(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In something of a complement to yesterday's precedential affirmative 101 case, in this negative nonprecedential case CAFC agrees that claims on "digital tipping" are abstract, as well as invalid under 103 ("Managing commercial tipping transactions constitutes a method of organizing a fundamental economic human activity"). For completeness, CAFC closes by addressing the 103 arguments, finding they were either forfeited or agreeing with the Board.
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- In this precedential 101 case for POV sports cameras, CAFC disagrees with the DCT that the claims are directed to ineligible subject matter ("Claim 11 recites . . . that the claimed POV camera processor be configured to record low and high-quality data streams in parallel, followed by the low-quality data stream’s wireless transfer to a remote device . . . The claims thus require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device."). Notably, the case provides a useful instance wherein CAFC feels the DCT characterized the claims at an impermissibly high level of generality ("[I]n this case, the district court’s conclusion that the claims were “directed to a result or effect that itself is the abstract idea” disregards the disclosed technological means for obtaining a technological result."). Ergo, reversed and remanded.
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- In this precedential opinion, CAFC reverses and remands to consider previously excluded expert testimony in connection with various EM up/down-conversion claims across various cases. Below, the DCT granted the motion to exclude, reasoning that the "PTAB’s invalidation of the challenged apparatus claims [sic; of the] ’940 patent, collaterally estopped ParkerVision from relitigating characteristics of the prior art reference on which Qualcomm's invalidity contentions rested." CAFC disagrees, finding that "the district court erred in applying collateral estoppel to prevent [plaintiff's] validity expert from offering testimony that would have been arguably inconsistent with the Board’s findings during the IPR that resulted in invalidation of the apparatus claims of the ’940
patent." Preliminarily, CAFC finds the DCT's claim analysis between the preceding and present litigation inadequate to establish estoppel ("the district court did not undertake claim construction; nor did it analyze the claim language or consult any other intrinsic evidence to determine the scope of the claims asserted in this action . . . The district court’s analysis suffers from several errors . . . The case now before us involves the same accused products but different claims and, potentially, a materially different infringement question.") and so reverses the summary judgment based thereon. Turning to the expert testimony, CAFC considers "whether a finding underlying an unpatentability decision in an IPR proceeding collaterally estops a patentee from making validity arguments regarding separate, related claims in district court litigation, we now hold that it does not." CAFC notes, e.g., that "preponderance" applies at the IPR, but "clear and convincing" for invalidity in the DCT. Estoppel applies when the claim is found invalid under either standard, not when one claim is found invalid and now another related claim is under consideration. Thus, CAFC remands for the DCT to consider the testimony.
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- CAFC precedentially affirms this jury infringement verdict, finding that the witness was qualified to serve as a PHOSITA expert in connection with "orthopedic imaging systems." CAFC reiterates that "[a]ll that is required “to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case” is that “an expert must at a minimum possess ordinary skill in the art.”" Here, defendant seeks to add a "timing requirement" that the PHOSITA have the alleged skill at "the time of the alleged invention." CAFC disagrees ("An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art. Rather, an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention.") and thus, after briefly reiterating that substantial evidence supports the verdict, affirms.
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- CAFC briefly affirms the TTAB's likelihood of confusion DuPont analysis on two clothing marks, both involving paired, inverted "T" shapes ("the TTAB found Eritaj’s and Tribe of Two’s marks to be visually distinct and create different commercial impressions (factor 1), despite finding overlapping goods and channels of trade and classes of consumers (factors 2 and 3)"; "although the letters “TT” are discernible in Eritaj’s mark, “they do not form the dominant impression. Instead, the inversion of the letters T, the doubled horizontal lines, and the use of negative space to create a rectangle among the vertical and horizontal lines creates the impression of a rectangular geometric design.”"). Looking at the marks, color or value emphasis might seem to imply confusion - thus, it's significant that, on appeal, "Tribe of Two devoted considerable time to argue that the TTAB overlooked possible coloring and shading of the letters “TT” of Eritaj’s marks, which Tribe of Two asserts would allow an emphasis on the
letter Ts and deemphasize its stylized mark", however, "Tribe of Two conceded, “no, there was no express argument that the Board should specifically consider . . . different shadings.” Id. at 6:15–23. It was also barely noted in Tribe of Two’s appellate briefing. We conclude that this argument was forfeited because it was insufficiently developed. We therefore find no error by the TTAB."
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.
