• 2018 article in Slate re-cycles "secret" inventions

    Back in 2009, IPBiz had a post titled
    The “patent control policy” of World War II and US 2,852,687
    which in part related to “secret” patents
    and included the text:

    Fortunately for [Vannevar] Bush, however, U.S. patent law had been specifically amended so as to permit patent applications to be ordered held in secret in extraordinary circumstances. The original legislation had been passed during World War I to allow patents with military implications to be declared “secret” during wartime, and in 1940 and 1941 the statute had been revised to apply during peacetime as well and to have stiffer penalties associated with the violation of secrecy orders (the original penalty having been simply loss of patent title).33 The result of this legislative action was Public Law No. 700, a bill that allowed the Patent Office (via the authority of the Commissioner of Patents) to declare patent applications secret, preventing both their publication and access in the United States and
    also blocking their filing outside of the country. The question of whether the application would be granted was put on hold until the secrecy order had been lifted. If the patent was eventually granted, the inventor could then work out problems of interference with subsequently granted patents and could sue for compensation if the government had used the patent in the interim.

    Fast forward to the year 2018, and ARVIND DILAWAR has a post at Slate titled The U.S. Government’s Secret Inventions which included the text

    Invention secrecy in the U.S. dates back to at least the 1930s, but it really took off in the ’40s, when the development of nuclear weapons was shrouded in classification.

    See also the post in the July 2009 issue of Inventors Digest The government is classifying more innovations as secret in the name of national security.

    The 2018 article in Slate is treading old ground

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  • Collective Efforts By Civil Society Groups Bar The Way To Hepatitis C Patents

    Many hold the view that Gilead’s revolutionary treatment against hepatitis C (sofosbuvir) marked the beginning of a shift in position toward the high prices of medicines, as high-income countries were also faced with an untenable burden to their health systems. In a number of lower and middle-income countries civil society organised itself to increase access to sofosbuvir for millions in need.

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  • Canada’s National IP Strategy Stoking Fears About Patent Trolls

    The strategy also includes legislative changes to ensure ethical standards among patent and trademark agents and to “remove barriers to innovation, particularly any loopholes that allow those seeking to use IP in bad faith to stall innovation for their own gain.” And just who are these loophole-seeking bad faith actors seeking to bring the innovation economy of Canada to a grinding halt? Well, patent trolls, of course… It’s easy to point to the boogeyman of the patent troll but, in reality,…

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  • Drug Patents and the High Cost of Healthcare: Case of Over-Advocacy for Under-Patentability

    The price-tag for non-innovative drug patents, such as these second-wave Restasis patents, is substantial. Indeed, one cannot help but question Allergan’s true motivations for attempting to evade PTAB scrutiny of these patents by reliance on Tribal Immunity based on its deal with the St. Regis Mohawk Tribe. The PTAB, unlike the examiner corps, does have the ability to consider rebuttal expert testimony, and is thus not-so handicapped in its capacity to vet drug patents of questionable…

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  • Drug Patents and the High Cost of Healthcare: Case of Over-Advocacy for Under-Patentability

    The price-tag for non-innovative drug patents, such as these second-wave Restasis patents, is substantial. Indeed, one cannot help but question Allergan’s true motivations for attempting to evade PTAB scrutiny of these patents by reliance on Tribal Immunity based on its deal with the St. Regis Mohawk Tribe. The PTAB, unlike the examiner corps, does have the ability to consider rebuttal expert testimony, and is thus not-so handicapped in its capacity to vet drug patents of questionable…

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  • Waiving the SAS Right to Trial on All Challenged Claims

    Waiving the SAS Right to Trial on All Challenged Claims

    Although non-precedential, Valmont Indus. v. Lindsay Corp (Fed. Cir. 2018) appears to be the first post-SAS Federal Circuit opinion involving a partially-initiated inter partes review (IPR) proceeding.

    In its IPR petition, Lindsay challenged all 18 claims of Valmont’s U.S. Patent No. 7,003,357.  The PTAB instituted, but only to claims 1-15 and 17-18 — the case against Claim 16 was not strong enough.   In its final decision, the PTAB found the claims obvious except for claim 11 and, of course claim 16 (whose validity was not tried).

    Meanwhile, in SAS, the Supreme Court ruled that the PTO cannot partially-institute its AIA trials, but rather, it must either hold trial on all the challenged claims or none of the challenged claims.

    [The statute] directs that “[i]f an inter partes review is instituted and not dismissed under this chapter, the [Board] shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” §318(a) (emphasis added). This directive is both mandatory and comprehensive. The word “shall” generally imposes a nondiscretionary duty. . . . SAS is entitled to a final written decision addressing all of the claims it has challenged.

    Continue reading Waiving the SAS Right to Trial on All Challenged Claims at Patently-O.

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  • Did "60 Minutes" mislead viewers about the drug Acthar on May 6, 2018?

    CBS “60 Minutes” on May 6, 2018 aired a piece which was critical of the company Mallinckrodt in its handling of the drug Acthar, which drug comprises an adrenocorticotropic hormone. There has been some push-back, in part about the way “60 Minutes” suggested that Mallinckrodt bought out a company with a competing drug Synacthen, and then deep-sixed the drug. If it is true, as the push-back states, that — Synacthen has never been approved by the FDA for use in the U.S. for any indication and it is not an alternative treatment for IS in the U.S. –, then “60 Minutes” has some explaining to do.

    The StreetInsider quoted the Mallinckrodt website as to the “60 Minutes” segment which aired on 6 May 2018:

    On Sunday, May 6, 2018 CBS’ 60 Minutes aired a segment entitled “Why Does Your Prescription Cost So Much?”, or “The Rockford File”, centered on claims made in a lawsuit brought by the City of Rockford, Illinois, alleging among other things, wrongdoing by Mallinckrodt and other companies related to the price and distribution of one of Mallinckrodt’s prescription medications, H.P. Acthar Gel, in the United States.

    Prior to its airing, we communicated extensively with the producer of the segment and provided 60 Minutes with detailed and factual responses to their questions. It is unfortunate that 60 Minutes did not provide a full, balanced counterpoint to the claims made about Mallinckrodt and H.P. Acthar Gel.

    Also, within the StreetInsider piece:

    Synacthen is not a generic competitor to H.P. Acthar Gel. While the two drugs may share mechanistic effects through the ACTH component, H.P. Acthar Gel is much more. H.P. Acthar Gel is a biologically derived corticotropin drug – not a steroid – and amongst its many components includes a 1-39 peptide chain, meaning it includes more than simply ACTH. Synacthen is a synthetic ACTH 24-peptide chain. The two products are very different drugs.

    Mallinckrodt did not pursue commercialization of Synacthen for IS, as the barriers to completion were, in our view, virtually impossible to overcome.

    Synacthen has never been approved by the FDA for use in the U.S. for any indication and it is not an alternative treatment for IS in the U.S.
    In all the time that Synacthen has been commercially available in select foreign countries, it has never been commercialized in the U.S. and no owner of Synacthen (including the owner prior to Questcor) ever undertook U.S. development of the drug in IS or any other indication.
    Even in Canada, where Synacthen is approved and used in certain indications, it is not approved for use in IS patients. In fact, in Canada, the label contains a warning against use in infants or children under 3 years old due to the product containing benzyl alcohol.
    Mallinckrodt is developing the drug (MNK-1411) in an indication where there is both high unmet medical need and, if successful, potential for greatest impact for patients – Duchenne Muscular Dystrophy.

    link: https://www.streetinsider.com/Corporate+News/Mallinckrodt+%28MNK%29+Provides+Facts+on+H.P.+Acthar+Gel+in+Resonse+to+CBS+60+Minutes/14151942.html

    Although not mentioned in the “60 Minutes” piece, Acthar is used in dealing with exacerbations in multiple sclerosis. From the National MS website:

    H.P. Acthar Gel is a highly purified preparation of adrenocorticotropic hormone (ACTH) in a gel that is designed to provide extended release of the ACTH following injection. ACTH stimulates the adrenal cortex gland to secrete cortisol, corticosterone, and aldosterone.

    ACTH was approved in 1978 by the U.S. Food and Drug Administration (FDA) as a short-term treatment for acute exacerbations of MS. According to its FDA labeling, corticosteroids (such as methylprednisolone or dexamethasone) are considered the treatment of choice for acute exacerbations.

    link: https://www.nationalmssociety.org/Treating-MS/Medications/H-P-Acthar%C2%AE

    In this MS example, there are available alternatives to Acthar.

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  • 機能を有する




    $$ Buffers have a number of functions, ranked in significance as follows: / バッファは多くの機能を有しており、重要度において以下のようにランク付けされる。(USP8390319)

    $$ Thus, each of the Ne elements 20 has an analogue receive function comprising an LNA, overall band filtering and down conversion. / このため、Ne個の素子20の各々が、LNA、全体的帯域フィルタリング、ダウンコンバートを含むアナログ受信機能を有している。(USP8344945)

    $$ In certain embodiments, these components have the same functions as those described above with respect to FIG. 10. / 特定の実施形態では、これらの構成部品は、図10に関して上に記載したのと同じ機能を有する。(USP8323264)

    $$ An X polariser 210 is disposed after the half-wave plate and has a function of only allowing X polarised light to pass. / X偏光子210が2分の1波長板の後に配置され、X偏光された光だけを通過させる機能を有する。(USP8294977)

    $$ The subject had a spirometry value of FEV% PRED=93%, which indicates that she has healthy lung function. / 主体はFEV%PRED=93%の肺活量値を有し、これはこの主体が健康な肺機能を有することを示している。(USP8255036)

    $$ Each branch has a frequency responsive function applying pre-emphasis processing 74 or weighting 76 respectively. / 各分岐はそれぞれ、プリエンファシス処理74、あるいは重み付け76を適用する周波数応答機能を有する。(USP8160423)

    $$ In recent years, glazings having some form of additional functionality have become increasingly popular and sought-after. / 近年、いくつかの種類の追加的機能を有する窓ガラスが、次第に人気となり、求められている。(USP8405901)

    $$ Those three outputs are provided as the inputs to the third checking module 18, which checking module has the same functionality as the second checking module. / これらの3つの出力は、第2検査モジュールと同じ機能を有する第3の検査モジュール18に入力として与えられる。(USP8386843)

    $$ A dual function actuating member may be provided for activating the priming stroke and for freeing the front housing portion for rearward motion to release the trigger means. / 2つの機能を有する作動部材が形成され、準備行程を始動させるとともに前記前方ハウジング部の後方に向かう動きを自由にして前記トリガ手段を解放するようにしてもよい。(USP8932266): function(形容詞的用法)

    $$ In this rotary engine, components performing the same function as those shown in FIGS. 1 to 5 are given the same numerals. / このロータリーエンジンにおいて、図1乃至図5に示した構成要素と同じ機能を有するものには同じ符号を付した。(USP7650871): perform function

    $$ One input port of the clutch control valve 114 receives a clutch apply pressure from a clutch fuse valve 116 whose function will be explained in more detail below. / クラッチ制御弁114の一方の入力ポートは以下に一層詳細に説明する機能を有するクラッチ安全弁116からクラッチ適用圧力を受け取る。(USP7625309): whose function

    $$ A highly simplified but functionally equivalent circuit is desirable as a reduced component count will reduce the overall size and mass of each device. / 高度に簡略化されているが同じ機能を有する回路が望ましい。部品数が少なければ、各装置の全体の大きさと重量が減少するからである。(USP8061194): functionally


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  • WesternGeco, winner in court, loses at PTAB, CAFC. Exxon v. Lubrizol cited.

    In WesternGeco v. Ion Geophysical:

    The Board issued six final written decisions, finding
    all of the instituted claims in the six proceedings to be
    unpatentable as anticipated or obvious. It also rejected
    WesternGeco’s arguments that the IPR proceedings were
    time-barred under 35 U.S.C. § 315(b). We conclude that
    substantial evidence supports the Board’s unpatentability
    determinations, as well as its conclusion that the proceedings
    were not time-barred. We thus affirm the Board’s

    The business involved:

    WesternGeco, PGS, and ION are all participants in
    the marine seismic survey industry. WesternGeco
    launched its commercial steerable streamer system, the
    Q-Marine, in 2000. J.A. 4794. Subsequently, PGS commissioned
    ION to design and build a competing commercial
    streamer system, the DigiFIN, which launched
    several years later. Id.

    In court, the WesternGeco patents were found infringed and VALID:

    In August 2012, a jury
    returned a verdict finding ION had infringed all four
    patents asserted and that ION had failed to prove that
    any of the asserted patents were invalid. On appeal, this
    court affirmed all aspects of the District Court’s judgment
    except for willful infringement and damages.

    BUT, later at PTAB:

    The Board issued six final written decisions (two decisions
    per patent), finding that various claims were either
    anticipated by or would have been obvious over several
    prior art references. See generally Petroleum Geo-Servs.,
    Inc. v. WesternGeco L.L.C. (PGS I), No. IPR2014-00687,
    2015 WL 10378275 (P.T.A.B. Dec. 15, 2015)

    The legal issues before the CAFC in 2018:

    WesternGeco contends that the Board’s decisions invalidating
    claims of the WesternGeco Patents are wrong
    on the merits and should be reversed. But WesternGeco
    argues we need not reach the merits because Wi-Fi One
    has made time-bar decisions under § 315(b) judicially
    reviewable, and, as a threshold matter, we should vacate
    and dismiss the petitions as time-barred. In WesternGeco’s
    view, (1) ION was served with a patent infringement
    complaint well over a year before the IPR petitions
    were filed and unquestionably would have been timebarred
    from filing any petitions challenging the WesternGeco
    Patents had it not been joined with PGS’s petitions;
    and (2) PGS’s petitions should be time-barred because
    ION was a “real party in interest,” or “privy” of PGS.
    Consequently, WesternGeco argues that the Board never
    should have instituted the requested IPRs because no
    party timely filed the petitions

    An interesting issue as to the meaning of “privy”:

    Neither the AIA nor the Patent Act defines the statutory
    term “privy.” But “privy” is a well-established common-law
    term, and it is a “cardinal rule of statutory
    construction” that where Congress adopts a common-law
    term without supplying a definition, courts presume that
    Congress “knows and adopts the cluster of ideas that were
    attached” to the term. FAA v. Cooper, 566 U.S. 284, 291–
    92 (2012); Microsoft Corp. v. i4i P’ship Ltd., 564 U.S. 91,
    103–04 (2011). Where Congress adopts a term that is
    used in common law across multiple legal subjects, courts
    “cannot rely on any all-purpose definition but must con-
    sider the particular context in which the term appears.”
    Cooper, 566 U.S. at 294.5

    The AIA’s legislative history supports adopting the
    common law meaning of privity. The proposed administrative
    review procedures, including IPR, were intended
    to provide “quick and cost effective alternatives to litigation.”
    H. REP. NO. 112-98, at 48 (2011). Another expressed
    congressional goal was to “establish a more
    efficient and streamlined patent system that will improve
    patent quality[.]” Id. at 40. At the same time, Congress
    recognized the importance of protecting patent owners
    from patent challengers who could use the new administrative
    review procedures as “tools for harassment.” Id.
    (“While this amendment is intended to remove current
    disincentives to current administrative processes, the
    changes made by it are not to be used as tools for harassment
    or a means to prevent market entry through repeated
    litigation and administrative attacks on the validity of
    a patent.”).


    But, importantly, the reach of privity cannot extend
    beyond the limits of due process. In Taylor v. Sturgell,
    the Supreme Court observed that a person who was not a
    party to a suit generally has not had a “full and fair
    opportunity to litigate” the claims and issues settled in
    that suit. 553 U.S. at 894. Because nonparty preclusion
    risks binding those who have not had a full and fair
    opportunity to litigate, the Supreme Court has cautioned
    that there is a general rule against nonparty preclusion,
    subject to certain exceptions. Id. at 892–93; see Aspex
    Eyewear, Inc. v. Zenni Optical, Inc., 713 F.3d 1377, 1382
    (Fed. Cir. 2013) (“A full and fair opportunity to litigate is
    the touchstone of any preclusion analysis.”); see also Cal.
    Physicians’ Serv., 163 Cal. App. 4th at 1522 (“Notions of
    privity have been expanded to the limits of due process.”).


    Substantial evidence supports the Board’s finding
    that ION lacked the opportunity to control PGS’s IPR
    petitions. See Taylor, 553 U.S. at 894; Wi-Fi One, LLC v.
    Broadcom Corp., No. 2015-1944, 2018 WL 1882911, at *8
    (noting control as a factor to determine privity). The
    Board found no evidence to suggest that ION directed,
    funded, controlled, or influenced the PGS IPR petitions.
    See J.A. 35–38, 198–99, 204–06. Nor is there evidence
    supporting WesternGeco’s contention that ION used PGS
    as a proxy. Id. The litigation history suggests that PGS
    filed its IPRs as a defensive measure in response to WesternGeco’s
    lawsuit against PGS, rather than at ION’s
    instruction. When ION tried to join the IPRs, PGS actively
    opposed the attempted joinder. Even when ION was
    joined, the PTO gave ION only spectator status. Moreover,
    ION did not disclose any prior art references to PGS
    in connection with the IPR proceedings, nor did it pay for
    PGS’s IPRs. The Board reasonably found that ION did
    not control or direct the IPR petitions.


    For these reasons, we affirm the Board’s conclusion
    that PGS and ION are not privies within the meaning of
    § 315(b).8 Substantial evidence supports the Board’s
    conclusion that ION’s relationship with PGS is not sufficiently
    close such that the ION proceeding would have
    given PGS a full and fair opportunity to litigate the
    validity of the claims of the WesternGeco Patents. Accordingly,
    the petitions are not barred under 35 U.S.C.
    § 315(b).

    As to the merits of the validity issue for the ‘607 patent:

    The only merits issue on appeal for the ’607 Patent is
    the construction of the claim term “predicting positions.”
    The Board construed this term to mean “estimating the
    actual locations” of streamer positioning devices. J.A. 54–
    60, 226–32. By contrast, WesternGeco’s proposed construction
    requires the prediction to be performed in a
    particular way—using “behavior-predictive model-based
    control logic.” Id. After considering the intrinsic evidence,
    we agree with the Board’s construction.

    Of a hindsight argument:

    WesternGeco objects to the Board’s conclusion as impermissible
    hindsight. That argument lacks force in this
    case. PGS’s expert testified from the perspective of one of
    ordinary skill in the art as of the priority date, and WesternGeco
    identifies nothing to suggest that his testimony
    or the other evidence cited by the Board invoked facts
    unavailable to the skilled artisan as of the priority date.
    J.A. 11107, 20340–61. As discussed, substantial evidence
    before the Board shows that one of ordinary skill would
    have been motivated to modify Workman to attempt to
    keep streamers straight and parallel, whether in a zero or
    non-zero feather angle mode, with a reasonable expectation
    of success.
    The Board appropriately relied on the prior art and
    expert testimony about how the skilled artisan would
    have modified the prior art. Substantial evidence supports
    its obviousness determination.

    Exxon v. Lubrizol is cited:

    Contrary to WesternGeco’s argument, the Board was
    permitted to issue a new construction in the final written
    decision given that claim construction was a disputed
    issue during the proceedings. See Intellectual Ventures II
    LLC v. Ericsson Inc., 686 F. App’x 900, 905 (Fed. Cir.
    2017). Moreover, the Board is not bound to adopt either
    party’s preferred articulated construction of a disputed
    claim term. See Exxon Chem. Patents, Inc. v. Lubrizol
    Corp., 64 F.3d 1553, 1556 (Fed. Cir. 1995); see also Homeland
    Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
    1376 (Fed. Cir. 2017).

    The facts in this case can be distinguished from SAS
    Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
    1351 (Fed. Cir. 2016), rev’d and remanded on other
    grounds, SAS Institute, Inc. v. Iancu, — S. Ct. —, No. 16-
    969 (Apr. 24, 2018), on which WesternGeco relies. In
    SAS, the Board construed the relevant term in its institution
    decision, but in the final written decision sua sponte
    issued and adopted a significantly different construction,
    even though neither party had disputed the Board’s
    original construction and premised their arguments in the
    proceeding on that construction. Because the appellant
    had no notice that the Board’s construction could change
    or an opportunity to address the new construction, this
    court vacated the decision and remanded on that issue.
    Id. at 1351–53.

    One notes that Exxon v. Lubrizol had nothing to do with a
    Board decision:

    The central issue in this appeal is claim interpretation. Exxon’s claims are to a lubricating oil composition suitable for use as a crankcase lubricant in internal combustion engines. The claimed composition is defined as comprising–meaning containing at least–five specific ingredients. Exxon contends that its patent claims a “recipe” of ingredients that extends to any product made by using the claimed ingredients, even if the product itself–as a result of chemical complexing–fails to include one of the claimed ingredients. Lubrizol argues that since Exxon claims a composition product–not a process for making a product or a product made by a claimed process–the ‘890 patent only extends to final products that include the specified claimed ingredients.

    The trial judge, candidly expressing considerable difficulty in understanding the chemistry and law involved in the case, treated the issue of claim interpretation as a matter of deciding which of the two parties offered the correct meaning of the claims. The jury was charged according to Exxon’s preferred claim interpretation.


    More often, however, it is likely that the adversaries will offer claim interpretations arguably consistent with the claims, the specification and the prosecution history that produce victory for their side. In any event, the judge’s task is not to decide which of the adversaries is correct. Instead the judge must independently assess the claims, the specification, and if necessary the prosecution history, and relevant extrinsic evidence, and declare the meaning of the claims. No matter when or how a judge performs the Markman task, on appeal we review the issue of claim interpretation independently without deference to the trial judge.


    We thus hold that the judge erred as a matter of law in giving Exxon’s preferred claim interpretation to the jury, and in using that interpretation in ruling on Lubrizol’s post trial motion. Under the proper charge, the jury would not have been asked if Lubrizol used Exxon’s starting ingredients. Instead, the jury would have been asked to find whether Exxon had proved by a preponderance of the evidence that Lubrizol’s products at some time contained each of the claimed recipe ingredients in the amounts specifically claimed.


    Because Lubrizol is entitled to a judgment of noninfringement as a matter of law and thus to vacation of the order awarding Exxon its attorneys’ fees and costs and of the injunction entered against Lubrizol, we need not reach the other grounds asserted by Lubrizol for reversal of the judgment of infringement or in the alternative for a new trial. Because there is no basis for a damage award against Lubrizol, we vacate the damage award in appeal No. 94-1309.

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  • CAFC rules "a change in shading" is a change in shape in Valmont case

    The outcome of an appeal of a PTAB inter partes review decision :

    Valmont Industries, Inc. (“Valmont”) appeals from the
    final decision of the Patent Trial and Appeal Board (“the
    Board”) in an inter partes review, finding claims 1–10,
    12–15, 17, and 18 of U.S. Patent No. 7,003,357 B1 (“the
    ’357 patent”) unpatentable as obvious. Lindsay Corp.
    (“Lindsay”) cross-appeals the Board’s determination that
    claim 11 was not obvious. We affirm the Board’s determination
    of obviousness with respect to claims 1–10, 12–15,
    17, and 18 and reverse as to claim 11.

    As to evidentiary issues:

    No statutes or rules prohibit a petitioner from submitting
    additional evidence after the petition, and § 42.23(b)
    specifically permits it. Our case law makes clear that a
    petitioner may submit additional evidence in the reply in
    response to the patent owner response. In Belden Inc. v.
    Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015), we
    held that a patent owner “ha[d] not established that it
    was denied its procedural rights” when a petitioner submitted
    a new declaration with its reply. See also Altaire
    Pharms., Inc. v. Paragon Bioteck, Inc., No. 2017-1487, Slip
    Op. at 14–17 (Fed. Cir. Apr. 25, 2018) (finding an abuse of
    discretion when the Board failed to consider a second
    declaration submitted with a reply that responded to
    arguments raised in the corresponding patent owner
    response); Genzyme Therapeutic Prod. Ltd. P’ship v.
    Biomarin Pharm. Inc., 825 F.3d 1360, 1364–69 (Fed. Cir.
    2016) (finding it permissible for the petitioner to cite two
    references in the reply that were not cited in the petition
    to show the state of the art at the time). Thus, the Board
    did not violate its rules or due process requirements in
    concluding that the second Rosenberg declaration fairly
    responds only to arguments made in Dr. Mercer’s declaration
    and Valmont’s response.

    The Board’s procedures in IPR proceedings provide
    the patent owner with notice and opportunity to respond
    as required by due process and the Administrative Procedure
    Act. See 5 U.S.C. § 554(b)(3), (c), (d); In re Biedermann,
    733 F.3d 329, 336–37 (Fed. Cir. 2013); Abbott Labs.
    v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013).

    Of claim 11:

    The first question is whether shading constitutes a
    change in “shape.” In matters of claim construction before
    the Board as to unexpired patents, we apply the broadest
    reasonable construction standard. Cuozzo, 136 S. Ct. at
    2144–45. The Board concluded that “shading within the
    original GUI does not change the shape of the GUI.” J.A.
    36. However, we conclude that a change in shape occurs
    when there is a change in pattern, such as through shading.

    The CAFC then stated:

    Webster’s dictionary defines “shape” as “the visible
    makeup characteristic of a particular item or kind of
    item.” Webster’s Third International Dictionary 2087
    (2002). A change in shading falls within this definition as
    it is a change in the visible makeup characteristics of the


    Under the broadest reasonable construction standard,
    a change in shape occurs when there is a change in shading.

    The CAFC disagreed with PTAB:

    The Board also determined that Abts did not disclose
    GUIs shaped to identify an irrigation pattern. However,
    we conclude that the circle-shaped GUIs in Abts are
    shaped to identify an irrigation pattern. The Board’s
    contrary decision is not supported by substantial evidence.

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  • CAFC disputes Wright, Federal Practice & Procedure in In re: HTC CORPORATION


    Given the availability
    of adequate relief on appeal, mandamus review of improper-venue
    decisions is generally inappropriate. See
    Bankers Life & Cas. Co. v. Holland, 346 U.S. 379, 379–84
    (1953) (holding that mandamus review of an impropervenue
    decision was inappropriate and noting it was not
    clear that an adequate remedy could not be afforded);


    As to an argument about the inefficiency of having to go
    to final judgment before being heard as to improper venue:

    Although Petitioner argues that it should “not be
    forced to litigate this case in an improper venue through a
    final judgment before it can contest venue via appeal,”
    Pet’r’s Br. 6, the Supreme Court rejected this same argument
    in Bankers Life, explaining that “the extraordinary
    writs cannot be used as substitutes for appeals, even
    though hardship may result from delay and perhaps
    unnecessary trial.” Bankers Life, 346 U.S. at 383 (citations
    omitted); see also Comfort Equip., 212 F.2d at 375
    (“If the correctness of [the judge’s] ruling on the [improper-venue]
    motions to dismiss must await an appeal from
    the final disposition of the case on its merits in the district
    court, there is no unusual inconvenience or hardship.”).
    Decisions of this court and the Third Circuit
    reflect that reasoning. See In re BP Lubricants USA Inc.,
    637 F.3d 1307, 1313 (Fed. Cir. 2011) (“To issue a writ [of
    mandamus] solely for th[e] reasons [that a defendant will
    be forced to undergo the cost of discovery and trial] would
    undermine the rare nature of its form of relief and make a
    large class of interlocutory orders routinely reviewable.”
    (citing Bankers Life, 346 U.S. at 383)); Gulf Research, 193
    F.2d at 304–05 (“The mere fact that the petitioners will be
    put to the inconvenience and expense of what may prove
    to be a wholly abortive trial is an argument which might
    be addressed to Congress in support of legislation authorizing
    interlocutory appeals but does not constitute ground
    for invoking mandamus power.”)

    Thus, the CAFC stated

    , there may be circumstances in
    which it is inadequate. We need not articulate such
    circumstances here, as Petitioner’s only argument is that
    it should be able to avoid the inconvenience of litigation
    by having this issue decided at the outset of its case. This
    is insufficient, and there is no other indication that Petitioner
    cannot be afforded adequate relief on appeal.

    A separate part of the case involved aliens and venue statutes:

    the “long-established rule that suits
    against aliens are wholly outside the operation of all the
    federal venue laws, general and special.” Id. at 714. The
    Court thus upheld the alien-venue rule and held that the
    Canadian corporation defendant in that case, Brunette
    Machine Works, Ltd., could not rely on § 1400(b) as a
    “shield” against suit in a particular district. Id.

    Note footnote 9

    For all of the reasons we have recited, including
    the TC Heartland decision, we do not think that the
    statute is properly read to adopt the view on this point
    expressed by the American Law Institute Federal Judicial
    Code Revision Project 146–47, 200–01 (2004), from which
    the 2011 legislation derived through a process that
    changed the ALI’s proposal (which included repeal of
    § 1400) and produced a quite different congressional
    committee explanation. We also do not adopt the brief
    statement on the issue in Wright, Federal Practice &
    Procedure § 3810 (“Because nothing in the statute limits
    the application of Section 1391(c)(2) to entities formed in
    the United States, the provision governs venue in cases
    involving entities formed in foreign countries.” (citing
    Poliseno v. Credit Suisse Secs. (USA), LLC, 2013 WL
    499509 (D. Mont. Feb. 8, 2013), report & recommendation
    adopted, 2013 WL 1767951 (D. Mont. Apr. 24, 2013))).

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  • The US Venue Laws do Not Protect Alien Defendants

    The US Venue Laws do Not Protect Alien Defendants

    In re HTC Corp. (Fed. Cir. 2018)

    In 2017, 3G Licensing filed its infringement lawsuit in Delaware Federal Court — accusing both HTC Corp. (a Taiwan Corp.) and HTC America (its US Subsidiary based in Washington State) of infringement.  Following TC Heartland, the District Court found that venue was improper for HTC America, but allowed the action to proceed against the foreign company HTC Corp.

    HTC Corp. then petitioned the Federal Circuit for a writ of mandamus on the issue – that writ has been denied.  Here, in particular, the decision indicates that a venue mandamus will no longer be granted simply “to avoid the inconvenience of litigation by having this issue decided at the outset of its case.”  Mandamus is seen by the courts as an extreme remedy and requires a showing that the petitioner has “no other adequate means to attain the relief desired.”  Here, the court notes denial of an improper venue motion can be appealed following a final judgment — and a successful appeal will render the judgment null.  The decision here contrasts with the court’s precedent regarding mandamus on convenience grounds (1404(a)) that really cannot be appealed post-final judgment.

    Continue reading The US Venue Laws do Not Protect Alien Defendants at Patently-O.

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