(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- 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.
-
- 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.
-
- In this mixed decision, CAFC reverses SJ noninfringement, but affirms the exclusion of expert damages testimony. Regarding the SJ, "the court concluded there was no genuine
dispute that the claims’ measurement-related limitations
were infringed only outside the United States." CAFC agrees as there was a pre-trial stipulation encompassing the products:
"Of the total, global number of Intel products and
associated activities determined (without regard
to geographic considerations) to meet the technical requirements of any asserted VLSI patent
claim . . . seventy percent (70%) thereof will be
deemed to have a United States nexus as required by each subsection of 35 U.S.C. § 271"
CAFC believes "the only reasonable interpretation
of the stipulation is that it addresses U.S. nexus for infringement purposes as well as for damages calculations" (emphasis in original).
Similarly, plaintiff objects that the DCT "despite agreeing the accused devices
are reasonably capable of performing the claimed measuring, the court improperly objected to the fact that the measuring was not performed in the United States." CAFC agrees ("VLSI is correct that the court improperly focused on where the claimed measuring limitations were
practiced instead of the undisputed fact that Intel imported
and sold the accused products in the United States . . . The proper inquiry, therefore, is whether
Intel’s accused products include a performance measurement circuit having “the structural means for performing”
the claimed measuring function “without product modification.”").
CAFC likewise disagrees that there was sufficient disavowal so as to import the "upon identifying" limitation into even those claims not reciting it explicitly. Considering each assertedly disavowing statement, CAFC considers them to be distinguishing the prior art or being at best "ambiguous or amenable to multiple reasonable interpretations, prosecution disclaimer is not established."
As for the damages expert, however, CAFC agrees that the local rules permit exclusion ("we conclude it was not
clearly erroneous for the district court to find that the limited support relied on by VLSI in its damages contentions the disparate placement of relevant references (including
in several-page-long string citations), and the failure to expressly disclose readily available figures later relied on by
Dr. Sullivan were insufficient to notify Intel of the data underlying Dr. Sullivan’s NPV and VPU theories."), but notes in closing that the DCT "left untouched the damages theories of another VLSI expert, Mr. Chandler . . .VLSI thus
maintains the ability to prove damages based on Mr. Chandler’s opinions and can do so on remand."
-
- CAFC briefly affirms the PTAB's obviousness determination for claims directed to a "method for controlling a controllable appliance resident in an environment which includes a
device adapted to receive speech input."
"First, UEI argues that Roku’s proposed modification to Hart-787 in view of Fu and Rosenberg “was not included in
Roku’s Petition and [was] advanced for the first time in
Roku’s Reply . . .”"
CAFC disagrees as the "petition then
proposed “further modify[ing] the combination of Hart-787
and F[u] to apply a threshold determined according to an
environmental noise level, as disclosed by Rosenberg.”" (court's emphasis).
"Second, UEI argues that “the Board’s finding that a
[person of ordinary skill in the art] would have been motivated to modify Hart-787 and F[u] in view of Rosenberg is
legally erroneous . . ."
CAFC again disagrees: "Roku’s expert opined that “Hart-787 left it to a user to deploy
known audio output volume adjustment techniques based
upon ambient noise volumes detected in real-time . . . In the same field of endeavor, F[u] discloses a
voice-controlled device . . . with a microphone capturing
environmental sounds, wherein the device adjusts the audio output of a wirelessly-linked audio-producing device if
the captured environmental sounds exceed[ ] a predetermined threshold.”"
"Third, UEI argues that the Board legally erred with respect to the motivation to modify Hart-787 in view of Fu
because the Board did not explain why a person of ordinary
skill in the art would have picked out Fu’s technique to improve the signal-to-noise ratio (“SNR”) to replace
Hart-787’s techniques. . . "
Opining that "[i]t’s not necessary
to show that a combination is ‘the best option, [but] only
that it be a suitable option’" CAFC again disagrees, before affirming as to the whole.
-
- In this precedential trademark decision, CAFC affirms "no likelihood of confusion between
Vaporous’s mark [which is basically an X with a dot above it] and Fuente’s X marks" in connection with oral vaporizers, basically demonstrating application of the DuPont factors (specifically one and three through five) in this specific context. Precedential status seems primarily to be regarding analytic procedure, e.g.:
"To the extent that
Fuente is advocating that we consider Vaporous’s use of the
mark in connection with other marks not part of the applied-for mark, we decline to do so. See Denney v. Elizabeth
Arden Sales Corp., 263 F.2d 347, 348 (C.C.P.A. 1959) (“In
determining the applicant’s right to registration, only the
mark as set forth in the application may be considered;
whether or not the mark is used with an associated house
mark is not controlling.”). The correct inquiry requires
comparison only of the applied-for mark, [the mark, which is basically an X with a dot above it], to Fuente’s registered X marks."
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.
