(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms 101 ineligiblity for claims regarding "a “self-contained” interactive
chart, which is a chart that retains its interactivity even
when shared on a separate website."
"[W]e hold that the representative claims of the
Asserted Patents are directed to an abstract idea of “generating and sharing self-contained, interactive charts
on computers” or “across websites” . . . he district court stated that “even surpassing plausibility to assume Adobe Flash was not conventionally
used, the claim language [of claim 1 of the ’892 patent] does
not limit this claim to using Adobe Flash or to any mechanism by which its ideas are accomplished.” J.A. 14. And
like the district court correctly concluded, this failure by
the claims was “fatal” to iChart’s step-two position . . . we conclude that at Alice step two, there is
nothing in the representative claims of the Asserted Patents sufficient to transform them into eligible subject matter."
Ergo, affirmed.
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- CAFC affirms unpatentability of a cross-bow claim. Basically, as is often then case (context is king) the analysis turns on the claim construction, for which, CAFC applies the standard doctrines:
"We strongly disfavor construing “terms in a way that
renders them void, meaningless, or superfluous” . . . Because claim 1 provides that the string guides are both “mounted to” and “rotatable,” Ravin’s proposed construction would render the claimed “rotatable around a first axis” and “rotatable around a second axis” limitations superfluous . . . Similarly, the written description does not limit the “mounted to” connection to allow only rotational movement but repeatedly describes the string guides, “mounted to” the limbs, are “rotatable” . . . We see no error in the Board’s construction of “mounted to” to mean “connected to, either directly or indirectly,” and Ravin poses no separate challenge to the Board’s anticipation finding under this construction. We therefore affirm the unpatentability of claim 1 of the ’015 patent."
Ergo . . . context is king.
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- CAFC affirms obviousness and anticipation IPR invalidations for claims on "[a] watch or other type of portable electronic console
that employs a number of different functions in order to improve its usability." Below:
"[The Board] found,
based on a fully developed record, that “level of physical
fitness” may be conveyed through physical characteristics,
such as stride length and body weight, when such characteristics are viewed in relation to one another . . . we must reject Nike’s argument that certain physical characteristics cannot be included in evaluating a “level of physical fitness.” As the
Board noted, the claim’s “broad phrasing” suggests “level
of physical fitness” should not be limited, and the ’413 patent specification does not further cabin the term . . . Substantial evidence supports the Board’s finding that
Amano anticipates limitation."
Possible takeaways? I think some large companies may see reissues exclusively as a pre-litigation cleanup tool. If you have an asset that's a potential IPR target, though, you might also consider a reissue. True, you can propose amendments during the IPR, but if the situation is clear enough, why not advance negotiations so as to avoid costs? Maybe the specter of provisional rights is too appealing, but you could just add dependent claims then. I don't know if the situation here lent itself to that, but food for thought.
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- Another pretty vanilla claim construction case, though the reminder that repetition in preferred embodiments can overcome the presumption against reading in limitations is useful:
"Although this court has “cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification” . . . we have also recognized
that disclosed embodiments and examples “can shed light on the intended scope of the claims” . . . Here, the fact that all six examples in the specification describe using the “dissolving
agent” combination of an organic acid and a polyalcohol to dissolve the lidocaine bolsters the conclusion that the claimed dissolving agent must dissolve the lidocaine and not simply prevent crystallization of the lidocaine in the
finished patch."
Based on the construction, CAFC affirms noninfringement.
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- This is a pretty vanilla claim construction case, but worth noting for the drafting tip that repeated emphasis is not dispositive if accompanied by a generalizing qualifier:
"The specification does not expressly define “secure” as
requiring IPSec . . . [O]nce the inventor expressly stated that “[t]he invention is not restricted to the details of the figures and accompanying text, or any existing protocols, such as the
currently standardised IPSec” . . .
we cannot say that the sheer number of references to IPSec
in the specification allows us to ignore the inventor’s express language in column 9 and read an IPSec requirement
into the broad claim term “secure.”" (emphasis added)
Ergo, CAFC disagrees with the DCT that "secure" must be construed as limited to IPSec.
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.