• BASF loses on jurisdictional argument in NOx case

    The issue in BASF was jurisdictional:

    BASF now asks this court to vacate and remand the
    two ’662 Patent IPR appeals on jurisdictional SAS
    grounds.5 Specifically, BASF argues that “the Board’s
    decisions with respect to at least the 662 patent are
    improper, i.e., ultra vires, as they are not final decisions
    as required by § 318(a)” and as such, “appellate review by
    this Court of those decisions pursuant to § 319 is no
    longer available.” Appellant’s Supp. Br. at 8. Therefore,
    BASF asks this Court to “dismiss the [’662 IPR appeals]
    as moot” and “direct the Board to vacate those decisions
    on remand” on the sole ground that “reviewable, final
    written decisions by the Board do not exist” in the two
    ’662 IPR proceedings. Appellant’s Supp. Br. at 9, 11.
    Importantly, BASF does not seek the Board’s evaluation
    of the non-instituted claims.


    In short, BASF provides no substantive
    reason to warrant remand.6 It argues only jurisdictional
    For this important reason, BASF’s request is controlled
    by PGS Geophysical AS v. Iancu, where this court
    rejected the jurisdictional challenge and proceeded to
    review the merits of the Board’s decision. This case—like
    PGS Geophysical—is a straight challenge to this court’s
    authority to hear the appeal. In PGS Geophysical, we
    specifically held that “the combination of the noninstitution
    decisions and the final written decisions on the
    instituted claims and grounds ‘terminated the IPR proceeding[s]’”
    such that those decisions were final and
    reviewable for purposes of this court’s jurisdiction. 891
    F.3d at 1361 (citing Arthrex, Inc. v. Smith & Nephew, Inc.,
    880 F.3d 1345, 1348 (Fed. Cir. 2018)). The same reasoning
    applies here.
    This court further held in PGS Geophysical that a
    partial institution error is not one we are required to “act
    on in the absence of an appropriate request for relief on
    that basis.” Id. at 1362 (emphasis added). Such a request
    should include a substantive claim of harmful error,
    which is absent here. Id. (“Moreover, the Supreme Court
    in SAS characterized the error at issue here as an error
    under 5 U.S.C. § 706, but errors under that provision are
    generally subject to a traditional harmless-error analysis,
    with challengers of the agency action having the burden
    of showing prejudice”) (citing Shinseki v. Sanders, 556
    U.S. 396, 406, 409 (2009) and Suntec Indus. Co. v. United
    States, 857 F.3d 1363, 1368 (Fed. Cir. 2017)). BASF has
    not argued prejudice at all; it does not request to have the
    Board address the non-instituted claims. Thus, we see no
    reason to vacate and remand on the ’662 Patent IPR

    Of some text about NO reduction:

    Zones discloses using a copper-based CHA zeolite for
    the “reduction of oxides of nitrogen contained in a gas
    stream in the presence of oxygen.” Zones, col. 1 ll. 55–56,
    col. 8 ll. 16–17. Zones Inventor Dr. Stacey Zones stated
    that this phrase “refers to and teaches a number of different
    reactions, including . . . the selective catalytic reduction
    of NO in the presence of an ammonia reducing agent
    and oxygen.” Appx3033. Umicore expert Dr. Lercher
    testified to the same. Appx3389 (36:16–37:25). BASF
    agreed in its Patent Owner’s Preliminary Response that
    “reduction of oxides of nitrogen” in Zones “encompasses a
    number of reactions,” including ammonia SCR, and again
    agreed in oral argument before the Board that the ammonia
    SCR reaction is “encompassed within that phrase.”
    Appx541, n.5; Appx202 (46:6–23).

    Maeshima explains that zeolite catalysts can be used
    with either hydrocarbons or ammonia as the reducing
    agent. Maeshima, col. 1 ll. 15–21, col. 2 ll. 4–8. Maeshima
    teaches that ammonia SCR is preferred because less
    of the reducing agent can be used and “nitrogen oxides
    can be removed at a high ratio.” Id. at col. 1 ll. 21–24.

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  • Jazz Pharmaceuticals: Does the Federal Circuit Really Understand the Dichotomy in the Printed Publication Bar?

    Unfortunately, Lourie’s opinion in Jazz Pharmaceuticals (equally mindless in my opinion) simply latches onto Prost’s words in Suffolk Technologies that a “printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of it publication” to reject Jazz Pharmaceuticals’ entirely valid point that there was no substantial evidence provided to PTAB on the “searchability or indexing” of these ACA materials in saying: “neither indexing nor…

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  • Professor Nimmer on Revised Article 9 and IP Financing

    Professor Raymond T. Nimmer of the University of Houston Law Center, a leader in intellectual property law in the United States, sadly passed away in January of 2018.  Before passing, he authored, “Revised Article 9 and Intellectual Property Asset Financing.”  The abstract states:

    Commercial asset value today often resides primarily in information assets, rather than in the physical assets that dominated the industrial age (goods and real estate). While tangible assets continue to have value, of course, the shift toward intangibles as value is significant and has been occurring for some time. We have not yet seen its end. More important, we have not yet come to grips with its meaning, either for commercial contract law or for commercial asset-based financing. Attitudes and approaches from the commercial world before intangible assets took center stage continue to influence how modern law treats information assets. Intangible assets take a variety of forms. Some involve contract rights to receive payment from third parties. This type of intangible property has provided a basis for commercial financing arrangements for several generations. But, in the modern economy, sources of intangible asset value go beyond contracts. Information has value. Rights to use or to prevent others’ use of information have value. These values do not depend on a contract right to payment. Rather, the value depends on both the situational value of the information itself (e.g., how important is it in light of other sources of similar or the same information) and on a statutory or contractual right to use or to exclude others’ use of the information. It is in dealing with this type of asset that modern commercial asset financing law must be judged because it is here that the major share of economic growth in this country will continue to focus. My purpose in this Article is to explore the relationship between information assets and commercial asset-based financing under proposed revisions of U.C.C. Article 9. This relationship entails a structural and philosophical conflict that engenders uncertainty at various levels. Revised Article 9 represents a massive and largely successful effort to solve many previously uncertain issues in asset-based financing. In information financing, however, many questions are left unanswered or the answers are structured in a manner that exacerbates conflict. We have not reached an effective accommodation between information property rights law and state law of secured financing under Article 9.

    A tribute to Professor Nimmer may be found, here. 

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  • Upping the Trade War with China

    Earlier in 2018, the Office of the US Trade Representative (USTR) imposed a 25% added-value tariff on a set of particular Chinese-made products expected to valued at about $34 billion per year.  A prior notice indicated a plan to increase the 25% tariff to $50 billion worth of goods (an additional $16 billion on Chinese goods ).  Doing the math here – the US is planning here to collect $12.5 billion in tax revenue from the Chinese goods entering into the US. Although a tariff already applied to most Chinese imports, the rate is usually less than 5%.

    As expected, in response to the US tariffs, China imposed increased duties on US goods.

    The USTR has now proposed upping the bet — this time “in the form of an additional 10 percent ad valorem duty on products of China with an annual trade value of approximately $200 billion.” [FR Notice].   Easy math: the new 10% tax should raise an additional $20 billion in general revenue for the U.S. Government.

    China cannot match this added tariff in direct parallel fashion – Since the U.S. only exports about $130 billion to China per year. 

    Continue reading Upping the Trade War with China at Patently-O.

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  • Love, Richardson, Oliver, and Costa on Brokered Patents

    Brian J. Love, Kent Richardson, Erik Oliver, and Michael Costa have published a paper titled An Empirical Look at the “Brokered” Market for Patents, 83 Mo. L. Rev. 359.  Here is the abstract: 
    We studied five years of data on patents listed and sold in the quasi-public “brokered” market. Our data covers almost 39,000 assets, an estimated eighty percent of all patents and applications offered for sale by patent brokers between 2012 and 2016. We provide statistics on the size and composition of the brokered market, including the types of buyers and sellers who participate in the market, the types of patents listed and sold on the market, and how market conditions have changed over time. We conclude with an analysis of what our data can tell us about how to accurately value technology, the costs and benefits of patent monetization, and the brokered market’s ability to measure the impact of changes to patent law.

    The following observations relevant to damages can be found in the paper’s Part V:  Analysis, at p.404:
    First, our data strongly suggests that the brokered market for patents is primarily, and perhaps almost exclusively, a market for the transfer of potential legal liability, not a market for the transfer of technology. . . .

    One important consequence of this conclusion is that prevailing prices in the brokered market may be of limited use for purposes of calculating damages in patent suits. While courts and commentators alike have called for the increased use of evidence derived from the market for “real world” patent transactions, . . . we are not convinced that data from the brokered market is a panacea for concerns about damages calculations. If we are correct that prices in the brokered market largely reflect buyers’ and sellers’ estimates of the litigation value of available assets, then brokered market data falls prey to the same “circularity” concerns that a long list of commentators has raised against undue reliance on prior license agreements. . . . True technology transfer, it would appear, remains hidden from public view even more so than the brokered market for “bare” patent transactions.

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