(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- In this precedential decision involving "a fencing
assembly featuring pivoting, sliding connectors that connect pickets to rails" the DCT applied constructions based upon prosecution estoppel and disclaimer in the specification, which resulted in noninfringement and not invalid for indefiniteness conclusions. Here, while CAFC agrees with plaintiff that disclaimer didn't occur for some terms ("Nothing in the intrinsic record establishes that the use of fasteners is incompatible with the connector’s ability to slide . . . a “boss” is not limited to structures that always provide this advantage."), CAFC does find disclaimer present as to other terms, which the parties stipulated as resulting in noninfringement ("[T]he fact that an applicant secures allowance
on an independent ground does not render prior characterizations of claim scope insufficiently clear for purposes of prosecution disclaimer . . . The fact that Barrette’s disclaimer proved unavailing does not render it ineffective as a disclaimer . . . Moreover, the fact that Barrette cancelled the claims to
which the disclaimer applied and filed new claims similar
to those previously allowed in the ’332 and ’965 patents
does not defeat the determination of disclaimer."). Notably, disclaimer in a child was found to apply to a parent ("[a] statement made during
prosecution of related patents may be properly considered
in construing a term common to those patents, regardless
of whether the statement pre- or post-dates the issuance of
the particular patent at issue."). CAFC similarly agrees that newly proposed interpretations of other terms are untimely presented ("Parties may not adopt a claim construction position on appeal that is inconsistent with the
one taken before the district court . . . Barrette did
not argue before the district court that the term “projection” should be construed differently than bosses.") and so the noninfringement conclusion remains in place. CAFC also considers cross-appeals for indefiniteness (asserting a combination of apparatus and method limitations), but finds that the specification supports a functionally structural interpretation ("[T]he specification provides numerous examples of
structures that are slidably engaged"). Ergo, CAFC affirms the no invalidity for indefiniteness analysis as well as the non-infringement analysis below.
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- In this precedential affirmance, CAFC affirms the Board's obviousness invalidation and finds the record sufficient for Article III standing, despite Petitioner contesting Owner's status ("Causam “unequivocally identifie[d]” itself to the
Board as the owner of the ’268 patent. J.A. 4. And Causam
has insisted in its briefing and in arguments that it owns
the ’268 patent . . . No contrary evidence of record concerning
ownership has been presented or pointed out to us. The
evidence, if unanswered (as it is), would entitle Causam to
a determination on summary judgment that it is the patent
owner. Causam thus has standing to appeal the Board’s
unpatentability ruling, which, if it becomes final, will lead to cancellation of all claims of the ’268 patent but claim 12,
see 35 U.S.C. § 318(b).").
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- In this precedential water filter ITC opinion, CAFC affirms the ALJ's determinations that:
- "the term “filter usage lifetime claimed by a manufacturer or seller of the filter" is indefinite";
- "the asserted
claims are invalid for lack of written description as to any
filter media meeting the claimed FRAP factor other than
carbon-block filters"; and
- "the asserted claims are nonenabled as to non-carbon-block filters."
Basically, CAFC agrees that there's inadequate support for the aggressive claims despite their appearance in the original filing ("[T]he specification only provides the details of
specific formulations of filter components (e.g., lead
sorbent, carbon, and binder) for carbon blocks . . . and the only types of filters that are illustrated in the figures are carbon blocks . . . The inventors themselves also testified that they did not invent any non-carbon-block filters that would meet the claimed FRAP factor . . ." [ouch] ". . . The witness testimony in this case, while acknowledging that individual variables within the FRAP equation
were known, demonstrates that achieving the required
FRAP factor with any filter media was a complex task with
unpredictable challenges . . . This also comports with the statements of the applicant in
the parent application to the ’141 patent that the art of
making an effective filter is a “very difficult task.”"). As for enablement, CAFC walks through the Wands factors, but comes to the same conclusion for basically the same reasons ("Much of the same evidence discussed above with respect to written description also supports the Commission’s
findings regarding enablement"). As these two issues resolve the matter, CAFC doesn't bother to discuss the 1) indefiniteness.
-
- In this parallel appeal from the ITC to the other recent Causam IPR case, CAFC again agrees "with Causam and hold[s]
that it owns the ’268 patent", though it doesn't consider the ITC's noninfringement determination since it's moot in view of the IPR affirmance ("Although we conclude that Causam has standing, we
may not exercise jurisdiction if this case is moot . . . Causam has no right to an exclusion order because section 337 requires infringement of
a “valid and enforceable” patent, but claim 1, the only claim
asserted on appeal, is not patentable").
-
- In this adaptive cruise control noninfringement summary judgment appeal, CAFC affirms the claim construction ("The “a” before “controller” therefore cannot negate
claim 10’s other requirements"; "“Change” as a noun means
“the act, process, or result of changing,” and the verb “to
change” means “to become different” . . . The plain meaning of that term, therefore, presumes
the obvious: one lateral acceleration cannot “become different” in a vacuum; it must be different from another.
The specification reinforces that plain meaning . . .").
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.
