(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 JMOL decision, CAFC reverses a jury not invalid determination, instead finding lack of written description for claims on "a system for controlling a specific display unit, such as a computer monitor,
that is configured to receive video signals from an external
source, such as a computer." Basically, the claims originally said that the "identification number" identified "a display" unit (support acknowledged), but the claims were later amended to say that the number referred to "a type" of display (support contested). Here, while CAFC acknowledges that the presumption of validity often negates the need to provide evidence of support (owner offered no rebuttal and, indeed, the jury still found adequate support), there are exceptions to that general rule, as here, where the plain text of the specification and the expert testimony indicate lack of support ("This amendment changed the
nature of the claim’s identification number from one identifying a specific display unit to one identifying a type of
display unit . . . It is undisputed that the patent does not expressly disclose the type limitation."). Of course, "[i]t would not automatically be fatal that the type limitation was not expressly disclosed as long as substantial
evidence showed that the patent disclosed identifying a
type of display unit in some less express way." Alas, consulting each of expert testimony and the prosecution history, CAFC finds no such evidence (e.g., "the plain words of this portion of the specification
demonstrate that the patent discloses a specific display
unit, not the type limitation . . . Dr. Stevenson’s testimony does not provide
substantial evidence for adequate written description.
Dr. Stevenson’s testimony was regarding noninfringement . . . There was no testimony from which a skilled artisan
would have concluded that such mapping of serial number
onto model number is disclosed or suggested in the patent
itself."). Faced with such evidence, CAFC grants the JMOL.
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- CAFC considers patents directed to "bone plates used for arthrodesis, which is the surgical fusing of two or more bones over a joint, and
osteosynthesis, which is the surgical fusing of two or more
bone fragments together to form a single mechanically stabilized bone" and affirms the PTAB's findings of obviousness thereon. Here, Owner challenges:
- "whether the “angled hole” claims of both Challenged Patents were proven obvious based on the combination of Arnould and Zahiri";
- "whether the “temporary fixation”
claims of both patents were proven obvious based on the
combination of Arnould and Zahiri";
- "whether the Board
properly construed “between,” as used in the ’751 patent"; and
- "whether other purported errors should prevent us
from affirming the Board"
CAFC acknowledges that the Board erred in a) assessing patentability on Arnould alone when this wasn't contended in the petition; and b) the Board implicitly construed "angled hole" "as requiring only that the axis of the
third hole, and not the hole itself, needs to be angled", a construction with which CAFC disagrees, but not an error shown to affect the outcome of the decision. Regarding 1), the "Board found that a person of ordinary skill in the
art (“POSA”) would have been motivated to combine Arnould and Zahiri. In doing so, it relied, in part, on testimony from OsteoMed’s expert, Mr. Sherman, an engineer,
that a POSA would look to Zahiri when seeking to improve
Arnould because “bone plates configured for arthrodesis
[like in Arnould] and bone plates configured to fuse bone
fractures [like in Zahiri] have been used interchangeably
for decades.”" Reviewing the analysis, CAFC believes it can "reasonably discern that the Board considered and implicitly addressed reasonable expectation of success based on the arguments and evidence presented to the Board on motivation to combine" and therefore affirms, treating the "temporary fixation" claims in 2) a similar manner. Regarding 3), CAFC agrees with the Board's construction and so affirms ("To Stryker, a third hole is not “between” a first hole and a
second hole if the third hole is in a different plane than the
first and second holes. J.A. 63. The Board rejected
Stryker’s position, instead construing “between” in the context of these claims as extending to third holes that lie between, even though in a different plane than, the other two
holes."). CAFC concludes by addressing a litany of purported errors in 4), disagreeing in each instance, before affirming as to the whole.
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- A brief opinion reiterating subject matter challenges specific to finance-related claims ("[B]efore the Board,
[Applicant] argued that “[t]he integration of a practical application
includes reducing market inefficiencies, including price
manipulation and hedging, reducing complexity and
thereby computing requirements, and the end result of
such integration is the very practical application of reducing the need for computing resources.” Decision at *8
(quoting J.A. 574). We conclude that any purported improvements from the claimed invention are simply improvements to the abstract idea, not specific improvements
to the underlying technology").
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- CAFC affirms / reverses in part this IPR on "electrical safeguards in solar
arrays that shut down or reduce power to a solar module
when communication with the module is interrupted." Appellant focuses here on the claim construction of "predetermined number", but CAFC sees no basis for overturning the Board's reasoning behind its construction ("The prosecution
history also supports the Board’s construction. The patentee amended the claims changing “whether the communication is interrupted” to “whether the communication
has been interrupted for a time period longer than a predetermined number of allowed skips” to overcome prior art.
SunSpec’s interpretation would
read out the very amendment it made to overcome prior
art. The plain language of the claim, the specification, and
the prosecution history are all consistent with the Board’s
interpretation."). CAFC similarly agrees with the Board that the "“predetermined number of skips of the heartbeat signals” in claims 14 and 15" is not different from the "“anomaly in
heartbeat signals” in claim 12 and “anomaly includes skips
of heartbeat signals” in claim 13" (as, again, "SunSpec’s interpretation conflicts with the intrinsic
record and violates the principle of claim differentiation"). In contrast, CAFC agrees with petitioner that the Board should have considered the reference combination in their second unpatentability ground ("SunSpec clearly argued that, to the extent
Moine does not disclose a “predetermined number” of skips,
Kronberg in combination with Moine does . . . We therefore vacate and remand for the
Board to consider this argument in the first instance.").
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- This is a precedential denial of en banc rehearing of the February Kroy IP decision (see below: and here - recalling, that in that past decision: ""We hold that a prior final written decision of the Board of unpatentability on separate patent claims reached under a preponderance of the evidence standard cannot collaterally estop a patentee from asserting other, unadjudicated patent claims in district court litigation"). The majority here says the holding must stand to ensure conformity in the law, in accordance with SCOTUS' past reprimands ("The Supreme Court has repeatedly reprimanded us for
creating patent-specific departures from well-established
principles. Collateral estoppel is a well-established doctrine. . . . Policy implications cannot override the desire for uniformity in the application of law across different subject
matters"). Judges Dyk and Hughes dissent here, however, feeling, that the old Kroy IP decision is itself at odds with precedent ("In
holding that there is no such collateral estoppel effect, the
panel contradicts our earlier decision in XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018)
(holding that IPR unpatentability decisions have “immediate issue-preclusive effect” when affirmed by this court),
fails to recognize that Supreme Court precedent makes the
application of collateral estoppel dependent on Congressional intent, and undermines the central purpose of the
AIA—to make Board decisions a substitute for district
court invalidity litigation."). So, I assume this will move on to SCOTUS for clarification (if granted cert) on how to balance the AIA with common law understanding of disparities in the burdens of proof.
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.
Similar to LawMux Bites, notes are (very) short writeups calling attention to various issues. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you to the relevant topic.
