(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- A concurrence (Hughes, Cunningham) and dissent (Moore, Reyna) spar in this precedential denial of rehearing en banc regarding design patent analysis, specifically, 1) a sentence in Egyptian Goddess ("[i]n some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear
without more that the patentee has not met its burden of
proving the two designs would appear ‘substantially the
same’ to the ordinary observer, as required by Gorham"), and 2) DCT claim construction.
Regarding 1), the concurrence holds that the sentence "merely points out a particular situation in which it is clear, even without comparison to the
prior art, that no ordinary observer would be “deceive[d]”
or “induc[ed] [ ] to purchase one [design] supposing it to be
the other.”" The dissent, however, feels the sentence has too far diverted the analysis from the jury ("We have messed up design patent infringement and essentially eliminated any role for the jury over what are
quintessential jury-type fact questions" - ouch), changing "the frame of reference from whether two designs are substantially similar in overall appearance to
whether two designs are “sufficiently distinct” or “plainly
dissimilar.”" Regarding 2), the dissent naturally believes this is a factual question for a jury more than a "legal document" type analysis, as is the case for utility claim construction:
"Most of the time utility patent claim construction is based upon the intrinsic record—a clean
construction of legal documents . . . The opposite is true in design patent claim construction. Nearly every single design patent case turns upon the factual issue of functionality—which dictates how the design should be compared to the prior art and the accused design . . . . Almost nothing in the way of legal analysis undergirds the claim construction of a picture . . . The concurrence points out other considerations it
contends bear on the scope of design patent claims, including the role of broken lines in design patent drafting and
the effect of representations made during prosecution . . . There is no reason—and the concurrence
provides none—why considerations like these, which can
be addressed with a simple jury instruction, otherwise require taking substantially the entire infringement question away from the jury."
Be that as it may, in view of the denial, the legal analysis remains predominant . . . for now.
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- CAFC affirms 101 ineligiblity for claims regarding "a “self-contained” interactive
chart, which is a chart that retains its interactivity even
when shared on a separate website."
"[W]e hold that the representative claims of the
Asserted Patents are directed to an abstract idea of “generating and sharing self-contained, interactive charts
on computers” or “across websites” . . . he district court stated that “even surpassing plausibility to assume Adobe Flash was not conventionally
used, the claim language [of claim 1 of the ’892 patent] does
not limit this claim to using Adobe Flash or to any mechanism by which its ideas are accomplished.” J.A. 14. And
like the district court correctly concluded, this failure by
the claims was “fatal” to iChart’s step-two position . . . we conclude that at Alice step two, there is
nothing in the representative claims of the Asserted Patents sufficient to transform them into eligible subject matter."
Ergo, affirmed.
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- CAFC precedentially vacates and remands this obviousness IPR determination for claims "directed to a method for acquiring and analyzing an image of
a dental arch of a patient." Below, "the Board found that the effective filing date of the [challenged] ’409 patent, based on a foreign priority application, fell between the filing date of Carrier’s
provisional application and the filing date of Carrier’s nonprovisional application.”" Thus, "whether Carrier qualified as prior art depended
on whether it was entitled to the filing date of its provisional application under AIA 35 U.S.C § 102(d)(2), rather than only to the filing date of its non-provisional application."
"[T]he Board held that, for purposes
of AIA § 102(d)(2), a reference patent receives the filing
date of an earlier application as long as it satisfies the
“ministerial requirements” of §§ 119 and 120 and the earlier application “describes the subject matter relied upon in
the reference patent.” Because the Board
found that Carrier’s provisional application described the
subject matter on which the petition relied, it concluded that Carrier qualified as prior art as of the provisional application’s filing date."
That is, the Board eschewed Dynamic Drinkware's pre-AIA analysis requiring that the prior date only sufficed for prior art "if at least one claim of the non-provisional patent was supported by the provisional application’s written description."
CAFC doesn't read the new AIA statute in that manner, rather reading that it "expressly conditions entitlement to priority on satisfaction of § 112’s written description requirement" (i.e., still generally favoring Drinkware).
"Section 102(d) therefore incorporates that substantive
requirement, and there is nothing in its text that exempts
prior art determinations from § 119(e)(1)’s entitlement requirements or otherwise creates a different, less demanding “ministerial” standard for prior art purposes . . . Congress chose language requiring the satisfaction of statutory-based substantive requirements, not language merely permitting an applicant to
invoke priority . . . the statutory text requires § 112(a) support for at
least one of the prior art patent’s published claims before
that reference may obtain an earlier filing date for prior art
purposes." (emphasis added)
Thus, since "the Board did not determine whether the Carrier provisional provides sufficient written description support for Carrier" CAFC remands.
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- CAFC affirms unpatentability of a cross-bow claim. Basically, as is often then case (context is king) the analysis turns on the claim construction, for which, CAFC applies the standard doctrines:
"We strongly disfavor construing “terms in a way that
renders them void, meaningless, or superfluous” . . . Because claim 1 provides that the string guides are both “mounted to” and “rotatable,” Ravin’s proposed construction would render the claimed “rotatable around a first axis” and “rotatable around a second axis” limitations superfluous . . . Similarly, the written description does not limit the “mounted to” connection to allow only rotational movement but repeatedly describes the string guides, “mounted to” the limbs, are “rotatable” . . . We see no error in the Board’s construction of “mounted to” to mean “connected to, either directly or indirectly,” and Ravin poses no separate challenge to the Board’s anticipation finding under this construction. We therefore affirm the unpatentability of claim 1 of the ’015 patent."
Ergo . . . context is king.
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- CAFC affirms obviousness and anticipation IPR invalidations for claims on "[a] watch or other type of portable electronic console
that employs a number of different functions in order to improve its usability." Below:
"[The Board] found,
based on a fully developed record, that “level of physical
fitness” may be conveyed through physical characteristics,
such as stride length and body weight, when such characteristics are viewed in relation to one another . . . we must reject Nike’s argument that certain physical characteristics cannot be included in evaluating a “level of physical fitness.” As the
Board noted, the claim’s “broad phrasing” suggests “level
of physical fitness” should not be limited, and the ’413 patent specification does not further cabin the term . . . Substantial evidence supports the Board’s finding that
Amano anticipates limitation."
Possible takeaways? I think some large companies may see reissues exclusively as a pre-litigation cleanup tool. If you have an asset that's a potential IPR target, though, you might also consider a reissue. True, you can propose amendments during the IPR, but if the situation is clear enough, why not advance negotiations so as to avoid costs? Maybe the specter of provisional rights is too appealing, but you could just add dependent claims then. I don't know if the situation here lent itself to that, but food for thought.
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.