(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- 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.
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- 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.
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- 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.
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- CAFC affirms the construction of "heat exchanger" begetting obviousness invalidity in this matter involving "cooling systems for electronic displays." As for the construction itself, CAFC sees nothing in the plain language / specification / prosecution history that would "limit the term “heat exchanger” to heat exchangers with enclosed channels or tubes" (indeed, "the specification suggests the invention can work with
“heat exchangers” of all forms, stating that “many types of
heat exchangers are known and can be used with any of the
embodiments herein.”"). Ergo, after very briefly reviewing the obviousness reasoning, CAFC affirms.
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- In this precedential PGR opinion (n.b., the claims were amended during the PGR), CAFC clarifies requirements for appellate standing. CAFC first announces the standard:
"To establish standing, an appellant must have “(1) suffered an injury in fact, (2) that is fairly traceable to the
challenged conduct of the [appellee], and (3) that is likely
to be redressed by a favorable judicial decision” . . . To establish an
injury in fact, an appellant must show it has “suffered ‘an
invasion of a legally protected interest’ that is ‘concrete and
particularized’ and ‘actual or imminent, not conjectural or
hypothetical.’”"
Here,
"ironSource argues it has met its burden to establish an
injury in fact, based on the potential infringement liability
suggested by DT’s “veiled threats” of infringement—
namely, that DT’s intellectual property covers certain
“Click to Install” (C2I) features of ironSource’s now-discontinued Aura product . . . Mr. London testified that, in early 2021, he learned from
ironSource’s actual and potential customers that DT alleged to have one or more patents covering the C2I features . . . Mr. London also testified that,
because of these allegations, ironSource was compelled to modify Aura’s C2I features and make business concessions, such as additional indemnifications to its customers, to
mitigate the risk of potential litigation by DT . . . The declaration shows that in August 2022, ironSource suspended the Aura product with modified C2I features."
Alas, such concerns are insufficient, particularly in view of the claim amendments ("Mr. London’s declaration is insufficient to establish an
injury in fact because, although it establishes that ironSource previously developed and released a product, it fails
to demonstrate concrete plans to reintroduce this product
with features that are implicated by the substitute claims
at issue" (emphasis in original)).
"Because ironSource does not show how the C2I features are implicated by the substitute claims, which introduce two narrowing limitations and issued after DT’s
alleged “veiled threats” of infringement, we conclude ironSource has failed to show injury in fact based on potential
infringement liability. "
Ergo, dismissed.
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.
