(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- CAFC precedentially affirms the claim construction for "outer frame" in these claims directed to "devices for transcatheter aortic
valve replacement" in three patents, dismissing as to a fourth for lack of jurisdiction (the USPTO cancelled those claims). Below, "The district court determined that the patentee acted
as his own lexicographer and redefined the term “outer
frame” to be “a self-expanding frame.”" CAFC agrees ("An explicit redefinition is not required for a patentee to
act as a lexicographer . . . [h]ere . . . when discussing structure 416 in the dual-frame
transcatheter valve embodiment and structure 216 in the
dual-frame endograft device embodiment, the specification
refers to these structures as an “outer frame,” a “self-expanding frame,” and a “self-expanding outer frame” several
times . . . the specification consistently indicates that claim 1’s
“outer frame” is a “self-expanding frame” . . . the specification clearly and consistently conveys that the self-expanding nature of structures 216 and 416 is present in all
embodiments of those devices."). N.b., that plaintiff alleges defendant was estopped from arguing this construction via defendant's position in a previous IPR, but CAFC finds plaintiff's argument forfeited as inadequately presented below (plaintiff's "brief did not otherwise develop any argument for application of judicial estoppel . . . Aortic’s counsel responded: “I think there’s some confusion, it seems, as to the
point here. The propriety of taking different positions in
front of different forums, I’ll leave for the [c]ourt" emphasis in original). Ergo, affirmed as to the construction.
-
- CAFC affirms unpatentability in this IPR for claims directed to "“determining attributes of a roof structure . . . of a real-world three-dimensional building” using a region’s “aerial imagery . . . including the roof structure.”" Basically, CAFC agrees that the Board's motivation to combine was adequately supported ("The Board concluded that given Nearmap’s “accuracy-improvement rationale,” Nearmap had “articulated
sufficient reasoning with rational underpinning” that combining Kennedy and Florance “would have been obvious to
one skilled in the art.”"), that the Board's handful of miss-cites were harmless error ("It is clear, however, that the Board’s reference to claim
16 instead of 14 in that one instance was nothing other
than a typographical error"), and that the Board's reasoning for specific limitations was supported ("That portion of the reply cited the petition, the prior art references, and expert testimony explaining that one skilled in the art would have known and
would have been motivated to perform a second database access step."). CAFC then considers various dependent claims, but again finds the Board's reasoning adequately supported.
-
- CAFC affirms the unpatentability of claims "directed to systems and methods for
inductively transferring power from a base unit to a target
unit" for obviousness. CAFC first affirms the Board's construction of "coupled" ("Claim 15 simply
recites “coupled,” while claims 23 and 27 recite “electrically
coupled.” This difference demonstrates that the patentee
knew how to limit the claims to an electrical connection but
chose not to do so for claim 15."). CAFC then affirms the Board's obviousness analysis ("Rather than relying on the mere fact that the elements
existed in the prior art, the Board here set forth a motivation—one would have looked to Jang for details as to how
to implement Flowerdew’s charger—that is supported by
substantial evidence, as discussed above."). Ergo, affirmed.
-
- In this precedential decision, CAFC vacates and remands an IPR "for failure to adequately consider evidence
of copying and remand for further proceedings" (i.e., Centripetal's claims were invalidated below for obviousness, so presumably they want the copying evidence considered as indicia of nonobviousness; "The Board did
not have to go searching throughout the entire litigation
record to find the evidence of copying, but it had an obligation to consider the specific evidence that was put before it"). More interestingly, CAFC also considers Appellant's contention that "the Board’s final written decision must be vacated because APJ McNamara recused belatedly after the IPRs were instituted" (the APJ owned Cisco stock and Cisco later filed a petition and was joined in these proceedings). Here, CAFC finds it has jurisdiction to consider the recusal ("Centripetal’s recusal challenge does not turn on the “interpretation of statutes related to the Patent Office’s decision to initiate inter partes review” . . . Instead, it turns on the interpretation of ethics rules that are “not limited to the institution stage” . . . and a constitutional challenge relevant to the entire proceeding . . . Thus, it fits neatly into the categories of cases over which we have exercised jurisdiction."). CAFC then agrees that the motion to recuse was untimely ("Centripetal was aware of APJ McNamara’s public disclosures more
than three months before the filing of its recusal motionand emphasized that Centripetal waited until after it had
received an unfavorable decision on both its motion for rehearing and its petition for writ of certiorari to raise its
recusal concerns"). Importantly, however, CAFC also finds the motion dead on the merits ("Even if Centripetal’s recusal motion were timely and
meritorious, it would still not justify vacatur."). Notably, however, CAFC admits that since it's remanding on the merits, the case will be reconsidered by a new panel, which also mitigates the issue in any event.
-
- CAFC affirms this noninfringement SJ based on a required order of operations construction in claims directed to a beverage dispenser.
"We apply a two-part test for determining if
steps that do not otherwise recite an order “must nonetheless be performed in the order in which they are written.”
Id. “First, we look to the claim language to determine if, as
a matter of logic or grammar, they must be performed in
the order written.” Id. “If not, we next look to the rest of
the specification to determine whether it directly or implicitly requires such a narrow construction. If not, the sequence in which such steps are written is not a
requirement.” Id. at 1370 (emphasis in original) (cleaned
up)."
Here, the "use of “based on” strongly indicates that
the first step precedes the second" and "this particular order accords with the specification, which not only contains language and figures describing this order, but also contains nothing suggesting
Rothschild’s contrary reading of claim 11." Ergo, affirmed.
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.
