• Federal Circuit Affirms District Court’s Finding of Validity of Claims Directed to Aveed®

    When relying on scientific guidelines to support an obviousness rationale, practitioners should offer evidence for why contradictory guidelines should be discounted. A claimed constituent is not “necessarily present” if the prior art reference lists several alternative constituents and a skilled artisan could not reasonably deduce that the authors of the prior art reference used the claimed constituent.

    The post Federal Circuit Affirms District Court’s Finding of Validity of Claims Directed to…

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  • Ex parte Galloway (PTAB 2018)

    By Donald Zuhn — In a decision issued in May, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office reversed the final rejection of claims 35-48 in U.S. Application No. 13/512,585. The claims at issue had been rejected by the Examiner under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 7,056,690 (“Laskey”) in view of Pajor et al., International Society for Analytical, Cytometry Part A. (2008) (“Pajor”), and Stoeber et al., J. Nat. Cancer Inst. 94(14): 1071-79 (2002) (“Stoeber”), and under 35 U.S.C. § 101 as being directed to a judicial exception without…

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  • 好適



    $$ A single outlet also provides a convenient and non-turbulent fluid flow to a subsequent separation chamber. / また、単一の出…

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  • Facebook, Artifical Intelligence, IP and Universities

    In a recent New York Times article, “Facebook Adds AI Labsin Seattle and Pittsburg, Pressuring Local Universities,” Cade Metz describes Facebook’s push to hire leading academics in the artificial intelligence space.  It appears that at least some of the university researchers are retaining their university positions—although one article states that an 80/20% split of work for one researcher with 80% work for Facebook.  This arrangement appears to be similar to ordinary sponsored research relationships.  Sponsored research relationships in the United States have received quite a bit of attention from academics.  Notably, the American Association of University Professors (AAUP) has released a relatively detailed document outlining best practices for industry/university sponsored research relationships—over 50 best practices principles.  Several principles include faculty engagement on issues concerning intellectual property ownership, management and transfer.  Principle 14 states:

    PRINCIPLE 14—IP Management and Sponsored Research Agreements: In negotiating sponsored research agreements, university administrators should make every effort to inform potentially affected faculty researchers and to involve them meaningfully in early-stage negotiations concerning invention management and intellectual property. In the case of large-scale sponsored research agreements like Strategic Corporate Alliances (SCAs), which can affect large numbers of faculty, not all of whom may be identifiable in advance, a special faculty governance committee should be convened to participate in early-stage negotiations, represent collective faculty interests, and ensure compliance with relevant university protocols. Faculty participation in all institutionally negotiated sponsored-research agreements should always be voluntary.

    Principle 18 concerns upfront intellectual property licensing and states:

    PRINCIPLE 18—Upfront Exclusive Licensing Rights for Research Sponsors: Universities should refrain from signing sponsored research agreements, especially multi-year strategic corporate alliance (SCA) agreements, that grant sponsors broad title or exclusive commercial rights to future sponsored research inventions and discoveries—unless such arrangements are narrowly defined and agreed to by all faculty participating in, or foreseeably affected by, the alliance. If this is not feasible, as in the case of larger SCAs, the faculty senate should review and approve the agreement and confirm its compatibility with academic freedom, faculty independence, and the university’s public interest mission. All parties should consider the impact exclusive licenses could have on future uses of technologies. When granted, exclusive rights should be defined as narrowly as possible, restricted to targeted fields of use, and designed to safeguard against abuse of the exclusive position.

    In an article by Nat Levy in GeekWire, which includes responses from the Chief AI Scientist for Facebook, Yann LeCun, LeCun outlines how Facebook is careful not to divert too many resources from universities in crafting their relationship with them.  Notably, on IP rights, LeCun states:

    “Facebook is not interested in stopping others for using the technology we develop,” LeCun said. “In fact it has that as an advertised policy, patents that are filed by Facebook are never for stopping other people from using it, so that makes it easy to collaborate.”

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  • Angry and unfriendly

    The Federal Circuit got a little taste of patent prosecution in deciding the recent case of In re Power Integrations.  The patent at issue had undergone ex parte reexamination, been appealed to the Board, and then appealed to the Federal Circuit.  In parallel litigation, the patent had also undergone claim construction by two different district […]

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  • Judge Newman’s dissent in Zup v. Nash: how do secondary considerations fit into obviousness analysis?

    The outcome was affirmance of invalidity:

    Appellant ZUP, LLC (“ZUP”) appeals the decision of
    the United States District Court for the Eastern District
    of Virginia, which granted summary judgment in favor of
    Appellee Nash Manufacturing, Inc. (“Nash”). The district
    court invalidated claims 1 and 9 of U.S. Patent
    No. 8,292,681 (“the ’681 patent”) as obvious and, in the
    alternative, held that Nash does not infringe claim 9. We
    affirm the district court’s holding that claims 1 and 9 are
    invalid as obvious and do not reach the infringement

    Judge Newman began her dissent:

    A wakeboard is not a complicated device, but its enjoyment
    in water sports has long challenged weak and
    inexperienced riders attempting to stand up on a fastmoving
    board while bouncing on wake.1 Sportsman Glen
    Duff knew the problem and, after four years of experimentation,
    he devised a wakeboard that facilitated usage
    regardless of a rider’s strength or athleticism. He obtained
    U.S. Patent No. 8,292,681 (“the ’681 Patent”),
    assigned to ZUP, LLC. Mr. Duff exhibited his “ZUP
    Board” at the Surf Expo, a trade show for the water sports
    industry. Thereafter ZUP and Keith Parten, President
    and CEO of Nash Manufacturing, Inc. (“Nash”), a leading
    producer of water sports equipment including wakeboards,
    discussed a possible commercial arrangement.
    Parten told Duff: “You have a great product by the way!”
    Maj. Op. at 14. However, commercial discussions broke
    down, and soon thereafter Nash introduced a similar
    wakeboard, the “Versa Board,” the product that is
    charged with infringement.

    The district court granted summary judgment of patent
    invalidity, and alternatively summary judgment of
    non-infringement. There was no trial. My colleagues
    affirm the judgment of invalidity, and do not reach infringement.
    These rulings, however, were rendered on
    incorrect application of the law of obviousness and without
    regard to the principles of summary judgment.

    Judge Newman noted:

    Summary judgment of patent invalidity requires that
    all reasonable factual allegations are resolved in favor of
    the non-movant, Teleflex, Inc. v. Ficosa N. Am. Corp., 299
    F.3d 1313, 1323 (Fed. Cir. 2002) (citing Anderson v.
    Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)), and that
    when so resolved, there is clear and convincing evidence
    that the patented invention would have been obvious to a
    person of ordinary skill. Microsoft Corp. v. i4i Ltd. P’ship,
    564 U.S. 91, 95 (2011). The district court strayed from
    these long-recognized rules.
    Although the prior art is close, the novelty of the ’681
    Patent’s wakeboard is not disputed. On the issue of
    obviousness, my colleagues apply an incorrect analysis of
    the standard factual considerations, as set forth in Graham
    v. John Deere Co., 383 U.S. 1 (1966). The four Graham
    factors are: (1) the scope and content of the prior art;
    (2) the differences between the claims and the prior art;
    (3) the level of ordinary skill in the field of the invention;
    and (4) objective considerations of obviousness. Id. at 17–
    18; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
    399 (2007) (reaffirming the four Graham factors).
    My colleagues hold that only three of the four Graham
    factors are considered in order to establish a prima facie
    case of obviousness, and that the fourth Graham factor is
    applied only in rebuttal, whereby the fourth factor must
    be of sufficient weight to outweigh and thereby rebut the
    first three factors. Maj. Op. at 15. However, as stated in
    Apple Inc. v. Samsung Electronics Co., 839 F.3d 1034,
    1048 (Fed. Cir. 2016) (en banc), “determination of whether
    a patent claim is invalid as obvious under § 103 requires
    consideration of all four Graham factors, and it is error to
    reach a conclusion of obviousness until all those factors
    are considered.”


    The requirement that the secondary considerations
    “overcome” the conclusion based on the first three factors
    is incorrect, for the obviousness determination must be
    based on the invention as a whole including the evidence
    of all four Graham factors. It is incorrect to convert the
    fourth Graham factor into “rebuttal,” requiring it to
    outweigh the other three factors. Consideration of the
    objective indicia “is not just a cumulative or confirmatory
    part of the obviousness calculus, but constitutes independent
    evidence of nonobviousness.” Ortho-McNeil
    Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365
    (Fed. Cir. 2008). This evidence must be considered together
    with the other evidence, and not separated out and
    required to outweigh or rebut the other factors. All of the
    factors must be considered in connection with proving
    invalidity by clear and convincing evidence. Apple Inc. v.
    Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016)
    (en banc).

    On the proper analysis, summary judgment of obviousness
    was improperly granted. See Surowitz v. Hilton
    Hotels Corp., 383 U.S. 363, 373 (1966) (“The basic purpose
    of the Federal Rules is to administer justice through fair
    trials, not through summary dismissals as necessary as
    they may be on occasion.”).

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  • Boston University loses LED case to Everlight at CAFC for lack of enablement

    In finding against Boston University [“BU”], the CAFC included a “be careful what you wish for” admonition:

    We note finally that, to some extent, BU created its
    own enablement problem
    . BU sought a construction of “a
    non-single crystalline buffer layer” that included a purely
    amorphous layer. See J.A. 253–54 (reciting BU’s proposed
    construction as “a layer of material that is not monocrystalline,
    located between the first substrate and the first
    growth layer” (emphasis added)). Having obtained a
    claim construction that included a purely amorphous
    layer within the scope of the claim, BU then needed to
    successfully defend against an enablement challenge as to
    the claim’s full scope. See Liebel-Flarsheim, 481 F.3d at
    1380. Put differently: if BU wanted to exclude others
    from what it regarded as its invention, its patent needed
    to teach the public how to make and use that invention.
    That is “part of the quid pro quo of the patent bargain.”
    Sitrick, 516 F.3d at 999 (quoting AK Steel, 344 F.3d at

    The discussion of enablement by the CAFC is lengthy, and interesting:

    A patent’s specification must “contain a written description
    of the invention, and of the manner and process
    of making and using it, in such full, clear, concise, and
    exact terms as to enable any person skilled in the art to
    which it pertains . . . to make and use the same.” 35
    U.S.C. § 112 para. 1 (2006).3 Whether a claim satisfies
    § 112’s enablement requirement is a question of law we
    review de novo; however, in the context of a jury trial, we
    review the factual underpinnings of enablement for
    substantial evidence. See Koito Mfg. Co. v. Turn–Key–
    Tech, LLC, 381 F.3d 1142, 1149 (Fed. Cir. 2004). Facts
    supporting an invalidity conclusion must be shown by
    clear and convincing evidence. AK Steel Corp. v. Sollac &
    Ugine, 344 F.3d 1234, 1238–39 (Fed. Cir. 2003).

    “[T]o be enabling, the specification of a patent must
    teach those skilled in the art how to make and use the full
    scope of the claimed invention without ‘undue experimentation.’”
    Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
    1361, 1365 (Fed. Cir. 1997) (alteration in original) (quoting
    In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)).
    Enablement is determined as of the patent’s effective
    filing date. E.g., Plant Genetic Sys., N.V. v. DeKalb
    Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).4

    Defendants contend that claim 19 is not enabled because
    the ’738 patent’s specification does not teach one of
    skill in the art how to make the claimed semiconductor
    device with a monocrystalline growth layer grown directly
    on an amorphous buffer layer.

    In fact, Defendants’ expert testified that it is impossible
    to epitaxially grow a monocrystalline film directly on
    an amorphous structure. See J.A. 2311–12. BU’s expert
    agreed. J.A. 2274; see J.A. 17–18 (district court acknowledging
    the experts’ agreement on this issue). We can
    safely conclude that the specification does not enable
    what the experts agree is physically impossible.

    Defendants also argue that the specification teaches
    only epitaxy. BU disagrees and contends that the ’738
    patent does not teach epitaxy. Initially, BU’s contention
    is difficult to credit.
    The ’738 patent’s specification is
    concise—just over four columns of text—and focuses on
    epitaxy. Indeed, it is saturated with the word “epitaxy” or
    variants thereof. ’738 patent Abstract (“This invention
    relates to a method of preparing highly insulating GaN
    single crystal films in a molecular beam epitaxial growth
    chamber.”), col. 1 ll. 12–15 (“This invention relates to a
    method of preparing monocrystalline gallium nitride thin
    films by electron cyclotron resonance microwave plasma
    assisted molecular beam epitaxy (ECR-assisted MBE).”),
    col. 2 ll. 9–11 (“The method accorrding [sic] to this invention
    for preparing highly insulating near-intrinsic monocrystalline
    GaN films uses ECR-assisted MBE.”), col. 2 ll.
    14–17 (“A film is epitaxially grown in a two step process
    . . . .”), col. 3 ll. 38–39 (“The ECR-MBE system used in this
    invention is shown in FIG. 1.”).
    BU nonetheless explains that the ’738 patent does not
    teach epitaxy because epitaxy involves a crystalline layer
    on top of another crystalline layer. Therefore, according
    to BU, a crystalline layer on top of an amorphous structure
    is not “epitaxy.” See Cross-Appellant’s Br. 58 (citing
    its expert’s testimony at J.A. 2382–83). The district court
    relied on this argument and related testimony in denying
    JMOL. J.A. 18–19 (recounting BU’s expert’s testimony
    that the ’738 patent does not teach epitaxy—“strictly
    speaking”). But this semantic argument does not help us
    determine where the specification teaches growing a
    monocrystalline layer directly on an amorphous layer—if
    not by “epitaxy,” by any other name. See Sitrick v.
    Dreamworks, LLC, 516 F.3d 993, 1000 (Fed. Cir. 2008)
    (“An enablement analysis begins with the disclosure in
    the specification.”).

    Nor does BU direct us to any specific passage of the
    specification that purportedly teaches how to grow a
    monocrystalline layer directly on an amorphous layer. It
    instead relies on its expert’s testimony concerning the
    specification. For example, BU cites testimony that by
    following the “boundaries within the teachings of the ’738
    patent, you could realize with not much experimentation
    . . . the amorphous buffer layer, or some sublayer of the
    amorphous buffer layer, and then a monocrystalline

    gallium nitride [layer] on top.” Cross-Appellant’s Br. 59
    (alterations in original) (quoting J.A. 2269). This testimony
    is entirely conclusory and therefore insufficient.
    See, e.g., MobileMedia Ideas LLC v. Apple Inc., 780 F.3d
    1159, 1172 (Fed. Cir. 2015) (“Conclusory statements by an
    expert . . . are insufficient to sustain a jury’s verdict.”).
    The same goes for BU’s expert’s testimony that the “elements
    of the claim itself teach[] how to do that accurately.”
    Cross-Appellant’s Br. 59 (quoting J.A. 2265).
    BU also relies on testimony of the ’738 patent’s inventor
    concerning “lateral epitaxial growth.”5 Id. (citing
    J.A. 4063–64, 4066–67). BU characterizes this testimony
    and this phenomenon as demonstrating that the ’738
    patent’s buffer layer can be purely amorphous with a
    monocrystalline GaN growth layer on top. BU glosses
    over key details in this testimony. The inventor described
    “lateral epitaxial overgrowth” as a phenomenon whereby
    a crystal grows faster in the lateral direction than in the
    vertical direction. J.A. 4062. But he described this phenomenon
    in the context of a monocrystalline layer growing
    on a buffer layer that had at least partially
    crystallized. J.A. 4063–64. In BU’s relied-upon testimony,
    the inventor never described a monocrystalline growth
    layer on an amorphous buffer layer without also mentioning
    some level of crystallinity in the buffer layer. See J.A.
    4063–64, 4066–67.

    **Separately, from Blawgsearch on 26 July 2018:

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