(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- This is a brief IPR obviousness opinion for "an electric charging system for intelligently charging battery-powered vehicles" affirming not invalid in part, but reversing / vacating / remanding in part, disagreeing with the claim construction of:
"[1h] operate a climate control mechanism of the
electric vehicle while the vehicle is in a parked
state and in accordance with the selected mode of
operation for a duration of time until the amount of charge residing in the battery reaches a predetermined level."
"The Board
concluded that “even if claim 1 does not recite a particular
event that occurs after the predetermined battery level is
reached, claim 1 at least requires that the instructions take
into consideration the battery level in some manner when
operating the climate control mechanism.”" CAFC disagrees based upon the plain language. Nor can CAFC find any "requirement in the specification that the operating of the climate control mechanism must take into account a “predetermined battery level” that may be reached" (e.g., consulting the embodiment of FIG. 6, "the specification
merely indicates that the driver may be notified when the
battery drops below a predetermined level."). Ergo, after agreeing with the Board on other issues, CAFC remands for consideration of the dependent claims and the new construction.
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- In this precedential decision, CAFC considers "whether a respondent in an ITC proceeding may seek
a mandatory stay of its refiled declaratory judgment action
involving the same parties even though it had previously
filed a declaratory judgment action and missed the deadline for seeking a stay under § 1659(a)(2)" and holds that it may not. After first confirming that sufficient controversy exists for jurisdiction / the collateral order doctrine is satisfied, CAFC notes that while the DCT was wrong to consider a temporary stay as mooting a mandatory stay ("a discretionary stay that can be lifted should
circumstances change is not the same as—and thus does
not moot—a request for a mandatory stay that cannot be lifted"), the issue is moot, since CAFC agrees with the DCT that the mandatory stay should be denied in any event, in accordance with precedent wherein plaintiffs, e.g., refiled complaints to circumvent the rules / restart deadline clocks ("Ascendis voluntarily dismissed
the Original Complaint and filed a virtually identical Refiled Complaint in an attempt to restart the 30-day deadline under § 1659(a)(2) . . . These circumstances fit squarely within the common-law principle of
prohibiting the use of voluntary dismissal to accomplish indirectly what cannot be accomplished directly."). Ergo, affirmed.
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- CAFC reverses the DCT's claim construction "construing
“generally conical/substantially conical” to exclude any
curves or undulations and erred in construing “rear cover
attached to the bell cup” to require that the rear cover and
bell cup be formed from separate piece" in connection with "rotary atomizers for particulate paint." Basically, the decision is another application of "substantially" here in the mechanical context ("[T]his court has
interpreted ‘substantially’ as a non-specific term of approximation that avoids a numerical boundary."). Accordingly, CAFC remands, as a "jury trial is required under the correct
construction to determine if EFC’s bell cup infringes the
asserted claims." CAFC similarly affirms the plain meaning of "attached" ("The plain meaning of “attached” is broad enough to
encompass both two pieces that are secured together or
two pieces that are proximate to each other although
formed from a single piece at the outset."). In contrast to these reversals, CAFC does, however, agree with the DCT to exclude the proposed expert's testimony ("The district court did not err in concluding that the relevant art “involves atomization and fluid dynamics
rather than paint and color match” . . . [as] . . . Mr. Dattilo admittedly has no experience designing rotary atomizers, the district court did not err in excluding his
testimony"). Ergo, affirmed as to the expert testimony, but otherwise reversed and remanded.
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- In this 17 U.S.C. § 411(b)(1) copyright registration decision, CAFC considers the effect of inaccurate registration information. CAFC first affirms that inaccurate information was submitted:
"Appellees’ expert,
Dr. Martin Walker, testified that HeS’s deposit copies do
not match the source code as it existed in the years claimed
by HeS in its copyright applications: 2006 for ROVR and
2013 for HEALTHeSTATE. Dr. Walker indicated that the
ROVR deposit copy contains files that were added or revised after 2006, including in 2010, 2011, and 2013.
J.A. 9103–05. Regarding HEALTHeSTATE, Dr. Walker
found the deposit copy contains occurrences of code added
or revised in 2015 and 2017, several years after the 2013 completion date represented by HEALTHeSTATE.
J.A. 9105–06. Dr. Walker also identified numerous instances where source code in the deposit copies had been
altered to delete or change references to third parties as
authors or copyright holders. J.A. 9108–10."
Turning to materiality, CAFC then affirms that the error was sufficient to deny registration:
"As the Claims Court noted, “[d]epositing
an inaccurate copy is a significant error because the deposit
copy identifies the precise copyright work for which the applicant seeks copyright registration.” J.A. 184 (first citing
17 U.S.C. § 408; then citing J.A. 28350). The Claims Court
concluded that based on circumstantial evidence, including
the significance of the legal error and the clarity of the requirements for deposit copies, HeS was at least willfully
blind to the legally inaccurate information. J.A. 185. We
agree . . . "
Ergo, CAFC affirms the summary judgement for the defendant ("Because HeS submitted deposit copies with
known inaccurate information, and the Copyright Office
confirmed it would have refused registration had it known
of these inaccuracies, HeS’s copyright registrations are invalid. 17 U.S.C. § 411(b)(1). Without valid copyright registrations, HeS cannot legally assert copyright
infringement. 17 U.S.C. § 411(a).").
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- In this precedential decision, CAFC affirms the ITC's 337 importation finding on "wearable blood
oxygen measurement devices", taking this as an opportunity to clarify the scope of evidentiary obligations under the domestic industry requirement. E.g., regarding the technical prong, CAFC finds three flawed premises in Appellant's argument critiquing "the Commission for purportedly relying on a “hypothetical”
Masimo Watch, rather than an actual article when evaluating the technical prong, emphasizing that a hypothetical
device cannot satisfy the domestic industry requirement" :
- "Apple asserts that, in the course of a § 337 proceeding, the Commission must find the technical prong satisfied only by the exact article identified in the complaint. The law is not so rigid . . . 19 C.F.R. § 210.12(a)(9)(ix) . . . requires that “[t]he complainant shall make such showing . . . when
practicable, by a chart that applies an exemplary claim of
each involved U.S. patent to a representative involved domestic article” (emphasis added). This regulation does not
require a complainant to identify, in its complaint, the exact physical article upon which it may ultimately rely
throughout a § 337 investigation. It is sufficient for the
complaint to identify “a representative” article."
Ergo, the Commission wasn't limited to the charted article but could "make findings regarding the existence of a domestic industry article based on the totality of the evidence introduced
during the five-day evidentiary hearing."
- "Apple next argues that the Commission was required
to confine its technical prong analysis to the specific RevA,
RevD, and RevE models Masimo produced during discovery . . . Nothing in the Tariff
Act, the APA, or the Commission’s rules supports Apple’s
contention that the technical prong analysis must be confined to only those individual devices a complainant physically produces in discovery, as opposed to treating such
devices as representative embodiments of the broader domestic industry article they are found to reflect."
- "Apple next suggests that a complainant may not rely
on circumstantial evidence to meet its burden to prove that
a patent-practicing article existed at the time it filed its
complaint . . . To the extent
this is a restatement of Apple’s contention that the Commission is limited to analyzing only the specific, physical
models produced in discovery, we have already rejected
that view. If, alternatively, Apple more broadly means that
circumstantial evidence is an unacceptable basis on which
the Commission may find the domestic industry technical
prong satisfied, Apple identifies no statutory, regulatory,
or caselaw support for its position . . . We therefore reject Apple’s contention that reliance on circumstantial evidence in § 337 proceedings is in any way improper."
". . . Thus,
the Commission did not rely on a “hypothetical” article as
Apple wrongly asserts; instead the Commission identified
as the pertinent patent-practicing article the Masimo
Watch, as representatively described in Masimo’s complaint, and supported by the prototypes Masimo produced
in discovery, and as further proven by the testimony of
multiple witnesses, product testing data, and other circumstantial evidence the ALJ credited. The ALJ and the Commission were permitted to credit all of this evidence."
CAFC likewise affirms (post-Lashify) on the economic prong ("Apple argues the
Commission erred in two respects: by crediting investments in non-patent practicing articles that were not, in Apple’s view, made “with respect to the articles protected by the patent,” and by relying on purportedly improper investment accountings . . . The ALJ’s conclusion was entirely consistent with § 337(a)(3), which allows for significant investments in aspects of production other than the patent practicing article itself to count toward meeting the economic prong. ")
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.
