(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- CAFC (very briefly) reverses and remands anticipation findings on claims where "[d]evices detect and process a speech command, compute a confidence score that the speech command is a hotword, and transmit the confidence score to other devices."
Basically, CAFC doesn't agree with the Board's interpretation of the references for purposes of anticipation:
"The Board’s finding “that one
device in a ‘better position’ than the other devices [to handle a subsequent user query] then exits its low power mode
and ‘wakes up’ so it can respond to any subsequent user query” is unsupported by substantial evidence because it
assumes a causal relationship between two steps Rosenberger discloses as independent alternatives . . . Sonos argues we may nevertheless affirm under its alternative theory that Rosenberger anticipates the challenged claims because Rosenberger’s devices remain in a
low power mode other than Rosenberger’s self-described,
low power “listening” mode during coordination . . . It is undisputed, however, that the Board made
no fact findings regarding this alternative “low power
mode” theory in its FWDs . . . We decline to make fact findings regarding this alternative theory in the first instance and leave this issue
for the Board to consider on remand."
So, remanded to continue the attack.
-
- A brief affirmance on a product-by-process obviousness, CAFC defers to the DCT's fact-finding on motivation to combine, expectation of success, and long-felt need:
"Dr. Appel explained how ovens, fluid beds, and coating
pans were capable of handling hundreds of kilograms of
tablets at a time and were also common pieces of equipment found in drug manufacturing facilities. Dr. Appel further explained why a coating pan would have been an
especially attractive piece of heating equipment, as it allowed large scale curing, followed by coating, and thus a
person of ordinary skill in the art would have been especially motivated to use a coating pan to cure Bartholomäus’s PEO tablets at scale to maximize manufacturing
efficiency."
Ergo, affirmed.
-
- CAFC precedentially affirms and dismisses in part. The precedential status is presumably focusing on the 314d bar to CAFC review (Owner alleges that there was a Sotera stipulation violation so the Board never should have heard the IPR):
"Here, the remedy Ms. Hafeman seeks, and its relationship to institution, eliminates any doubt that § 314(d) bars
our review. Ms. Hafeman argues the Board “should have
terminated the IPRs in light of the Sotera violation, or at
minimum, addressed why the IPRs should proceed in the
FWDs” . . . And she requests that we
vacate the Board’s final written decisions and “remand
with instructions to dismiss” the IPRs. . . . The problem
with Ms. Hafeman’s challenge is that it seeks to terminate
the IPRs for reasons related to the institution decision because the Sotera stipulation was a consideration for institution. This makes clear that her challenge “has institution
as its direct, immediate, express subject” and is thus beyond our review . . . This is not a situation
where our review of termination is unrelated to the institution decision . . . "
Ergo, after affirming on the obviousness and claim construction merits, CAFC dismisses as to the Sotera challenge.
-
- CAFC precedentially vacates and remands for further Step 2 analysis in this eligibility decision for "patents directed to improvements in a building automation system (BAS)" ("According to the patent, unlike conventional systems
that rely on continuous monitoring and transmission, the
claimed invention operates according to defined polling and
transmission intervals").
(The case also addresses some infringement jury instruction issues and some step 1 analysis, but I'm focusing on step 2 eligibility here: one, for time constraints; two, because CAFC's reasoning on infringement is mostly application of the standard caselaw; and three, the step 1 is relatively standard)
Below, "[t]he district court denied ecobee’s motion, holding
(1) the ’495 patent’s claims were directed to the abstract
idea of “controlling generic ‘components’ using information
from two separate sources (i.e., information from two separate networks),” but “factual disputes” existed concerning
Alice step two." In the jury instructions on eligibility, the DCT then directed:
"Did ecobee prove by clear and convincing evidence
that the limitations of the asserted claims of the
’495 Patent, when taken individually or when taken as an ordered combination, involve only technology which a person of ordinary skill in the art
would have considered to be well-understood, routine, and conventional as of April 9, 2004? "
On that basis, the jury found the claim valid, but CAFC doesn't approve:
"However, neither the district court’s Alice step two verdict form nor the related jury instructions informed the
jury that the ’495 patent’s claims were directed to an abstract idea, much less specified what that abstract idea
was. Nor did they instruct the jury that the abstract idea
itself could not supply the inventive concept under Alice
step two . . . Similarly, the
district court’s instructions did not include any identification of or reference to the abstract idea, instead noting only
that step one “is one for the Court to decide and not the
jury” . . . the district court’s instruction
was inconsistent with this Court’s precedent. This Court
has explained that “[a]fter identifying an ineligible concept
at step one, we ask at step two ‘[w]hat else is there in the
claims before us?’” . . . Consistent with that principle, this Court’s precedent
evaluates the alleged inventive concept at step two in light
of the abstract idea identified at step one . . . None of the cases cited by Ollnova permit consideration
of step two without first identifying7 an abstract idea at
step one."
Thus, after finding that JMOL for ineligibility is likewise inappropriate (and affirming eligibility for some other patent claims at Step 1), CAFC remands to redo the Step 2 analysis for the remaining claims, this time with proper instructions.
-
- CAFC precedentially affirms ineligibility, but vacates/remands on exceptionality.
Regarding ineligibility:
"The Asserted Patents relate “to automated systems and methods
for capturing, processing and sharing farming data, and
more particularly to systems and methods for capturing
farming operation data in real time using passive data collection devices attached to farming equipment while the
farming equipment is used to perform the farming operations, and then processing and sharing the farming operation data via an online farming data exchange system or
server” . . . As a preliminary matter, AGI points to nothing in the language of the
claims which refers to “interoperability” problems between
different brands of farm equipment. Even accepting arguendo, moreover, AGI’s assertion that its claims disclose
a specific solution to the “problem of the incompatibility of
electronic communications systems in farming equipment
due to their use of different communication protocols,” id.
at 29, the claims are nonetheless directed to a patent-ineligible abstract idea . . . in explicit
terms, the specification describes the claimed invention as
a computer-implemented method for gathering and processing farming data . . . We reject, moreover, AGI’s assertion that its claims are
not directed to an abstract idea because the claimed system
has the ability to detect the communication protocol that is
being used by a specific piece of farm equipment and relies
on a “plurality of different ‘implement profiles’ stored in
memory, each of which defines a communication protocol
needed to ‘decode’ messages that are sent from a particular
farming implement with which it is associated” . . . [The] claims are not directed to a specific improvement in computer functionality
but instead invoke the use of generic computer components
to collect, analyze, and transmit farming data."
Matters fare no better at step two:
"While AGI’s claimed system relies on automation to speed
up the process of collecting and decoding data transmitted
from farm equipment, “the improved speed inherent with
applying [an] abstract idea using a computer” does not establish an inventive concept at Alice step two . . . Thus,
whether we view the claim elements individually or as an
ordered combination, they contain no inventive concept
that would transform the abstract idea of collecting, interpreting, and transmitting data about farming operations
into a patent-eligible application of that idea."
Ergo, affirmed.
As for the fees, CAFC basically remands for lack of analysis ("[T]here is nothing in the district
court’s terse no exceptionality ruling or the record on appeal which would permit us to appropriately review
whether the court abused its discretion in concluding that
the case was not exceptional.").
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.