• Federal Circuit Continues to Develop Patent Venue Law with Recent Trio of Decisions

    The Federal Circuit’s recent venue decisions represent important developments in the interpretation of the patent venue statute. The application of these decisions will have immediate effects on defendants in patent infringement cases, and particularly those who are often subject to suit in popular districts like the Eastern District of Texas and the District of Delaware. While many open questions remain—perhaps most notably the treatment of domestic unincorporated associations—the Federal…

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  • PHOSITA: Not a Person – People Having Ordinary Skill in the Art

    PHOSITA: Not a Person – People Having Ordinary Skill in the Art

    By Dennis Crouch

    The chart above is an update on one that I have published in the and shows a continuation of the longstanding trend toward larger teams. Back in the 1970s and 1980s, most patents listed only a single inventor. Since then, the percentage of one-inventor patents has steadily dropped while larger teams (3+ inventors) have flourished.

    Continue reading PHOSITA: Not a Person – People Having Ordinary Skill in the Art at Patently-O.

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  • 空所・中空部



    –>aperture, bore, cavity, groove, hole, notch, opening, slit, slot

    $$ The lower face of the flange portion 516 has an aperture 514 therein exposing the hollow portion 542. / フランジ部分516の下面は、その中に、中空部分542を露出させる開口514を有する。(USP8734410)

    $$ The extension 18 is attached to the top of the hollow member 1 using a tapered fitting 21. / この延長部18は、テーパー取り付け部品21を介して中空部材1の上部に取り付けられる。(USP8517639)

    $$ This in turn causes a pressure differential across the impeller resulting in the creation of a partial vacuum in the hollow portion of the device 2 upstream of the impeller and thus air is entrained into the open end 22 of the device and sucked through the device before ultimately being expelled through the apertures 30 which form the air outlet of the device. / 続いて、これはインペラ前後の差圧を発生させ、インペラの上流にある装置2の中空部を減圧状態にするので、空気が装置の開口端部(空気流入口)22より吸入され、装置に吸い込まれる。その後、装置の空気流出口を形成する開口部30を通過し、最終的に排出される。(USP6640489)

    $$ The at least one void or recess may contain a liquid or a gel, the gel optionally containing solids particles suspended therein. / 少なくとも1つの空所または凹所は、液体またはゲルを収容してもよく、ゲルは、それに懸濁される固体粒子を任意に収容する。(USP8339009)

    $$ When assembled, first count wheel 20 is received for rotation within circular retainer and second count wheel 30 is received within the inner ring void 25 defined by ring-shaped first count wheel 20 and by first spindle 12. / 組み立て時において、第1のカウント車輪20が円形リテーナ内に回転自在に受理され、第2のカウント車輪30が、環状の第1のカウント車輪20および第1のスピンドル12により画定された内部環状空所25内に受理される。(USP8113199)

    $$ The torque from each cavity may be found. / トルクは空所ごとに計算できる。(USP7650871): cavity

    $$ A number of seals are provided so as to prevent leakage of transportation fluid flowing along the pipe and end fitting bore. / 幾つかのシールが設けられ、パイプ及びエンドフィッティングの中空部に沿って流れる輸送流体の漏洩を阻止している。(USP8112863): bore


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  • Patently-O Bits and Bytes by Juvan Bonni

    Patently-O Bits and Bytes by Juvan Bonni

    Recent Headlines in the IP World:

    • Mary Carolan: Court Refuses Injunctions in Pharma Patent Case (Source: The Irish Times)
    • Phil Dierking and Susan Shand: US to Limit Some Chinese Visas (Source: Voice of America)
    • Natasha Turak: Tariff Increases could Bring us Back to 2008 Crisis Levels, World Bank Warns (Source: CNBC)
    • Annie Wu: European Union Files WTO Complaint Against China on Unfair Intellectual Property Practices (Source: The Epoch Times)
    • Taruka Srivastav: Cheil India’s Creative and Digital Chiefs on Fusing Creativity and Technology to Build Intellectual Property (Source: The Drum)
    • Sebastien Bell: GM Wants to Make Actual Transformers–Kinda (Source: GM Inside News)

    Source: GM Inside News

    Commentary and Journal Articles:

    • Attorney Joanna Rowley: World Environment Day – How Patents Are Saving Our Environment (Source: Haseltine Lake, LLP)

    Source: Haseltine Lake, LLP

    • J. Gregory Sidak: Court-Appointed Neutral Economic Experts (Source: SSRN)
    • Prof. Matthew Rimmer: Northern Exposure: Alaska, Climate Change, Indigenous Rights, and Atmospheric Trust Litigation (Source: SSRN)
    • Prof. Ugo Pagano: Finance, Intangibles and the Privatization of Knowledge (Source: SSRN)
    • Prof.

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

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  • Brain atrophy in multiple sclerosis

    Rebecca Spain has been studying lipoic acid as an agent to reduce the rate of brain shrinkage in MS patients. From a report to the
    US Dept of Veterans Affairs:

    Despite all the breakthroughs in MS research, treatments for secondary progressive MS (SPMS) are still lacking. With the help of many colleagues, I (Dr. Rebecca Spain) conducted a pilot trial at the VA Portland Health Care System to see if the over-the counter supplement, lipoic acid, would help people with SPMS. Lipoic acid is a substance naturally made by our bodies. It has a number of useful actions such as boosting energy production of cells, keeping the immune system from over-reacting, and fighting damaging and aging forces (free radicals) in the body. Although we don’t fully understand what happens to cause SPMS, we do know that a loss of energy, altered immune system, and free radicals may all make SPMS worse. Therefore, it made sense to see if lipoic acid could help slow the worsening of disability in SPMS.


    Why is brain atrophy important? Brain atrophy is a normal part of aging that happens to all of us, starting in our mid-20’s. However, in MS this atrophy can happen faster than the normal pace. The increased brain atrophy goes hand in hand with greater MS disability. Therefore, we believe that by slowing the rate of atrophy, we may slow the rate of worsening disability from MS.

    link: https://www.va.gov/MS/Veterans/research/Research_Lipoic_Acid_and_Secondary_Progressive_MS.asp

    MutlipleSclerosisNewsToday discusses the significance of a specific atrophy measure, the shrinkage of previously existent lesions:

    However, researchers now suggest that the disappearance of lesions may indicate pathological change, such as atrophy, as well as beneficial alterations, including resolution or repair of myelin (the protective layer of nerve fibers which is typically damaged in MS patients).

    Focusing on pathological changes in brain lesions, the scientists examined lesions observed in prior scans, but later replaced by cerebrospinal fluid (the liquid filling the brain and spinal cord). This opposed the traditional approach of examining new lesions, they noted.

    “The big news here is that we did the opposite of what has been done in the last 40 years,” Michael G. Dwyer, PhD, first author of the five-year study, said in a press release. “Instead of looking at new brain lesions, we looked at the phenomenon of brain lesions disappearing into the cerebrospinal fluid.

    Specifically, investigators compared the rate of lesion loss due to atrophy to the appearance or enlargement of lesions both at the start of the study and at five or 10 years of follow-up.

    Conducted at the University at Buffalo (UB) in New York, the five-year study included 192 patients with either the most common form of MS, relapsing-remitting MS (126 patients), progressive MS (48), or clinically isolated syndrome — the first episode of inflammation and loss of myelin, but not yet meeting the criteria for MS.


    “We didn’t find a correlation between people who developed more or larger lesions and developed increased disability,” Dwyer said, “but we did find that atrophy of lesion volume predicted the development of more physical disability.”

    When dividing the analysis by MS types, the scientists found that patients with relapsing-remitting MS had the highest number of new lesions, while those with progressive MS (the most severe subtype of the disease) had the most pronounced atrophy of brain lesions.

    “Atrophied lesion volume is a unique and clinically relevant imaging marker in MS, with particular promise in progressive MS,” the researchers wrote.

    “Paradoxically, we see that lesion volume goes up in the initial phases of the disease and then plateaus in the later stages,” said Robert Zivadinov, MD, PhD. Zivadinov is senior author of the five-year study and first author of the 10-year research. “When the lesions decrease over time, it’s not because the patients’ lesions are healing but because many of these lesions are disappearing, turning into cerebrospinal fluid.”

    link: https://multiplesclerosisnewstoday.com/2018/06/07/atrophy-brain-lesions-predicts-disability-ms-study-finds/

    The Buffalo work is not inconsistent with that of Rebecca Spain, and tends to support Spain’s strategy.

    See also
    Lipoic acid and secondary progressive multiple sclerosis

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  • Is Gabibbo a knock-off of "Big Red" of Western Kentucky University?

    See the post
    Italian court affirms merits of plagiarism suit filed by creator of Western Kentucky’s Big Red

    Gabibbo is a symbol of a satirical news show Mediaset airs in Italy. Big Red is a red, furry blob created by WKU student Ralph Carey in 1979 [the school sports teams are named Hilltoppers.] For a likeness of Big Red, see SBNation: https://www.sbnation.com/2017/6/30/15900920/big-red-western-kentucky-mascot-what

    As to trademark issues, an animal likeness can be claimed in different use areas (e.g. Tony the Tiger for cereals vs. the Exxon tiger). Can one copy a non-real animal likeness? Must the copying be exact?

    As to copyright issues, how exact must the copying be of an otherwise not-preexisting “creature”?


    See also


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  • CAFC addresses "SAS Institute" issues in PGS Geophysical

    PGS Geophysical AS owns U.S. Patent No. 6,906,981, which describes and claims methods and systems for performing “marine seismic surveying” to determine the structure of earth formations below the seabed. WesternGeco, L.L.C., a competitor of PGS’s, filed three petitions requesting inter partes reviews (IPRs) of claims 1– 38 of the ’981 patent. The Patent Trial and Appeal Board of the Patent and Trademark Office (PTO), acting as the PTO Director’s delegate, instituted three IPRs, but it specified for review only some of the claims WesternGeco challenged and only some of the grounds for WesternGeco’s challenges, not all claims or all grounds. In its final written decisions in the IPRs, the Board ruled partly for PGS and partly for WesternGeco on the reviewed claims and grounds. Both PGS and WesternGeco appealed, but WesternGeco then settled with PGS and withdrew, leaving only PGS’s appeals as to certain claims of the ’981 patent that the Board ruled unpatentable for obviousness. The Director intervened to defend the Board’s decisions. 35 U.S.C. § 143.

    We affirm. We first conclude that, although SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, we have jurisdiction to address the merits of the Board’s final written decisions and that we need not, and will not, sua sponte revive the “non-instituted” claims and grounds.

    We first consider whether we have jurisdiction to address PGS’s appeals and whether, if so, we may and should decide those appeals and do so without sua sponte remanding for the Board to address the claims and grounds that WesternGeco included in its petitions but
    that the Board excluded from the IPRs. Both PGS and the Director answer yes to those questions. So do we. The issue arises because of the Supreme Court’s recent decision in SAS, which held that the IPR statute does not permit a partial institution on an IPR petition of the sort presented here. 138 S. Ct. at 1352–54. Neither PGS nor the Director asks for any SAS-based action— whether to block our deciding the appeal on the instituted claims and grounds or to revive the “non-instituted” claims or grounds. Nor has a request for SAS-based relief been filed by WesternGeco, which settled with PGS and withdrew from the appeals long ago.

    We will treat claims and grounds the same in considering the SAS issues currently before us. In light of SAS, the PTO issued a “Guidance” declaring that the Board will now institute on all claims and all grounds included in a petition if it institutes at all. PTO, Guidance on the impact of SAS on AIA trial proceedings (Apr. 26, 2018).2 The cases currently in this court, which emerged from the Board under pre-SAS practice, raise certain transition issues. We will address those issues without distinguishing non-instituted claims from non-instituted grounds. Equal treatment of claims and grounds for institution purposes has pervasive support in SAS. Although 35 U.S.C. § 318(a), the primary statutory ground of decision, speaks only of deciding all challenged and added “claim[s],” the Supreme Court spoke more broadly when considering other aspects of the statutory regime, and it did so repeatedly.


    We read those and other similar portions of the SAS opinion as interpreting the statute to require a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition, and we have seen no basis for a contrary understanding of the statute in light of SAS. We note that it is a distinct question (not presented here) whether, after instituting on the entire petition, the Board, in a final written decision, may decide the merits of certain challenges and then find others moot, the latter subject to revival if appellate review of the decided challenges renders the undecided ones no longer moot.


    Finality is also seen by drawing on the analogy to civil litigation the Court invoked in SAS. What the Board did here is analogous to a situation in which a district court, upon receipt of a two-count complaint, incorrectly dismisses one count early in the case (without prejudice to refiling in that forum or elsewhere) and proceeds to a merits judgment on the second count. Once the second count is finally resolved, there would be a final judgment in that situation, with both counts subject to appeal. The early dismissal would be final as to that claim, see United States v. Wallace & Tiernan Co., 336 U.S. 793, 794 n.1 (1949) (involuntary dismissal without prejudice is reviewable final judgment if it stands alone); H.R. Techs., Inc. v. Astechnologies, Inc., 275 F.3d 1378, 1383 (Fed. Cir. 2002) (same); Cyprus Amax Coal Co. v. United States, 205 F.3d 1369, 1372 (Fed. Cir. 2000) (same), though not immediately reviewable. Under broadly recognized principles addressing review of partial dispositions once the rest of the case is resolved, see 15A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure §§ 3914.7, 3914.9 (2d ed. 2018), the early dismissal would become reviewable upon “the entry of a judgment adjudicating all the claims,” Fed. R. Civ. P. 54(b).


    Having found jurisdiction, we readily conclude that we may decide PGS’s appeals of the Board decisions and that we need not reopen the non-instituted claims and grounds. In this case, no party seeks SAS-based relief. We do not rule on whether a different conclusion might be warranted in a case in which a party has sought SASbased relief from us. We have uncovered no legal authority that requires us sua sponte to treat the Board’s incorrect denial of institution as to some claims and grounds either as a basis for disturbing or declining to review the Board’s rulings on the instituted claims and grounds or as a basis for reopening the IPRs to embrace the non-instituted claims and grounds. Even if the Board could be said to have acted “ultra vires” in refusing to institute reviews of some claims and grounds—and then proceeding to merits decisions concerning the claims and grounds included in the instituted reviews—the Board’s error is waivable, not one we are required to notice and act on in the absence of an appropriate request for relief on that basis. See CBS Broad., Inc. v. EchoStar Commc’ns Corp., 450 F.3d 505, 520 n.27 (11th Cir. 2006) (finding challenge to FCC action as ultra vires waived). S

    **As to the obviousness issue–>

    As relevant here, “[t]he obviousness inquiry entails consideration of whether a person of ordinary skill in the art would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and . . . would have had a reasonable expectation of success in doing so.” Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 859 (Fed. Cir. 2015) (internal quotation marks and citation omitted). Such a motivation and reasonable expectation may be present where the claimed invention is the “combination of familiar elements according to known methods” that “does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415–16 (2007). Whether there would have been such a motivation on the relevant priority date is an issue of fact, and we review the Board’s finding on the issue for substantial-evidence support. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1021 (Fed. Cir. 2017), cert. denied, 2018 WL 1994802 (U.S. Apr. 30, 2018) (No. 17-349). “Substantial evidence . . . means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 229 (1938); Skky, Inc., 859 F.3d at 1021.
    PGS contends that the Board did not really make the needed motivation finding. It cites decisions in which we have explained that the finder of fact in a case like this must go beyond the question of whether one of ordinary skill in the art could have combined the references at issue (in the way claimed) to answer the question of whether such an artisan would have been motivated to do so. See, e.g., Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). Although the questions are related, clarity in distinguishing them is important, and its absence has sometimes justified a remand. E.g., Personal Web, 848 F.3d at 994. Nevertheless, while “we may not supply a reasoned basis for the agency’s action that the agency itself has not given, we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.” Bowman Transp., Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281, 286 (1974) (citing SEC v. Chenery Corp., 332 U.S. 194, 196–97 (1947)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016). And in this case, we think that, in the end, the Board did not fail to address the motivation question. We understand the Board to have answered that question. Immediately after stating that PGS “does not dispute Petitioner’s assertion that the combination of Beasley and Edington describes each element of independent claim 1, but merely asserts that an ordinarily skilled artisan would not have combined Beasley and Edington,” it concluded: “Accordingly, upon reviewing the record developed during trial, we are persuaded by Petitioner’s position regarding the relevant teachings of Beasley and Edington and address in detail only the disputed issues relating to the combinability of Beasley and Edington.” 309 Final Decision, 2016 WL 3193820, at *11. The Board also affirmatively focused on the “other types of encoding” language of Beasley as an affirmative suggestion to look elsewhere, especially to a time-delay reference, in light of Beasley’s contemplation of small time delays between firing seismic sources, as we have discussed.

    “[T]he motivation to modify a reference can come from the knowledge of those skilled in the art, from the prior art reference itself, or from the nature of the problem to be solved.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). We are left with no meaningful doubt about the Board’s motivation finding and its basis.


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  • Shotgun!

    In the last few weeks, the Federal Circuit has been publishing opinions via its web site that include a date that follows the case name.  You can see some examples below: The dates tend to be one or two working days before the opinions are released to the public.  So, they are not actually the […]

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  • Patent Office asks Federal Circuit to Allow Board to Reconsider Eligibility Rejections

    Yesterday I wrote about the United States Patent and Trademark Office filing a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc., which was filed on June 5, 2018. This was not the only such motion filed by the USPTO. On June 4, 2018, the Office filed an Unopposed Motion for Remand in In re: Allscripts Software, LLC, which similarly asks the United States Court of Appeals for the Federal Circuit to vacate the decision of the Patent Trial and Appeal Board…

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