(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC upholds the USPTO's IPR estoppel provision ("That rule prohibits a patent owner from “taking action inconsistent with the adverse judgment” in various proceedings, including IPR proceedings . . . In particular, the regulation prohibits a patent owner from “obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.”") but finds that it "applies to new claims or amended claims, but not to previously issued claims." Here, while "the amended claims merely combine limitations from multiple canceled claims" when the Board entered its rejection it did so "as to all pending claims . . . both to the “amended claims” and to the claims that had already issued." While the Board doesn't have to compare the new claims to the prior art, but only to the canceled and refused claims (" the plain text of the regulation unambiguously supports the Board’s action"), it can only do so as to the new claims ("Although we agree that the PTO was authorized to promulgate section 42.73(d)(3)(i), we disagree with the Board’s application of that regulation to previously issued claims. By its terms, the regulation applies to “obtaining” a claim—not maintaining an existing claim. For that reason, we vacate the Board’s decision as to the “issued claims” on appeal but affirm its application of the regulation to the “amended claims.”").
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- CAFC affirms a jury's anticipation finding, as well as
finding that judicial estoppel "precluded Sherwin from presenting evidence to contradict its admission that the prior art . . . discloses a BPA-free substance" (during reexamination of one of its parent patents, "Sherwin represented to the examiner and to the Board that the composition disclosed in the prior art Perez patent was BPA-free and that it therefore lacked the necessary flexibility to provide a reasonable expectation of success in creating a beverage can coating by combining Perez with Christenson."). "In New Hampshire v. Maine, the
Supreme Court delineated three nonexclusive factors to
guide the judicial estoppel inquiry: (1) whether the “party’s later position [is] ‘clearly inconsistent’ with its earlier position”; (2) “whether the party has succeeded in persuading a court to accept that party’s earlier position, so that judicial acceptance of an inconsistent position in a later proceeding would create ‘the perception that either the first or the second court was misled’”; and (3) “whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped." Iterating through these factors, CAFC confirms application of the estoppel ("Sherwin does not appear to dispute that in the reexamination proceeding it argued that Perez was BPA-free, but it now attempts to about-face and argue that Perez, in fact, contains BPA . . . We conclude that judicial estoppel applies.").
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- CAFC affirms an IPR not obviousness determination on patents concerning "protecting against network
failures in virtual private networks (“VPN”), including virtual private local area network services (“VPLS”)." CAFC first disagrees with petitioner that the Board unduly sought the exact phrase "expectation of success" in the expert's testimony. The dueling experts provided contradictory testimony, and CAFC finds substantial evidence supporting the Board's crediting one expert over the other. While "[Owner's expert] did not testify that the combination was not possible or that making the claimed combination (although difficult) was beyond the skill of an ordinary artisan . . . [N]onetheless, it was
Juniper’s burden to offer proof that the combination could be made with a reasonable expectation of success. In this
case, [Owner's expert]’s testimony rebuts Juniper’s theory that a POSA would have a reasonable expectation of success because the required combination was simple." In general, CAFC agrees that the Petitioner's expert's testimony was too conclusory ("General
and conclusory testimony . . . does not suffice as substantial evidence . . ."; "We conclude the Board’s decision to credit [Owner's expert]’s
testimony and reject Juniper’s theory was supported by substantial evidence, and that it was not error to conclude that Juniper had not established a reasonable expectation of success.").
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- CAFC considers an IPR decision, and while agreeing that "substantial evidence supports the
Board’s finding that the claim limitation requiring nanobubbles was not shown to be inherent in the prior art by Tennant’s testing of the prior art or by establishing that the prior art used the same spacing of the electrodes as the
’415 patent", CAFC still reverses and remands "because the Board failed to address
Tennant’s argument that the prior art practiced all the claimed parameters of the ’415 patent and thus inherently
anticipated the claimed nanobubbles limitation" (emphasis added; "The Board’s error is particularly significant given the
prosecution history where OWT represented that microbubbles and nanobubbles were inherently produced
when the claim parameters of the ’415 patent were followed . . . In other words, if the physical parameters of the claim
were followed, it would automatically produce nanobubbles. OWT cannot make one argument when seeking issuance of its patent and the opposite argument in defending
the patent in post-grant review and to this court.").
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- CAFC vacates and remands an IPR finding the claims not unpatentable, disagreeing with the Board's construction, and seeking further consideration of the obviousness arguments in view of CAFC's new construction ("On remand the Board should determine whether Masters, including its Decision Review Display and Path Display, renders the “collecting” and “correlating” limitations obvious in view of the Board’s new construction.")
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.
