(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- Not very substantive, but a caustic remand to the Board to consider obviousness ("In a previous appeal from the same IPR, we affirmed the Board’s determination that independent claim 1 of the ’688 patent was unpatentable as anticipated . . . We then remanded the case to the Board to determine whether the
dependent claims now at issue were obvious in light of Burns. On remand, despite our holding that claim 1 was shown to be unpatentable, the Board considered claim 1 to be “at issue” and then apparently determined that the dependent claims were not obvious because claim 1 was not obvious over Burns and another reference, LaCelle . . . The Board could only depart from our determination in Valve I under exceptional circumstances, none of which is
argued to apply here"). CAFC opines that the Board should again analyze under the appropriate issue preclusion standards, before concluding by reiterating the appropriate obviousness analysis to be performed on remand ("The problem is that the Board did not address three factual issues that also bear on the motivation to combine Burns and LaCelle").
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- CAFC affirms this design patent's invalidity for anticipation in view of a preceding utility application to which the priority was not recognized, each involving a "cooling blanket featuring “an integrated ventilation system” and “multiple, sealed compartments.”" Below, the Examiner denied the priority because the "claimed design includes new matter and the change in the
blanket’s number of compartments was not expressly
shown in the ’938 application." Similarly, "the Board found that “the
drawings of the [six-by-six] and [six-by-four] array configurations are not sufficient to narrow down [the numerous potential design] options to a specific visual impression of a blanket of any other configuration than those explicitly shown." CAFC agrees with the Board that the spec doesn't establish readings beyond what's depicted in the utility's figures ("the Board could reasonably read the statements in the specification as merely generalizing
away from the depicted embodiments without providing
the details needed to show possession of the six-by-five design"). Similarly, the "predictability of the technology embodied in the utility application does not necessarily carry over into the predictability of the
designs, which are not limited to their utilitarian functionality, and which may range from the straightforward to the ornate . . . While Floyd is correct that in haec verba support is not
necessary to satisfy the written description requirement,
she must still show that a skilled artisan would recognize
that she possessed the claimed design based on the ’938
application’s disclosure." Ergo, affirmed. N.b., however, that "Floyd only challenges the Board’s priority analysis" and one wonders if the anticipation analysis under the ordinary observer test is entirely coherent with these priority conclusions.
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- CAFC precedentially affirms ineligibility on machine learning "training" and "network map" claims ("The patents purport to solve problems confronting the entertainment industry and television broadcasters: how to optimize the scheduling of live events and how to optimize “network maps,” which determine the programs or content displayed by a broadcaster’s channels within certain geographic markets at particular times."). Importantly, "Recentive acknowledged that “the concept of preparing network maps[] [had] existed for a long time,” and that prior to computers, “networks were preparing these network maps with human beings”" and "that “the patents do not claim the machine learning technique itself,” id. at 26:14–15, but instead “claim[] the application of the machine learning technique to the specific context[s]” of event scheduling and network map creation." On this basis, CAFC concludes at Alice Step One that "[b]oth sets of patents rely on the use of generic machine learning technology in carrying out the claimed methods for generating event schedules and network maps." Importantly, CAFC calls attention to the lack of implementation detail in the description ("Even if Recentive had not conceded the lack of a technological improvement, neither the claims nor the specifications describe how such an improvement was accomplished . . . Allowing a claim that functionally describes a mere concept without disclosing how to implement that concept risks defeating the very purpose of the patent system . . . the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment . . . “[a]n abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment"). Similar logic finds Alice Step Two unavailing ("[W]e perceive nothing in the claims, whether considered individually or in their ordered combination, that would transform the Machine Learning Training and Network Map patents into something “significantly more” than the abstract idea of generating event schedules and network maps through the application of machine learning"). CAFC's reasoning appears consistent with the existing USPTO guidance and caselaw, but this still provides a useful "true negative" when analyzing machine learning claims for eligibility.
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- CAFC briefly affirms noninfringement on claims involving "systems and methods for distributing certain network traffic across multiple devices" as the salient claim construction argument was forfeited ("The claim construction proposed by Brazos on appeal, however, is not one that it presented to the district court. We have long applied a very strong rule forbidding an appellant to urge a construction on appeal that asserts a different claim scope from what it urged in the tribunal being
reviewed . . . We see no sound reason to excuse Brazos’s forfeiture of
its current position.").
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- CAFC affirms unpatentability of claims "directed to a method for receiving information about a user’s surroundings from a mobile device, modifying stored information,
and sending a notification of a change in that information
to apps that recommend items or activities for the user" in this IPR. Notably, however, CAFC does not agree with the Board that statements in the specification were sufficient to render some terms subject to the drafter's lexicography ("The Board [based on a specific statement in the specification] concluded “context graph” does not require a graph-based model . . . We do not agree . . . Throughout the claims and the written description, the patentee repeatedly indicates that “context graph” is a graph-based model"). Despite that disagreement, CAFC agrees in the result ("Substantial evidence supports the Board’s alternative
finding that Nitz, combined with teachings of Donneau-Golencer, discloses claim 1[b], including a “context graph” with graph-based properties."). 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.
