(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially affirms this obviousness IPR determination for a "local interconnect layer in an integrated circuit." On appeal, Owner argues 1) claim construction of "comprising tungsten"; and 2) motivation to combine. Regarding 1), below, the Board included tungsten compounds in the term, but CAFC declines to do so here, finding that the term "requires elemental tungsten" as the patent consistently refers to tungsten as a singular component ("when referencing the properties of tungsten that make it a desirable material for use in a local interconnect, the specification refers to properties unique to tungsten itself—not compounds of tungsten—
such as low resistivity and chemical stability."; CAFC acknowledges "The incorporation of minute materials with elemental tungsten does not constitute a tungsten compound"). Despite this, in 2), CAFC doesn't find the change in construction to affect the obviousness conclusion, since the Board found that the reference at issue disclosed "both a tungsten-silicide and an elemental tungsten layer" (emphasis original). After briefly confirming substantial evidence for the Board's reasoning, CAFC affirms.
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- CAFC generally affirms this not unpatentable IPR determination, excepting amended claims 69 and 77 for which it remands, involving "a method and apparatus
for providing new configurations for transmitting control
information between a mobile terminal, for example user
equipment (UE), and a radio network controller (RNC) using a common control channel (CCCH) logical channel/transport channel." Here, Appellant-Petitioner argues that "the Board’s finding that amended claims
69 and 77 have written description support lacks substantial evidence." CAFC agrees, as the claims require a specific ordering of message steps, which the Board failed to consider ("The Board erred in not requiring this ordering of steps. We therefore vacate . . . and remand for the Board to determine patentability in the first instance in light of our determination that the claims require that messages A and B precede messages C and D.").
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- Continuing the automated checking saga . . . CAFC affirms unpatentability for obviousness in this IPR. Here, Appellant argues 1) that the decisions below were inconsistent; and 2) lack of motivation to combine. Regarding 1), Owner argues that the prior art combination successful here was "essentially the same" as in an unsuccessful peer case. CAFC, however, agrees with the Board that the cases were distinct (" “arguments and evidence particular to the Wells Fargo IPR and the findings based on those arguments and evidence are not general findings of teachings away that would be applicable to other prior art references, such as Acharya and Luo.”"). Regarding 2), Owner relies on Petitioner's expert's testimony in a DCT proceeding to counter the proffered motivation, but CAFC notes that the testimony was in connection with enablement, not obviousness, and so defers to the Board's analysis.
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- CAFC considers this remote check deposit IPR finding against the Owner's appeal and for the petitioner in connection with obviousness. Regarding the former: "USAA argues that the Board erred in finding that a skilled artisan would be motivated to combine Byrne’s thin-client application with Garcia’s remote check deposit so that the combination provided a “remote deposit application” as required by claim 1 . . . a skilled artisan would not be motivated to implement Garcia using a thin-client application because Garcia’s remote check deposit would already be achieved by using the mobile phone’s camera to take a picture of the check and then using its browser application to transmit that image to a bank." CAFC disagrees, basically because expert testimony showed there were other benefits motivating the combination ("a thin client improves security and ease of maintenance”; “an ordinary artisan would have understood downloading a thin client to be a well-known way of distributing software in the relevant time period.”). After briefly reiterating that obviousness looks to combinations of features across references, CAFC sets aside Owner's appeal. As for the Petitioner's appeal, "PNC argues that the Board improperly found that Garcia’s bank server already taught error processing and that a skilled artisan would not be
motivated to “shift” this step to Garcia’s mobile phone." CAFC thinks the Board was wrong to reject this motivation because, while these problems being addressed are rather generic, that's not the most salient issue ("The mere fact that all networks share these problems does not mean that addressing them is not obvious, since the relevant inquiry is simply whether skilled artisan would have been motivated to modify the prior art as claimed.").
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- CAFC precedentially affirms this multifaceted preliminary injunction on "a therapeutic product that contains the fusion protein aflibercept," first confirming the jurisdiction's suitability ("SB’s conduct satisfies the minimum contacts requirement for personal jurisdiction in West Virginia . . . SB’s argument comes down to two assertions, neither of which is enough. The first is that there is a crucial, bright-line constitutional difference between SB doing its own distribution and SB contracting with a national distributor, even when it remains significantly engaged with that distributor. Consistent with the practical focus of the constitutional standard, we rejected such a distinction in Acorda. 817 F.3d at 763 . . . The second of SB’s crucial assertions is that what Regeneron needs is affirmative evidence of SB (or perhaps Biogen) calling express attention to West Virginia as a target market. But there is simply no good reason, under the constitutional standard, for demanding such singling-out evidence as a substitute for persuasive evidence of nationwide targeting without a carve-out."). As for the injunction itself, CAFC agrees that there's a causal nexus between the infringement / irreparable harm ("There is no evidence that SB possesses or plans to sell or offer to sell a non-infringing biosimilar under its approved aBLA. Indeed, the evidence in the record indicates otherwise.") and that obviousness-type double patenting (ODP) doesn't suffice to invalidate the patent ("It is well-settled that a narrow species can be non-obvious and patent eligible"). CAFC also disagrees that the DCT's ODF analysis (PHOSITA would consider non-glycosolated aflibercept) contradicted the DCT's written description analysis (the spec discloses glycosolated aflibercept) ("The ODP analysis is focused on the earlier patent’s claims, and what a relevant artisan would find obvious based on them, whereas the written-description analysis is focused on what is disclosed in the specification. The ’594 reference patent’s claims say nothing about glycosylation, so they do not differentiate between glycosylated and non-glycosylated versions of the VEGF trap, and the district court found that a relevant artisan would not have been motivated to choose a glycosylated version with a reasonable expectation of success."). Ergo, the injunction is affirmed.
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.