• Copyright and Fair Use in the Age of YouTube

    The opinion acknowledges, in a footnote on page 3, that videos of the type that the Klein’s created, is not unique. Instead, it is part of a growing genre of “reaction videos” in which portions of an original video are interspersed with commentary to create a new creative work… Luckily for the Kleins, their fans were ready and willing to create a legal fund for their use. YouTube has also taken action to protect some content creators subject to false DMCA notices. However, with over 800…

    Continue Reading ...
  • CAFC tackles estoppel, royalty rate in XY v. Trans Ova

    The outcome in XY vs Trans Ova :


    We affirm in part, vacate in part, and remand. Two
    issues presented on appeal are moot. With respect to the
    remaining issues, we affirm on all issues except the
    district court’s ongoing royalty rate, which we vacate. We
    remand for the district court to recalculate an ongoing
    royalty rate in accordance with this opinion.

    Note:


    We do not find, as the Dissent states, that “in the
    event of conflict the administrative agency’s decision
    ‘moots’ the district court’s decision.” Dissent at 6. Rather,
    we find that an affirmance of an invalidity finding,
    whether from a district court or the Board, has a collateral
    estoppel effect on all pending or co-pending actions.
    This court has long applied the Supreme Court’s holding
    in Blonder-Tongue to apply collateral estoppel in mooting
    pending district court findings of no invalidity based on
    intervening final decisions of patent invalidity. See, e.g.,
    Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1576
    (Fed. Cir. 1994); Dana Corp. v. NOK, Inc., 882 F.2d 505,
    507–08 (Fed. Cir. 1989). This court also recently applied
    the Supreme Court’s holding in B&B Hardware, Inc. v.
    Hargis Industries, Inc., 135 S. Ct. 1293, 1303 (2015), to
    apply such estoppel to Board decisions. See MaxLinear,
    Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir. 2018)
    The instant case is a straightforward application of this
    court’s and Supreme Court precedent.

    As to the Dissent’s concern of applying estoppel without
    briefing, both precedent and the parties’ positions
    allow application of collateral estoppel sua sponte here. A
    remand for briefing is not a requirement to applying
    estoppel when there is no indication from the Patent
    Owner that “it did not have a full and fair opportunity to
    litigate the validity” of its patent in the parallel case.
    Dana Corp., 882 F.2d at 508. Here, in oral argument,
    both parties assumed that an affirmance of the Board’s
    decision would result in estoppel and thus simply disputed
    the result of such estoppel. Trans Ova argued that an
    affirmance would call for a remand of this case to reassess
    damages in light of the Freezing Patent’s invalidity,
    while XY argued that an affirmance would not require
    a remand because the asserted patents were grouped in a
    way where the invalidation of one patent would not affect
    the damages award. Oral Arg. at 1:30–46, 18:10–19:20.
    There is no indication that either party thought estoppel
    would not apply. Thus, this court, in circumstances such
    as this one, applies estoppel sua sponte to avoid “unnecessary
    judicial waste” from remanding an issue that has a
    clear estoppel effect. Arizona v. California, 530 U.S. 392,
    412 (2000).

    Of royalty:


    XY points out that, if we were to affirm the result in
    this case, it would result in the “absurd practical result
    . . . that XY would have been better off forgoing the
    12.5% ongoing royalty and suing Trans Ova repeatedly for
    future infringement at the jury’s 15% reasonable royalty
    rate.” XY Reply Br. at 13. Assuming no changed circumstances
    exist (either good or bad for XY) between the date
    of first infringement and the date of the jury’s verdict, we
    agree with XY that allowing the district court’s ongoing
    rates to stand in this case would create an odd situation.
    Although district courts may award a lower ongoing
    royalty rate if economic factors have changed in the
    infringer’s favor post-verdict—for example, if a newlydeveloped
    non-infringing alternative takes market share
    from the patented products—the district court identified
    no economic factors that would justify the imposition of
    rates that were lower than the jury’s.1

    Continue Reading ...
  • CAFC affirms D. Delaware in UCB case by 2-1 vote

    The CAFC affirmed D. Delaware in the UCB case:


    Following a bench trial, the district court made exhaustive
    fact findings based on the trial evidence and
    concluded that the asserted claims of the ’551 patent are
    not invalid. Appellants appeal that decision, arguing that
    the district court misapplied the legal standards for
    obviousness-type double patenting, obviousness, and
    anticipation, and that the prior art anticipates and/or
    renders the ’551 patent obvious.
    As explained more fully below, we hold that the district
    court applied the correct legal standards in its obviousness-type
    double patenting, obviousness, and
    anticipation analyses. And because we discern no clear
    error in its underlying fact findings, we affirm the district
    court’s ultimate conclusion that the asserted claims are
    not invalid.

    Of obviousness-type double patenting:


    By statute, only a single patent may issue for the
    same invention. See 35 U.S.C. § 101 (“Whoever invents or
    discovers any new and useful process, machine, manufacture,
    or composition of matter, or any new and useful
    improvement thereof, may obtain a patent therefor . . . .”)
    (emphasis added); In re Lonardo, 119 F.3d 960, 965
    (Fed. Cir. 1997) (“[Section 101] thus permits only one
    patent to be obtained for a single invention, and the
    phrase ‘same invention’ refers to an invention drawn to
    substantially identical subject matter.”).
    Nonstatutory double patenting, however, is a judicially-created
    doctrine, which “prohibits an inventor from
    obtaining a second patent for claims that are not patentably
    distinct from the claims of the first patent.” Id. at
    965. It “prevent[s] the extension of the term of a patent,
    even where an express statutory basis for the rejection is
    missing, by prohibiting the issuance of the claims in a
    second patent not patentably distinct from the claims of
    the first patent.” Otsuka Pharm. Co. v. Sandoz, Inc.,
    678 F.3d 1280, 1297 (Fed. Cir. 2012) (quoting In re Longi,
    759 F.2d 887, 892 (Fed. Cir. 1985)) (alteration in original).
    The obviousness-type double patenting analysis involves
    two steps: “First, the court ‘construes the claim[s]
    in the earlier patent and the claim[s] in the later patent
    and determines the differences.’ Second, the court ‘determines
    whether those differences render the claims
    patentably distinct.’” AbbVie Inc. v. Mathilda & Terence
    Kennedy Inst. of Rheumatology Tr., 764 F.3d 1366, 1374
    (Fed. Cir. 2014) (quoting Sun Pharm. Indus., Ltd. v. Eli
    Lilly & Co., 611 F.3d 1381, 1385 (Fed. Cir. 2010)). The
    second part of this analysis is analogous to the obviousness
    inquiry under 35 U.S.C. § 103 in the sense that if an
    earlier claim renders obvious or anticipates a later claim,
    the later claim is not patentably distinct and is thus
    invalid for obviousness-type double patenting. Id.
    at 1378–79. In chemical cases, the double patenting
    inquiry is not whether a person of ordinary skill in the art
    would select the earlier compound as a lead compound,
    but rather whether the later compound would have been
    an obvious or anticipated modification of the earlier
    compound. Otsuka, 678 F.3d at 1297. Unlike in an
    obviousness analysis, the underlying patent in the double
    patenting analysis need not be prior art to the later claim.
    See id.

    (…)

    We agree with Appellants that the obviousness-type
    double patenting inquiry requires consideration of the
    differences between the claims in the reference
    ’301 patent and the ’551 patent. As we stated above, the
    focus of the double patenting analysis entails determining
    the differences between the compounds claimed in the
    reference and asserted patents and then “determin[ing]
    whether those differences render the claims patentably
    distinct.” AbbVie, 764 F.3d at 1374 (emphasis added). In
    this case, both claims recite a methoxymethyl group at R3.
    Thus, the double patenting analysis requires determining
    whether the claims’ differences, i.e., unsubstituted benzyl
    and methyl at R and R1, would have been obvious to one
    of skill in the art.

    (…)

    We turn next to the district court’s double patenting
    analysis. Appellants assert that claims 9, 10, and 13 of
    the ’551 patent are not patentably distinct from claims
    44–47 of the ’301 patent and are thus invalid for obviousness-type
    double patenting. Because these claims only
    have a common methoxymethyl group at the R3 position,
    the question before us is whether a person of ordinary
    skill in the art, starting with claim 45 of the ’301 patent,
    would have been motivated to place an unsubstituted
    benzyl at R and an unsubstituted methyl at R1 in combination
    with the methoxymethyl group at R3 with a reasonable
    expectation of success. We acknowledge that this
    is a close case, but because we discern no clear error in
    the district court’s underlying fact finding that there
    would have been no reasonable expectation of success in
    placing an unsubstituted benzyl and methyl in the
    claimed combination, we agree with the district court that
    the asserted claims of the ’551 patent are patentably
    distinct from the ’301 patent.

    (…)

    Here, the district court, relying on the prior
    art and expert evidence, found no reasonable expectation
    of success. That is a fact finding that we review for clear
    error following a bench trial. Par Pharm., Inc. v. TWI
    Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014).

    Of enantiomers:


    We hold that the district court did not clearly err in
    finding that LeGall does not anticipate claim 9 of the
    ’551 patent. As the district court recognized, we have
    held that “[t]he knowledge that enantiomers may be
    separated is not ‘anticipation’ of a specific enantiomer
    that has not been separated, identified, and characterized.”
    Id. at 1084.

    In her dissent, CJ Prost writes


    An obviousness
    determination requires that a skilled artisan would have
    perceived a reasonable expectation of success in making
    the invention in light of the prior art. Id. at 1362. This is
    a question of fact, which we review for clear error following
    a bench trial. Par Pharm., Inc. v. TWI Pharm., Inc.,
    773 F.3d 1186, 1198 (Fed. Cir. 2014). “A factual finding is
    clearly erroneous if, despite some supporting evidence,
    ‘the reviewing court on the entire evidence is left with the
    definite and firm conviction that a mistake has been
    committed.’” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
    1359 (Fed. Cir. 2007) (quoting United States v. U.S.
    Gypsum Co., 333 U.S. 364, 395 (1948)).

    (…)

    While it is true that there may be some evidence
    supporting the district court’s view, given the overwhelming
    evidence to the contrary, I am “left with the definite
    and firm conviction that a mistake has been committed.”
    Pfizer, 480 F.3d at 1359 (quoting U.S. Gypsum, 333 U.S.
    at 395).

    (…)

    It was clear error for the district court to require testing
    to provide “insight into the effectiveness of benzyl and
    methyl relative to other structures that could be placed at
    R and R1.” Id. Where the prior art teaches that the
    selected substituent will work, even when it is selected
    from thousands of compounds, an inability to predict how
    any one substituent will work in the composition and a
    need for testing will not render that selection nonobvious.
    See In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985)
    (“Although [the inventor] declared that it cannot be
    predicted how any candidate will work in a detergent
    composition, but that it must be tested, this does not
    overcome [the prior art’s] teaching that hydrated zeolites
    will work.”); Pfizer, 480 F.3d at 1364.

    Continue Reading ...
  • Famous quotations that never were said

    About ten years ago, in May 2008, IPBiz in the post
    The urban legend of the Duell quote continues
    the fake quote attributed to
    Charles H. Duell:

    Everything that can be invented has been invented

    was debunked.

    This quote had infiltrated a number of otherwise reliable sources
    [ the Patently-O blog as well as in Joseph Hosteny’s article in the May 2005 issue of Intellectual Property Today (pp. 28-29) ]
    See
    “Wrong expert prediction” site starts with fake quote of Duell

    Recently, someone emailed me a quote attributed to Abraham Lincoln:


    “I have two great enemies, the Southern Army in front of me, and the financial institutions in the rear. Of the two, the one in my rear is my greatest foe.”

    On the internet, this is stated to be from a statement to Congress in 1865.

    Of a different version of this concept, Snopes writes

    Abraham Lincoln said:As a result of the war, corporations have been enthroned, and an era of corruption in high places will follow, and the money power of the country will endeavor to prolong its reign by working on the prejudices of the people until all wealth is aggregated in a few hands, and the republic is destroyed. I feel at this moment more anxiety for the safety of my country than ever before even in the midst of war. God grant that my suspicions may prove groundless.

    These words did not originate with Abraham Lincoln, however — they appear in none of his collected writings or speeches, and they did not surface until more than twenty years after his death (and were immediately denounced as a “bold, unflushing forgery” by John Nicolay, Lincoln’s private secretary). This spurious Lincoln warning gained currency during the 1896 presidential election season (when economic policy, particularly the USA’s adherence to the gold standard, was the major campaign issue), and ever since then it has been cited and quoted by innumerable journalists, clergymen, congressmen, and compilers of encyclopedias.

    Pedigree for this quote is often asserted by pointing to the 1950 Lincoln Encyclopedia, compiled by Archer H. Shaw, which “authenticates” the quote by citing a purported 1864 letter from Lincoln to one Col. William F. Elkins found in Emanuel Hertz’s 1931 book, Abraham Lincoln: A New Portrait.However, this source is fraudulent: the Elkins letter reproduced by Hertz was a forgery, and Shaw, a sloppy compiler, added the bogus letter to his encyclopedia

    BUT see Truth or Fiction .

    The text is from a purported letter to William F. Elkins dated November 21, 1864.

    Whether in late 1864 or in 1865, neither the Southern army nor the banks were much of an enemy to Lincoln. Much effort was placed on securing passage of the 13th Amendment in the House.

    Of the financing of the Civil War, see The High Cost of War in Barron’s:
    https://www.barrons.com/articles/SB50001424052970203990104576191061207786514?tesla=y

    It is difficult to track down quotations attributed to people no longer living.
    However, even among the living, myths propagate.
    See

    Things that weren’t actually said, but became myths

    Continue Reading ...
  • Sorting Cases: Applying Collateral Estoppel Mid-Stream

    Sorting Cases: Applying Collateral Estoppel Mid-Stream

    by Dennis Crouch

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

    The split decision here reveals an important dispute between Federal Circuit judges over the impact of AIA trials on pending litigation.  In this case, XY’s six patents in suit relate to the sorting of semen by gender (used for farm animal breeding).  My discussion below focuses on only one of the patents that was first enforced by the district court but later cancelled by a PTAB action.

    Background: After their patent license deal went bust, XY sued Trans Ova for infringement and a jury found that the patents were not invalid and also willfully infringed. (The district court also decided contract and antitrust issues).  Following final judgment from the district court siding with the patentee, the Patent Trial and Appeal Board (PTAB) issued its final judgment finding two of the aforementioned infringed claims to be unpatentable. Claims 1 and 3 of U.S. Patent No. 7,195,920.  That PTAB decision was affirmed today without opinion by the same 3-judge panel of Judges Chen, Dyk, and Newman.

    Continue reading Sorting Cases: Applying Collateral Estoppel Mid-Stream at Patently-O.

    Continue Reading ...
  • 強度

                            目次はこちら

    強度

    (STRENGTH) (力学的・機械的強度に用いられることが多いようである)
    $$ This treatment has been found to help give the diaph…

    Continue Reading ...
  • Federal Circuit Remands for Recalculation of Ongoing Royalty

    The decision, XY, LLC v. Trans Ova Genetics, L.C., was published this morning (majority opinion authored by Judge Chen and joined by Judge Dyk; partial dissent on non-damages-related issues by Judge Newman).  The facts are complex, involving six patents relating to the sorting of X- and Y-chromosome bearing sperm cells, and there are several legal questions in dispute, including antitrust and collateral estoppel issues.  For purposes of this blog, the principal issue of interest is the calculation of an ongoing royalty for the use of XY’s technology.  The jury awarded a royalty for past infringement using a rate of 15%  of the defendant’s gross sales and 4% for “reverse sorting” services (described in the opinion at p.3 n.1).  The judge awarded an ongoing royalty using lower rates, respectively 12.5% and 2%.  This is unusual; typically, the rate for the ongoing royalty is higher than the rate for past infringement, in accordance with Federal Circuit case law holding that the ongoing royalty should reflect the change in circumstances now that the defendant has been adjudicated liable for infringing a valid patent.  I and others have critiqued this case law numerous times, on the ground that, since the rate for past infringement is supposed to reflect the bargain the parties would have struck ex ante knowing the patent to be valid and infringed, the rate for past and future infringement should be identical.  But the case law is what it is.  Here, in awarding a lower rate for future infringement, the district court erred in the opposite direction, adopting a rate that was in between the rate awarded by the jury for past infringement and the rate the parties themselves had agreed at one time, prior to the dispute that resulted in this litigation.  But the difference between those rates is what you would expect, given that a real-world ex ante rate will reflect some discount for the probability of invalidity and infringement, and the royalty awarded for past infringement should, again, reflect the assumption that the parties bargained knowing the patent to be valid and infringed.  Anyway, the Federal Circuit, without couching the matter in economic terms vacates the district court’s judgment as to the ongoing royalty and remands, stating:

    . . . The focus should have been on XY’s improved bargaining position and any other changed economic factors (as articulated in Amado, ActiveVideo, and Paice) rather than XY’s past acts.

    XY points out that, if we were to affirm the result in this case, it would result in the “absurd practical result . . . that XY would have been better off forgoing the 12.5% ongoing royalty and suing Trans Ova repeatedly for future infringement at the jury’s 15% reasonable royalty rate.” XY Reply Br. at 13. Assuming no changed circumstances exist (either good or bad for XY) between the date of first infringement and the date of the jury’s verdict, we agree with XY that allowing the district court’s ongoing rates to stand in this case would create an odd situation. Although district courts may award a lower ongoing royalty rate if economic factors have changed in the infringer’s favor post-verdict—for example, if a newly developed non-infringing alternative takes market share from the patented products—the district court identified no economic factors that would justify the imposition of rates that were lower than the jury’s. . . (p.26).   
    Continue Reading ...
  • Patently-O Bits and Bytes by Juvan Bonni

    Patently-O Bits and Bytes by Juvan Bonni

    Recent Headlines in the IP World:

    • Kraig Becker: Nike’s Latest Patent Turns Your Workout Clothes into Towels (Source: Digital Trends)
    • Jason Cannon: Nikola Suing Tesla Over Alleged Electric Semi Truck Patent Infringement (Source: Equipment World)
    • Cal Jeffrey: Israeli Camera Startup Expands its Patent Claims Against Apple with Second Lawsuit (Source: Tech Spot)
    • David Lawder, Ryan Woo, & Paul Simao: U.S. keeps China, Puts Canada on IP Priority Watch List (Source: Reuters)

    Commentary and Journal Articles:

    • Prof. Arti K. Rai & Prof. Barak D. Richman: A Preferable Path for Thwarting Pharmaceutical Product Hopping (Source: Health Affairs)
    • Prof. Jorge L. Contreras: Considerations Regarding a Canadian Patent Collective (Source: SSRN)
    • Prof. Mohammed Salem Abou El Farag: Is ADR Suitable for the Resolution of Intellectual Property Disputes? (Source: SSRN) 
    • John Dubiansky: Competition Advocacy and the Patent System: Promoting Competitive Markets for Technology (Source: SSRN)

    New Job Postings in Patent Law:

    • BASF
    • United Patents
    • Jones Robb

    Book Recommendations:

    • Prof.

    Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

    Continue Reading ...