(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- CAFC considers claim construction and infringement involving "a method for making silicon
cups, bowls, and tumblers" ultimately affirming summary judgment of noninfringement. Regarding construction, "ZT now contends that the district court erred when
it imposed a negative limitation on the construction of the
spout claim element . . . But the language of the ’890 patent does not support
ZT’s preferred construction of the spout claim element for
three reasons . . . "
-
"First, “the clear implication of the claim language” is that the zipper members and spout are “‘distinct
component[s]’ of the patented invention” because Claim 1
and Claim 9 list those elements separately . . . the language of the specification makes
clear that the zipper members are separate from the spout . . . The specification consistently refers to the spout, male zipper member, and female zipper member as different features";
- "Second, ZT’s proposed claim construction is illogical . . . The zipper members cannot
then be part of the spout. But ZT’s proposed construction
gives rise to a contradiction in which the spout would be
“proximate” itself or “terminate at” itself."; and
- "Third, ZT repeatedly looks to the preferred embodiments, rather than the claim language, to support its claim
construction arguments."
As regards noninfringement, "[t]here is no genuine dispute of material" as the images of the Accused Products used to support infringement "only undermine the conclusion that there is a feature of the Accused Products that
facilitates pouring and is “distinguishable to the eye or
mind as being discrete” or is “readily and unmistakably apprehended” . . . ZT provides no other evidence that shows the Accused Products have an identifiable spout." Ergo, affirmed.
-
- CAFC precedentially affirms obviousness on the IPRs for three patents involving "an optimized fuel management system
for internal combustion engines", e.g., one patent specifically "seeking to mitigate engine knock, proposes a fuel
management system which injects an “anti-knock agent”
directly into the engine cylinder." CAFC first addresses whether it has power to review the Board's reconsideration decision as an effective "stay", finding that it does not ("[O]ur precedent has not previously labeled the
time taken by an agency to issue a reconsideration decision
as a “stay,” and we see no reason to do so here . . . we cannot see [Owner's] argument as anything but a challenge to the propriety of the institution . . . That a party formally
attacks an agency action other than the institution determination does not automatically remove its challenge from
the ambit of § 314(d)’s bar on judicial review . . . EBS reads our § 314(d) precedent as barring judicial
review only when a party alleges a violation of a statutory
prerequisite for institution, leaving all other possible aspects of an institution decision still open to judicial review . . . [t]he Supreme Court, however, has identified only possible narrow exceptions to § 314(d) . . . Section 314(d) thus bars EBS’s
challenge."). Turning to substance, CAFC agrees with the construction of "fuel" and finds some arguments forfeited for not being appealed ("EBS fails to explain any prejudice to itself or any unfair advantage to Ford . . . it never raised such an
argument below . . . EBS has
forfeited this argument. "). CAFC then finds substantial evidence for the Board's obviousness analysis, and ultimately affirms ("Ford came armed with several reasons for why a skilled artisan would modify Rubbert (including Yuushiro’s fuel map, which was not relied upon in the prior proceeding). And here, on this record, the Board found that Ford satisfied its burden.").
-
- In this precedential decision, CAFC dismisses for lack of jurisdiction a challenge to "a bond of $8 million pursuant to
the Idaho Bad Faith Assertions of Patent Infringement Act." Below, Owner asserted "that the Act is preempted under federal patent law", however, "[t]he district court first decided that federal law does not preempt the Act . . . and then
imposed a bond of $8 million on Appellants pursuant to the
Act’s bond provision." Here, appellants claim there's "interlocutory appellate
jurisdiction pursuant to 28 U.S.C. § 1292" but CAFC doesn't consider the bond an injunction ("[T]he
Bond Decision does not have the “practical effect” of an injunction . . . Appellants did not demonstrate that the bond
imposes any “serious, perhaps irreparable, consequence” . . . it cannot be said that the Bond Decision “can
be ‘effectually challenged’ only by immediate appeal.”"). Appellant also argued jurisdiction under the collateral order doctrine, but CAFC finds that similarly unavailing, finding its conditions unsatisfied ("In contrast to Cohen, the bond issue is “an ingredient of the cause of action” . . . Indeed, the bond issue is intertwined with the ultimate
merits question of Micron’s state-law bad faith claims because the same factors which can demonstrate bad faith in
the motion to dismiss analysis implicate whether to impose
a bond."). Thus, after briefly considering, and rejecting, Appellant's pendent jurisdiction arguments, CAFC dismisses.
-
- In this precedential decision, the CAFC majority reverses the DCT's DOE findings, permanent injunction, and denial of a new trial on willful infringement, affirming as to construction and other issues. Regarding the DOE, CAFC iterates through the required features, but finds at least one lacking ("There is no substantial
evidence the 4-in-1 seats include any such feature . . . We conclude there can be no equivalence as
a matter of law with Evenflo’s 4-in-1 seats, which do not
include any elements on the seat back for selectively detachably connecting the seat back to the seat assembly."). As for the permanent injunction, Owner either "expressly declined to request such relief" or the record didn't support the injunction ("[B]ased on the record before us and the reasoning provided by the district court, we
reverse the district court’s grant of a permanent injunction
as to the ’043 patent") and so CAFC reverses. As for the willful infringement, CAFC agrees that the DCT should not have excluded "an email chain in which an
employee of Evenflo’s affiliated corporation . . . notified Evenflo employees that one of the accused products might fall within
the scope of claim 1 of the ’043 patent and asked how to “avoid the claims of the patent”" ("The messages reproduced above are clearly probative
of willfulness, and they are not merely cumulative of Evenflo’s stipulation to awareness of the ’043 patent."). Judge Reyna dissents here as regards the emails because the third circuit employs a deferential evidentiary standard ("The Third Circuit applies “[p]articular deference” to
the district court’s new trial determination stemming from
a ruling under Fed. R. Evid. 403, which “itself [is] entrusted
to the [district] court’s discretion” . . . Rule 403 is a balancing test . . . Applying the Third Circuit’s deferential standard of review, I would affirm the district court’s decision to deny
Wonderland a new trial on willful infringement.").
-
- CAFC affirms denial of pre-suit damages here and attorney fees. Considering arguments regarding both upon appeal, CAFC first agrees regarding the fees, agreeing that evidence supported each of the DCT's four factors ("(1) “Ortiz’s position was
substantively weak given it knew, or should have known,
that its complaint stated no viable damages theory” . . . Ortiz was apprised of the need to plead compliance
with 35 U.S.C. § 287(a) to support its claim for pre-suit
damages” but did not do so; (2) Ortiz’s “litigation conduct
was unreasonable in that it failed to comply with the
Court’s discovery deadlines . . . ”; (3) Ortiz “made a settlement demand unrelated to the merits of [the]
litigation”; and (4) Ortiz had a “history of infringement actions involving the Asserted Patents that have been voluntarily dismissed or were dismissed for failure to state a
claim before any discovery commenced.”"). As for the marking and pre-suit damages ("For more than a century and a half, patent law has required that a patentee either mark patented articles or provide notice to an accused infringer as a prerequisite to
recovering damages for the sale of infringing articles"), CAFC agrees, for while there may have been available counterarguments, it doesn't seem any were raised ("Ortiz
could have responded to Vizio’s motion to dismiss by arguing that because Roku and Panasonic were not licensed to
make and sell infringing products in the future, the marking statute imposed no obligation on Ortiz to make an effort
to require Roku and Panasonic to mark the products Ortiz
had accused of infringing its patents. But Ortiz did not
make that argument in the district court and has not made
that argument in this court."). 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.
