(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- In this precedential decision, CAFC vacates and remands an IPR "for failure to adequately consider evidence
of copying and remand for further proceedings" (i.e., Centripetal's claims were invalidated below for obviousness, so presumably they want the copying evidence considered as indicia of nonobviousness; "The Board did
not have to go searching throughout the entire litigation
record to find the evidence of copying, but it had an obligation to consider the specific evidence that was put before it"). More interestingly, CAFC also considers Appellant's contention that "the Board’s final written decision must be vacated because APJ McNamara recused belatedly after the IPRs were instituted" (the APJ owned Cisco stock and Cisco later filed a petition and was joined in these proceedings). Here, CAFC finds it has jurisdiction to consider the recusal ("Centripetal’s recusal challenge does not turn on the “interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” . . . Instead, it turns on the interpretation of ethics rules that are “not limited to the institution stage” . . . and a constitutional challenge relevant to the entire proceeding . . . Thus, it fits neatly into the categories of cases over which we have exercised jurisdiction."). CAFC then agrees that the motion to recuse was untimely ("Centripetal was aware of APJ McNamara’s public disclosures more
than three months before the filing of its recusal motionand emphasized that Centripetal waited until after it had
received an unfavorable decision on both its motion for rehearing and its petition for writ of certiorari to raise its
recusal concerns"). Importantly, however, CAFC also finds the motion dead on the merits ("Even if Centripetal’s recusal motion were timely and
meritorious, it would still not justify vacatur."). Notably, however, CAFC admits that since it's remanding on the merits, the case will be reconsidered by a new panel, which also mitigates the issue in any event.
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- CAFC affirms this noninfringement SJ based on a required order of operations construction in claims directed to a beverage dispenser.
"We apply a two-part test for determining if
steps that do not otherwise recite an order “must nonetheless be performed in the order in which they are written.”
Id. “First, we look to the claim language to determine if, as
a matter of logic or grammar, they must be performed in
the order written.” Id. “If not, we next look to the rest of
the specification to determine whether it directly or implicitly requires such a narrow construction. If not, the sequence in which such steps are written is not a
requirement.” Id. at 1370 (emphasis in original) (cleaned
up)."
Here, the "use of “based on” strongly indicates that
the first step precedes the second" and "this particular order accords with the specification, which not only contains language and figures describing this order, but also contains nothing suggesting
Rothschild’s contrary reading of claim 11." Ergo, affirmed.
-
- In this precedential decision involving "a fencing
assembly featuring pivoting, sliding connectors that connect pickets to rails" the DCT applied constructions based upon prosecution estoppel and disclaimer in the specification, which resulted in noninfringement and not invalid for indefiniteness conclusions. Here, while CAFC agrees with plaintiff that disclaimer didn't occur for some terms ("Nothing in the intrinsic record establishes that the use of fasteners is incompatible with the connector’s ability to slide . . . a “boss” is not limited to structures that always provide this advantage."), CAFC does find disclaimer present as to other terms, which the parties stipulated as resulting in noninfringement ("[T]he fact that an applicant secures allowance
on an independent ground does not render prior characterizations of claim scope insufficiently clear for purposes of prosecution disclaimer . . . The fact that Barrette’s disclaimer proved unavailing does not render it ineffective as a disclaimer . . . Moreover, the fact that Barrette cancelled the claims to
which the disclaimer applied and filed new claims similar
to those previously allowed in the ’332 and ’965 patents
does not defeat the determination of disclaimer."). Notably, disclaimer in a child was found to apply to a parent ("[a] statement made during
prosecution of related patents may be properly considered
in construing a term common to those patents, regardless
of whether the statement pre- or post-dates the issuance of
the particular patent at issue."). CAFC similarly agrees that newly proposed interpretations of other terms are untimely presented ("Parties may not adopt a claim construction position on appeal that is inconsistent with the
one taken before the district court . . . Barrette did
not argue before the district court that the term “projection” should be construed differently than bosses.") and so the noninfringement conclusion remains in place. CAFC also considers cross-appeals for indefiniteness (asserting a combination of apparatus and method limitations), but finds that the specification supports a functionally structural interpretation ("[T]he specification provides numerous examples of
structures that are slidably engaged"). Ergo, CAFC affirms the no invalidity for indefiniteness analysis as well as the non-infringement analysis below.
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- In this precedential affirmance, CAFC affirms the Board's obviousness invalidation and finds the record sufficient for Article III standing, despite Petitioner contesting Owner's status ("Causam “unequivocally identifie[d]” itself to the
Board as the owner of the ’268 patent. J.A. 4. And Causam
has insisted in its briefing and in arguments that it owns
the ’268 patent . . . No contrary evidence of record concerning
ownership has been presented or pointed out to us. The
evidence, if unanswered (as it is), would entitle Causam to
a determination on summary judgment that it is the patent
owner. Causam thus has standing to appeal the Board’s
unpatentability ruling, which, if it becomes final, will lead to cancellation of all claims of the ’268 patent but claim 12,
see 35 U.S.C. § 318(b).").
-
- In this precedential water filter ITC opinion, CAFC affirms the ALJ's determinations that:
- "the term “filter usage lifetime claimed by a manufacturer or seller of the filter" is indefinite";
- "the asserted
claims are invalid for lack of written description as to any
filter media meeting the claimed FRAP factor other than
carbon-block filters"; and
- "the asserted claims are nonenabled as to non-carbon-block filters."
Basically, CAFC agrees that there's inadequate support for the aggressive claims despite their appearance in the original filing ("[T]he specification only provides the details of
specific formulations of filter components (e.g., lead
sorbent, carbon, and binder) for carbon blocks . . . and the only types of filters that are illustrated in the figures are carbon blocks . . . The inventors themselves also testified that they did not invent any non-carbon-block filters that would meet the claimed FRAP factor . . ." [ouch] ". . . The witness testimony in this case, while acknowledging that individual variables within the FRAP equation
were known, demonstrates that achieving the required
FRAP factor with any filter media was a complex task with
unpredictable challenges . . . This also comports with the statements of the applicant in
the parent application to the ’141 patent that the art of
making an effective filter is a “very difficult task.”"). As for enablement, CAFC walks through the Wands factors, but comes to the same conclusion for basically the same reasons ("Much of the same evidence discussed above with respect to written description also supports the Commission’s
findings regarding enablement"). As these two issues resolve the matter, CAFC doesn't bother to discuss the 1) indefiniteness.
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
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- 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.
