(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
- The CAFC majority reverses a sanctions determination for violation of a protective order ("[C]ontempt is a “severe remedy,” the Supreme Court has recently instructed that courts should not “resort to [it] where there is [a] fair ground of doubt as to the
wrongfulness of the [contemnor’s] conduct.”"; "Before disclosing the deposition transcripts to Mr. Hecht, Mr. Lee did exactly what was required to ensure that Mr. Hecht would abide by the protective order. Mr. Lee had Mr. Hecht sign the Written Assurance, and with each disclosure, Mr. Lee reminded Mr. Hecht of the obligations the protective order imposed on his use of the confidential information."; "We conclude that it was improper to hold Leader and Mr. Lee in contempt because, when read in context, there
is a fair ground of doubt as to whether the protective order barred Mr. Lee’s disclosure to develop a joint defense strategy."). Judge Reyna, in dissent, opines that "[p]rotective orders, such as the one at issue in this case, operate as an agreement between the parties meant to promote an efficient discovery process, while safeguarding the secrets and proprietary information of the parties . . . Even if Appellant believed that the disclosed information, and the joint defense strategy formulated based on that
confidential disclosure, would be used only for the purposes of this litigation, that belief was unreasonable and, in my view, was a violation of the protective order." N.b., the case is precedential.
- CAFC overturns the DCT's narrow construction of "level of detail" which included only calculations based upon the sum of absolute differences in the values between adjacent pixels ("An examination of the language of claim 1 and the specification of the ’651 patent leads us to conclude that claim 1 is not limited in that fashion."). As the narrower calculation was explicitly recited in a dependent claim, principles of claim differentiation and other principles of construction argued for a broader interpretation ("In light of the breadth of claim 1 and the discussion of the terms “detail” and “smooth” in the specification, we construe the claim term “level of detail” to mean “level of variation in visual elements across a region of pixels.”"), with corresponding consequences for the DCT's obviousness and infringement analyses.
- CAFC remands this case for consideration by a different judge, as the current judge was disqualified once he became aware of his wife's ownership of Cisco stock, despite placement of the stock in blind trust (construing congressional intent in 28 USC 455(f) as excluding such vehicles under "divestment"; "[U]nless the trustee immediately sold the stock interest upon creation of the blind trust (which did not occur here), the blind trust would allow a judge to continue to sit on a case for which he knows he or his spouse has a beneficial interest in the outcome, in direct contravention of the statute’s purpose . . . even if the trustee had sold the stock at the time the blind trust was created, the exception provided under § 455(f) is nevertheless a narrow one, and construing “divest” to include placement of stock in a blind trust would be in direct conflict with another provision of the statute."). N.b., this decision is precedential.
- In this design patent case for a reusable foldable shopping bag (being considered at summary judgment), CAFC agrees that the design is invalid under the five-factor Sport Dimension test ("(1) “the protected design represents the best design,” (2) “alternative designs would adversely affect the utility of the specified article,” (3) “there are any concomitant utility patents,” (4) “the advertising touts particular features of the design as having specific utility,” and (5) “there are any elements in the design or an overall appearance clearly not dictated by function.”"). CAFC also considers the dismissal of a common law trademark claim, agreeing with the DCT's analysis of the Sleekcraft factors.
- In this petition for rehearing before a new CAFC panel, the CAFC majority here reverses the previous panel's decision (see older January 03, 2022 summary below) finding that the specification lacked adequate disclosure for the negative claim limitation "at a daily dosage of 0.5 mg, absent an immediately preceding loading dose regimen" ("Because the ’405 patent fails to disclose the absence of a loading dose, the district court clearly erred in finding that the negative claim limitation “absent an immediately preceding loading dose” added during prosecution to overcome prior art satisfies the written description requirement of 35 U.S.C. § 112(a)."). The majority notes that "[w]hile a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion, such as a discussion of disadvantages or alternative . . . If silence were generally sufficient, all negative limitations would be supported by a silent specification." The majority also notes that the DCT's methodology for interpreting silence in the patent (the negative limitation is considered present) appears inconsistent with the DCT's approach to interpreting silence in the prior art (the negative limitation is considered not present). Ultimately, the majority concludes that "[o]n this record, there is no evidence that a skilled artisan would understand silence regarding a loading dose to necessarily exclude a loading dose." In dissent, Judge Linn objects that the majority is applying a heightened "necessarily excluded" rather than the "reason to exclude" standard ("While a showing of “necessary exclusion” would most certainly provide written description support for a negative limitation, it is not and should not be a requirement in every case."). Judge Linn likewise find no inconsistency as to the DCT's consideration of the prior art, as the prior art was an abstract rather than a complete patent as was the case here. N.b., this decision is precedential.
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.