(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this mixed design patent decision on inventorship and valdity/infringement for the Wallet Ninja ("a rectangular credit-card sized multi-tool"), the jury below found against the defendant's incomplete inventorship counter-claim and awarded lost profits for the infringement to plaintiff. As to the inventorship issues, despite the alleged co-inventor signing a nunc pro tunc assignment to the defendant (after litigation had begun and the filings made), CAFC dismisses the appeal on a procedural basis since only the defendant is appealing (defendant "was not a party to the correction of
inventorship claim before the district court and Cooper, the
losing counterclaim-plaintiff on the correction of inventorship claim, has not appealed . . . [defendant] failed to move for intervention or substitution in this
case . . . despite having control over Cooper’s litigation
actions . . . [defendant] did not instruct him to appeal. Cooper and Sherman also had different attorneys, portrayed themselves and acted like separate parties during
the district court litigation, and only Cooper actively participated in litigating the inventorship issue." Ouch. CAFC then affirms as to the validity analysis, findings of non-functionality, findings of infringement, and damages analysis.
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- CAFC considers this IPR appeal finding all the claims obvious on "a pump-motor-pump configuration where a single electric motor
drives two hydraulic fracturing pumps, one at each end of
the motor." Below:
"The Board found a skilled artisan would have been motivated to combine Zhang and Stout because adopting
Stout’s pump-motor-pump configuration would (1) simplify
Zhang’s system by reducing the number of components and
(2) yield a predictable result from combining known elements according to known methods."
Here, while "BJES identifies other record evidence
that could support alternative findings, but that does not
mean the Board’s findings are not adequately explained or
supported by substantial evidence." Ergo, CAFC deferentially affirms the analysis below:
"The record supports the Board’s interpretation of Dr. King’s testimony as applicable to the
prior art combinations despite referencing Figure 1 of the
’049 patent . . . Dr. King opined on the “pump-motor-pump
configuration,” a term the parties used to refer to prior art
combinations throughout the proceedings . . . Under our deferential
standard of review, we do not “second-guess the Board’s assessment of the evidence.”"
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- In this precedential costs/sanctions decision, CAFC vacates and affirms in part before remanding, agreeing that there shouldn't be Rule 11 sanctions, but that the DCT should consider if there are 35 USC 285 costs, since defendant, contrary to the DCT's analysis, was the "prevailing party." Basically, the parties entered into a license, then plaintiff voluntarily dismissed, defendant then moved to make the dismissal with prejudice, the DCT agreed, defendant then sought 285 costs, and the DCT wouldn't take a look. Here, CAFC says the DCT needs to at least take a look to see whether 285 costs are appropriate:
"“[A] favorable ruling on the merits is not a necessary predicate to find that a defendant has prevailed.” . . . Realtek argues that it became the prevailing party when
the district court sanctioned Future Link by converting its voluntary dismissal into a dismissal with prejudice. Future Link argues that Realtek is not the prevailing party
because (1) Future Link dismissed the case voluntarily
without prejudice, and (2) the licensing agreement that covers accused Realtek products altered the parties’ legal relationship, not the district court’s sanctions order. We
agree with Realtek . . . Perhaps the district
court did not intend to make Realtek a prevailing party
when it awarded sanctions and converted the voluntary
dismissal to a dismissal with prejudice. But our case law
is clear. Under the circumstances of this case, Realtek is a
prevailing party. We thus vacate the district court’s § 285
decision and remand for the district court to consider
whether this case is exceptional and whether fees are appropriate."
CAFC doesn't seem to discuss (2) directly, but I think that's because they cite cases with a very similar fact pattern, where a covenant before dismissal doesn't change the prevailing party status (E.g., Highway Equip. Co. v. FECO, Ltd., 469 F.3d
1027, 1032 (Fed. Cir. 2006): "“FECO’s prevailing party status . . . is sufficiently based on [Highway Equipment’s] having filed a covenant not to sue with the court to end the litigation, resulting in a dismissal with prejudice.”"). As in Highway Equipment, though, the DCT may ultimately find no costs - but they did at least consider it. CAFC then agrees that there aren't any Rule 11 sanctions here, since Future Link did do at least some pre-filing diligence ("[B]efore it filed its operative complaint in the 363 case, Future
Link obtained three of the accused products . . . Future Link’s
claim chart, which was filed with the 363 case’s original
complaint and incorporated into the 363 case’s amended
complaint, cites to specific materials . . ."). CAFC concludes by addressing, and affirming, some fee and discovery issues, before remanding to have the 285 costs considered.
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- In this precedential jury instruction decision, CAFC reverses/remands since it can't tell if a improper noninfringement theory raised just-before-trial infected the jury. Basically, plaintiff requested testing results, defendant said it was too dangerous to acquire those results and unnecessary to prove infringement in any event, it was later revealed that the results could be acquired and defendant moved to enter them (perhaps because they indicated noninfringement), but the DCT denied that supplementation as unduly prejudicial (again, pointing to defendant's acknowledgement that the testing was unnecessary). It was in this state of affairs that . . .
"Mischief ensued. Despite its earlier assurances to the
Magistrate Judge and to Magēmā that the Riazi Formula
was a sufficient substitute in the absence of actual testing
data, Phillips reneged and told the jury during opening
statements that ISO 8217 “requires the use of actual specified ISO test procedures to prove compliance with the ISO
8217 specifications” and that the jury would “not find anything” in ISO 8217 “stating, suggesting, or implying that
you can use an estimate to show compliance” and that “[i]f
there’s no compliance, there’s no infringement.”"
Here, CAFC is basically saying that last minute turnaround won't do ("Phillips sandbagged Magēmā right before trial with a baitand-switch, announcing that it intended to present evidence and argue to the jury that compliance with ISO 8217
requires actual testing data . . . we agree with the District Court that Phillips’ argument to the jury that Magēmā needed actual test
samples to prove infringement was both “improper and
prejudicial.” It should have never been argued to the jury.
But it was . . In short, we are not certain or even “reasonably certain” that the jury’s verdict was free from error affecting
Magēmā’s substantial rights."). CAFC concludes by reviewing and affirming the DCT's claim construction before remanding for a new trial.
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- This is a brief order reiterating the below sanctions award (the DCT "awarded
$213,765 in sanctions because the plaintiffs failed to timely
disclose the ownership and license documents during discovery and filed an amended complaint that “explicitly misrepresented to Defendants and to [the District] Court the
status of the patent"). "While the plaintiffs’ course of misconduct did not ultimately have the effect of depriving the defendants of the
right to summary judgment on the entire case based on
standing, it plainly affected the posture of the case with regard to Mr. Lowe’s standing, and it completely altered the
manner and timing of the resolution of the standing issue
before the district court."
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.
Similar to LawMux Bites, notes are (very) short writeups calling attention to various issues. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you to the relevant topic.
