Contact Sessions
James Skelley | Technology Lawyer
Sessions are online meetups for discussing recent legal news, general education, and sharing various of James' research. The next scheduled session is:
You can find a complete listing of upcoming sessions and request to join
HERE.
(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this precedential ITC decision, CAFC affirms in part (as appeal of the no violation finding is untimely) and dismisses in part (because "the Commission did not abuse its
discretion in entering a limited exclusion order under
19 U.S.C. § 1337(g)(1)" rather than a GEO) appeal from an ITC's import assessment in connection with trademarks covering "certain features of Crocs’s Classic Clog shoe." Regarding the untimely appeal ("“Commission issued its one and only final determination in
the Investigation below on September 14, 2023,” which
“triggered a 60-day Presidential review period, rendering
the determination non-final . . . until November 14, 2023” . . . [thus] . . . Crocs argues, the 60-day appeal
window set in Section 337(c) did not start to run until November 14, 2023, rendering its December 22, 2023 notice of
appeal timely as to the Active Respondents."). However, reviewing the caselaw, CAFC concludes that:
"[I]n investigations that
have a mixed result of a violation finding (subject to a presidential review period prior to the 60-day appeal window
starting) and a no-violation finding (not subject to a presidential review period and so final for the purposes of
starting the 60-day appeal window at the time it issues),
the notices of appeal for the different findings have distinct
appeal windows. Here, as to the Active Respondents, when
the Commission’s determination of no violation was entered there was no presidential review period and no other
administrative proceedings for that finding (unlike for the
entry of an exclusion order against the Defaulting Respondents). Thus, the no violation finding was a final decision of the Commission on the day it issued and the 60-
day period in Section 337(c) to file a notice of appeal began
to run. That 60-day period ended on November 13, 2023,
but Crocs did not file its notice of appeal until December 22,
2023.
Appellant tries to argued that the exclusion and no violation orders should be lumped together, but "Crocs does not point
to any case law from this court that supports this argument."
As for Appellant's desire for a GEO, CAFC first acknowledges that it "must affirm the
Commission’s choice of remedy unless the action is ‘arbitrary, capricious, an abuse of discretion, or otherwise not
in accordance with law"
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- CAFC affirms this obviousness invalidity determination IPR for claims involving "methods and systems for error correction in data
retrieved from flash memory." Here, Owner "contends that claim 13 of the ’347 patent requires that the “decoder” both “retrieve the encoded data” and “correct
errors.”" However, whether as a matter of prior art fact finding or claim construction, CAFC affirms the Board, believing the claimed functions admit of a shared structure.
Regarding the fact finding:
"In Diggs, Viasat argues, that
function is performed not by the decoder (the ECC Detection and Correction module), but by the Controller.
As the Board found, that distinction is inconsequential.
Figure 1 of Diggs shows that the ECC Detection and Correction module (125) in Diggs is part of the Controller (114),
and the text of the Diggs reference confirms that the “controller 114 further includes an ECC detection and correction module 125.” . . . The two functions
that the ’347 patent assigns to the decoder are thus performed by the Controller in Diggs through the incorporated ECC Detection and Correction module."
Regarding the claim construction:
The specification teaches that the encoder, decoder,
and controller “may, individually or collectively, be implemented with one or more Application Specific Integrated
Circuits (ASICs) adapted to perform some or all of the applicable functions in hardware. Alternatively, the functions may be performed by one or more other processing
units (or cores), on one or more integrated circuits” . . . That language indicates that the
claim language, properly construed, provides that the functions of the decoder and the controller of claim 13 can be
performed by varying sets of circuits, individually or collectively."
Ergo affirmed.
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- CAFC generally affirms the DCT, which found the claims not invalid, but also without contributory or direct infringement, in this matter directed to a method "for determining
whether a parked car is parked in a parking space and
whether such car is authorized to use that space." Specifically, Appellant here
". . . challenges the district court’s judgment upholding validity
by arguing
- claim 1 of the ’956 patent is invalid for indefiniteness and lack of enablement because the claimed
method is impossible to perform;
- claim 1 is also invalid
because the “high resolution image” limitation is indefinite;
- the district court improperly allowed the jury to resolve
claim construction disputes; and
- the district court
abused its discretion by excluding evidence that Park Assist had offered to sell a parking system embodying the
claimed invention more than a year before filing its patent
application, thereby invalidating the patent under the onsale bar."
CAFC affirms as to 1-3, but remands as to 4.
Regarding #1, "Indect contends that claim 1 of the ’956 patent is impossible to perform in its entirety and, therefore, is invalid
for indefiniteness and lack of enablement." CAFC disagrees ("An initial flaw with Indect’s position is that it rests on
an unstated, and incorrect, assumption that the steps of
claim 1 of must be undertaken in the order in which they
are written . . . neither
“as a matter of logic or grammar” must the steps of claim
1, and particular steps (h) and (i), “be performed in the or-
der written.”"). Regarding #2 and #3, "Indect asserts that the court
should have defined the resolution terms of steps (a) and
(b), and also determined whether steps (i) and (j) are lim-
ited to identifying cars prohibited from certain parking
spaces (“blacklisting”) or also extend to identifying cars
permitted to be in certain spaces (“whitelisting”)." But CAFC sees no error, as questions for the jury were appropriately allocated as such ("[T]he district court properly viewed this as a fact
question requiring the jury to apply its construction of “infringement process” to the prior art, rather than a new
claim construction dispute requiring judicial resolution as
a matter of law"), and generally finds the arguments made on appeal as waived (e.g. "[A] party may not introduce new claim construction
arguments on appeal or alter the scope of the claim construction positions it took below."). Regarding #4, however, in reviewing the evidence, the DCT erroneously concluded "that an offer to sell a product is inadmissible when the patent also covers a process" and so CAFC remands as to this issue ("The exclusion of the potentially invalidating Chinook
Document, which could be reasonably found to constitute
an offer for sale of a product sufficiently disclosing the pa-
tented process more than a year prior to the filing of the
patent application, was based on a clear error of law and,
thus, an abuse of discretion."). CAFC similarly remands for a new trial under the Lanham Act because of excluded evidence ("The court should have allowed introduction of evidence
about the Airport litigation to permit the jury to fully eval-
uate whether Indect proved its claim."). CAFC also considers the cross-appeal and remands to reconsider the overbroad declaratory judgment under the Kessler doctrine ("Because this extensive relief is not supported by sufficient findings, we
vacate the district court’s declaratory judgment and remand for further proceedings.").
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- CAFC affirms a 101 invalidity determination for a "computer-implemented method for decoding a
transmission signal":
1. A computer-implemented method for decoding a
transmission signal, the method comprising:
receiving, using a computer processor, the
transmission signal, which is formed by repeating symbols including downlink frame
prefix information, encoding repeated symbols to form encoding blocks, and interleaving the encoding blocks;
deinterleaving, using a computer processor, the received transmission signal;
combining, using a computer processor,
symbols at the same positions of deinterleaved encoding blocks among the repeated
symbols in the deinterleaved transmission
signal; and
decoding, using a computer processor, the
combined symbols.
CAFC agrees with the DCT that the claim is "directed to receiving, manipulating, and decoding data." Owner argues that the characterization is an over-generalization, going beyond the claim's focus upon DFP information (particularly, “improving
reception performance for repeatedly transmitted [DFP]
information,” such as providing improved bit error rates
and signal-to-noise ratios), but CAFC feels that "[t]he claim language . . . does not limit the combining and decoding of information
to DFP information."
The specification discloses that all claimed steps aside from the “combining”
step were used in prior art decoding methods . . . With respect to the “combining” step, as alluded to above, claim 1 discloses what
symbols are combined together, but does not explain how
they are combined . . . The additional
details described in the specification . . . but not captured by the claims, cannot serve as the basis of an inventive concept.
Indeed, as "the specification indicates
that this “combining” step involves basic arithmetic which
can be performed mentally or by hand or other conventional methods" CAFC affirms the finding of invalidity below.
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- CAFC considers claim construction and infringement involving "a method for making silicon
cups, bowls, and tumblers" ultimately affirming summary judgment of noninfringement. Regarding construction, "ZT now contends that the district court erred when
it imposed a negative limitation on the construction of the
spout claim element . . . But the language of the ’890 patent does not support
ZT’s preferred construction of the spout claim element for
three reasons . . . "
-
"First, “the clear implication of the claim language” is that the zipper members and spout are “‘distinct
component[s]’ of the patented invention” because Claim 1
and Claim 9 list those elements separately . . . the language of the specification makes
clear that the zipper members are separate from the spout . . . The specification consistently refers to the spout, male zipper member, and female zipper member as different features";
- "Second, ZT’s proposed claim construction is illogical . . . The zipper members cannot
then be part of the spout. But ZT’s proposed construction
gives rise to a contradiction in which the spout would be
“proximate” itself or “terminate at” itself."; and
- "Third, ZT repeatedly looks to the preferred embodiments, rather than the claim language, to support its claim
construction arguments."
As regards noninfringement, "[t]here is no genuine dispute of material" as the images of the Accused Products used to support infringement "only undermine the conclusion that there is a feature of the Accused Products that
facilitates pouring and is “distinguishable to the eye or
mind as being discrete” or is “readily and unmistakably apprehended” . . . ZT provides no other evidence that shows the Accused Products have an identifiable spout." 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 GitHub
- Various Other Tools
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.
- Online Comprehensive Writeups
- Law Review Articles
- Legacy Articles (taken from the old www.jstechlaw.com WordPress blog)