(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- CAFC precedentially affirms-in-part and dismisses-in-part this ex parte reexam appeal involving "a method and apparatus
used “to enable rapid TV camera and computer based sensing” of objects and human input for use in various applications, including “handheld devices, cars, and video games.”" The patent was subject to parallel IPR proceedings and Owner petitioned the USPTO to terminate the ex parte under 35 USC 315, as initiated by the same party as the IPR, but was denied by the Board.
"The statute provides that “[t]he petitioner in an [IPR]
of a claim of a patent . . . may not request or maintain a
proceeding before the Office” on certain grounds after the
IPR decision issues. 35 U.S.C. § 315(e)(1) (emphases
added). A petitioner requests a reexamination, id. § 302,
and a petitioner may file a reply if the patent owner chooses
to file a statement, id. § 304, but the petitioner does not
maintain the proceeding."
This is precedential because CAFC is basically affirming the (well-accepted) reasoning that lack of control in ex parte reexam does not trigger the IPR restrictions of 315 ("We thus conclude that the estoppel provision of 35 U.S.C. § 315(e)(1) is inapplicable against the
Patent Office to ongoing ex parte reexamination proceedings."). As for the merits, CAFC agrees that substantial evidence supports the Board's reasoning ("Liebermann’s disclosures support the conclusion that its device “correlates [an] image
with a transmission function by transforming the image
into unique identifiers to be transmitted.” Id. at 23. Substantial evidence therefore supports the Board’s conclusion
that Liebermann discloses correlating position information
with a function of the apparatus.") and that the Board had jurisdiction despite the patent having expired ("We have previously rejected similar arguments with respect to IPRs because a patentee “maintains some rights,
such as [the right to bring] an action for past damages” after its patent expires . . . Gesture offers no argument why
ex parte reexamination proceedings are, or should be,
viewed differently, and instead repeats arguments that we
have already rejected with respect to IPRs. Indeed, the
reasoning we applied for IPRs applies here. A patent
owner maintains some rights after the patent expires, including the right to sue for past damages, which can create
a live case or controversy that can be resolved by an ex
parte reexamination."). For clarity, CAFC is just affirming here - the dismissal for claims 1-10, 12, and 14-30 is because they were invalidated in the preceding IPR (see page 4).
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- In this precedential opinion involving "systems
and methods for efficiently routing streamed media content
over the Internet" CAFC affirms the DCT's finding of invalidity below. Below, "Akamai argued that the claim limitations reciting “best” or “optimal” routes or “best situated” nodes were indefinite." CAFC agrees, as the spec, the claims, and even the the asserting entity's "proposed claim construction before the district court illuminated the open-endedness of the inquiry . . . acknowledging MediaPointe’s proposed construction of “optimal routes” as “a path determined to be among the most favorable under the circumstances based on one or more characteristics” (emphases added))." CAFC points to Nautilus, noting that "[a] claim term, even if it refers to
certain objective measures, is indefinite if it “might mean
several different things [but] no informed and confident
choice is available among the contending definitions.”" Thus, while hops and latency are clear enough in themselves, because neither the specification nor claims clarified their utilization, what one needed to do to infringe remained unclear ("We have repeatedly said that when “multiple methods”
for determining whether a claim limitation is met “lead[ ]
to different results without guidance . . . as to which
method should be used,” the claim is indefinite."). N.b. that "MediaPointe suggests, for the first time in its
reply brief, that “it is not necessary to identify which of
[hops, latency, or reliability] must be prioritized,” because
any limitation containing an “optimal”/“best” term is met
whenever “one maps and compares the outputs of trace
routes to determine the ‘optimal’ or ‘best’ route.” . . . That untimely argument is forfeited." (emphasis added). Would the same outcome result had that argument been heard? In any event, CAFC concludes by affirming the sufficiency of the noninfringement SJ, again, because the construction arguments that would invite jury consideration are likewise newly raised ("The view now pressed by MediaPointe, if raised before the claim-construction stage of proceedings, would surely have provoked a dispute over the proper construction of the “request for media content” term. That it
was not raised then, the matter being left to the ordinary
meaning . . . is strong
confirmation that there is no reasonable alternative in this
context to understanding “request” to mean a computer
message, not an “attempt.”"). Thus, agreeing there was no triable issue of fact, CAFC affirms.
-
- In this precedential attorneys fees decision, plaintiff was found to have performed inadequate pre-suit research ("Google
responded in several subsequent letters, stating that internet searches would have revealed that this accused product
existed before the priority date of the ’113 patent – meaning that if it infringed the ’113 patent then it also anticipated and invalidated it."). Based upon this and other conduct, the DCT granted defendant attorneys fees. CAFC here affirms ("[T]he district court’s finding that EscapeX failed to
conduct an adequate pre-suit investigation is well-supported in the record and, as part of the totality of circumstances found by the court, renders its determination to
award attorneys’ fees under Section 285 an appropriate exercise of discretion").
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- CAFC reverses the Board's not invalid determination based upon its construction of "acquiring interest data" for a claim concerning "methods of detecting whether a computing device accessing a remote
server (to visit a website the server hosts, e.g.) is being operated by a person or an automated program (robot or
“bot”)." Below, "Nobots sought to
overcome Kitts by arguing that claim 19’s reference to “acquiring interest data” requires that at least some of the interest data acquired be “active data,” even though the ’008
patent defines “interest data” as “active or passive data,
whether available or acquired data.”" Thus, even though the three-word phrase itself isn't explicitly defined, CAFC believes that it suffices to apply the component term definitions from the intrinsic record so as to include "passive data" within the acquisition: "The overall three-word
phrase in dispute simply means gaining possession of
whatever is within the category of “interest data,” which
can be passive data alone.
There is no sound basis for departing from that
straightforward analysis." Ergo, reversed.
-
- CAFC affirms SJ noninfringement on claims for "designs of railroad gondolas, open-topped
railroad cars used to transport bulk materials, with a unibody design." Plaintiff asserts two errors on appeal:
- "One, that the court “reinterpreted” its construction of
“floor panel” to require that an “extension” be a “floor panel
extension."
- "Two, that the
court required that the floor panel extension touch the floor
panel."
Regarding 1), "[t]he court did not reconstrue the claim . . . When the court was construing “floor
panel,” it was not construing “floor” . . . The court’s construction did not expressly modify “extension” with either “floor” or “floor
panel.”"
Regarding 2), "[t]he use of the word “separate” in the construction is
clear even when setting aside the context of the court’s
analysis. As used in the construction of “floor panel,” “separate” follows as an alternative to “integral,” such that
“separate” essentially means “non-integral.” When read
overall, the claim requires that the floor panel be made of
a single sheet or sheets joined together. Nothing in the
claim allows for a floor panel extension to be unconnected
to the rest of the floor panel." 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.
Similar to LawMux Bites, notes are (very) short writeups calling attention to various issues. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you to the relevant topic.
