(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- A (very) brief opinion granting a motion to dismiss for lack of infringement analysis. While "it is enough that a complaint places the alleged infringer on notice of what activity is being accused of infringement" this serves as a reminder that "[t]here
must be some factual allegations that, when taken as true,
articulate why it is plausible that the accused product infringes the patent claim." Basically, the claims include a "traceroute limitation" that neither the DCT nor CAFC can find as being adequately alleged ("The SAC’s only
non-conclusory allegation that Kollective’s Accused Product satisfied this trace route limitation was that it
“[u]tiliz[es] pings and traceroutes [to] gather key information about the surrounding network by monitoring the
location of other [mesh] agents and constantly gauging how
local area links are performing . . . SAC “fails to allege facts showing that the Accused
Product segments content based on a trace route, and instead includes facts that contradict its own infringement
theory.”"). Ergo CAFC affirms dismissal, and as the plaintiff has already filed three complaints (and is requesting leave to file a fourth), with prejudice.
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- CAFC precedentially affirms this JMOL grant for invalidity based upon ineligible subject matter, indefiniteness, and anticipation. The patent claim had previously encountered printed matter issues, but CAFC agrees here that anticipation alone suffices for invalidity. Here, Owner challenges the following three findings of the JMOL:
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"(1) the jury had no basis to find that the three prior art ports
lacked the claimed “identifiable feature[s]” and “radiographic marker[s]”;
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"(2) the claimed “radiographic letters”
are printed matter not entitled to patentable weight; and"
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"(3) the jury had no basis to find that the three prior art
ports are not power injectable."
Regarding (1) and (2), basically, CAFC agrees with the DCT that the alleged distinguishing features are excluded based on the printed matter doctrine: "the
claimed “identifiable feature[s]” and “radiographic marker” require nothing more than a radiographically discernible feature, and further that “radiographic letters” are printed matter not entitled to patentable weight, and therefore
cannot be used to distinguish the prior art . . . Bard improperly relies on testimony and documents relating to identification for
functionality, which is printed matter not entitled to patentable weight." Regarding (3), CAFC finds adequate evidence in the record to support the DCT's conclusion ("The district court determined that Bard’s expert admission that “at least some of [Bard’s ATP] ports were
structurally capable of the claimed flow conditions” left no
room for the jury to reject AngioDynamics’ contention that
ATP was power injectable, and that “objective, documentary evidence confirmed [that] doctors” had used the prior
art ports at the claimed flow rate of 1 milliliter per second."). Ergo, affirmed.
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- CAFC affirms this IPR finding all claims unpatentable on an "interrogation systems to identify and track items “used in
a surgical procedure or in other environments that may benefit from asset tracking.”" Owner here raises, and CAFC rejects, three sets of arguments:
- 3 claim construction arguments (for the first argument, Owner "never
objected to those arguments as untimely"; for the second, Owner "fails to show how
further construction of the term would affect the Board’s
obviousness decision"; for the third, "Figure 4 of the shared specification illustrates that the interrogation systems can detect
objects in a patient’s body that are separated by tissues
and organs, not only air.")
- 1 lack of obviousness reasoning argument ("We disagree . . . the Board
explained that “[it does] not adopt [Zebra’s] proposed
construction requiring the ‘sensing subsystem’ to include
both RFID and metal sensing subsystems. . . . Therefore,
[it does] not agree with [Lone Star’s] position that Garber
fails to disclose the limitations of claim 3 because it lacks
a system with separate RFID and metal sensing subsystems.”")
- and 1 misinterpretation of the prior art argument ("We disagree . . . The Board also recognized, based on the specification, that such sensors were known and available at the
time of the invention.")
Ergo, affirmed.
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- CAFC precedentially affirms this trademark matter, where the stylized "I AM MORE THAN AN ATHELETE" mark with a GP GAME PLAN image beneath it, was canceled by counterclaim after its Owner filed an opposition to the marks "I AM MORE THAN AN ATHELETE" and "MORE THAN AN ATHLETE", these marks having prior common law rights transferred by assignment during the opposition. The opposition itself was set aside for lack of evidence ("the Board dismissed Game Plan’s opposition because Game Plan had submitted no evidence at trial"). Addressing the Section 2(d) counterclaim, the Board focused "entirely on the issue of priority because Game Plan conceded likelihood of confusion." Priority is interesting here because the preceding rights were assigned during the opposition ("The Board
cited persuasive authority for the proposition that motives
for assignment during litigation are not dispositive . . . The Board explained
that although UNIP may not have acquired enforceable
rights in services for which it had no continuing use, the
assignment of common law rights in connection with clothing was valid and sufficient to sustain its counterclaim"). Here, CAFC first denies that the assignment runs afoul of the trademark antitrafficking rule under 15 U.S.C.
§ 1060(a)(1) ("[T]he 2019 Assignment is not an assignment in gross and satisfies the requirement to transfer goodwill under § 1060(a)(1) . . . First, the 2019 Assignment expressly defined the purchased assets as trademarks, among other intellectual property, “together with the goodwill of the business associated therewith” . . . also . . . UNIP’s
use of the mark was substantially similar to Ms. Alex’s use,
and UNIP and MTAA shared a common purpose and audience."). CAFC likewise sets aside argument that the assignment runs afoul of 1060 ("UNIP did not assign its pending intent-to-use applications. Rather, it received an assignment of preexisting
common law rights to an already-used mark . . . Section 1060(a)(1) does not prohibit the assignment of such
rights."). Ergo, after briefly addressing various other arguments and administrative matters, CAFC affirms.
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- CAFC denies this writ of mandamus to reconsider the Board's denial for IPR institution based on the "settled expectations" of the patents' age. Salient, in view of the recently proposed change in IPR rules and institution, however, is dicta regarding challenges:
Congress committed institution decisions to the Director’s discretion . . . and protected exercise of that discretion from
judicial review by making such determinations “final and nonappealable,” 35 U.S.C. § 314(d), mandamus is ordinarily unavailable for review of institution decisions . . . That general prohibition bars review
of decisions denying institution of IPR proceedings for efficiency reasons based on parallel district court litigation involving the same patents . . . Cambridge’s constitutional challenges . . . fail to identify the kind of property rights or retroactivity concerns that might
give rise to a colorable Due Process Clause claim . . . Cambridge’s expectation that the PTO would evaluate its petition based on only certain criteria, moreover, is insufficient
to establish a constitutional due process violation . . . We reiterate that we do not decide whether the PTO’s
actions are correct or whether the use of this factor is permitted under the statutes. Nor do we address the availability of mandamus relief for other challenges to institution decisions based on non-constitutional grounds. We decide
only that Cambridge has failed to show a clear and indisputable right to the relief requested given the limits on our
review of the PTO’s decision to deny institution.
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.
