(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
CAFC affirms this SJ DTSA and 3PB decision. Basically, employees at McKinsey, while at McKinsey, researched APT's business then left to begin a competing enterprise.
Regarding the DTSA, CAFC agrees . . .
" . . . with the district court’s conclusion that APT
failed to sufficiently identify and define its alleged trade
secrets under the statutory definition. Specifically, APT’s response to Appellees’ interrogatories and APT’s opposition
to Appellees’ summary-judgment motion failed to identify
and define its alleged trade secrets “in a manner that allows the fact-finder to determine if a trade secret exists under the statute . . . Even under Utah law, plaintiffs must still sufficiently identify and define their trade secrets"
Regarding the 3PB, CAFC likewise finds insufficient evidence under Utah law ("Under Utah
law, “[a] third party may claim a contract benefit only if the parties to the contract clearly express an intention ‘to confer a separate and distinct benefit’ on the third party” . . . The contract here was an employee-employer agreement
between Mr. Stoddard and McKinsey.").
Ergo, affirmed.
-
- CAFC reverses the finding of non-obviousness (and accordingly sets aside the other issues) for claims "directed to “an identification rewritable tire pressure detecting apparatus.”" Defendant . . .
" . . . presented testimony that the Nihei/Nantz combination satisfies all the limitations of the asserted
claims, that a person of skill in the art would be motivated to combine Nihei and Nantz, and that secondary
considerations do not support a conclusion of nonobviousness. However, the district court denied Autel’s motion
for JMOL as to obviousness because it found substantial
evidence that “Nihei and Nantz fail to teach or suggest
the Asserted Claims’ ‘portable setting apparatus’ limitations” and accordingly “[did] not reach the other obviousness-related issues raised by the [p]arties.”"
CAFC agrees with defendant "that the
record can only support the conclusion that the setting
apparatus in the Nihei/Nantz combination constitutes
both the setting device and the PC" and as "the claims only require that the setting apparatus be portable
“relative to the vehicle,” not that it be handheld" that combination would read upon the claim limitation. Iterating through the record, CAFC doesn't find any evidence to disturb this broader reading of the limitation so as to encompass the prior art combination. As for secondary factors, CAFC finds little argument to that purpose ("In one sentence in its response brief to Autel’s
cross-appeal, Orange suggests that secondary considerations support the district court’s denial of JMOL, but this
argument is undeveloped."). Ergo, invalidated and reversed.
-
- This isn't a particularly interesting opinion, but it does reiterate the importance of methodically walking through the analysis. Basically, CAFC remands because the Board placed an improper burden on the petitioner:
"We determine that the Board erred by requiring
Guardant to show that a skilled artisan would have had a
motivation to combine the steps of amplification followed
by sequencing and would have had a reasonable expectation of success in performing the amplification and sequencing steps because the prior art reference expressly
discloses performing those steps in sequence and the Petition did not rely on modifying these two steps to arrive at
the claimed invention . . . According
to Guardant, a motivation to combine the steps was not required because the two steps were disclosed in a single embodiment in a single prior art reference. We agree. When
the disputed elements of a claim are disclosed in a single
embodiment in a single reference, no finding regarding a
motivation to combine to arrive at those claimed elements
is required . . . there is no need to show that a skilled artisan
would have been motivated to modify a reference to per-
form two claim steps one after the other when the reference
itself already discloses those limitations together in the
same sequence required by the claims."
Ergo, vacated and remanded (though, CAFC does belatedly "acknowledge that the Petition here
could have been clearer" since the petition cited "other parts of Travers ’075 and Travers 2010 without expressly stating that it is presenting alternative theories or explaining how these
different cites support its position." Despite this, CAFC still thinks it clear that "the main theory in the Petition is that
the steps of amplification followed by sequencing are
taught by paragraph 122 of Travers ’075 alone.").
-
- In this precedential decision, CAFC affirms a 12b6 dismissal for 101 invalidity, in connection with claims related to "web conferencing systems that include “time-shifting capabilities” enabling participants “to observe [a]
session in real-time, delayed while the session is still in
progress, or after the session has completed.”" Indeed, a casual review of the claims begets some result-oriented concerns, e.g.,:
2. A web conferencing system comprising:
(a) a first client application allowing at least one
presenting participant to share computer screen
video,
(b) said first client application also being arranged
to allow said presenting participant to share at
least one data stream selected from the group
consisting of chat data, documents, web pages and
white-boarding session,
(c) storage means for recording said computer
screen video and said data stream, and
(d) a second client application allowing at least one
observing participant to sense said computer
screen video and said data stream live,
(e) said second client application also being arranged to allow said observing participant to selectively sense a previously presented and recorded
part of said computer screen video and said data
stream while said presenting participant is sharing
a current part of said computer screen video and
said data stream,
(f) said second client application also being arranged to allow said observing participant to selectively sense a previously presented and recorded
part of said computer screen video and said data
stream after said presenting participant has finished sharing a said computer screen video and,
said data stream
whereby said web conferencing system is able to
simultaneously record said computer screen video
and said data stream and allow said observing participant to sense current and previously presented
parts of said computer screen video and said data
stream.
Aside from the claims themselves the "written description does not disclose any improvement to the underlying components to enable asynchronous review." Accordingly, CAFC readily affirms on the invalid side of the spectrum.
Also, seriously? That's what you named the LLC? *rolls eyes*
-
- Whole bunch of opinions today, most of which are straightforward / administrative, but I call attention to this one as one of the rare instances of reexam broadening ("The Board held that EcoFactor’s amendments to the two independent claims, claims 1 and 9, impermissibly enlarged the scope of the claims being reexamined"). CAFC reviews the claims here and agrees that they were enlarged. While the amendment did in fact add language ([W]herein said one or more processors compare an actual rate of change in inside temperature recorded inside the first structure" [sic?]) CAFC construes this as an enlargement as follows:
- Before:
- comparing (i) inside temperature at a point in time with
- (ii) the estimated rate of change in temperature.
- After:
- comparing (i) the actual rate
of change in inside temperature with
- (ii) the estimated rate
of change.
"Thus, a system comparing an actual rate of change would not have infringed the original patent, but it would infringe the amended patent." 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.
