(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms anticipation and noninfringement findings by the ITC in connection with "an air conditioning device for nautical vehicles", particularly "the problem of providing
easily installable marine air conditioners in a confined and
tightly packed space." Appellant asserts an improper claim construction in both instances, and CAFC takes this as an opportunity to reiterate the "Becton" principle that "“[w]here a claim
lists elements separately, ‘the clear implication of the claim
language’ is that those elements are ‘distinct component[s]’
of the patented invention”" (though "[t]he context provided by the patent as a whole is . . . important in determining what to make of a separate listing of two differently named structures."). Here, it's disputed "whether the “assembly” must be physically disjoint from (except for attaching to) the claim-required
“main body.”" Appellant argues that, being separately listed, they must be distinct per the Becton assumption. Alas, CAFC agrees wtih the ITC that the presumption was overcome ("[N]o other claim language undermines a conclusion that a portion of the assembly can be part of the main body . . . Figure 1 of the specification includes a guiding
cover and a main body, where the main body consists of the
drain pan “and what is mounted above it.” . . . The figure shows that, in the patent, the guiding cover can thus be mounted above the drain pan via the evaporator, and in turn, can be included in the main body, as the main body is defined."). As regards noninfringement, here Becton DOES apply as to first and second axial limitations ("The
claim language and other intrinsic evidence strongly indicate that two independent rotation hubs—two types of rotation—are required."). Ergo, affirmed.
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- This is a very brief anticipation / obviousness affirmance, included here for its related clarification that the Cisco IronPort AsyncOS
IPUG 7.1 for Web User Guide ("IPUG") was an antedated publication because "an archived version of the
webpage housing IPUG dated before the ’526 patent’s priority date" was entered into the records. As the record "also includes an expert declaration explaining that a person of ordinary skill would
have looked for and located product manuals and technical
documentation from vendors in the field, including materials like IPUG" CAFC finds this sufficed.
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- This precedential decision is an important reminder to do your best to get assignments in order. Of the four inventors, two were unlisted and from an outside company. During litigation, one of the missing inventors was located, but the other (Huang) was never found. Ultimately, that proved fatal to the patent, which was invalidated ("A patent must accurately name those who invented its claimed subject matter . . . Inventors occupy the central role in the patent process. They are where it all begins, even if they eventually assign their interests to others, such as employers. Thus, their explicit references in the statutory framework cannot be taken lightly . . . Invalidity for incorrect listing of inventors has a clear basis in the statute . . . when an invention has multiple inventors, they must all be listed on the patent . . . Because it is undisputed that Huang is a coinventor . . . the patents suffer from the error of an omitted inventor. And because Fortress could not correct the patents under § 256 [because they couldn’t find Huang], the patents are therefore invalid due to an omitted inventor.").
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- CAFC affirms this patent prosecution disclaimer decision involving "photo-catalytic cells used for
air purification." Basically, the Examiner kept rejecting the claims, asserting that "Bigelow disclosed the claimed “specular UV reflector”" specifically remarking "that Bigelow’s “polished aluminum reflector is a reflector that produces a mirror[-]like reflection” and therefore, “Bigelow discloses a specular UV reflector" (emphasis added). Ultimately, applicant "amended the claims to recite additional features, but it did not remove the “specular UV reflector”
limitation and said nothing more about it in its response . . . The applicant also stated that, with respect to the examiner’s statements that Bigelow discloses a specular UV reflector, the applicant “neither agrees nor
disagrees with such statements.”" Once in court:
"The court granted the [SJ] motion as to noninfringement, finding that “[t]he prosecution history contains a clear disclaimer of polished aluminum because it is not sufficiently
‘specular,’ or ‘mirror-like’” to meet the claimed specular UV reflector." (emphasis added)
CAFC agrees:
"Facing this rejection, the applicant
argued that “[n]owhere in Bigelow is anything regarding a
specular reflector disclosed—either expressly or inherently.” (emphasis added). The applicant’s position was clear: Bigelow does not explicitly describe its materials being specular UV reflectors (i.e., expressly), nor
do the materials themselves possess the properties necessary for them to be considered specular UV reflectors (i.e.,
inherently); thus “[n]owhere in Bigelow” is a specular UV reflector disclosed. "
What's more, "[t]o
achieve the performance enhancement sought, the patent emphasizes the importance of its “unique” specular UV reflectors exhibiting “mirror-like” reflection as opposed to “diffuse” reflection", e.g., the specification further clarifying:
"Specular
reflection is distinct from “diffuse” reflection where
an incoming light ray is reflected into a broad range
of directions. Diffuse reflection may diminish performance enhancement of the photo-catalytic cell
10."
After considering, and rejecting various arguments that the disagreement during prosecution mitigated estoppel, CAFC concludes that "applicant’s statements in distinguishing its specular UV reflectors from the
polished aluminum reflectors of Bigelow were deliberate
and definitive" and accordingly affirms.
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- CAFC affirms this IPR's invalid as obvious finding on claims for electronic display cooling systems. Basically, petitioner identified structures in its references allegedly corresponding with the "constricted convection plate" of the claims. CAFC basically agrees ("The Board properly found that each of Na and Kim discloses a constricted convection plate."). Ergo after affirming the construction and objective indicia analysis, CAFC affirms as to the 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.
