(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this precedential decision, CAFC considers foreign action in an SEP enforcement dispute, particularly an antisuit injunction, and the three-part analysis framework of Microsoft v. Motorola. Per the Microsoft analysis, the first threshold requirement is "that the parties and issues be the same as between the domestic and foreign suits, and that the domestic suit be “dispositive of the [foreign] action to be enjoined”." In Microsoft, the Ninth Circuit "affirmed the district court’s determination that the contract issues before the district court “could resolve the German patent claims.”" Here, "Lenovo maintains that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, in Lenovo’s view, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an
issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims; and (2) will, if decided in Lenovo’s favor (i.e., that Ericsson has not so complied), dictate the impropriety of Ericsson’s pursuing SEP-based injunctive relief." Ericsson, in contrast, maintains that "the instant suit must necessarily result in a global cross-license between the parties" to be "dispositive" under Microsoft. CAFC agrees with Lenovo and disagrees with Ericsson, finding no "cross-licensing" requirement in the Ninth Circuit's analysis ("[T]here was no indication in
either Microsoft opinion that the conclusion on the “dispositive” requirement depended on the domestic suit resulting in a license"). CAFC then finds that the dispositive requirement is met on the facts here and accordingly remands.
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- In this precedential claim construction decision focusing on extrinsic evidence and doctrine of equivalents (DOE) noninfringement JMOL determination, CAFC affirms. Focusing on the latter issue, CAFC reiterates the DOE language in VLSI: "“[W]e have long demanded specificity and completeness of proof as crucial to enforcing the limits on the doctrine: The patentee must provide particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device”" (per Lear: "“[W]e do not doubt the ability of a jury to decide the factual issue of equivalence, to enable the jury to use its ability,” the patentee’s case “must be presented in the form of particularized testimony and linking argument.”"). Reviewing the testimony here, CAFC finds inadequate "particularized testimony and linking argument" to support DOE ("Dr. Selker’s testimony never identified a particular element or elements in the My Account App as being equivalent to the “single action” limitation . . . Dr. Selker’s passing reference to “several button presses” did not guide the jury to focus on what theory or what button presses are allegedly equivalent . . . By itself, the failure to explicitly identify the alleged equivalent is fatal to NexStep’s doctrine of equivalents theory . . . We agree with the district court that this conclusory and circular “because I said so” testimony is insufficient . . . An expert’s “offhand and conclusory statements” that the purported equivalent “function[s] like” the claim limitation is insufficient. "). After considering, and dismissing, various other arguments for setting aside the JMOL, CAFC affirms.
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- CAFC affirms the tortious interference dismissal, but remands for more thorough claim construction on a patent assertion for underground utility line detection. Importantly, CAFC precedentially disagrees with plaintiff's assertion that "a district court may never engage in claim construction in deciding a motion to dismiss", specifically disagreeing that passages in the 2018 Nalco case effect that conclusion ("Those passages, we conclude, should not be read as stating a categorical rule against a district court’s adoption of a claim construction in adjudicating a motion to dismiss. The passages do not in terms state such a rule. They are readily understood to be drawing a conclusion about the need for further proceedings to resolve the particular claim-construction issues in that case before a sound
determination of the appropriateness of dismissal could be reached. Nalco should be read in that case-specific way . . . Nalco does not establish a rigid rule in place of the practical, case-specific inquiry."). Indeed, DCTs regularly need to consider the claim meaning during 12b6 motions to dismiss under 101. Here, CAFC declines to state whether the DCT's construction is correct or incorrect, but remands for more thorough consideration of various identified features of the claims, specification, and potential extrinsic evidence. CAFC concludes by agreeing with the DCT that insufficient facts have been asserted to support the tortious interference claim ("UTTO has not stated facts that spell out a plausible allegation that Metrotech’s statement was fraudulent under the Unfair Competition Law . . . In other words, UTTO has not alleged facts that would “nudge[] [its] claims across the line from conceivable to plausible.”").
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- CAFC vacates and remands this summary judgment non-infringement determination for a semiconductor light source, disagreeing with the DCT's construction of "first reflective layer" as an epitaxial layer ("Neither the district court nor Feit Electric identifies any language in the claims, specification, or the prosecution history that demonstrates the inventors intended to limit the reflective layers to the VSCEL embodiment or that the reflective layers must be epitaxial layers. We conclude that the first reflective layer need not be epitaxial."). CAFC then briefly addresses various noninfringement arguments raised below that should either be set aside, or reconsidered, in view of the new claim construction ("Feit Electric argues that the patterned substrate cannot be the first reflective layer because it is not an epitaxial layer . . . this alternative theory . . . relies on the now rejected claim construction that the first reflective layer is an epitaxial layer . . . Second, Feit Electric argues that the patterned substrate cannot be a first reflective layer because the first reflective layer and substrate cannot be satisfied by the
same component . . . [the DCT's conclusion dismissing this argument] again relied on its erroneous understanding that the first reflective layer must be an epitaxial layer. Under these circumstances, we think a remand is necessary to give the parties an opportunity to address the issues without regard to the district court’s erroneous claim construction").
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- CAFC vacates and remands to consider a claim construction adjustment in a matter directed to a "system for providing a dynamically generated application having one or more functions and one or more user interface elements." Basically, the DCT found statements in the specification as disavowals, which CAFC and the plaintiff see merely as exemplary ("First, because claim 1 recites “automatically detecting changes” and claim 8 requires that the changes be detected by “one or more intelligent agents,”
claim differentiation provides a strong reason not to limit claim 1 to intelligent agents . . . Second, the specification does not disavow “automatically detecting” without “intelligent agents.” The portion of the specification that describes “the invention” as detecting changes using intelligent agents is exemplary and not
descriptive of the invention as a whole."). Basically, "[t]he repeated use
of intelligent agents in the description of the best mode merely indicates that intelligent agents may be the best way of implementing the invention, not that the invention cannot be implemented without intelligent agents." Thus, after briefly rejecting the DCT's invalidity findings for failure to consider the whole claim, expert findings, fees, etc., CAFC remands.
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.