• CAFC in ALVARADO HOSPITAL.  A dissent by Judge Newman.
    in: 未分類  | 

    CAFC in ALVARADO HOSPITAL. A dissent by Judge Newman.

    One must always keep in mind that the CAFC has jurisdiction in non-patent areas.
    On 22 August 2017:

    Because Prime Hospitals’ breach of contract claim is
    fundamentally a suit to enforce a contract and it does not
    arise under the Medicare Act, we hold that the Court of
    Federal Claims has exclusive jurisdiction over that claim
    under the Tucker Act, 28 U.S.C. § 1491. We also hold
    that the Court of Federal Claims does not have jurisdiction,
    however, over Prime Hospitals’ alternative claims
    seeking declaratory, injunctive, and mandamus relief.
    Accordingly, we affirm the district court’s transfer order
    in-part, reverse-in-part, and remand for further proceedings.

    Judge Newman dissented:

    I respectfully dissent from the ruling that the Medicare
    Act’s jurisdictional assignment to the district courts
    does not apply when there is an offer of settlement of a
    Medicare reimbursement claim.

    Nonetheless, my colleagues endorse the transfer of
    this action from the district court to the Court of Federal
    Claims under the Tucker Act, reasoning that the statutory
    assignment of Medicare jurisdiction does not apply
    when the issue includes a proposal for settlement of a
    Medicare claim. However, as precedent has resolved,
    settlement of a Medicare claim does not remove the
    statutory Medicare Act jurisdiction. See Pines Residential
    Treatment Ctr., Inc. v. United States, 444 F.3d 1379 (Fed.
    Cir. 2006)

  • Two CAFC judges in Nidec case:  we question whether the practice of expanding panels
    in: 未分類  | 

    Two CAFC judges in Nidec case: we question whether the practice of expanding panels

    The outcome was that appellant lost:

    Nidec Motor Corporation (“Nidec”) appeals a final
    written decision of the Patent Trial and Appeal Board
    (“Board”) in an inter partes review (“IPR”). The Board
    determined that claims 1–3, 8, 9, 12, 16, and 19 of U.S.
    Patent No. 7,626,349 (the “’349 Patent”) are invalid as
    anticipated or obvious. We affirm.

    What the CAFC did not decide:

    Both Broad Ocean and the Director argue that the
    Board properly applied the joinder and time bar statutes
    to allow joinder and institution in this case. Nidec disagrees.
    We need not resolve this dispute. Nor need we
    address the Director’s and Broad Ocean’s arguments that
    the Board’s joinder determination is non-appealable in
    light of 35 U.S.C. § 314(d)’s bar of judicial review for
    institution decisions or Nidec’s argument that the Board’s
    practice of expanding panels violates due process. For the
    reasons set forth below, we affirm the Board’s conclusion
    that all of the challenged claims are unpatentable as
    obvious over Bessler and Kocybik. Because there is no
    dispute that Broad Ocean timely filed the First Petition
    (containing the obviousness ground), the issues on appeal
    relating only to the Board’s joinder determination as to
    anticipation ultimately do not affect the outcome of this
    case. Both parties agree that, if we affirm as to obviousness,
    we need not address Nidec’s argument that various
    procedural aspects of the Board’s joinder decision require
    reversal of its holding concerning anticipation by Hideji.
    See Oral Arg. at 1:28–2:33 (June 8, 2017), available at
    16-2321.mp3 (Nidec agreeing that we need not address
    the anticipation ground based on Hideji in any respect if
    we determine that the Board was correct in its obviousness
    determination under Bessler and Kocybik).

    Nidec loses:

    The Board concluded that “the use of
    sinewave commutation and independent Q and d axis
    currents would have provided predictable results to
    address known problems associated with other types of
    motors.” J.A. 29. Nidec asks us to reweigh the evidence
    the Board used to make its determination, which we may
    not do. See In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
    1334 (Fed. Cir. 2016).

    The opinion was per curiam. There was a two judge
    concurring opinion which included:

    Although we do not decide the issues here, we
    have serious questions as to the Board’s (and the Director’s)
    interpretation of the relevant statutes and current


    The issue in this case is whether the time bar provision
    allows a time-barred petitioner to add new issues,
    rather than simply belatedly joining a proceeding as a
    new party, to an otherwise timely proceeding. Section
    315(c) does not explicitly allow this practice. We think it
    unlikely that Congress intended that petitioners could
    employ the joinder provision to circumvent the time bar
    by adding time-barred issues to an otherwise timely
    proceeding, whether the petitioner seeking to add new
    issues is the same party that brought the timely proceeding,
    as in this case, or the petitioner is a new party.

    Of some interest as to the expanded panel:

    Nidec alleges that the two administrative judges added
    to the panel were chosen with some expectation that
    they would vote to set aside the earlier panel decision.
    The Director represents that the PTO “is not directing
    individual judges to decide cases in a certain way.” Director
    Br. 21 (quotation marks omitted). While we recognize
    the importance of achieving uniformity in PTO decisions,
    we question whether the practice of expanding panels
    where the PTO is dissatisfied with a panel’s earlier decision
    is the appropriate mechanism of achieving the desired
    uniformity. But, as with the joinder issue, we need
    not resolve this issue here. Nor need we address the
    predicate issue of appealability.

Lex Machina commercial litigation report shows that one-fifth of commercial cases include IP claims

The total number of intellectual property claims included in all commercial cases is higher than the figure of 11,643 commercial cases including at least one IP claim. “It turns out to be incredibly hard to build a Venn diagram that reflects the types of IP claims included in these commercial cases,” said Brian Howard, Lex Machina data scientist and the author of the commercial litigation report. “It turns out to be its own mini-Venn diagram within a Venn diagram, some of the cases are patent…

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  • Conference & CLE Calendar

    August 22, 2017 – Semiconductor Customer Partnership Meeting (U.S. Patent and Trademark Office) – 1:00 to 5:00 pm (ET), Alexandria, VA August 24, 2017 – “Section 112(a) Enablement and Written Description: Leveraging CCPA and Early Federal Circuit Decis…

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  • Right to a Jury Trial in Patent Validity / Revocation

    by Dennis Crouch Oil States Energy Services, LLC, v. Greene’s Energy Group, LLC., now pending before the Supreme Court raises one important question: Issue: Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. In June 2017, the Supreme Court granted certiorari and briefing is expected […]

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  • ACI Paragraph IV Disputes Conference

    American Conference Institute (ACI) will be holding its 5th Annual Paragraph IV Disputes master symposium on October 2-3, 2017 in Chicago, IL. ACI faculty will provide insights into: • The impact of TC Heartland on jurisdiction and venue • The legal and business repercussions of Helsinn • Sandoz v. Amgen from an ANDA litigator’s point of view • The FDA Final MMA Rule • Novartis v. Noven and differing standards of review • Secondary considerations in obviousness reviews • Alternative forums: PTAB and ITC • Oil States vs. Greene’s Energy Group and the constitutionality of IPR proceedings • Exceptional case…

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  • Webinar on Patent Cooperation Treaty

    Strafford will be offering a webinar/teleconference entitled “Patent Cooperation Treaty: Evaluating the Benefits and Risks, Obtaining International Patent Protection — Navigating the PCT, Priority, Selection of International Authorities, PCT Search and Examination, and More” on September 14, 2017 from 1:00 to 2:30 pm (EDT). Rebecca M. McNeill of McNeill Baur and Jens Viktor Nørgaard of HØIBERG will provide guidance for patent practitioners on the Patent Cooperation Treaty (PCT), and discuss the system’s advantages and disadvantages and how to strategically use the PCT to obtain international patent protection. The webinar will review the following topics: • What are the benefits of…

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  • Webcast on Latest Decisions on Patent Eligibility

    The Knowledge Group will offer a live webcast entitled “Addressing and Understanding the Significant Developments and Latest Decisions on Patent Eligibility” on September 12, 2017 from 3:00 to 5:00 pm (EST). John Jarosz of Analysis Group, Inc. and Eli Mazour of Harrity & Harrity, LLP will discuss the latest key judicial developments, including Supreme Court, Federal Circuit and PTAB decisions related to patent eligibility, and provide insights into the impact of these developments and offer best practices for handling patent cases. The panel will cover the following topics: • Subject Matter Eligibility Update • Latest USPTO Patent-Eligibility Guidance • Key…

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  • EFFECT(S) OF V-ing


    EFFECT(S) OF V-ing

    $$ Effect of Changing the Carbamoyl Acid Side Chain / カルバモイル酸側鎖変更の効果 (USP6797699)

    $$ This has an equivalent effect of shrinking the RGB colour reference space. / この処理は、RGB空間を収縮することと同様の効果を有している。(USP6614489)

    $$ The effect of adding IBMA to THFMA/UDMA mixtures / THFMA/UDMA混合物へのIBMA添加の影響 (USP6313192)

    $$ FIG. 18 is a table of caricatured image representations illustrating the effects of using a mean face generated by a closed group of members; (USP7646395)

    $$ FIG. 2e,ii shows the effects of inhibiting MAP kinase on cell survival in the presence of 10 ng/ml FGF2. (USP7304129)

    $$ This is more than a simple delay since attenuation effects and the lensing effects of propagating through an inhomogeneous overburden must be modelled. (USP5260911)

    $$ U.S. Pat. No. 5,885,281 describes the use of coatings to minimise the effects of sticking. (USP02052599)

    $$ The new GOP is defined by picture type decision rules which may have the effect of changing the GOP compared to the GOPs of streams A and B. (USP6983015)

    $$ This has the effect of turning the switching transistors 1 OFF if the fault is still present. (USP6404608)

    $$ The effect of reducing pulse duration is shown in FIGS. 1(b) and 1(c). (USP6087786)

    $$ Inverting the bit pattern has the effect of changing the sense of the accept/reject test. (USP5727192)

    $$ The couple CF has the effect of pivoting the sprag 3 clockwise about its centre of rotation C, relative to the cage and races 1,2. (USP5524742)

    $$ With reference to FIGS. 3 and 4, the effect of varying one parameter, in this case, jaw opening, is shown. (USP02118196)

    $$ For example, it could be used to "animate" the template, showing the effect of stepping through a sequence of commands. (USP01032216)


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  • Finding your way from patent value to return-on-investment. A patent strategy case study

    Your CEO: “Why are we spending so much on patents?” Your CFO: “Do we have a financial model for this spend?” The path forward isn’t clear. Now what? Using a model that examined both patent risk and expected risk reduction allowed the client’s IP department to put a number on the value of their efforts. In turn, this enabled the executive team to grasp the return on investment (ROI) from the patent strategy. Our client now had a tool to use for making decisions on how to mitigate patent risk and…

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  • News from Abroad — Mexican Antitrust Authority Issues Broad Study on Generic Drug Entry into Mexican Market — Part I

    Study Suggests Several Changes to Legislation on Patents, Marketing Authorizations, and Government Procurement By Juan Luis Serrano* — In July of 2016, the Federal Commission for Economic Competition announced a broad ranging study on the entry of generic drug alternatives to the Mexican market, both for private purchasing and government procurement. The results of this study were released last week, along with a press statement[1], which outlined the following main findings: • Entry of generic drugs to the market is unduly slow. • Patent expiration has not caused enough competition in the market. • Entry of generic drugs has not…

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    $$ Conversely, the main network portion preferably accepts for service either mobile stations using the first network identity code or …

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  • Gugliuzza & Lemley on Rule 36 Patentable-Subject-Matter Decisions

    Paul Gugliuzza (BU) and Mark Lemley (Stanford) have posted Can a Court Change the Law by Saying Nothing? on the Federal Circuit’s many affirmances without opinion in patentable subject matter cases. They note a remarkable discrepancy: “Although the court has issued over fifty Rule 36 affirmances finding the asserted patent to be invalid, it has not issued a single Rule 36 affirmance when finding in favor of a patentee. Rather, it has written an opinion in every one of those cases. As a result, the Federal Circuit’s precedential opinions provide an inaccurate picture of how disputes over patentable subject matter are actually resolved.”

    Of course, this finding alone does not prove that the Federal Circuit’s Rule 36 practice is changing substantive law. The real question isn’t how many cases fall on each side of the line, but where that line is. As the authors note, the skewed use of opinions might simply be responding to the demand from patent applicants, litigants, judges, and patent examiners for examples of inventions that remain eligible post-Alice. And the set of cases reaching a Federal Circuit disposition tells us little about cases that settle or aren’t appealed or in which subject-matter issues aren’t raised. But their data certainly show that patentees have done worse at the Federal Circuit than it appears from counting opinions.

    Perhaps most troublingly, Gugliuzza and Lemley find some suggestive evidence that Federal Circuit judges’ substantive preferences on patent eligibility are affecting their choice of whether to use Rule 36: Judges who are more likely to find patents valid against § 101 challenges are also more likely to cast invalidity votes via Rule 36. When both active and senior judges are included, this correlation is significant at the five-percent level. The judges on either extreme are Judge Newman (most likely to favor validity, and most likely to cast invalidity votes via Rule 36) and Chief Judge Prost (among least likely to favor validity, and least likely to cast invalidity vote via Rule 36), who also happen to be the two judges who are most likely to preside on the panels they sit. Daniel Hemel and Kyle Rozema recently posted an article on the importance of the assignment power across the 13 federal circuits; this may be one concrete example of that power in practice.

    Gugliuzza and Lemley do not call for precedential opinions in all cases, but they do argue for more transparency, such as using short, nonprecedential opinions to at least list the arguments raised by the appellant. For lawyers without the time and money to find the dockets and briefs of Rule 36 cases, this practice would certainly provide a richer picture of how the Federal Circuit disposes of subject-matter issues.

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  • Court affirms TTAB refusal to register ‘FIRST TUESDAY’ trademark for NC Lottery

    In re N.C. Lottery, Appellant North Carolina Lottery (“N.C. Lottery”) sought to register the mark “FIRST TUESDAY” in connection with lottery services and games to market the introduction of new scratch-off lottery games on the first Tuesday of every month. The Trademark Trial and Appeal Board denied the registration and N.C. Lottery appealed… The Court affirmed the Board’s decision refusing to register FIRST TUESDAY.

    The post Court affirms TTAB refusal to register ‘FIRST TUESDAY’ trademark for NC Lottery appeared first on IPWatchdog.com | Patents & Patent Law.

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  • Webinar on Sovereign Immunity as Inter Partes Defense

    Technology Transfer Tactics will be offering a webinar entitled “Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing” on September 6, 2017 from 1:00 to 2:00 pm (Eastern). Kerry S. Taylor and Peter Law of Knobbe Martins, and Andrew M. Howard of Shore Chan DePumpo LLP will provide a review of sovereign immunity cases and their implications, as well as important guidance addressing the factors that can work for you or against you when faced with an inter partes challenge. The webinar will cover the following topics: • Legal background regarding sovereign immunity in administrative…

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  • FCBA Program on Patent Litigation

    The Federal Circuit Bar Association (FCBA) will be offering a program entitled “Patent Litigation 2017 — The Courts and Patent Trial and Appeal Board” on September 13, 2017 from 10:45 am to 3:10 pm (EDT) at the Chase Center on the Riverfront, Riverfront Ballroom, 815 Justison St., Wilmington, DE. The program will include presentations on the following topics: • Impact of TC Heartland: District Court Perspective and ANDA case implications • Lunch Keynote • Shifting the Standards of the IPR Estoppel • Judicial Resources: The Utilization of Magistrate Judges and Related Issues The registration fee for the program is $165…

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