(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- This precedential inducement, DOE, and estoppel decision (whew!) considers a method for "trying to implant an artificial heart valve to replace a defective valve, that
furnishes a do-over opportunity to the installer to get the
positioning right." Basically, infringement by inducement was found below, based on direct infringement by DOE, despite evidence of estoppel in the prosecution history. Defendant here argues "that
Colibri’s cancelling during prosecution of then-claim 39—
while retaining then-claim 34 (which issued as claim 1)—
“precludes Colibri from asserting that, under the [doctrine
of equivalents], partial deployment and recovery of the
valve is performed by retracting the sheath.”" CAFC agrees, and so here reverses. Below, the DCT believed "that the
asserted equivalent (i.e., the implantation method of Medtronic’s Evolut system) differs distinctly from what was recited in cancelled claim 39" as "claim 39
did not require pushing the inner member—only retracting the moveable sheath." Alas, plaintiff also repeatedly asserted that PHOSITA "would understand that pushing necessarily accompanies retracting." Similarly, "Colibri’s cancelling of claim 39 in favor of pursuing limitations that already appeared in retained claim 34 (issued claim 1) was a narrowing amendment giving rise to prosecution history estoppel." Relevant to this opinion's precedential status, CAFC is clarifying that the narrowing required for estoppel can occur in this indirect manner ("[T]he required narrowing is not a purely formal matter of altering a single claim’s terms; it can exist, and we conclude
here does exist, as a substantive matter based on cancelling
a closely related claim involving such intertwined terminology that cancelling one claim necessarily communicated
that the scope of the other claim had narrowed . . . Governing law precludes making formalities determinative, to the exclusion of substantive relationships that
would be understood by relevant readers . . . we do
not address each claim in isolation", emphasis added).
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- In this precedential design patent decision involving an "Enlarged
Over-Garment with an Elevated Marsupial Pocket" (think, "super-sized" hoodie), CAFC finds prosecution history disclaimer and "that Top Brand was
entitled to JMOL of noninfringement of the design patent
because the accused infringing design was within the scope
of the subject matter surrendered during prosecution." Initially, CAFC sets aside argument that the claim construction challenge was waived, since it wasn't raised again after trial ("[A] party need not reiterate its preferred claim construction that it argued during earlier
claim construction proceedings if the position has been rejected"). As for the disclaimer, there's already precedent in the design space for disclaimer (e.g., in Pacific Coast, "[t]he examiner issued a restriction requirement, and the applicant responded by
“cancelling figures associated with all but one of the patentably distinct groups . . . We held that, by doing so, “the applicant narrowed the scope of his original application, and surrendered subject matter.”"). Here, argument also sufficed to effect the disclaimer ("Cozy Comfort argued the overall ornamental appearances of the claimed design and the
prior art White design were distinguishable under the ordinary observer test. Cozy Comfort explained how its design differed from White by focusing on specific
distinguishing features such as the shape and placement of the marsupial pocket and shape of the bottom hem line. In making these arguments, Cozy Comfort surrendered the identified features as supporting a finding of overall similarity."). Specifically, applicant celebrated relations between the marsupial pocket and the arm holes over the prior art during prosecution. Under the Egyptian Goddess analysis, CAFC finds that disclaimer should have resulted in a JMOL for noninfringement and so reverses after briefly considering trademark claims, for which it reaches the same conclusion based upon the evidentiary record ("Cozy Comfort cannot remove the descriptive term “comfy” from the public domain without a showing of secondary meaning, which it has not made").
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- CAFC precedentially affirms the Board's obviousness finding in this IPR for some claims and reverses its nonobviousness finding for other of the claims, each directed to balloon angioplasty. CAFC again reiterates that while admitted prior art (AAPA) cannot, in itself, form the basis for a petition, it can be considered in the IPR analysis ("We have explained that
“[a]lthough the prior art that can be considered in [IPRs] is
limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when
determining whether it would have been obvious to modify
the prior art” . . . Our decisions in Qualcomm I and Qualcomm II accordingly require that only patents and printed publications
form the basis of an IPR . . .
However, AAPA can be important evidence of general background knowledge, and general knowledge can be used to
supply a missing claim limitation . . . This case is quite different from Qualcomm II, where
the petitioner expressly labeled AAPA as the “basis” for its
challenge"). As for the cross-appeal, CAFC first acknowledges standing ("Although a company’s representations about its intent to protect its intellectual property do not always give
rise to a substantial likelihood of litigation, Shockwave’s
President’s broad claims reflect the company’s expansive
view of claim 5 as reading broadly on IVL technology."), before finding the Board's analysis too limited ("The problem with the Board’s analysis is that it was
predicated on its finding that Uchiyama alone did not disclose that the electrodes were positioned “adjacent to and
outside of the guidewire lumen,” since the argument raised
by CSI before the Board was based on the combined teachings of Levy as modified by an over-the-wire catheter balloon and Uchiyama. The standard for obviousness requires
consideration of the prior art combination taken as a whole."). Ergo, reversed and remanded as to the cross-appeal.
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- Brief affirmance that "YUCATAN SHRIMP" is descriptive ("[T]he public understands “Yucatan Shrimp” to refer to a
dish that features shrimp prepared with a set of common
ingredients associated with Mexican cuisine, such as hot
peppers or sauce, citrus juice, and cilantro"). Further proof that you-ca-can't-yu-ca-tan. Proceed accordingly.
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- CAFC affirms IPR obviousness invalidity for claims directed "to heating, ventilation, and air conditioning (HVAC) systems." Owner makes three arguments based upon the Board's analysis, and a fourth asserting that the petition "did not disclose
a sufficient obviousness theory for “detecting a manual
change to the first automated setpoint” because Google relied on “general concepts” rather than a “particular example.”" CAFC resolves the first three with reference to the Board's factual findings, and the fourth in a similar manner, since the Board's analysis relied on the petition's assertion ("EcoFactor does not point out any particular deficiency in
the Board’s conclusion that Ehlers and Wruck render this
claim element obvious").
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.
