(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms invalidity for indefiniteness on claims directed to "methods for “linking traditional media to new
interactive media, such as that provided over the internet,”
and “identifying a work . . . without the need to modify the work.”" The language at issue recites:
"electronically determining an
identification of the electronic work based
on the extracted features, wherein the
identification is based on a non-exhaustive
search identifying a neighbor; "
Owner asserts that non-exhaustive search means a "search designed to locate a [near] neighbor
without comparing to all possible matches (i.e., all records
in the reference data set), even if the search does not locate
a [near] neighbor." In a previous IPR consideration, CAFC determined that the "written description did not “draw a clear line between
‘exhaustive’ and ‘non-exhaustive’ searching in terms of how
much data within a record a search must consider in order
to qualify as one or the other”" and, despite the change in standard here in a DCT case, reapplies the reasoning:
"The written description does
not contain the terms “exhaustive” or “non-exhaustive,” but
instead contrasts “linear search[es]” which “can be
computationally very expensive” with “[o]ther forms of
matching,” including “kd-trees, vantage point trees and
excluded middle vantage point forests” / / / / nothing in the written description suggests
that a skilled artisan would understand a “linear search”
to be interchangeable with a “non-exhaustive search” . . . [i]ndeed, the phrase “non-exhaustive search” appears
nowhere in the original patent application that led to the
’988 and ’464 patents, but rather was added to the claims
nine years after the filing."
Ergo, CAFC affirms as to the indefiniteness, affirms as to SJ noninfringement on some claims, but remands as to noninfringement SJ for other claims so the factfinder can further examine the target system ("With all reasonable inferences in Network-1’s favor, a
factfinder could find that the Siberia version as an overall
system was designed to have an execution time which
scaled in less than a proportional relationship to the size of
the reference set because the “tunable knobs” allowed the
system to adapt to a growing dataset size.").
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- CAFC affirms 101 invalidity on claims directed to "augmented-reality (AR)
devices or systems." Specifically:
- The first claim set relates to “mapping AR objects and rendering them on a device display”; and
- The second relates to “incorporating visual objects into a digital representation of an environment surrounding an AR device”
Regarding the first set of claims, despite reciting the “technical” step: “access an area tile map of the area of interest, the area tile map represented by a set of tile subareas that includes one or more tessellated tiles from a tessellated tile map” CAFC finds the claims to just be an effort to claim “receiving information about a location and displaying materials based on that information” since such “technical” terms are so broad and generic.
“The parties agreed that “tessellated tiles” just means “tiles fitted together to cover an area without gaps” . . . NantWorks’s purported specific steps all comprise determining a location on a map, providing relevant information based on that location, and displaying that information . . . Using tessellated tiles and tile subareas to pick an area of a map to display with objects in a view of interest is part of the abstract idea, which “cannot supply the inventive concept that renders the invention ‘significantly more’ than” that abstract idea.”
Regarding the second set of claims, CAFC finds these are just about “receiving information about a location and displaying materials based on that information.” Here, the claims mostly focus on ordering information, and CAFC deprecates their being directed to “a mode of organizing human activity, not a technological improvement to a technological problem.” Owner again tried to celebrate specific terms (e.g., “virtual element attribute”), but because these terms were each so broadly construed, CAFC again just finds them to be generic (“The “virtual element attribute” was construed according to its plain meaning, meaning a “virtual” “feature or quality” that is “part of something else” . . . This generic term does not add anything beyond the abstract steps in claim 1 of the ’051 patent.”).
In sum, as CAFC says: “[A] claim for a new abstract idea is still an abstract idea.”
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- A very brief reminder that "modest" license options often aren't sufficient in themselves to confer a case or controversy - here following 101 invalidation below ("We held that
there was no live case or controversy for the court to resolve
because Avid had not shown that the $50,000 reduction in
payment was anything more than a “token or arbitrary
sum introduced for the purpose of manufacturing a controversy” . . . we emphasized that the $50,000 sum
was “completely untethered to the value of any of the issues
on appeal” and could not “be fairly characterized as a reasonable estimate of a prospective damages award that
would take the place of an adjudicated damages award following the appeal” . . . Here, the $100 option to add the ’043 patent to the list
of licensed patents in the Settlement Agreement serves the
same purpose as the $50,000 payment reduction in Allflex: it is “a ‘side bet’ on the outcome of the appeal” . . . unsubstantiated speculation does not
convince us that a real and imminent injury or threat of
future injury exists to save this appeal from mootness."). If Owner genuinely intended to contest 101 invalidity here on appeal, then this is also a warning to craft settlement agreements carefully with that intention in mind (i.e., keep the case or controversy alive).
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- In this precedential decision regarding . . . a cosmetic penile implant . . . below (ahem), the jury agreed to "invalidate two
cosmetic-implant patents issued to several defendants for
failing to name one of the plaintiffs, Dr. Elist, as an
inventor" and agreed that "defendants misappropriated
each of the trade secrets." Here, CAFC reverses on the patent/inventorship issues, affirms on counterfeiting, and reverses on trade secrets.
Regarding the trade secrets, defendant attended a conference under NDA to observe implantation demonstrations. Here, CAFC iterates through each alleged trade secret and identifies its preexisting disclosure in the prior art ("[N]o reasonable jury could find
that Subrini does not make generally known the “incorporation of internal pockets or voids of space within the
body of a . . . penile silicone implant to add softness and
elasticity.”"; n.b., this analysis is looser than 102/104: "The “generally known” standard of California trade-secret law requires a less granular
inquiry, taking account of the purpose of California’s
trade secret law “to promote and reward innovation and
technological development and maintain commercial
ethics” . . . In light of this purpose, California
courts have recognized that “self-evident variants of the
known art” cannot be protected.").
"These cases confirm that no protectable trade secret
results from translating a generally known concept from
one environment to another environment where both
environments present the same problem that is solved by
the same solution. There was no testimony here that
cosmetic and therapeutic implants present different
problems or require different solutions as to this trade
secret. While therapeutic and cosmetic implants are
implanted for different medical indications and are placed
in different anatomical locations within the penis, Appellees’ Br. 5, these differences are not germane to whether
common principles dictate a common solution to the
problems presented by silicone softness requirements."
Similarly analyses follow for the alleged mesh tab ("[N]o reasonable jury could find
that Finney failed to make generally known the incorporation of mesh tabs embedded in or around the distal tip
of a cosmetic penile implant to facilitate tissue ingrowth.") and absorbability ("The testimony here thus established that Finney,
while not explicitly specifying absorbable or nonabsorbable sutures, when coupled with the general knowledge in
the art, discloses the use of absorbable sutures with mesh
tabs. There was no contrary testimony."). A fourth secret (the list of instruments and materials used) was alleged, but CAFC doesn't analyze it, agreeing "with defendants that the instrument list trade secret is not protectable, as plaintiffs did not
preserve the secrecy of the list contents . . . the instrument list was emailed to defendant Dr. Cornell without any explicit indications of confidentiality."
CAFC, however, affirms the counterfeiting and associated jury instructions focusing upon goods rather than services ("The district court correctly recognized trial evidence supporting a jury finding that the
Cornell defendants offered the Penuma® implant as a
good.").
As for the patent inventorship, since what was allegedly contributed was the trade secret content, now established as prior art, CAFC reverses the finding that plaintiff should be listed as an inventor:
"Even if Dr. Elist contributed the general concept of internal pockets, there was no evidence to suggest that
Dr. Elist mentioned configuring the internal pockets to
create differential hardness along the implant. To the
patent office, this feature was critical to patentability. As
in American Bioscience, the patent office’s determination
that Dr. Elist’s contribution alone was not patentable
precludes a finding that he contributed to the claimed
invention. "
Ergo, a mixed affirmation and vacation / reversal in part.
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- In this precedential decision involving "reprogramming engine controllers", the DCT invalidated the claims at SJ finding that "by at least 1996, non-party Hypertech Inc. (“Hypertech”) sold a device named the “Hypertech Power Programmer III” (the “PP3”) that embodied all limitations of the asserted claims of the ’689 patent." CAFC affirms, rejecting arguments that the code presented was "hearsay" and that "the 35 U.S.C. § 102(b) on-sale bar should be limited to sales
expressly disclosing the prior art device’s functionality."
Regarding the hearsay, CAFC acknowledges that "[a]n
order or instruction is, by its nature, neither true nor false
and thus cannot be offered for its truth." However: "[S]uch instructions are offered to show that the commands “occurred rather than to prove the truth of something asserted” . . . So too for source code." Consequently, not being offered for its truth, it's not hearsay.
Regarding the on-sale bar, CAFC agrees that "Mr. Ramsey’s testimony, the dating of the source code,
and the sales records provide evidence that the PP3 was
sold prior to the critical date of the ’689 patent." However, Appellant is contending that 102b requires that "prior art
must disclose to the public how to perform the patented
method, and that the sale of the PP3 did not disclose how
to perform the method of the ’689 patent." There's pretty substantial precedent to the contrary, though, e.g.:
". . . triggering the on-sale bar does not “require
that the sale make the details of the invention available to
the public” . . . An offer for sale may trigger
the bar “without regard to whether the offer discloses each
detail of the invention” . . . ‘secret sales’ can invalidate a patent . . ."
Etc.
Thus, here, "the public was directly
making use of the patented features and permitting a patentee to remove them from the public domain would “withdraw[ ] from the public domain technology already
available to the public.”" 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.
