(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially considers a (lengthy) dispute between "dining mats for toddlers" manufacturers and "(1) affirm[s] the district court’s judgment for LNC on unclean hands; (2) vacate[s] the judgment for EZPZ of no inequitable conduct; (3) vacate[s] the grant of partial summary judgment of invalidity [obviousness]; and (4) vacate[s] the orders denying attorney fees and costs." CAFC affirms (1), noting "EZPZ failed to disclose to LNC patent applications related to the ’903 patent until well after the close of fact discovery and dispositive motion practice, and in some cases, only when required by court order, all without any good faith justification for its delay . . . The undisclosed patent applications and their prosecution are directly relevant to the development of LNC’s litigation strategy . . . EZPZ deprived both LNC and the district court of the opportunity to understand the PTO’s construction of a claim term that was also of importance to this litigation." Regarding (2), CAFC remands for the DCT to "determine whether Ms. Laurain’s and Mr. Williams' misrepresentation of the self-sealing functionality of the Platinum Pets mat amounted to affirmative egregious misconduct and is, therefore, per se material" as well as to consider the cumulative materiality of the references and the "collective weight of the evidence" in lieu of individual acts of misconduct. CAFC vacates (3) as there are open questions of fact (e.g., "there is a genuine dispute of material fact as
to whether the Webb Prior Art discloses the seal-sealing
functionality claimed in the ’903 patent"), and vacates (4) as CAFC disagrees with the DCT's prevailing party analysis ("a party is not required “to prevail on all claims in order to qualify as a prevailing party.”").
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- CAFC briefly affirms an obviousness determination for claims involving "methods and systems for
switching sources and, relatedly, network connections that are furnishing content to a user", based principally upon its agreement with the Board's claim construction analysis ("[T]he quality-level terms concern quality level as the content is delivered to the user, which may well be affected by transmission properties, and we affirm on that basis.").
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- CAFC affirms an IPR appeal finding all the claims invalid for patents concerning "functionality of being able to activ[ate] magnetic switches on devices having such switches." Owner argues: 1) the Kim reference doesn't render disclosed FIG. A obvious; 2) PHOSITA wouldn't combine the art as argued below; 3) Kim lacks a "switching device" limitation; and 4) Kim lacks a "plays . . . a remote device" limitation. Regarding 1), CAFC agrees with the Board's reading of Kim ("Kim’s express statements provide substantial evidence supporting the Board’s finding, and Gwee’s arguments to the contrary are unpersuasive"). Regarding 2), CAFC likewise rejects the Owner's argument ("The Kim-Koh combination is the simple application of a known technique to address a known problem using prior-art elements according to their established functions, and nothing indicates that the application of these teachings was beyond a skilled artisan’s capability."). Regarding 3) and 4), CAFC briefly affirms in view of the reading of Kim, then concludes by briefly addressing Owner's APA arguments.
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- CAFC precedentially considers an ANDA application for an antibiotic, wherein some of the claims at issue were found invalid as obvious, and others not invalid and reading on the ANDA. Here, the Owner appeals the invalidity findings "asserting that the court erred in finding that a skilled artisan would have had a reasonable expectation of success in using the claimed 1,650 mg/day dosage to treat IBS-D . . . According to Salix, the highest prior art dosage amount that could have been supported with a reasonable expectation of success was the 1,200 mg/day dose evaluated by Pimentel." However, CAFC finds that the "district court did not clearly err in finding that a skilled artisan would have looked to both of those references," [the Phase II protocol and a 2006 journal article] "considered their limits, and had a reasonable expectation of success as to the efficacy of 550 mg TID dosing", reiterating that "certainty and absolute predictability are not required to establish a reasonable expectation of success." CAFC likewise affirms reasonable expectation findings for other of the at-issue patents ("[T]he district court found a reasonable expectation of success in characterizing the crystalline product of Cannata for potential polymorphism using routine, conventional methods and skill"). CAFC also considers a cross-appeal contesting: 1) the DCT's directing the FDA to defer the ANDA after finding infringement; and 2) that an amendment to the ANDA should suffice to avoid the infringing use. CAFC, however, affirms 1) based on the statutory language and affirms 2) based upon the wide discretion accorded the DCT under Rule 60(b) ("[S]imply asserting that a patented indication has been carved out of an ANDA application does not necessarily satisfy the judgment or entitle the applicant to direct entry to the market."). In a brief dissent, Judge Cunningham would remand for reconsideration on obviousness ("The evidence cited by the district court does not support its finding that a skilled artisan would have a reasonable expectation of success for the claimed dosage . . . there is no reason that a skilled artisan “would have known
about the successful RFIB 2001 Protocol results,” id., as to
the claimed 1,650 mg/day (550 mg TID) dosage because the
RFIB 2001 Press Release only discloses an improvement in
the 550 mg twice-a-day group.").
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- CAFC affirms this ITC appeal, agreeing that, while the currently imported "audio players and controllers" were infringing ("The Commission’s finding that Google’s originally-accused products infringe the ’896 patent is based on its determination that a user’s selection of “Yes” at the Device Found Screen satisfies the “receiving” step"), the proposed "alternatives" would be non-infringing ("We are not persuaded by Sonos’ contentions that the Commission misconstrued disputed claim terms or lacked substantial evidence for its findings."; CAFC's reasoning here is based mostly upon the determined claim construction: "The specification confirms that the patent is not using the term “equalization” in a way that departs from its wellknown meaning").
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.
