(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
- In this precedential claim construction decision, CAFC agrees with the Board that “cast in one piece” is a product-by-process limitation as it "describes the structure “being” cast in a particular way" (take note ye trainers of neural networks) and that the owner's arguments were "merely that the claim element describes a manufacturing method with some inherent restrictions" ("[T]he alleged structural and functional difference that Kamstrup identifies is detached from the claim"; "Consequently, we hold that because Kamstrup fails to show that the process claimed imparts “structural and functional differences” distinguished from the prior art, it is not entitled patentable weight."). CAFC also considers the analogous context of the prior art, but again dismisses arguments predicated on the unaccepted claim construction.
- On remand from SCOTUS' decision limiting, but not abandoning, assignor estoppel ("The doctrine applies when, but only when, the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent"; accordingly, "[i]f Hologic’s new claim is materially broader than the ones [Mr.] Truckai assigned, then [Mr.] Truckai could not have warranted its validity in making the assignment."), CAFC (again) finds in this precedential decision that assignor estoppel applies. Specifically, CAFC first confirms that: a) the original claim's validity was warranted by the initial assignment (canceling the claim in a restriction requirement wasn't denying its validity); and b) the asserted claim is not materially broader than that original claim ("the plain claim language" of the original claim was "broad enough to encompass moisture-impermeable devices as well" and CAFC disagreed that the intrinsic record required otherwise).
- In this precedential decision, CAFC affirms the Board's determination that: a) invalidity arguments were untimely ("LSI forfeited any challenge to the untimeliness holding by failing to challenge it in its opening brief on appeal, and the Board’s timeliness holding constitutes an independent ground for its decision"); and b) that the relevant portions of a prior art reference were not "by another" since they merely repeated portions of an industry report produced by the inventors less than a year before the patent's 04/05/1996 priority date).
- In this precedential decision, CAFC affirms the board's denial of a broadening amendment in reissue for recapture, the only twist being that the removed language had been added to overcome a 101 rejection ("We reject the argument that the recapture rule leaves a unique gap that would permit the recapture of claim scope surrendered in response to § 101 rejections."; however, note that "[d]espite being given the opportunity on multiple instances to explain what policy considerations might justify treating § 101 rejections differently than § 102 or § 103 rejections, Mr. McDonald has articulated no reasons persuasive to
- In another application of the Volkswagon factors, this time CAFC denies the mandamus transfer request out of TX to MA, ultimately concluding that the balance did not warrant extraordinary relief ("The [DCT] found that one factor (court congestion) weighed against
transfer; one factor (willing witnesses) weighed slightly in favor of transfer; one factor (local interest) favored transfer; three factors (sources of proof, compulsory process, and
practical problems) were neutral, and the parties agreed that the remaining two factors were neutral. Among other things, the district court determined that: (1) the Texas forum is likely to be faster in adjudicating the matter; (2) the cost of attending proceedings in Texas was only slightly more costly than in Massachusetts; (3) HPE financial documents are in Texas; and (4) there was insufficient evidence that relevant documents existed in Massachusetts, given HPE had moved its relevant operations to India in 2020 (and thus technical documents presumably would be easiest to access in India), HPE’s 30(b)(6) witness testified about the location of electronic documents with some certainty and none were in Massachusetts, and two developers of the accused product who reside in Massachusetts but no longer work on the accused product did not testify that they had any documents . . . HPE has not convinced us to extend Genentech to reach this case. Nor can we say that the
trial court’s balancing of the factors was so unreasonable as to warrant the extraordinary relief of mandamus. ")
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.