(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms anticipation and obviousness findings in this IPR for claims directed to "noise-suppressing earpieces and methods for using them." Here, Owner challenges two claim constructions: "background noise level" and "based on." Regarding the former, Owner wants background noise "level" to be construed only as the aggregate background noise signal rather than as including any particular subband component:
"Techiya has consistently maintained that background
noise “level” and “signal,” although the former is an attribute of the latter, are not meaningfully different for the purposes of its present claim-construction arguments about
those terms, so independent claim 1, which uses “level,” is
representative even though the other two independent
claims (14 and 18) use “signal.”"
The Board disagreed, construing "“background noise level” to include “any one frequency subband’s particular background noise level”" (emphasis added) permitting the Board to find the term in the art ("Applying that claim construction, the Board found that Alves discloses determining a background noise level as claimed by the ’400 patent . . . which was necessary to all of its determinations of unpatentability because such a limitation appears in all independent claims"). Owner argues that the Board's approach is contrary to principles of claim differentiation (the dependent claim references "“low,” “medium,” and “high background noise levels”"), but CAFC disagrees ("The language of “background noise level” is broad
enough on its face to cover both an overall level and a level of part of the signal" (emphasis added) ". . . the specification points against Techiya’s proposal. It states, twice, that the internal and ambient sound signals can be adjusted “by the spectral profile of the background noise measurement . . . Even under Techiya’s characterization of claim 5 as limited
to an overall background noise level, claim 5 would be narrower, not broader, than claim 1, which under the Board’s
view encompasses both overall and subband levels", emphasis in original). As for "based on", Owner next argues that the Board "erroneously expanded the scope of the term “based on” beyond its
ordinary meaning to include adjustments “made independent of the background noise”" because the art's "adaptive equalizer" doesn't encounter the noise. CAFC again disagrees, for the art's equalizer appears in its processor and the processor does encounter the noise ("Techiya’s position appears to be that, for the claimed processor to adjust an internal sound signal “based on” the background noise level, the same component of the processor (such as the adaptive equalizer) must both receive the background noise and perform the adjustment . . . We agree with the Board that Techiya advances a belated, and incorrect, narrowing construction"). Ergo, affirmed.
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- In this precedential decision, clarifying "“by others” or “by another” under pre-AIA 35 U.S.C. §§ 102(a), (e)3 when a reference and the patent at-issue identify overlapping inventors" CAFC affirms the obviousness determination below based upon the rule that complete inventorship identity is required to effect the exclusion. "The question presented to us in this
appeal is whether and to what extent a disclosure invented
by fewer than all the named inventors of a patent may be
deemed a disclosure “by another” and thus included in the
prior art, or whether the disclosure should properly be
treated as “one’s own work” and therefore excluded from
the prior art." Interestingly, there has been case law (Applied Materials 835 F.2d 279) saying that "[e]ven though an application and a patent
have been conceived by different inventive
entities, if they share one or more persons as
joint inventors, the 35 U.S.C. § 102(e) exclusion for a patent granted to ‘another’ is not
necessarily satisfied." However, Land, 368 F.2d 866, has contrarily long stood for the proposition "that a prior disclosure is only excluded from
the prior art as the work of the patentee when there is complete identity of inventive entity between the inventors of
the disclosure being relied upon and the challenged patent." CAFC, here, is basically solidifying Land, saying that contrary language above was from a case with a unique fact pattern ("Merck overreads Applied Materials"), for in Applied Materials, the lower court unduly emphasized a change of inventorship over the substance of what was jointly disclosed in the prior filing (thus, it's actually still consistent with the Land analysis). CAFC thus iterates through caselaw and further clarifies its reasoning, but generally stands by the pre-AIA requirement for complete identity to effect the exclusion.
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- 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.
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- 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.
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- 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.
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.
