(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms and remands ("to permit Nintendo to move the district
court to vacate its invalidity ruling and enter judgment
based on noninfringement"), this non-infringement determination "because the Switch does
not have (1) “confinement structures” that hold a computing device and (2) “apertures” that “secure an instructional input device.”" Reviewing the record, CAFC concludes that "both
the Switch’s buttons and joysticks must be secured by the
apertures" to infringe, but this is not the case ("It is undisputed that “secure” means “hold in place” and that “aperture” is a “hole.”"). Ergo, affirmed.
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- CAFC affirms most of this DCT infringement opinion, but reverses in part various of the DCT's eligibility determinations for claims directed to blending of gasoline and butane ("[U]nlike prior
manual blending methods where butane was added directly to the gasoline tank, “blending [in the patent] occurs downstream of
the gasoline and butane storage tanks on the tank farm,
after the gasoline and butane are drawn from their storage
tanks for dispensing into a tanker truck, but before the gasoline is actually dispensed to the tanker truck at the rack” using an apparatus for that purpose"). Focusing here on eligibility, CAFC agrees that dependent Claim 3 of the '302 patent recites sufficient structure ([W]e agree with the district court that claim 3 is
directed to “a specific implementation of a technological improvement” for a butane blending system"). However, CAFC disagrees with the DCT that Claim 31 of the '629 patent likewise recites sufficient structure ("[C]laim 31
is written at a high level of generality and fails to capture
any specific improvements described in the specification"). Finally, however, CAFC considers Claim 3 of the '686 patent and again agrees with the DCT regarding eligibility ("[C]laim 3 recites specific technological
improvements to address specific problems that existed in
providing in-line blending of gasoline and a volatility modifying agent.").
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- CAFC affirms obviousness based upon the claim construction in this matter. Applicant asserts that "configured to" should be narrowly interpreted so as to avoid the reference combination, relying upon Apex Eyewear and Gianelli, but CAFC distinguishes each:
"In Giannelli
and Aspex Eyewear, we construed the term “adapted to,”
not “configured to” or “configured for,” which are at issue
here . . . Here,
Blue Buffalo points to nothing in the claims or written description suggesting that “configured to” should be construed more narrowly than “capable of” . . . Unlike in Giannelli and
Aspex Eyewear, these disclosures do not suggest that the
sidewall or tool portion are specifically designed or constructed to achieve a certain objective—only that they are
capable of doing so."
Ergo, affirmed.
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- CAFC vacates and remands this IPR finding of nonobviousness, agreeing with Petitioner "that the Board erred in
“declin[ing] to consider [Apple’s] alternative argument” that, even if the Board properly interpreted the challenged
claims to require some bidirectional antennas, Apple’s
prior art reference, Paulraj, satisfies that limitation." Basically, this is another Axonics situation, where the Board mistakenly ignored a new argument posed by petitioner in a reply to the Owner's newly proposed construction ("[W]here a patent
owner in an IPR first proposes a claim construction in a
patent owner response, a petitioner must be given the opportunity in its reply to argue and present evidence . . . under the new construction"). Specifically:
"This case falls squarely under Axonics. Here, the patent owner, Smart Mobile, did not propose its understanding of the scope of the limitations at issue—“plurality of
antennas” and “using the plurality of antennas”—until its
response after institution . . . Then the petitioner, Apple, presented argument
and evidence in its reply that even under Smart Mobile’s
new interpretation, Paulraj still satisfied the limitations.
. . . notably, the Board refused to consider Apple’s
reply arguments because it determined those arguments
were “not grounded in or supported by the Petition or
within the scope of reasonable reply arguments.” . . . In so refusing, the Board erred."
Ergo, vacated and remanded for consideration.
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- In this trademark confusion matter, CAFC iterates through various of the DuPoint factors, agreeing with the Board that the mark "SAZERAC STITCHES" was likely to be confused with the mark "SAZERAC" both directed to retail store services, albeit, the former directed to many home-decor items and the latter to "Online retail store services featuring distilled spirits, beverage glassware, cocktail accessories, T-shirts, caps, postcards, and cocktail recipe books." CAFC focuses here on several issues:
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Regarding DuPont Factor 2 ("Nature of the goods and services"), CAFC finds substantial evidence for the Board's reasoning. While appellant argues that "there is no specific overlap between [its] services and those of the [C]ited [R]egistration", CAFC responds that the "law does not require a specific overlap between services to find that DuPont factor 2 weighs in favor of a likelihood of confusion."
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Regarding DuPont Factor 3 ("Trade channels used"), CAFC finds the website evidence relied upon by the Board sufficient (" a reasonable mind could accept that evidence as adequate to find that the consuming
public is likely to be confused as to the origin of the goods
and services, due to the marks’ similarities of goods/ser-
vices and similarities of trade channels").
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Regarding DuPont Factor 1 ("Similarity or dissimilarity of marks"), while applicant opines that the marks weren't weighed in their entireties, CAFC finds "that the Board weighed SAZERAC STITCHES in its entirety and did not legally err by making a reasonable factual determination that SAZERAC is “dominant in[SAZERAC STITCHES] because it is the first term and the element most likely to be remembered.”"
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CAFC concludes by noting that the factor weighting was appropriate ("Since the Board’s factual findings for each DuPont factor considered are supported by substantial evidence, and all factors favored a likelihood of confusion, we affirm the Board’s ultimate conclusion that “[Laurel Designs’] mark SAZERAC STITCHES is likely to cause confusion
with the mark SAZERAC of the Cited Registration.”")
Ergo, affirmed.
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.
