures,
    in that the ’408 specification describes “an added
    memory and supporting components shown in the ’408
    patent’s Figure 8 (corresponding to ’480 Patent Figure 3).”
    Ericsson Br. 2–3, 19. Ericsson points out that this added
    memory, DP RAM FHOP 312, is not required by any of
    the claims. Ericsson states that the PTAB appears to
    have misunderstood the technology.

    IV argues that even if the PTAB misunderstood the
    technology, the PTAB result is correct. But the specification
    of the ’480 patent teaches that frequency hopping
    may be used, and “each and every element” of claim 1 of
    the ’408 patent is disclosed in the ’480 patent, “arranged
    or combined in the same way as in the claim.” Blue
    Calypso, 815 F.3d at 1341 (quoting In re Gleave, 560 F.3d
    at 1334). We conclude that substantial evidence does not
    support the PTAB’s decision
    , and that claim 1 is anticipated
    by the disclosure in the ’480 patent.

    The dissent by Judge Wallach brings up a feature of the
    “substantial evidence” standard that may not be appreciated by
    the lay public:

    The Supreme Court has made clear that “[a] court reviewing
    an agency’s adjudicative action should accept the
    agency’s factual findings if those findings are supported
    by substantial evidence . . . . The court should not supplant
    the agency’s findings merely by identifying alternative
    findings that could be supported by substantial
    evidence.” Arkansas v. Oklahoma, 503 U.S. 91, 113
    (1992) (citation omitted); see, e.g., Consolo v. Fed. Mar.
    Comm’n, 383 U.S. 607, 620 (1966) (explaining that, under
    substantial evidence review, “the possibility of drawing
    two inconsistent conclusions from the evidence does not
    prevent an administrative agency’s finding from being
    supported by substantial evidence”
    (citations omitted)).

    Judge Wallach does not believe the prior art reference
    described frequency hopping:

    The majority errs by conducting a more exacting review
    than substantial evidence requires. In support of its
    conclusion, the majority cites Carney’s specification’s
    reference to “frequency hopping standards such as the
    [Groupe Spéciale Mobile (‘GSM’)], personal communication
    network (PCN) standards, and the like.” Carney
    col. 5 ll. 14–17; see Maj. Op. 14–15. However, the PTAB
    thoroughly considered this passage from Carney, as well
    as Ericsson’s expert’s testimony regarding how a person
    having ordinary skill in the art (“PHOSITA”) would have
    understood it, and found that it did not disclose frequency
    hopping. See J.A. 13–18. Specifically, the PTAB found
    that “this passage states, at most, that the system described
    in [Carney] supports the modulation specified by
    the GSM standard,” J.A. 17, but that Carney “does not
    state, explicitly or implicitly, that the described system
    implements the optional frequency hopping functionality
    of GSM,” J.A. 18. As the PTAB explained, see J.A. 17,
    when read in context, Carney refers to the GSM standard’s
    modulation functionality, see Carney col. 5 ll. 6–17
    (stating that “[t]he RF carrier signals are modulated with
    voice and/or data (channel) signals” and that “[t]he particular
    modulation in use[] may be any one of a number of
    different wireless . . . standards . . . , frequency hopping
    standards such as the [GSM] . . . , and the like” (emphases

    Judge Wallach views the majority’s analysis as a re-weighing of evidence:

    The majority does not explain why this evidence is insufficient
    to support the PTAB’s finding. See Maj. Op. 12–
    17. Instead, it “reweigh[s] th[e] evidence,” In re Warsaw
    Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016),
    and “identif[ies] alternative findings that could be supported
    by substantial evidence,” Arkansas, 503 U.S. at
    113; see Maj. Op. 13–15 (stating that “[e]ach term of claim
    1 . . . is recited in [Carney],” summarizing the evidence
    that purportedly supports its conclusion, and stating that
    the PTAB’s opposite conclusion is “contrary to the evidence”).
    Because “[t]his court does not reweigh evidence
    on appeal, but rather determines whether substantial
    evidence supports the [PTAB]’s fact findings,” In re NTP,
    Inc., 654 F.3d 1279, 1292 (Fed. Cir. 2011), I would affirm
    the PTAB’s finding that Carney does not anticipate the
    Challenged Claims as supported by substantial evidence.

    Thus, in this case, the majority asserts as a factual matter
    that the prior art patent did disclose the concept of frequency
    hopping, at least to the extent of the elements of the claim 1
    of the challenged patent:

    But the specification
    of the ’480 patent teaches that frequency hopping
    may be used, and “each and every element” of claim 1 of
    the ’408 patent is disclosed in the ’480 patent, “arranged
    or combined in the same way as in the claim.” Blue
    Calypso, 815 F.3d at 1341 (quoting In re Gleave, 560 F.3d
    at 1334).

    In Dickinson v. Zurko, 527 U.S. 150; 119 S. Ct. 1816; 144 L. Ed. 2d 143 (1999), the
    Supreme Court noted:

    This Court has described the APA court/agency “substantial evidence” standard as
    requiring a court to ask whether a “reasonable mind might accept” a particular evidentiary
    record as “adequate to support a conclusion.” Consolidated Edison, 305 U.S. at 229.

    [See also:
    Summary judgment of non-infringement affirmed by CAFC in Red Dog v. KAT

    In this case, one asks if a reasonable mind might accept that the prior art did NOT disclose
    the claim elements, thus supporting a legal conclusion of “not invalid for anticipation.”

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  • XY, LLC v. Trans Ova Generics, L.C. (Fed. Cir. 2018)

    By Kevin E. Noonan — Judge Pauline Newman has been concerned regarding constitutional issues raised by the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s implementation of inter partes review as provided by the Leahy-Smith America Invents Act (codified at 35 U.S.C. § 311 et seq.). Specifically, Judge Newman’s concerns involve separation of powers issues and accordingly, are different from the issues raised in Oil States Energy Services, LLC. v. Greene’s Energy Group, LLC. As she wrote in her dissent in Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013): The court today authorizes…

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  • US Perspectives: Controversy Hides Within US Copyright Bill

    In a time when partisanship runs wild in the USA and the country’s political parties can’t seem to agree on anything, the Music Modernization Act is exceptional. The MMA passed the House of Representatives on 25 April with unanimous support. And for good reason. Almost all the major stakeholders back this legislation, which will bring some badly needed changes to copyright law’s treatment of music streaming. But wrapped in the MMA is a previously separate bill – the CLASSICS Act – that has been attacked by many copyright law experts, is opposed by many librarians and archivists, and runs counter to policy previously endorsed by the US Copyright Office.

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