(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- After previously remanding for consideration of an alleged disclaimer concerning language in the preamble ("a virtual private network (VPN) between a client computer and a target computer" referred to as "direct communication"), CAFC here affirms the Board's post-remand anticipation determination (despite the disclaimer) as being supported by substantial evidence ("[T]he Board further found, Kiuchi’s proxy servers forward data packets and do not, instead, relay data packets from point to point . . . Forwarding is within the scope of the claims, while relaying . . . is within the scope of VirnetX’s disclaimer."; "[T]he Board found that Kiuchi discloses “direct addressability,” which is “the ability to address data to
a particular computer,” a “key aspect of the claimed VPN.”"). Various of the patent owner's contentions in related litigation were also found to distinguish the non-disclaimed from disclaimed scope ("[I]n the litigation leading to the Cisco Appeal, VirnetX agreed that another FaceTime embodiment – the relay embodiment – did not have an infringing direct-communication VPN . . . the relay server embodiment of FaceTime was like the Aventail embodiment VirnetX has clearly and unmistakably disclaimed."). CAFC additional finds arguments regarding the meaning of direct connection at the transport layer, as well as arguments concerning joinder of other parties, to be forfeited as untimely ("VirnetX’s argument that direct connections at layers other than the transport layer are irrelevant was not made in its opening brief and is forfeited"; "VirnetX . . . did not in that appeal . . . raise any issue regarding the Board’s joinder of Black Swamp").
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- CAFC denies the "extraordinary" remedy of mandamus as "EBS does not
identify any 'irremediable interim harm [that] can justify
mandamus, which is unavailable simply to relieve [EBS] of
the burden of going through the inter partes review.'"
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- This (very brief) 101 eligibility case is just a reminder that 12b6 (often used for 101 challenges) will, absent a counterclaim roping in more claims, only apply to the claims in the complaint ("[W]e agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents.")
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- In this precedential obviousness decision concerning memory cache coherency CAFC disagrees with "[t]he Board . . that Intel failed to show the segment-to-segment limitation in the asserted prior art, fault[ing] Intel for failing to explain how Kabemoto’s “snoop bus 22” connected each cache segment to its neighboring segment" as "Bauman’s Figure 6 teaches—if not plainly illustrates—the segment-to-segment limitation of the claimed interconnect system: each blue cache segment is connected to its neighboring blue cache segments via the gold data path." CAFC then considers, and also reverses, "the Board’s rejection of [Intel's] “known-technique” rationale for a motivation to combine." For context: "“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. This is the so-called “known-technique” rationale." As "Intel just had to show that Bauman’s secondary cache was a “suitable option” to replace Kabemoto’s secondary cache" it sufficed that "there was a known problem of cache coherency in the art, that Bauman’s secondary cache helped address that issue, and that combining the teachings of Kabemoto and Bauman wasn’t beyond the skill of an ordinary artisan."
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- In this precedential APA decision, CAFC affirms in part and reverses in part. "We affirm the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to statute and arbitrary and capricious. No constitutional challenges are presented. But we reverse the unreviewability dismissal of plaintiffs’ challenge to the instructions as having been improperly
issued because they had to be, but were not, promulgated
through notice-and-comment rulemaking under 5 U.S.C.
§ 553. That challenge, we also hold, at least Apple had
standing to present." Generally (and very briefly), the Director is permitted, but not compelled, to institute IPR after an appropriate (and required) review of the petition. This likewise applies to the Director's delegated authority. Thus: "The present case . . . involves a challenge to the Director’s instructions to the Board, as delegatee, regarding how to exercise the Director’s institution discretion. But we conclude that the IPR statute’s preclusion of review, as now settled by the Supreme Court based on statutory text, legislative history, and structure, must encompass preclusion of review of the content-focused challenges to the instructions at issue here." In contrast, however, as regards the notice and comment issue, CAFC finds that this falls outside the above congressional protection from judicial review ("[W]e have been shown no sufficient justification for a conclusion that the
high standard of § 701(a)(1) for inferring a preclusion of review is met for this distinct issue"). Following a brief standing analysis, CAFC finds that Apple has standing to contest the notice issue, and therefore remands as to that single issue.
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 (albeit while mindful of COVID protocols).
- 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.
