(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- CAFC previously affirmed 101 invalidity in this case, and despite that superficially benign context, it here affirms the follow-on request for attorneys fees:
"The district court further observed that Hawk’s “boilerplate” complaint showed that it “clearly failed to engage
in reasonable pre-suit investigation.” J.A. 10. The district
court observed that Hawk had filed and settled hundreds
of patent suits, including numerous suits involving the
same patent, and that Hawk’s settlement negotiation conduct was “impolite and unprofessional." Finding the case exceptional under
§ 285, the district court awarded fees starting from the
point at which Castle filed its motion to dismiss onwards.
Here, plaintiff first opines that sealing the record placed it at an unfair disadvantage, but CAFC disagrees ("But
Hawk makes no effort to explain why it never asserted before the district court that sealing was improper, or why it
consented to additional sealing."). Plaintiff then argues that the case shouldn't be exceptional in any event, but CAFC, pointing to Octane Fitness, again disagrees ("Based on this record, the district court
did not clearly err in finding that Hawk engaged in a pattern of frivolous lawsuits"). N.b., that the DCT identified the plaintiff as an NPE, and almost risked the fees in consequence:
"The district court also found that Hawk was a nonpracticing entity and suggested that such entities may proceed in patent litigation with little business risk. J.A. 10.
Were this generalization the basis for the district court’s
exceptional case finding or its pattern of frivolous filings
finding, that would be erroneous. We read the district
court’s opinion, however, as relying on specific evidence of
Hawk’s filing of prior suits for the purpose of obtaining settlements as opposed to relying on Hawk’s status as a practicing or non-practicing entity."
Thus, after reviewing some other supporting evidence, including some colorful emails between counsel, CAFC affirms.
-
- The CAFC majority affirms this IPR where "the Board determined
that Samsung had failed to include Geva’s planar element 14 in the prior art combination put forward in its Petitions, and instead improperly introduced it as a new
argument in its reply briefing." Though Samsung mentioned element 14 in its petition (". . . emits a beam of light on to the planar element 14.’") and made many other references, the standard of review here by CAFC is quite deferential, considering only "whether the Board’s determination
was “clearly unreasonable, arbitrary, or fanciful” or that
the record “contains no evidence on which the Board could
rationally base its decision.”" On that deferential basis, the majority affirms, as the record does provide some basis for finding a disconnect (e.g., "[N]one
of the statements in the Petition clearly state the combination Samsung advances on appeal—i.e., Geva’s planar element being placed on top of Keely’s LCD display."). Judge Dyk dissents, finding the contrary evidence sufficient to overcome even the deferential review, and indeed, if given the opportunity, would reverse on the merits ("The quoted portions of the ’070 Petition themselves
reference that Geva’s planar element in included in Samsung’s combination . . . Notably, the panel majority does not dispute that these
explicit statements in the ’369 Petition are sufficient to propose a combination of Keely and Geva that includes Geva’s planar element. If the two petitions are to be treated the
same, as the majority concludes, Majority Op. 7 n.4, I fail
to see how the language in the ’369 Petition cannot overcome any ambiguity in the ’070 Petition . . . On the merits, I would hold that the
Board’s determinations that the Keely-Geva combination
does not satisfy the claim limitations and that there was no
motivation to combine Keely and Geva are not supported
by substantial evidence, largely for the reasons cited in the
dissent in the ’369 IPR proceedings.").
-
- In this precedential decision on design and utility patents for an "illuminated school bus sign", CAFC reverses the infringement determinations, finding:
- That a new trial is necessary on the design patent as "the district court erred in its construction of the term “transparency”; and
-
That the JMOL should have been granted on the utility patent ("JMOL should have been
granted because no reasonable jury could have found infringement under the doctrine of equivalents") and vacates the injunction.
Regarding 1), initially, CAFC opines that it'll likely extend the utility expert POSA standard to design patents:
"In the utility patent context, an
expert witness may testify as to the perspective of a person
of ordinary skill in the art (“POSA”) even if the expert possesses extraordinary skill . . . for such an
extraordinary expert’s testimony to be relevant, the expert must establish familiarity with the perspective of a POSA . . . It seems logical that these
same principles will apply in a design patent context—such
that expert witnesses may possess knowledge beyond that
of ordinary observers yet still testify as to the perspective
of an ordinary observer, provided the expert can establish
familiarity with that perspective."
However, the issue was forfeited below so CAFC doesn't actually address it here, rather reversing based upon the construction ("[T]he description then
expressly narrows, stating the D930 patent’s “oblique shading lines visible in the front and perspective views denote transparency.” J.A. 5557. The claims, here, are limited to surfaces that possess transparency. Transparency
is not synonymous with translucency and does not mean
both transparent and translucent.
In holding that “transparency” includes “translucent,” the district court erred").
Regarding 2), despite expert testimony, CAFC finds the equivalent function excluded from the intrinsic evidence, and could not therefore have been found by the jury ("The undisputed evidence shows that the accused device does not perform the required functions. The patent indicates that the claimed invention can “removably receive
the sign” so that the signs can be exchanged, customized,
or serviced without removing the entire installation . . . Smartrend’s expert witness,
Mr. York, conceded that the accused product is “not capable of doing that.”"). Ergo, reversed / remanded on the design patent and reversed / vacated on the utility.
-
- In this precedential decision, CAFC considers claims on an oil-well releasable connection, appellee arguing lack of antecedent basis for a claim reciting "the connection profile of the second part" (emphasis added) where only a "first part" was introduced. "The district court ruled that “the error” identified by
Canatex “is not evident from the face of the patent and the
correction to the claim is not as simple as [Canatex] makes
it seem”" and therefore found the claim invalid for indefiniteness. CAFC reverses ("[T]here is only one correction
that is reasonable given the intrinsic evidence"). Judicial correction requires:
- that the error be evident from the face of the patent; and
- "“(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.’”"
Here, finding the error merely clerical, and the intended meaning obvious on its face ("[N]o “connection profile of the
second part” has previously been mentioned in the claim . . . Nothing in the figures or their descriptions shows a “connection profile” in the second part . . . A relevant
reader had to understand that the passage attributing the
connection profile 16 to the second part 14 was erroneous—
and so must be the other references to the connection profile of the “second” part . . . The only reasonable correction is the changing of
“second” to “first” in the claim language at issue."), CAFC reverses.
-
- In this relatively brief opinion, the CAFC majority considers construction in an IPR obviousness appeal, and agrees with Appellant that the Board's analysis lacked substantial evidence ("[T]he Board did not meaningfully
grapple with the ’039 patent’s additional constraint that
the card information determines (i.e., establishes) the
memory location of the biometric data. See ’039 patent at
claim 1. And without any explanation or evidence underpinning the Board’s assumption—that associating the card
information with the biometric data means the former controls the decision of where to store the latter—its decisions
lack substantial evidence"). Judge Wallach dissents, however, finding that the Board did adequately support its reasoning based upon expert testimony ("Mr. Lipoff was an undisputed
POSITA and expert in the subject matter whose education,
historical knowledge, and background in databases was
provided to the Board") and that the majority improperly applies too strict a standard when assessing the Board ("The majority substitutes its own analysis for that of the
Board on “underlying factual findings” that this Court is
supposed to review “for substantial evidence” . . . This occurs twice . . . First . . . The majority’s reversal
of the Board only to circumscribe Hsu’s disclosure as literally just the words of Hsu is contrary to the statutory
standard “to a person having ordinary skill in the art” . . . Second, the majority fails to examine “the record as a
whole.”).
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.
