(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms invalidity for anticipation and obviousness on claims involving switch-mode "power converters for converting a given “input voltage” into a regulated “output voltage.”" Owner contends that the Board implicitly misconstrued various terms: “core state,” “upon startup,” “processor system,” “power system controller,” and “duty cycle.” Regarding the first four items, CAFC basically agrees with the Board that the intrinsic record provides substantial evidence in each instance. As for "duty cycle," CAFC agrees with the Board's reliance upon expert testimony to relate the agreed construction with the art's disclosure ("Chagny discloses a “duty cycle” consisting of a conduction
period and a switching period, satisfying the challenged
claims’ “duty cycle” limitation").
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- CAFC affirms noninfringement on a swimming pool design patent. CAFC acknowledges that "both the D’966 patent (on the
left) and the accused Corinthian 16 design (on the right)
relate to rectangular swimming pools with tanning ledges." However, the DCT held "that the “prominent ornamental elements of the two designs”—including the shape of the entry
steps and deep end benches—“differ significantly, creating
an overall ‘plainly dissimilar’ appearance”" and, significantly, "“[e]ach of the pertinent design elements included in the D’966 Patent and Corinthian 16 . . . existed before [North Star] filed the D’966 Patent.” J.A. 19 (emphasis added)." CAFC basically agrees that, despite the superficial similarity, the novel ornamental features are absent ("Both designs relate to rectangular swimming pools with steps, benches, and tanning
ledges, but North Star’s patent only protects the ornamental aspect—here, the angular shape—of those ubiquitous
features").
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- CAFC affirms this not unpatentable as obvious IPR determination on claims involving "managing electronic communications, including providing communication options to a user, selecting different communication modes or options, sending and receiving messages, and allowing a user to block communications and control the sharing of contact information" based on construction of the term "“network-based portal" as "residing on the server side of a network." CAFC acknowledges that "[w]hile the specification demonstrates that the portal does not reside on the phone, it does not make clear where the network-based portal is located." However, since "construing “network-based portal” to reside on the server side of a network is not inconsistent with the claim language or specification" CAFC defers to the Board's conclusion as CAFC believes it agrees with dictionary definitions and combinations appearing in the specification.
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- Not very substantive, but a caustic remand to the Board to consider obviousness ("In a previous appeal from the same IPR, we affirmed the Board’s determination that independent claim 1 of the ’688 patent was unpatentable as anticipated . . . We then remanded the case to the Board to determine whether the
dependent claims now at issue were obvious in light of Burns. On remand, despite our holding that claim 1 was shown to be unpatentable, the Board considered claim 1 to be “at issue” and then apparently determined that the dependent claims were not obvious because claim 1 was not obvious over Burns and another reference, LaCelle . . . The Board could only depart from our determination in Valve I under exceptional circumstances, none of which is
argued to apply here"). CAFC opines that the Board should again analyze under the appropriate issue preclusion standards, before concluding by reiterating the appropriate obviousness analysis to be performed on remand ("The problem is that the Board did not address three factual issues that also bear on the motivation to combine Burns and LaCelle").
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- CAFC affirms this design patent's invalidity for anticipation in view of a preceding utility application to which the priority was not recognized, each involving a "cooling blanket featuring “an integrated ventilation system” and “multiple, sealed compartments.”" Below, the Examiner denied the priority because the "claimed design includes new matter and the change in the
blanket’s number of compartments was not expressly
shown in the ’938 application." Similarly, "the Board found that “the
drawings of the [six-by-six] and [six-by-four] array configurations are not sufficient to narrow down [the numerous potential design] options to a specific visual impression of a blanket of any other configuration than those explicitly shown." CAFC agrees with the Board that the spec doesn't establish readings beyond what's depicted in the utility's figures ("the Board could reasonably read the statements in the specification as merely generalizing
away from the depicted embodiments without providing
the details needed to show possession of the six-by-five design"). Similarly, the "predictability of the technology embodied in the utility application does not necessarily carry over into the predictability of the
designs, which are not limited to their utilitarian functionality, and which may range from the straightforward to the ornate . . . While Floyd is correct that in haec verba support is not
necessary to satisfy the written description requirement,
she must still show that a skilled artisan would recognize
that she possessed the claimed design based on the ’938
application’s disclosure." Ergo, affirmed. N.b., however, that "Floyd only challenges the Board’s priority analysis" and one wonders if the anticipation analysis under the ordinary observer test is entirely coherent with these priority conclusions.
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.
