(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- This is precedential, interesting, and a bit of a weird one involving expiration and provisional rights. Basically, priority was claimed for an application such that the 20 year life expiration would already have expired for any patent that results from the application. Accordingly, the USPTO doesn't even think there's jurisdiction for the appeal here on a nonstatutory double patenting rejection ("Effectively, Mr. Forest asks the Patent Office to grant him an expired patent."), but "Mr. Forest argues that he would still acquire “provisional rights” under 35 U.S.C. § 154(d) if the Patent Office issues him an expired patent" ("Mr. Forest does not dispute that his patent, if granted, would have no exclusionary rights, but he argues that his patent, if granted, would receive provisional rights"). This is precedential because it's a close reading of 35 U.S.C. § 154(a)(2) - particularly the query: "[D]oes a patent include the grant of provisional rights when the patent would issue after its expiration date (and thus would issue without any exclusionary rights)?" - to which CAFC answers "no." Basically, provisional rights attach at the time of publication, whereas exclusionary attach at issuance, and the former are contingent upon the existence of the latter under CAFC's close reading of the statute ("If no exclusionary rights can be granted (because, as in this case, the application is well past the expiration date), then so, too, the attendant provisional rights are unavailable. Put another way, there are no “other rights” the provisional rights can be “in addition to” . . . Congress has not provided a clear indication that provisional rights can exceed a patent’s twenty-year term"). So a clever try, but CAFC dismisses.
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- CAFC reverses the claim construction on these patents involving "systems and methods for displaying website information, integrating widgets, and programming, especially on mobile devices." The DCT "construed a “runtime engine” as a “file that is executed at
runtime that reads information from the database
and generates commands to display a web page or website”" and "Express pointed to certain JavaScript files in GoDaddy’s accused products as meeting the
“runtime engine” claim limitation" which "utilized" rather than "read" the database. CAFC thinks the "utilized" construction better ("The claims expressly recite “at least one run time file . . . that “utilizes information stored in said database” . . . The language requires no more than that the runtime engine “utilize[]” information from the database . . . GoDaddy has identified nothing in the specification that would override the breadth of the claim language to require reading of the database by the runtime engine", emphasis added). Ergo CAFC remands to apply the proper construction. CAFC, however, briefly denies Express' request for JMOL, since the "jury could reasonably find against [its] analysis" (e.g. "There was substantial evidence to support a finding that GoDaddy’s products did not meet the “registry”
limitation. For instance, GoDaddy’s expert explained that what Express identified in the accused products as the registry was an unstructured file that could not be a database or, therefore, a registry").
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- CAFC partially affirms and partially reverses this not unpatentable decision for "interactive displays that can
determine the relative position of objects in front of them
and execute corresponding functions." Petitioner her "argues that that the Board was incorrect to construe the term “detector assembly” to require “two or more detector elements” when “nothing in the language of claim[s] . . . [or specs] . . . requires the “detector assembly” to include more than one detector element—or any other specific element(s)." CAFC agrees with petitioner, disagreeing that "consistency" of the narrower interpretation with the dependent claims cannot change the affirmative choice to use the singular rather than the plural ("The claims only require an “assembly” that includes at least one “detector” element."; the "fact that the specification repeatedly refers to preferred embodiments in which a detector assembly includes
multiple detector elements similarly does not justify importing such a limitation into the independent claims."). Since the below obviousness analysis relied upon two detectors, CAFC reverses and remands on that analysis. The Owner also asked CAFC to reverse invalidity based upon obviousness as to certain "propinquity" claims, believing the Board's construction to be too broad, but CAFC declines to do so ("Neither the specification nor the dependent claims provide a basis for reading in Power2B’s proposed construction."). Thus, a mixed result but generally in favor of the petitioner.
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- CAFC affirms this not invalid determination for "an antipsychotic used to treat schizophrenia" specifically a "dosing regimen for administering an injectable paliperidone palmitate depot to a patient" in connection with an ANDA submission. CAFC first considers whether "Mylan’s proposed ANDA labels will induce infringement of the asserted claims" and agrees with the DCT that they may. For example, there can still be intent to induce despite "discouraging patients from missing doses" ("the fact that Mylan’s proposed ANDA labels “discourage missed doses” does not mean that the labels “discourage or make optional the practice of the
[a]sserted [c]laims (or any claimed steps) in the inevitable
situation that doses are missed"). Similarly, arguments for divided infringement ("two actors—the patient and that patient’s
HCPs") fail as "a single entity (an HCP) performs the claimed reinitiation dosing regimen." As for the DCT finding nonobviousness, CAFC agrees that the prior art of record didn't suggest that PHOSITA "would have been motivated to ramp back up to PP3M with PP1M because a skilled artisan would have known that PP1M was “faster acting”" (indeed, Mylan's own expert's "flawed modeling
suggests identical PP1M and PP3M absorption . . . even
though his comparison was skewed to favor faster absorption of PP1M").
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- CAFC reverses and remands this IPR finding that claims directed to "methods and apparatus[es] for achieving renal neuromodulation via thermal heating and/or cooling mechanisms" (specifically "using a
catheter to perform renal neuromodulation by applying thermal energy to the target neural fibers") were not unpatentable for obviousness. Here, Petitioner argues that 1) the Board didn't consider all that the art taught; and 2) the Board declined to consider obvious-to-try arguments. CAFC agrees with Petitioner on 1) as "Acker teaches using a catheter with an ultrasonic transducer “to provide ultrasonic energy in a ring-like zone surrounding a blood vessel.”" (emphasis CAFC's; "While Acker includes specific embodiments where the catheter is placed into a pulmonary vein, Acker clearly contemplates a wider use for its catheter to ablate other tissues with ultrasonic energy"). CAFC similarly agrees as to 2), finding that the Board construed the art too narrowly ("By failing to consider Acker “for everything it teaches,” the Board disregarded the “expansive and flexible approach” to obviousness inquiries
expressed in KSR."). Ergo, reversed and remanded.
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.
