(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
- CAFC affirms the DCT's claim construction of "observer data" finding that the same appearance of the phrase throughout the claim should have the same definition ("[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent."; "the “observer data” in step 1(a) is the same “observer data” in steps 1(c) and 1(d)."). As for infringement, CAFC finds that the construction then precipitates an incomplete infringement match ("Infernal’s infringement mapping with respect to step 1(d) improperly excludes data that is mapped to “a portion of said observer data” in step 1(c).")
- In this design patent case for a car fender, CAFC affirms the Board's finding that "LKQ had not demonstrated by a preponderance of the evidence that the ’625 patent was anticipated or would have been obvious before the effective filing date." CAFC agrees that the "ordinary observer would include both retail consumers who purchase replacement fenders and commercial replacement part buyers who purchase replacement fenders was supported by substantial evidence" as this factual inquiry was "well-grounded in the record." Indeed, the Board noted a number of differences between the design and the proposed art: "(1) the wheel arch shape and terminus, (2) the door cut line, (3) the protrusion (4) the sculpting, (5) the first and second creases, (6) the inflection line (i.e., third crease), and (7) the concavity line." As for obviousness, while finding that the argument was preserved for appeal, CAFC declines to revisit KSR's potential overruling of Rosen etc., per the question: " in the more than fifteen years since KSR was decided, this court has decided over fifty design patent appeals. In these appeals, this court has continually applied Rosen and Durling just as it had in the decades preceding" (judges Lourie and Stark, in separate concurrences, more or less reiterate the point or defer consideration).
- In this precedential decision, CAFC affirms a prosecution laches decision (yes, that's still a thing), referencing similar conduct as in Hyatt (the applicant "filed each of its applications with a single claim, then subsequently amended the claims, sometimes to recite identical language across different applications . . . like in Hyatt, “[o]ver time, PMC  greatly increase[d] the total number of claims” in the range of 6,000 to 20,000 claims . . . The court also found the length of the delay similar to Hyatt because “PMC waited eight to fourteen years to file its patent applications and at least sixteen years to present the asserted claims for examination.”"). In a lengthy dissent, however, Judge Lourie disagrees that Apple showed a consequential suffering of prejudice.
- CAFC affirms the Board's obviousness determination ("[F]actual findings underlying an obviousness determination include: (1) whether a skilled artisan would have been motivated to modify the teachings of a reference, and (2) whether there is a nexus between secondary considerations of nonobviousness and the claimed invention."). Some arguments were forfeited for not being raised below, but generally, CAFC agrees with the Board's finding (1) as the "Board’s finding is supported by Pressman itself and by the testimony of Dr. Vinciarelli, Vicor’s expert. Pressman discloses a circuit that uses a “switching postregulator.”" and (2) as "SynQor’s arguments fail because it has not shown that its relied-on success, skepticism, adoption, or praise, etc., were a “direct result of the unique characteristics of the claimed invention”—in this case, were 'attributable to the claimed combination of [prior art features], as opposed to, for example, prior art features in isolation or unclaimed features.'".
- CAFC affirms a 101 invalidity determination as representative claim 1 is directed to "collecting and storing information using a generic computer network operating in its normal, expected manner." CAFC reiterates the (allegedly analogous) finding in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014) that "claims directed to extracting data from hard copy documents using a scanner were directed to an abstract idea because the “concept of data collection, recognition, and storage is undisputedly well-known” and
“humans have always performed these functions.”"
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.