HTC sued IPCom in 2008 and sought a declaration that it did not infringe a valid and enforceable claim of one of IPCom's patents. IPCom filed a counterclaim and alleged infringement.

Claim 1:

1. [1] A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by: [2] storing link data for a link in a first base station, [3] holding in reserve for the link resources of the first base station, and [4] when the link is to be handed over to the second base station: [5] initially maintaining a storage of the link data in the first base station, [6] initially causing the resources of the first base station to remain held in reserve, and [7] at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising: [8] an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

HTC prevailed on the district court that the claims (1, 12 & 18, all of the same ilk) were indefinite under §112 ¶2. The CAFC had a different reading.

The parties disagree whether the mobile station or the network, both recited in paragraph 1, implements the six functions enumerated in paragraphs 2-7. If the mobile station implements the functions, the claims are indefinite because they recite both an apparatus--the mobile station--and method steps--the functions enumerated in paragraphs 2-7. If the network performs the functions, the claims are not indefinite because the claims merely describe the network environment in which the mobile station must be used. The district court concluded, without complying with Phillips's claim construction principles, that the mobile station implements the functions recited in paragraphs 2-7.

The district court did not examine adequately the claims themselves. Phillips, 415 F.3d at 1314. Claims 1 and 18 begin by reciting, in the first paragraph, a "mobile station" to be used with a "network." Immediately following "network" are the phrase "including a first base station and a second base station" and the clause "that achieves a handover from the first base station to the second base station by [implementing the six enumerated functions]." Modifiers should be placed next to the words they modify. William Strunk, Jr. & E.B. White, The Elements of Style 30 (4th ed. 2000). A reader, therefore, may assume that the phrase beginning with "including" and the clause beginning with "that achieves" modify "network."

Of course, the claim could be considered indefinite because it wasn't clear whether the mobile station or network performed the claimed process. Or, to go with the CAFC interpretation, which is correct for a careful reader, the claim is indefinite for having a method within an apparatus. That is the repeated precedent which the CAFC panel completely ignores in this case.

"[A]pparatus claims cover what a device is, not what a device does. An invention need not operate differently than the prior art to be patentable, but need only be different. Or perhaps more accurately, be unobviously different." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990).

From MPEP 2114:

While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997)

From Schreiber: It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990)]

A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph. IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005).

Most significantly, it is the details in the claimed networking method that gives the claim any chance of novelty. A mobile phone that hangs on to its current base station if it can't switch to a new one is not novel; hence the claimed "network environment" method within. The CAFC confirms this with the crucial observation -

The claims merely establish those functions as the underlying network environment in which the mobile station operates.

That environment is claimed as a method, the salient point which the CAFC blatantly ignores in its ruling. In its mischaracterization of IPXL - by not taking the lesson taught there, but instead writing this ruling as glossing over the large point, the CAFC panel misreads its own case law.

Getting this right would require that the courts clearly enforce the spirit and letter of the law, not make up a mumbo-jumbo that passes for law. But that would be wrong, at least as far as the courts are concerned. The courts get away with inconsistency because they defer to Congress and the President when it's important to those branches - a cozy arrangement of collusion.

In the scheme of things, §112 ¶2 is small stuff (as is all commerce legislation, which is passed to please the powers that put the money on the table before Congress), so the courts can vacillate as they please, following a formula for bias by having two-faced case law, letting them decide on a biased case-by-case basis, while creating confusion as to exactly what the law is.

This is a great formula for raising litigation costs, good for lawyers, but costly to combatants, and, from a society-wide perspective, a plague on good governance; a concern for which the courts have no real regard. They are just playing their game their way to suit their own special interests.

In other words, the courts sacrifice building a consistent body of case law so they can rule on a case-by-case basis without appearing to be the complete flip-floppers that politician legislators make a profession of. The courts do flip-flop, but with some nuance, as here. It's still dirty pool, and the courts are corrupt, however fine they slice their bias, and however eloquently they dissemble.

As Ralph Waldo Emerson actually stated, it is a foolish consistency that is the hobgoblin of small minds. While the CAFC may not have small minds, their inconsistency is foolish. Which is to say that foolish inconsistency is the case law of the CAFC.

There was also a means-plus-function spate under § 112 ¶ 6 in this case, where the CAFC figured a way to rule against HTC by concluding that HTC's lawyers at Perkins Coie didn't tee up their arguments properly, so they belong in the jurisprudential sand trap, and HTC in the hole.

As a general rule, an appellate court does not consider an issue not passed upon below. Singleton v. Wulff, 428 U.S. 106, 120 (1976); Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1344 (Fed. Cir. 2001). This rule fosters sound policies. It ensures finality in litigation by limiting the appealable issues to those a lower court had an opportunity to, and did, address. The rule also conserves judicial resources because it prevents parties from undoing a lower court's efforts--sometimes spanning years of litigation--based on an error that a lower court could have considered and corrected. In the same regard, the rule discourages parties from inviting an alleged error below only to raise it on appeal.

Which is to say, bottom line, to the courts, it is perfectly fine that justice is not served, only "sound policies" and "judicial resources" "conserved." But of course there is this coda -

An appellate court, however, has discretion to consider an issue for the first time on a case-by-case basis. Singleton, 428 U.S. at 120.

That the CAFC chose not to here speaks volumes, albeit by silence, how its bias ran in this case.

Considering a broken patent monetization system, how about considering mass aggregators as value-adding middlemen? "The problem with the notion of mass aggregators as middle men connecting innovators with production capital and capacity, is that for the most part, they do not seem operate that way." The paper then contradicts itself with: "Large patent pools with vast capital resources can deal with trolls by sopping up their potential patent inventory when it appears on the market."

The authors then show their hand: "Trolls, by definition, are non-practicing entities." Inventors and universities, you inventive scum. These problem simply wouldn't exist if "non-practicing entities" didn't exist. The patent office and courts are doing their illicit best to deny trolls their patent rights. Only large corporations deserve to own and assert patents. Never mind that most of the patents they have they never practice, making them too non-practicing entitites for the bulk of their portfolio. It's the bias that counts.

Mass aggregators do sometimes act as a "litigation defense fund," allowing companies to acquire counterpunch patents in a litigation brawl. "When a company is sued for infringement or must enter into a negotiation to acquire rights from another entity, the company can shop for and acquire precisely the patents that could present a counter threat to the opposing party." Verizon, Acer and Samsung are three examples of "just-in-time patenting."

In its conclusive analysis, the ivory tower academics declare patents not owned by corporate infringers to be "a tax on production." Shedding a tear for corporations who potentially face paying such a tax:

Certain tactics, however, are troubling when taken by those who have the power to hurt consumer welfare in a particular market by adversely affecting prices, quantities, qualities, or varieties of goods and services that are currently or potentially available.

Though the above statement went to damning mass aggreagators, the authors do recognize that corporations "raise rivals' costs" with their patents. But, by swimming in the pro-corporate shallow end of the economics pool, the authors fail to note that patents are regularly used by large corporations to preclude market entry by upstarts, and crush smaller competitors, thereby raising costs to consumers.

The authors conclude with the tunnel vision of arch academics, assuming that what is good for large corporations is good for society.

Troll behavior, whether small or aggregated, is fueled by a patent system that lacks a costeffective method of quickly resolving validity and infringement questions. There are better uses for federal courts than using them as forums for conducting licensing negotiations. A copious supply of patents that are only lightly tested at the time of the grant enhances the problem. As long as insufficient information, uncertainty, and high transaction costs reign, troll activity will continue to flourish. We should focus our efforts not only on limiting troubling behavior among mass aggregators but also on making trolling a less lucrative endeavor in the first instance.

Mass aggregators and the market for patent monetization should not be allowed to flourish unchecked. The burgeoning market must be properly monitored, regulated, and restricted so that the considerable risks associated with this activity may be fully contemplated and cabined.

There's great ignorance there by the writers. Corrupt courts already do their best to "cabin" patent monetization for what the authors and courts both call "trolls" - inventors of every strip but those that have hundreds of millions to regularly bribe politicians for political influence.

So, while paying lip-service lamentation of the "forgotten inventor," the authors absent-mindedly argue that the profits of invention should only go the largest corporations.

Society should be particularly concerned about privateering activity aimed at next-generation technologies that threaten to unseat an entrenched monopolist.

This paper is well worth reading for its details, if not the sophistic analysis. Alas, the authors appear as nothing more than stalking-horse corporate minions.

The losses in these times are not covered - the theft of intellectual property by the largest corporations of their day, such as General Motors, Eastman Kodak and Microsoft, are not written of. Gibby is a practicing attorney, in a firm where such specificity about extant corporations would be impolitic. And so he is silent.

But Gibby gives the gist of the current regime that crushes individual invention.

The patent system is too unfavorable, and few individual succeed... Although this country gives lip service to helping out the little guy, the truth is that those in power don't want to deal with the little guy.

Gibby does not go so far as to chronicle the corruption of the courts, but only suggests that Obzilla, the obviousness rampage unleashed by KSR, is working well for its taskmasters.

The end result is that today we award patents to only the wealthiest of corporations with the finacial means to battle with the patent office.

What is disturbing is that today's patent rules are so onerous that they would invalidate most of America's greatest patents - the airplane, the telephone, the transistor, the light bulb, the electric motor, the phonograph, Marconi's wireless device, xerography, to name just a few.

Why is that disturbing? If the patents were Obzilla obvious, why was patent protection deserved? Gibby does not go beyond his visceral reaction into analysis.

The final nail in the coffin of individual invention comes in chapter 21, titled The Staggering Cost of Inventing. Not just squeezing a patent out of a logically petulant PTO, but of having any prospect of enforcement, given the cost of litigation lawyers. Of course, Gibby does not phrase it quite so starkly.

Gibby concludes with proposed solutions, but they are not even decent band-aids to stop the bleeding that the plutocracy has imposed upon the vast wage-slaves of this country. Nor are they even well thought out.

The back of the book states in bold print:

Our belief that we are the most innovative people on Earth is mistaken.

Gibby gives a meaningless statistic to cover that sensationalist remark, a remark that anyway goes to a stupid and ill-placed pride. Gibby does not mention that U.S. patent laws have never required an invention to be the first in the world, so has always been a sham of sorts. From both invention and economics perspectives, the U.S. patent regime has always been a very bad joke played upon its populace.

America has stopped inventing because of an entrenched plutocracy, currying favor for corporations. The historical account Gibby gives tells that story from the patent perspective.

Appellees Finance Express, John Doe Dealers, and RouteOne (collectively, "Appellees") filed four summary judgment motions1: (1) non-infringement of all asserted claims of the '841 Patent based on the absence of a "com-munications medium," as construed by the district court, in the accused devices and based on several other proposed claim constructions; (2) invalidity of claims 14, 16, and 17 of the '841 Patent for indefiniteness under 35 U.S.C. § 112, ¶¶ 2, 6 for failure to disclose adequate structure corresponding to the purported means-plus-function "tracking" limitation; (3) invalidity of all asserted claims of the '427 Patent for failure to claim patent-eligible subject matter under 35 U.S.C. § 101; (4) invalid-ity of all asserted claims of the '427 Patent for failure to claim priority to the '403 Patent.

The district court agreed with Appellees' proposed claim construction of the phrase "communications medium" in the '841 Patent as "a 'network for transferring data,' not including the internet." Claim Construction, at 19. Because "communications medium" was a limitation in all claims of the '841 Patent, and because it was undis-puted that the accused products transferred data only over the Internet, the district court granted summary judgment of non-infringement of all asserted claims of the '841 Patent. The district court denied summary judgment of invalidity for failure to disclose adequate structure for the "tracking" limitation of the claims of the '841 Patent because the district court determined that "tracking" was not part of the function of the central processing means limitation. The district court granted summary judgment of invalidity of all claims of the '427 Patent for failure to claim patent-eligible subject matter under § 101. The district court denied summary judgment of invalidity of the '427 Patent for failure to claim priority to the '403 Patent. These rulings are all at issue on appeal--directly, as alternative grounds of affirmance, or in the cross-appeal.

The district court's claim construction of "communications medium" was curmudgeonly.

The district court construed "communications medium" as "a 'network for transferring data,' not including the internet." Claim Construction, at 19. The district court grounded its construction on two bases. First, the specification included the following statement in its "Detailed description of the preferred embodiment(s)" section: "Although illustrated as a wide area network [in FIG. 1], it should be appreciated that the communications medium could take a variety of other forms, for example, a local area network, a satellite communications network, a commercial value added network (VAN) ordinary telephone lines, or private leased lines." '841 Patent col.17 l.67 - col.18 l.5. The district court noted that though "it is improper for a court to limit a patent to its preferred embodiment, it is reasonable to assume that when a patent supplies a long list of examples like here, the list is exhaustive." Claim Construction, at 18 (internal citations omitted). Second, the district court rejected Dealertrack's arguments that (1) references in the specification to "TCP/IP" and "CompuServe" implicitly refer to the Inter-net as a communication medium; (2) the ordinary meaning of communications medium included the Internet; and (3) the prosecution history shows the Internet was implicitly considered a "communications medium" by the examiner and the patentee.

On appeal:

We agree with Dealertrack that the district court improperly carved-out the Internet from its construction of "communications medium." In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), this court "expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Id. at 1323. The disclosure of multiple examples does not necessarily mean that such list is exhaustive or that non-enumerated examples should be excluded. As we noted in Phillips, "[m]uch of the time, upon reading the specification in [] context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive." Id. Here, the context makes clear that the examples were not meant to be definitive of the scope of "communications medium."

Another claim term, "central processing means," was modified. Summary judgment of non-infringement vacated and remanded.

But some '841 claims were invalidated for indefiniteness, because the "central processing means" failed to disclose an algorithm to perform the claimed tracking. The district court got this wrong. Of course, the origin of omission lies with the prosecution firm: Sterne, Kessler, Goldstein & Fox, who advertise that they achieve a "gold standard in patent quality." Fools gold maybe.

Similarly for '427 claims, all of which went down on the tracks of §101, owing to excessively broad claim scope. The entertainment for this debacle yields thanks to Goodwin Proctor, another large firm, for their prosecution of '427.

The claims here do not require a specific application, nor are they tied to a particular machine. The computer here does no more than the computer in Benson to limit the scope of the claim. The process in Benson covered the use of binary-coded decimal ("BCD") to pure binary conversion in "the operation of a train[, or the] verification of drivers' licenses[, or the] researching [of] the law books for precedent . . . performed through any existing machinery or future-devised machinery." 409 U.S. at 68. Similarly, here, the claims cover a clearinghouse process using any existing or future-devised machinery.

In dissent, Judge Plager had comments about '427 invalidity in light of §101. Plager thought the district court should not have ignored the prior art invalidity motions; in fact, should have preferred them over a §101 ruling.

The trial court chose to decide the case under §101, rather than on the §103 issue. In my view that was an error that this court can and should correct.

Plager also expressed his fear (yes, fear) of the mess that the courts have made of §101. Of course, Congress passes pathetic patent law (confining the comment to this one area only by example), leaving a corrupt judiciary to make further hash of it. The courts should develop metrics as case law, but refuse to do so, because it would then preclude room for the subjective biases that higher courts indulgently insist upon. The Supreme Court is quite adept at creating runes to be read variously.

Judge Plager's fear is well placed, though not as expansive as it should be. Plager cautioned that district courts "not foray into the jurisprudential morass of §101 unless absolutely necessary."

R&D's DJ, focused on 112 issues, got trashed. The DJ had included claims that Streck had not asserted. After the appearance of waffling by the district court, the judge refused to consider them, as not representing an actual controversy.

On October 28, 2009, the jury found that: (1) R&D had not proven, by clear and convincing evidence, that it was the first to invent; and (2) R&D had not willfully infringed Streck's patents. The jury found that Streck was entitled to a royalty for R&D's infringing sales and awarded damages of 12.5%, which amounted to $92,298.88 plus costs and interest. The court entered judgment in favor of Streck on October 29, 2009.

Meanwhile, on a dual track of interference at the USPTO, the patent office found that R&D had priority of invention, the opposite of what had been determined at district court. The district court ignored the PTO.

The CAFC, as it normally does, lacking abuse of discretion, backed the district court. Withstanding the typical court bias exemplified here, the case law issue is the threshold by which declaratory judgment may gain jurisdiction.

It is well-established that, in patent cases, the existence of a "case or controversy must be evaluated on a claim-by-claim basis." Jervis B. Webb Co. v. So. Sys., Inc., 742 F.2d 1388, 1399 (Fed. Cir. 1984) (citations omitted). A party claiming declaratory judgment jurisdiction has the burden of showing "that the facts alleged, 'under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.'" Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1343 (Fed. Cir. 2007) (quoting MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)). The party seeking a declaratory judgment must establish that jurisdiction "existed at the time the claim for declaratory relief was filed and that it has continued since." Id. at 1344. (citing Steffel v. Thompson, 415 U.S. 452, 459 n.10 (1974)). In other words, jurisdiction must exist "at all stages of review, not merely at the time the complaint [was] filed." Id. at 1345 (quoting Steffel, 415 U.S. at 459 n.10).

After MedImmune, courts must look at "all the circumstances" to determine whether a declaratory judg-ment plaintiff has shown a case or controversy between the parties. As this court has explained, moreover, al-though the Supreme Court rejected the reasonable appre-hension of suit test as the sole test for jurisdiction, "it did not completely do away with the relevance of a reasonable apprehension of suit." Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1336 (Fed. Cir. 2008) (citing Caraco Pharm. Labs., Ltd. v. Forest Labs, Ltd., 527 F.3d 1278, 1291 (Fed. Cir. 2008)).

Looking at "all the circumstances" means merely rationalizing however a court wants to rule. A long list of patent rulings by the Supreme Court on down in the past decade have scrubbed objectivity as a necessity, substituting subjectivity as a ruse for the rule of law. MedImmune set a subjective standard for DJs. eBay for injunctive relief. KSR blatantly did so with obviousness.

The interpretation of § 112 ¶1 is another subjective evaluation. Courts can decide as a matter of law if they can only see one view of the facts. It all sounds so reasonable.

It is well-established that the "hallmark of written description is disclosure." Ariad, 598 F.3d at 1351. The level of detail required to satisfy the written description requirement depends, in large part, on the nature of the claims and the complexity of the technology. Id. As we explained in Ariad, the written description requirement "does not demand either examples or an actual reduction to practice; a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement." Id. at 1352 (citing Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed. Cir. 2006)). That said, a "mere wish or plan" to obtain the claimed invention is not sufficient. Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (citing Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997)). "Compliance with the written description requirement is a question of fact but is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the nonmoving party." PowerOasis, Inc. v. T-Mobile, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).

In this case, R&D's view of the facts was readily brushed aside.

R&D asserts that: (1) "Ryan was unable to locate any description of the use of true reticulocytes in his own patents" when asked to do so during his deposition; (2) Ryan did not consider true reticulocytes to be part of his invention; and (3) "Streck had never attempted to make a true reticulocyte integrated control." Appellants' Br. 36.

Here the CAFC lowers the bar to written description; but just this once, or at least until the next time it decides to grant such favor.

Streck is not required to prove an actual reduction to practice as to all disclosures.

The CAFC carved precedent of case law on enablement here, ending on the note, once again, that subjectivity is the standard; there are no objective metrics, only considerations.

Enablement "is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention." Hybritech Inc. v. Monoclonal Antibod-ies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (citation omitted). To be enabling, a patent's specification must "teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue ex-perimentation.'" Alza Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (citations omitted). It is well-established, however, that a specification need not disclose what is well-known in the art. See Hybritech, 802 F.2d at 1384 ("[A] patent need not teach, and preferably omits, what is well known in the art."). It is true, how-ever, that, "the rule that a specification need not disclose what is well known in the art is merely a rule of supple-mentation, not a substitute for a basic enabling disclo-sure." Alza, 603 F.3d at 940-41 (quoting Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1282 (Fed. Cir. 2007)).

The enablement requirement is met where one skilled in the art, having read the specification, could practice the invention without "undue experimentation." In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988) ("Enablement is not precluded by the necessity for some experimentation such as routine screening."). Whether undue experimentation is required "is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations." Alza, 603 F.3d at 940 (citing Wands, 858 F.2d at 737). In Wands, this court set forth the following factors to consider when determining whether a disclosure requires undue experimentation:

(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.

858 F.2d at 737. "[I]t is not necessary that a court review all the Wands factors to find a disclosure enabling. They are illustrative, not mandatory." Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991).

All of R&D's objections, some quite provacative, were slapped away as "without merit."

Affirmed.

MarcTec sued Johnson & Johnson for infringing 7,128,753 & 7,217,290, which claim surgical implants. MarcTec sought a claim construction of "plain and ordinary meaning." That sassy remark cost $4.7 million. The plain meaning blithely ignored the specification and prosecution history of a narrowed lynchpin term ("bonded"). Plaintiff expert witness testimony was declared "junk science." After claim construction and a summary judgment finding of noninfringment, the judge found the case exceptional under 35 U.S.C. § 285, finding the assertion "baseless" and "frivolous," in "bad faith," and awarding J&J all expenses and attorneys fees. The CAFC affirmed (10-1285). The lawyers who devised and implemented the strategy went unmentioned.

This crap by the courts doesn't deserve quoting. The story is that the plain language of the claims is ignored to dissemble in light of the specification, providing the unjustified basis to load the claims with an extra limitation; a practice blatantly against blackletter law. The upshot of the denouement: summary judgment of noninfringement because of the damning claim construction. Such economic violence by the courts is business as usual.

"If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with [the] scope of the claims." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).

A majority of the Board then required a terminal disclaimer for the child application under appeal, as obviousness-type double patenting, ignoring the dissenting opinion of the legal requirements.

This analysis was not performed by the Examiner and is error. The Examiner merely determined that Appellants evidence of non-obviousness in the Lee Declaration was not relevant to the obviousness-type double patenting rejection. The majority agrees.

The dissenter points out, if the child claims are nonobvious in claiming a different invention than the parent, there is no double patenting.

It has long been recognized in the law that unobvious improvement patents do not result in a timewise extension of a patent for the same invention or an obvious modification thereof. As there has been a showing of patentable distinctiveness on the facts in the present case in the Declaration of Lee, there is no timewise extension of a patent for the same invention or an obvious modification thereof.

Hal Wegner:

Ex parte Lee, __ Westlaw __ (PTO Bd. App. & Int. 2011), a divided Board panel affirms a double patenting rejection while simultaneously reversing a rejection on obviousness.  Nowhere is there a citation of In re Papesch, 315 F.2d 381 (CCPA 1963)(Rich, J.) nor the principles of Papesch that make the holding in this case difficult to comprehend.

Under In re Papesch, 315 F.2d 381 (CCPA 1963)(Rich, J), the nonobviousness of a chemical invention must be considered as a whole, both as to chemical structure and properties of the compound.

KSR and Pfizer v. Apotex manifest fundamental misunderstandings of chemical practice case law.

Because the case law at the Supreme Court has focused upon combination patents, there is an assumption made in some quarters that virtually all patents are to combinations. In fact, there has never been a modern Supreme Court grant of certiorari to consider the chemical obviousness case law line relating to a new compound nor any case in modern times to consider the obviousness of any invention other than a combination patent.

Pfizer v. Apotex Repudiates Papesch

More than forty years after the establishment of the current case law regime and after nearly twenty-five full years of judicial acceptance - throughout the history of the Federal Circuit - CCPA case law on chemical obviousness is under direct attack in a panel opinion. With the support of one additional member of the panel, the Chief Judge of the Federal Circuit has issued what is undoubtedly the single most controversial chemical practice ruling in the history of the Federal Circuit.

Also contrary to established precedent, the majority gives weight to the fact that the prior art is a patent that has a claim encompassing the claimed compound, a point relevant to infringement but less relevant to obviousness than the point as to whether there is a relevant teaching to suggest the claimed compound. A serious misunderstanding of "obvious to try" case law creates new problems particularly for the chemical industry.

Wegner thinks that chemistry deserves special consideration, but never addresses the inanity of the subjective standard of "obvious to try" that the Supreme Court crafted in creating Obzilla in KSR.

"The question of 'structural similarity' in chemical patent cases has generated a body of patent law unto itself." Unlike the world of mechanical incremental innovations that focus almost entirely upon the creation of new combinations of old elements, the organic entities are unique structures that may or may not have a close apparent relationship to prior art compounds. Given a particular organic structure, the skilled chemist can instantly visualize methods to make - quite literally - thousands if not millions of somewhat structurally related compounds that may or may not be expected to behave along the lines of the known prior art compound. But, knowing possible two dimensional structural formulae that could be made may or may not include an expectation of similar properties, a fact-intensive inquiry in an ever-changing state of the art.

Wegner points out the poison to rule of law that the courts have swallowed.

Going beyond the arcane world of chemical practice, the recent evolution of panel precedent has emphasized the balkanization of panel precedent, the erosion of the former approach where en banc and prior panel opinions created bedrock principles upon which the public can rely.

Like jurisprudential peanut butter, Wegner spreads the blame, but there can be no such excuse for imprudence at the appellate level.

It is easy to criticize mistakes in judicial opinions, but here a major share of the blame for the problems in both KSR and Pfizer v. Apotex is due to inadequacies of legal scholarship in the briefing process.

For those in chemical practice particularly, Mr. Wegner's paper is crucial. It is certainly a caution that the patent office and the courts have discarded justice by sowing confusion to rig the system to benefit large corporations at the expense of invention by smaller entities.

This is a Hatch-Waxman Act case. Mylan wanted to launch a generic of Warner Chilcott/Mayne's patented drug (6,958,161, which goes to a "stabilising coat" on the pill). Warner Chilcott sued for patent infringement, and got a preliminary injunction from Little Willie.

The preliminary injunction hearing was a flimsy excuse for a fix already in.

The district court heard arguments from counsel regarding both motions on September 21, 2011.  The court did not conduct an evidentiary hearing and did not hear live testimony from any of the witnesses.  The hearing lasted just over an hour. 

The day after the hearing, the district court issued a two-page order granting Warner Chilcott's motion and preliminarily enjoining Mylan from selling [a generic version].

On appeal:

A plaintiff seeking a preliminary injunction must establish that: (1) "he is likely to succeed on the merits"; (2) "he is likely to suffer irreparable harm in the absence of preliminary relief"; (3) "the balance of equities tips in his favor"; and (4) "an injunction is in the public interest." Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) (citations omitted).  Such an injunction is "an extraordinary remedy never awarded as of right." Id. (citation omitted).  Where, as here, an accused infringer has challenged the validity of a patent in response to a motion for a preliminary injunction, this court has addressed the procedures district courts are to use to analyze the question of validity.  See, e.g., Titan Tires Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1378-79 (Fed. Cir. 2009).  As it relates to the present appeal, we have explained that "the trial court first must weigh the evidence both for and against validity that is available at this preliminary stage in the proceedings." Id. at 1379. 

In this case, the district court abused its discretion in two ways.  The court: (1) failed to hold an evidentiary hearing despite acknowledging that the decision turned on disputed factual issues; and (2) did not weigh the evidence or make any findings as to Mylan's invalidity challenge. [T]hese errors warrant vacating the preliminary injunction. 

Vacated and remanded.