(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC considers two IPR appeals for the same patent claims on "a solar-cell module comprising multiple solar cells," the claims found obvious under one reference combination in the first IPR, but not under a second combination in the second IPR. Affirming the first IPR, CAFC finds it unnecessary to consider the second ("Hanwha argued, and the Board agreed, that a person of ordinary skill in the art would have been motivated to modify Huang to implement the multiple junction boxes of Wu to shorten the
length of the bus bar, reduce the series resistance, and improve overall output performance as taught by Wu"). CAFC disagrees that this conclusion was based upon a "new obviousness theory that Hanwha never raised and REC never had the opportunity to rebut" (finding that the petition's obviousness argument was not conditioned "upon a finding that Huang disclosed bypass diodes in a junction box"). As for substantial evidence, CAFC likewise sides with the Board ("The Board . . . appropriately applied KSR in crediting expert testimony that explained why a person of ordinary skill would have found a single assembly crossconnector a “predictable variation” on the prior art.").
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- CAFC reverses and remands this summary judgment of noninfringement for "a multistage tub for bathing an infant and, as the child develops, a toddler," basically because the CAFC majority disagrees with the DCT's claim construction analysis of "distal edges joined at a bottom surface apex" since intrinsic evidence obviated the need for consideration of extrinsic evidence ("To read the limitation “joined at a bottom surface apex” to require that the distal edges of the seating surfaces be “joined to each other at a bottom surface apex,” as the district court did, imports language into the claim that is not there. The term “at a bottom surface apex” indicates where the distal edges of the two seating surfaces join but does not limit how those distal edges must be joined . . . Because we have now determined that
TOMY is correct that this term must be construed to include both direct and indirect connections, and we have decided that Mr. Mauro’s testimony is not excludable based
on application of an erroneous claim construction, it follows
that we must reverse the judgment of non-infringement." emphasis in original). Judge Chen dissents, arguing that the proffered infringement theories fall short regardless of the "seating" claim construction discussed above, and consequently there is no material factual dispute ("Mr. Mauro’s infringement opinions require an illogical and unreasonable understanding of the plain and ordinary
meaning of “seating surface” . . . resting against something is not the same as sitting on it—a footrest would necessarily support part of a toddler’s weight but would not be considered a seating
surface . . . the Accused Tub’s central hump is not a seating surface but rather a restraint for how far forward a sitting toddler can move within the tub . . . Because a restraint is something one, at most, rests against, not something that one
sits on, I do not agree that “the sliding-prevention function
of the raised hump of the bottom surface additionally supports a finding that the side surface of the raised hump is
a ‘seating surface.’”"). Justice Chen also disagrees with majority's construction above ("Under its plain and ordinary
meaning, “distal edges [of the two seating surfaces] joined
at a bottom surface apex” means the seating surfaces’s distal edges are directly joined to each other through the apex.
In other words, the distal edges cannot be indirectly joined
at the apex through an intervening structure . . . The majority, in my view, engages in its own independent inquiry untethered from TOMY’s arguments.").
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- In this precedential decision, CAFC holds that "a published patent application can be deemed prior art in an IPR as of the application’s filing date" and not just publication. Basically, CAFC is confirming that 311(b)'s statement that an "IPR petitioner may challenge a patent “only on a ground that could be raised under [35 U.S.C. §§] 102 or 103 and only on the basis of prior art consisting of patents or printed publications” includes 102(e)(1)'s inclusion of published patent applications being accorded prior art dates as of their filing dates ("Under § 102(e)(1), published patent applications, like Martin, are
deemed prior art as of their filing date."). Turning to the merits, CAFC then affirms based upon the availability of the reference.
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- CAFC briefly affirms this obviousness decision for "in-bed hitch mounting systems", agreeing with: the Board's motivation to combine analysis ("a person of ordinary skill in the art would have been motivated to combine Works and Lindenman to eliminate the need for an adapter . . . as explained by the ’585 patent itself, using an adapter to “convert a towing vehicle to from accommodating a fifth wheel hitch to a gooseneck hitch or vice versa is time and labor intensive and inefficient.”"); secondary considerations analysis ("because Horizon did not demonstrate that Ford’s hitch system had any connection
to the ’585 patent, the Board found that Horizon had not
established nexus"); and motivation for the substitute claims ("Northern Stamping’s expert
testified that Fandrich’s tubular shape and its advantages
in this context were well known such that its incorporation
with Withers’ cross members would have been obvious to
try. J.A. 4493–94. The Board’s finding was accordingly
supported by substantial evidence.")
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- This is a precedential contested inventorship decision (which begins: "Lancium allegedly stole Austin Storms’ thunder and patented it" . . . can you hear my eyes rolling? It's a Monday if you needed any further proof). "This case centers around a conversation over
cocktails and dinner at a Bitcoin mining conference, a follow-up email with four attachments, and a subsequent patent. Based on the dinner conversation and email attachments, Mr. Storms asserts that Lancium’s patent must be corrected to name him as an inventor." The DCT disagreed and CAFC here affirms. CAFC first confirms that preemption governs certain alleged state law conversion claims, based at least on the nature of the pleadings ("we agree with the district court that BearBox’s conversion claim is preempted because the conversion claim, as pled, is essentially an inventorship cause of action and patent infringement cause of action, and thus seeks “patent-like protection” for ideas that are unprotected under federal law."). CAFC then agrees with the striking of a supplemental report, as there was no "new claim construction" warranting its entry (the "adopted constructions were not new to BearBox or Dr. McClellan"), its opinions were newly raised ("We agree with the district court that the“opinions in [Dr. McClellan’s] Supplemental Report are beyond mere ‘elaboration’ or ‘clarification’” for at least the
reasons the district court identifies"), and removing the report was not an "extreme sanction" (e.g., as the untimley new theories would prejudice the other party). Finally turning to the merits (we're on page 23 of 29 . . .), CAFC considers the single email and its attachments in connection with the claims and agrees with the DCT that there's no overlap ("the district court determined either that these documents did not establish that Mr. Storms conceived of the claimed invention or that Mr. Storms could not establish that he communicated any information prior to Lancium’s independent conception of the claimed subject matter."). In upholding the analysis, CAFC agrees that it was appropriate to exclude hearsay ("to preserve for appellate review a claim of error premised on the exclusion of evidence, the aggrieved party must ensure that the record sufficiently reflects the content of the proposed evidence . . . counsel for BearBox made no offer of proof as to what Mr. Storms’ response would have been if he had been permitted to answer the questions"), agreed that the claims were also considered in their entirety, and the fact that the DCT found plaintiff to be developing in the same space wasn't sufficient to conflict with the ultimate ruling ("The court also found . . . “even if Storms’ Email did meet element [b4][3] of claim 1 of the ’433 patent, the Court finds as a matter of fact that Storms did not communicate element [b4] prior to Defendants’ independent conception.”").
James Skelley is a solo practitioner based in Mountain View, California since 2015, focusing primarily upon technology transactions and intellectual property procurement. James' practice also serves as an "incubator" for new legal service technologies / methodologies and a "living example" of their application. To this end, James regularly partners with larger law firms and with his clients so as to improve the practice of intellectual property law.
- Utility / Design / PCT Patent Prosecution
- Open Source Diligence
- Technology Transactions (typically as a team)
- Litigation / Inter Partes Review Support (typically as a team)
- James tends NOT to handle low-volume trademark work (though referrals are available)
- USPTO - #59458 - 10/16/2006
- California - #257829 - 12/01/2008
- District Columbia - #1014986 - 08/05/2013
- James is available by email, 8x8 hangout, and in-person meetups in the Valley.
- Email is typically the best way to reach James.
- Machine Learning / Robotics
- Cryptograpy / Cryptocurrency / Smart Contracts
- Medical Device
- Computational Biology (primarily modeling and proteomics)
- Signal Processing (primarily wireless and compression)
- Quantum Physics (primarily semiconductor) / Electromagnetics (antennae, waveguides, etc.)
- Manufacturing / 3D Printing
- James tends NOT to handle pure chemistry applications (though referrals are available), however James HAS handled matters involving computational proteomics, cellular modeling, and diagnostic lab protocols
LawMux Bites are (very) short, one-page summaries of various legal concepts, cases, and technologies. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you if you're new to the subject matter.
