• Actual Use vs Inherent Disclosure: Endo v. Custopharm
    in: Patently-O  | 

    Actual Use vs Inherent Disclosure: Endo v. Custopharm

    Endo Pharms. Sols., Inc. v. Custopharm Inc., — F.3d —, 2018 U.S. App. LEXIS 19265 (Fed. Cir. 2018).

    by Dennis Crouch

    Endo’s injectable testosterone Aveed is listed in the Orange Book as being covered by Bayer’s U.S. Patent Nos. 7,718,640 and 8,338,395.  Endo and Bayer sued Custopharm after it submitted an Abbreviated New Drug Application (ANDA) to produce a generic version. (Under 35 U.S.C. 271(e), submission of the ANDA is an act of infringement).

    On appeal, the Federal Circuit has sided with the patentee — affirming the district court judgment of validity.

    The claimed invention here requires the use of testosterone undecanoate (TU) at a concentration of 250 mg/ml in a vehicle containing a mixture of about 40% castor oil and 60% benzyl benzoate. (Claim 1 of the ‘640 patent). Three key prior art references are all research articles that report using the same concentration of TU and also the castor oil.  The articles do not, however, actually report that benzyl benzoate was used — it turns out though that the researchers (including one overlapping listed inventor here) used the same 40/60 split of castor oil and benzyl benzoate. 

    Continue reading Actual Use vs Inherent Disclosure: Endo v. Custopharm at Patently-O.

  • Pro se Appellant Burnett loses in a 12(b)(6)/101 case
    in: 未分類  | 

    Pro se Appellant Burnett loses in a 12(b)(6)/101 case

    The outcome was that pro se appellant Burnett lost:

    Carl M. Burnett (“Burnett”) appeals an order of the
    United States District Court for the District of Maryland
    dismissing Burnett’s amended complaint for failure to
    state a claim upon which relief can be granted. Burnett v.
    Panasonic Corp., No. 17-cv-0236 (D. Md. Nov. 1, 2017)
    (“District Court Decision”). Specifically, because the
    district court held that claims 1 and 9 of U.S. Patent No.
    7,107,286 (“the ’286 patent”) are invalid as directed to
    ineligible subject matter under 35 U.S.C. § 101, it concluded
    that dismissal pursuant to Rule 12(b)(6) of the
    Federal Rules of Civil Procedure was appropriate. Burnett
    argues that the asserted claims are patent-eligible,
    that the district court erred procedurally when it failed to
    construe five allegedly disputed claim terms, and that the
    district court violated Burnett’s due process rights when it
    failed to hold Rule 12(b)(6) and claim construction hearings.
    We affirm.

    As to 12(b)(6), the CAFC noted:

    The Fourth Circuit reviews de novo a dismissal under
    Rule 12(b)(6). Monroe v. City of Charlottesville, Va., 579
    F.3d 380, 385 (4th Cir. 2009). “We have held that patent
    eligibility can be determined at the Rule 12(b)(6) stage,”
    but “only when there are no factual allegations that,
    taken as true, prevent resolving the eligibility question as
    a matter of law.”
    Aatrix Software, Inc. v. Green Shades
    Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).
    Here, the district court appropriately assessed eligibility
    at the pleading stage because the asserted claims are
    patent-ineligible even when accepting as true all factual
    allegations pled in Burnett’s amended complaint

    Of abstract idea:

    Like the concept of using a formula to convert binarycoded
    decimals into pure binary numerals, which the
    Supreme Court found to be an abstract idea in Gottschalk,
    409 U.S. at 72, the concept of using a formula to convert
    geospatial coordinates into natural numbers, if found
    eligible, “would wholly pre-empt the mathematical formula
    and in practical effect would be a patent on the algorithm
    itself.” Claims 1 and 9 are both directed to a
    similarly abstract idea.

    Of Alice:

    The remainder of Burnett’s arguments related to his
    proposed claim constructions stand for the proposition
    that “the claims recite significantly more than the purported
    idea of a ‘mathematical methodology.’” Appellant
    Br. at 46. But that a claim allegedly contains more than
    an abstract idea does not mean the claim survives step
    one, because, under that inquiry, it is enough that the
    claims are directed to a mathematical methodology at all;
    rather, Burnett’s argument is more appropriately assessed
    under our inquiry in step two. Alice, 134 S. Ct. at
    2355 (assessing under step two whether additional features
    in a claim transform an otherwise a patentineligible
    concept into a patent-eligible concept).


    As the district noted, these additional features effectively
    do no “more than simply state the [abstract idea]
    while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
    The preambles of both claims, as construed by Burnett,
    instruct a user to implement the mathematical methodology
    or instruct using a “geospatial media recorder” to do
    the same. Such “wholly generic computer implementation
    is not generally the sort of ‘additional featur[e]’ that
    provides any ‘practical assurance that the process is more
    than a drafting effort designed to monopolize the [abstract
    idea] itself.’” Alice, 134 S. Ct. at 2358 (quoting Mayo, U.S.
    at 77); accord Gottschalk, 409 U.S at 70–72.

  • Global Innovation Divide: Can Investment In Innovation Bridge The Gap?
    in: Copyright Policy, Development, English, Features, Finance, Innovation/ R&D, IP Policies, Language, Patents/Designs/Trade Secrets, Subscribers, Technical Cooperation/ Technology Transfer, Themes, Trademarks/Geographical Indications/Domains, Venues, WIPO  | 

    Global Innovation Divide: Can Investment In Innovation Bridge The Gap?

    The Global Innovation Index 2018, launched on 10 July in New York, has lauded the rise of China as a model for how other low and middle-income economies can advance on innovation. Amid this optimism, however, the global innovation divide remains in ste…

  • The Likely Indefiniteness of Coined Terms

    by Dennis Crouch AGIS v. Life360 (Fed. Cir. 2016) In some ways the case here can be thought of as placing a higher definiteness burden on patentees when relying upon non-industry-standard language such as coined-terms in the claims. This result makes sense to me because coined-terms are most likely to be found at points of novelty within the […]

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  • Howdy Doody: some IP angles and "past as prelude"

    History records the first Presidential inaugural to be televised as that of President Truman on January 20, 1949:

    First Presidential Inauguration on Television

    Lots of camera pans and animated live narration by NBC’s Ben Grauer. Includes complete Truman inaugural speech. Joint event from multiple networks (pool coverage by NBC CBS, ABC/DuMont). More than 10 million viewers on many shared home and tavern/public sets, as a viewing record for its time.

    link: http://www.earlytelevision.org/pdf/Television_Recording_Origins.pdf.pdf

    HOWEVER, six days EARLIER, on January 14, 1949, Howdy Doody was inaugurated as President of the Kids of America, being sworn in by Ben Grauer.

    The backstory to Howdy Doody’s campaign involves some interesting IP stories.

    TVParty writes of the motivation for the campaign:

    Howdy Doody announced his campaign on the 11th show, which aired March 4, 1948. The campaign tied in with a concern of NBC’s; in those early days of television, the network wanted some way to measure the viewing audience. Roger Muir, the show’s original producer-director, thought of offering a button that said “I’m for Howdy Doody” to anyone who wrote in and requested one. He ordered 10,000 buttons.

    link: http://www.tvparty.com/50howdy2.html

    Wikipedia describes “how” the Doody Presidential campaign allowed NBC a convenient pathway out of a problematic situation involving the rights to Doody (the character) vs. rights to Doody (the physical puppet):

    By 1948, toymakers and department stores had been approached with requests for Howdy Doody dolls and similar items. Macy’s department store contacted Frank Paris, the creator of the puppet, to ask about rights for a Howdy Doody doll. While Paris had created the puppet, it was Bob Smith who owned the rights to the Howdy Doody character; an argument ensued between the two men, as Paris felt he was being cheated out of any financial benefits from having made the puppet. After one such disagreement, Paris took the Howdy Doody puppet and angrily left the NBC studios with it about four hours before the show was to air live; it was not the first time Paris had taken his puppet and left, leaving the live television program with no “star”.

    With Paris’ past disappearances, impromptu excuses regarding the whereabouts of Howdy Doody had been hastily concocted. This time, an elaborate explanation was offered—that Howdy was busy with the elections on the campaign trail. NBC hurriedly constructed a map of the United States, which allowed viewers, with the help of Smith, to learn where Howdy was on the road. The explanation continued that while on the campaign trail, Howdy decided to improve his appearance with some plastic surgery. This made it possible for the network to hire Velma Dawson to create a more handsome and appealing visual character than Paris’ original, which had been called “the ugliest puppet imaginable” by Bob Smith. Since Paris did not provide the voice of the character, Howdy’s voice would stay the same after his appearance changed. The puppet which is remembered as the “original” Howdy Doody replaced the actual original made by Frank Paris

    link: https://en.wikipedia.org/wiki/Howdy_Doody

    Howdy Doody’s opponent in the campaign was a “Mr. X.” Mr. X advocated the opposite of Howdy: that school should be seven days a week, that no child should ever get an ice cream sundae and that comic books should be banned. Finally, the show explained that Howdy and his brother Double Doody concocted the Mr. X plan to drum up support for Howdy. The negative campaign of Mr. X was to ensure the victory of his brother Howdy and to keep other potential candidates out of the picture. [Any relation to the negative/positive aspects of the 2016 campaign?]

    **There was a Canadian Howdy Doody show which began in 1954, and had James Doohan {Star Trek’s “Scotty”] as forest ranger Timber Tom. William Shatner sometimes appeared as Ranger Bob.

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  • CAFC: PTAB Improperly Shifted Burden of Proof on Obviousness to Patent Owner in IPR

    The Federal Circuit reversed the Board’s obviousness ruling, finding that the Board had improperly shifted burdens onto Magnum, the Patent Owner, in several instances. For example, Petitioner McClinton asserted that a motivation to combine argument made with respect to a first set of prior art references was also applicable to a second set of prior art references, but did not explain why the rationale applied to both sets of references. The Federal Circuit found that the Board improperly…

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  • Life Technologies Corporation v. Unisone Strategic IP, Inc. (PTAB 2016)

    By Joseph Herndon — Life Technologies Corp. filed a petition requesting covered business method (CBM) patent review of a number of claims of U.S. Patent No. 6,996,538. The PTAB determined that the claims are unpatentable under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Ultimately, the PTAB found that the claims were simply directed to software for inventory management that recited nothing more than fundamental business and economic practices of inventory management that have long been performed manually in our system of commerce. The ‘538 patent describes electronic inventory tracking by a third party, for example, via…

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  • Using ‘Borrowed’ Images in Your Blog

    An engaging image, be it a photograph or other graphic, can capture the reader’s attention and drive interest in an online post. Bloggers, especially, are well aware of the attention grabbing benefits of a great photograph or graphic. In striving to find just the right image, one may well not think twice about the apparent harmless use of a graphic poached from some obscure corner of the internet. Doing so, however, implicates a wide range of intellectual property rights governing the use of…

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  • ADVANCED GROUND INFORMATION SYSTEMS [AGIS] loses at CAFC on 112(6), 112(2) issues

    Advanced Ground Information Systems, Inc. (“AGIS”)
    appeals the decision of the United States District Court
    for the Southern District of Florida in Advanced Ground
    Information Systems, Inc. v. Life360, Inc., No. 14-cv-80651
    (S.D. Fla. Nov. 21, 2014) (J.A. 2–37), which found that
    claims 3 and 10 of U.S. Patent No. 7,031,728 (“the ’728
    patent”) and claims 5 and 9 of U.S. Patent No. 7,672,681
    (“the ’681 patent”) (together, the “patents-in-suit”) invoke
    35 U.S.C. § 112, ¶ 6, and that the claims are indefinite
    under 35 U.S.C. § 112, ¶ 2 (2006).1 Although the district
    court found these claims indefinite, it did not address the
    issue of invalidity because Appellee, Life360, Inc.,
    (“Life360”) did not request a finding of invalidity. The
    parties subsequently stipulated that these claims were
    invalid for indefiniteness, see J.A. 857, and the court
    entered its Final Judgment on May 12, 2015, see J.A. 1.
    For the reasons articulated below, we affirm the district
    court’s decision that the claims are indefinite, and accordingly
    conclude that the asserted claims are invalid.

    The technology

    The ’728 patent describes a cellular communication
    system that allows multiple cellular phone users to monitor
    others’ locations and statuses via visual display of
    such information on a map. ’728 patent, Abstract.
    The ’681 patent is a continuation-in-part of the ’728
    patent. It describes how “a designated administrator
    using a personal computer (PC) or other input device can
    reprogram all user and network participants’ cell phone
    devices to change, modify[,] or create new virtual switch
    names and new symbols for a different operating environment.”

    Legal issues:

    Our analysis proceeds in two steps. First, we address
    whether “symbol generator” in the asserted claims is in
    means-plus-function form pursuant to 35 U.S.C. § 112,
    ¶ 6. See Robert Bosch, LLC v. Snap–On Inc., 769 F.3d
    1094, 1097 (Fed. Cir. 2014). If we find that the relevant
    claim terms recite a means-plus-function limitation, we
    proceed to our second inquiry and “attempt to construe
    the disputed claim term by identifying the corresponding
    structure, material, or acts described in the specification
    to which the term will be limited.” Id. (internal quotation
    marks and citation omitted); see also O.I. Corp. v. Tekmar
    Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997)


    The district court held that “symbol generator” and
    “CPU software” in claims 3 and 10 of the ’728 patent and
    claims 5 and 9 of the ’681 patent invoked 35 U.S.C. § 112,
    ¶ 6, but were indefinite under 35 U.S.C. § 112, ¶ 2.
    “Symbol generator” appears in all of the asserted claims.
    Thus, if we find that claim term indefinite under 35
    U.S.C. § 112, ¶ 2, we need not independently address
    whether the claim term “CPU software” also renders clam
    10 of the ’728 patent and claim 9 of the ’681 patent invalid
    for indefiniteness.
    The district court’s construction of patent claims
    based on evidence intrinsic to the patent, including any
    finding that the claim language invokes 35 U.S.C. § 112,
    ¶ 6, is reviewed de novo as a question of law. See Williamson
    v. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed.
    Cir. 2015) (en banc) (citation omitted). In construing
    patent claims, if the district court makes underlying
    findings of fact based on extrinsic evidence, such findings
    are reviewed for clear error. Id. “Clear error only exists if
    we are left with a definite and firm conviction that a
    mistake has been committed.” Venture Indus. Corp. v.
    Autoliv ASP, Inc., 457 F.3d 1322, 1331 (Fed. Cir. 2006)


    “[T]he failure to use the word ‘means’ also creates a
    rebuttable presumption—this time that § 112, para. 6
    does not apply.” Williamson, 792 F.3d at 1348 (citation
    omitted). However, “if the challenger demonstrates that
    the claim term fails to recite sufficiently definite structure
    or else recites function without reciting sufficient structure
    for performing that function,” this presumption may
    be rebutted.


    Here, although the asserted claims do not include the
    word “means,” the district court determined that AGIS
    intended to invoke § 112, ¶ 6. See J.A. 10–11; see also
    ’728 patent col. 12 l. 52–col. 13 l. 13 (claim 3), col. 14 ll.
    27–61 (claim 10); ’681 patent col. 12 l. 52–col. 13 l. 18
    (claim 5), col. 13 l. 44–col. 14 l. 27 (claim 9). According to
    the district court, “[a] plain reading of the term in context
    of the relevant claim language suggests the term ‘symbol
    generator’ is analogous to a ‘means for generating symbols’
    because the term is simply a description of the
    function performed.” J.A. 10–11 (citation omitted).

    The CAFC found that 112(6) applied:

    However, contrary to AGIS’s contention,
    Dr. Goldberg testified that the term “symbol generator” is
    a term coined for the purposes of the patents-in-suit. See
    J.A. 798. The term is not used in “common parlance or by
    persons of skill in the pertinent art to designate structure,”
    such that it connotes sufficient structure to avoid
    the application of 35 U.S.C. § 112, ¶ 6. Lighting World,
    Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359
    (Fed. Cir. 2004), overruled on other grounds by Williamson,
    792 F.3d at 1348–49.

    We see no clear error in the district court’s findings
    regarding Dr. Goldberg’s testimony. Dr. Goldberg’s
    testimony that the terms “symbol” and “generator” are
    known within the field of computer science is not dispositive
    and does not require us to find that 35 U.S.C. § 112,
    ¶ 6 does not apply.


    Irrespective of
    whether the terms “symbol” and “generator” are terms of
    art in computer science, the combination of the terms as
    used in the context of the relevant claim language suggests
    that it is simply an abstraction that describes the
    function being performed (i.e., the generation of symbols).
    See, e.g., ’728 patent col. 3 ll. 44–46 (“Each cellular
    phone/[Personal Digital Assistant (‘PDA’)/[Global Positioning
    System (‘GPS’)]” is identified on the display of
    other phone systems by a symbol that is generated to
    indicate its identity.” (emphasis added)); see also ’681
    patent col. 7 ll. 14–17 (“Each cellular phone device is
    identified on the map display of the other participant/user
    cell phone devices by a display symbol that is generated on
    each user cell phone device display to indicate each user’s
    identity.” (emphasis added)).

    Finally, the claim term “symbol generator,” by itself,
    does not identify a structure by its function, cf. Personalized
    Media Commc’ns v. ITC, 161 F.3d 696, 705 (Fed. Cir.
    1998) (stating that the claim term “digital detector” does
    not invoke § 112, ¶ 6 because “[e]ven though the term
    ‘detector’ does not specifically evoke a particular structure,
    it does convey to one knowledgeable in the art a
    variety of structures known as ‘detectors’”), nor do the
    asserted claims suggest that the term “symbol generator”
    connotes a definite structure, see Media Rights Techs.,
    Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed.
    Cir. 2015) (finding that the term “compliance mechanism”
    invokes § 112, ¶ 6, because the asserted claims “simply
    state that the ‘compliance mechanism’ can perform various
    functions” (emphasis added)).


    The specifications of the patents-in-suit do not disclose
    an operative algorithm for the claim elements reciting
    “symbol generator.” The function of generating
    symbols must be performed by some component of the
    patents-in-suit; however, the patents-in-suit do not describe
    this component. Although the specification of the
    ’728 patent suggests that these symbols are generated via
    “a map database and a database of geographically referenced
    fixed locations . . . with a specified latitude and
    longitude[,] . . . [and] [a] database with the constantly
    updated GPS location,”’ 728 patent col. 3 ll. 35–41, this
    only addresses the medium through which the symbols
    are generated. A patentee cannot claim a means for
    performing a specific function and subsequently disclose a
    “general purpose computer as the structure designed to
    perform that function” because this “amounts to pure
    functional claiming.” Aristocrat Techs., 521 F.3d at 1333.
    Accordingly, because the specifications of the patents-insuit
    do not disclose sufficient structure for the “symbol
    generator” function and the asserted claims include this
    term, the asserted claims are indefinite under 35 U.S.C. §
    112, ¶ 2.

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  • List Of Geneva Delegates Responsible For IP Updated

    There are many, many committees, councils, panels, meetings, receptions, conferences, assemblies – not to mention countless private lunches, coffees and other contacts – during the year in Geneva that address policy issues related to intellectual property, innovation, research & development and the like. Intellectual Property Watch provides an indispensable, up-to-date list of who you need to talk to when you want to get the message across or follow the action.

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  • The new Elon Musk master plan for Tesla reeks of overconfidence

    Elon Musk’s updated master plan reeks of overconfidence. He envisions entire fleets of autonomous Tesla vehicles while missing recent sales targets by thousands of units. He wants to pump massive amounts of money into R&D for autonomous technologies and new types of vehicles, but the company is having trouble with bleeding warranty costs which are double the amount seen at Ford or GM. The lack of timeline details in the master plan was not well received by financial analysts and Tesla…

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  • CAFC: Reasonable Litigation Defenses No Defense to Willfulness; Permanent Injunction Denial Was Abuse of Discretion

    Under the Federal Circuit’s reading of Halo, companies can no longer rely solely on reasonable litigation-inspired defenses to prevent a finding of willfulness… The Federal Circuit also found that the district court abused its discretion in failing to issue a permanent injunction. While there is a public interest in safer generators, there is also a public interest in the security of patent rights. The patent owner presented evidence that it had sufficient production abilities to satisfy…

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  • CRISPR Update – July 2016

    This is the first update on CRISPR, following on from our June 24 web conference entitled, “Navigating the CRISPR Patent Landscape and Business Impact.” Copies of the slides and audio can be obtained here. We will continue providing monthly updates. About CRISPR CRISPR is a prokaryotic immune defense mechanism found in a wide range of bacteria … Continue reading this entry

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  • USPTO Sets New Deadline for Migration to Financial Manager

    By Donald Zuhn –- As we reported earlier this month, the U.S. Patent and Trademark Office announced that it was extending the deadline for customers to migrate their deposit accounts and electronic funds transfer accounts (EFTs) to Financial Manager, the Office’s new online fee payment management tool. The Office, however, indicated at that time that a new deadline would be announced at a later date. In an e-mail alert distributed today, the Office announced that the new migration deadline will be August 5, 2016. After that date, the Office will no longer accept legacy deposit account or EFT credentials for…

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  • The Most Famous Song in the World Set Free: Impacts of the Happy Birthday to You Settlement

    On June 30th, Judge George King of the Central District of California entered the Final Order and Judgment in the matter of Good Morning to You Productions Corp. et al. v. Warner/Chappell Music, Inc. – the “Happy Birthday” class action. Only the amount of attorneys’ fees to be awarded to the plaintiffs’ attorneys remains, and must be decided for many of the settlement terms to become effective. Nonetheless, it is not too early to consider what, if any, effects this case will have on the field…

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  • Inter Partes Review Statistics

    By Jason Rantanen This post summarizes data on inter partes review proceedings and appeals from the Patent Office.  Although the office publishes a monthly Patent Trial and Appeal Board Statistics packet, the narratives contained within that packet can create confusion as discussed in Michael Sander’s guest post earlier this year.  Below are some of the […]

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