(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
- CAFC considers a patent license case, particularly involving "the importance of carefully reviewing the language in a covenant not to sue when entering a license agreement" as the covenant here "prohibited AlexSam’s claim for breach of the Agreement’s royalties provision" when there were believed to be under-reported licenses (the provision specifically reading: "Alex[S]am hereby agrees and covenants to not at any time initiate, assert, or bring any claim (in any court, administrative agency, or other tribunal, anywhere in the world) against MasterCard, for any claim or alleged liabilities of any kind and nature", emphasis added by CAFC; significantly, CAFC notes that "This language is not limited to suits for patent infringement."). Ironically, the PTAB denied a CBM review for lack of standing because "the broad language of the covenant not to sue provision in the License Agreement removes any imminent possibility that Patent Owner could bring an infringement action against Petitioner." However, CAFC remands as the "covenant not to sue does not survive the termination of the License Agreement" and so remands for post-termination consideration.
- CAFC precedentially affirms a JMOL denial following a jury determination "that Amazon did not infringe the asserted claims of Freshub’s three asserted" (voice-processing technology) "patents, while rejecting Amazon’s invalidity challenge—specifically, invalidity for lack of adequate written description" and denial of various post-trial motions, including failure to demonstrate inequitable conduct in connection with a petition to revive the underlying application following abandonment. Regarding the infringement finding, CAFC agrees that "substantial evidence supports a finding of
noninfringement because of the first limitation . . . The determinative issue concerns the requirement that the system “identify an item” . . . With no claim construction narrowing the meaning of the language, the jury was free to find that the shopping-list feature, unlike the shopping cart feature, does not “identify an item corresponding to the text” and therefore does not come within the asserted claims of the ’153 patent." After briefly considering, and affirming the denial of, a request for a new trial, CAFC considers the inequitable conduct defense and agrees with the DCT "that Amazon did not prove, by clear and convincing evidence, that the statement was a misrepresentation made with the required deceptive intent." Notably, counsel testified that the intent at issue "does not go to my intent. It goes to intent of the
applicant." Accordingly, CAFC agrees that the DCT could find "that counsel genuinely so believed, whether or not the belief was
legally correct, and that counsel did not think that Ikan had the intent to abandon during the 2012–17 non-response period." Thus, CAFC affirms on all the issues.
- CAFC (extremely briefly) affirms an obviousness invalidation for some claims, agreeing with the Board that a reference did not teach away "from using and transmitting signatures from a backup data storage medium to a remote storage medium during a restore process." Conversely, CAFC also (extremely briefly) affirms a not invalid determination for some claims, finding that the Board properly "relied on Hybir’s expert witness and Field to distinguish Field’s operation from what is required by the claims . . . Specifically, the Board found that Field not transmitting a file is not removal of that file from a list, and because Field checks files one at a time to see if they have been submitted before transmitting them, there is no reason for Field to “create a second list that omits the recited
first descriptor from the first list.”" Ergo, CAFC affirms in whole.
- CAFC affirms a not invalid IPR obviousness determination for an authentication protocol patent. CAFC first dismisses arguments that the Board failed to consider the combination stated in the petition ("[T]he Board correctly understood the proposed combinations and identified deficiencies associated with these combinations. The Board’s final written decisions thus squarely addressed the obviousness theories advanced in the petitions"). CAFC then agrees with the Board that the "Brands-Chaum’s teachings are incompatible with Menezes’s and OCPS’s multi-bit exchanges . . . transmitting a multi-bit message would create unwanted delays, which in turn would render the distance measurement inaccurate and impair security. We see no reason on this record to disturb the Board’s findings that Brands-Chaum’s teachings are incompatible with Menezes’s and OCPS’s multi-bit authentication protocols."
- CAFC affirms unpatentability in an IPR of a patent for "a process for combining slices generated by medical imaging devices to create a volume of interest and then presenting this volume in a three-dimensional representation to a Head Display Unit (HDU)." The appeal first focuses upon particular claim construction challenges, which CAFC rejects the arguments under basic interpretive tenets ("even assuming that intrinsic evidence does not
suffice to resolve this claim construction dispute, extrinsic
evidence additionally supports the Board’s construction.
Microsoft’s expert, Dr. Zyda, explained that D3D’s construction “would be inconsistent with a [skilled artisan’s]
desire to quickly and efficiently manipulate 3D images in
real time by, for instance, repeatedly removing and re-adding different tissue sections.”"). CAFC then considers challenges to the prior art's teachings, but again agrees with the Board ("[T]he Board determined that Murphy renders color for each voxel, including those voxels in segment volumes. This led the Board to determine that Murphy discloses “applying colors to groups of sorted voxels to obtain a colored image.”").
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.