(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms a summary judgment of noninfringement for patents involving multimedia content distribution as there was no "genuine dispute of material fact regarding whether the accused products had the claimed
“user identifier” or “user information” required to be attached to the data." ("Cellspin did not present evidence of any other product feature as satisfying the “user identifier” or “user information” element (in the various claim limitations). It follows that the district court correctly granted summary judgment of noninfringement because Cellspin did not create a genuine dispute of material fact as to whether Fitbit, Fossil, and Garmin’s products “apply,” “attach,” or “store” a “user
identifier” or “user information.”"). CAFC considers other patents and other limitations, but repeatedly comes to similar conclusions regarding noninfringement based upon unmet limitations. Ergo, affirmed.
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- CAFC affirms this obviousness IPR invalidity decision for packet filtering patents specifically proposing "an improved way of detecting “[n]etwork threats,” such as “viruses, malware, [and] large volumes of network traffic designed to overwhelm network resources,” and compiling “logs” of information about such threats." Construing the claim term "responsive to", the PTAB inferred obviousness in view of the cited references. CAFC agrees with the construction and the analysis ("We hold that the Board did construe “responsive to” in the respect at issue and that the Board was correct in understanding the “responsive to” phrase and the “responsive to” limitation to allow the “applying” and “communicating” steps to be performed in reaction to a determination that a packet satisfies a packet-filtering rule based on network-threat indicators as well as other criteria. Under that construction, the Board had substantial evidence to find that Sourcefire taught the limitation, and its determination of obviousness is correct on that basis."). In its analysis, CAFC reiterates its construction trend for causal action ("As a matter of ordinary and customary meaning, if an action is taken in reaction to the satisfaction of a rule with two criteria, then the action is taken “based on” each of the two criteria. We have recognized this common English-language point in a recent opinion."). Finding that the reference discloses the features of the criteria for this construction, CAFC affirms.
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- As in the other packet filtering opinion released today for these parties, CAFC again considers an IPR obviousness appeal, this time focusing on the claim terms "located at a boundary between a protected network and an unprotected network" and "at least one score." CAFC considers three arguments on appeal: 1) construction of the boundary limitation; 2) insufficient articulation of the obviousness challenge; and 3) no motivation for combining the refences so as to meet the "score" limitation. Regarding 1), CAFC agrees with the Board ("The specification of the ’413 patent makes
it clear that the packet-filtering device does not have to be
the first device on the user’s network to contact the unprotected network: Figure 2A of the patent shows a packet-filtering device interfacing with two “Tap” devices
and “Network Device(s),” which then interface with the unprotected network (labeled Network D) across the “boundary” (shown by a dashed line)."). Regarding 2), the countering expert testimony proffered by Appellant "cites to different sections of
the" references than "the figure in question" for the disputed limitation, and Appellant "does not identify any other evidence the Board failed to consider or weigh." Thus, CAFC again agrees with the PTAB. Finally, regarding 3), CAFC acknowledges that "the fact that the “bodily incorporation of Macaulay[] . . . into Sourcefire” was not
possible does not mean that the Sourcefire User Guide taught away from this combination", but rather focuses upon the motivation for making the combination, for which "the Board reasonably found Centripetal’s limited argument
and evidence unconvincing as a basis to determine “that an ordinarily skilled artisan setting priorities of threat events in Sourcefire for a particular network would have been discouraged from considering the reputation of traffic
characteristics in setting such priorities.”"). Thus, CAFC affirms en toto.
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- An exceptionally brief opinion, only included here for the reminder that "[a]nticipation under 35 U.S.C. § 102 is a question of fact, while obviousness under § 103 is a question of law based on underlying findings of fact." Ergo, CAFC "reviews the Board’s factual findings for substantial evidence and its legal conclusions without deference.”
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- In this precedential decision, CAFC considers foreign action in an SEP enforcement dispute, particularly an antisuit injunction, and the three-part analysis framework of Microsoft v. Motorola. Per the Microsoft analysis, the first threshold requirement is "that the parties and issues be the same as between the domestic and foreign suits, and that the domestic suit be “dispositive of the [foreign] action to be enjoined”." In Microsoft, the Ninth Circuit "affirmed the district court’s determination that the contract issues before the district court “could resolve the German patent claims.”" Here, "Lenovo maintains that Ericsson’s FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs. Thus, in Lenovo’s view, the “dispositive” requirement is met, because whether Ericsson has complied with its good-faith-negotiating obligation is an
issue that (1) is before the district court—both via Ericsson’s claims and Lenovo’s counterclaims; and (2) will, if decided in Lenovo’s favor (i.e., that Ericsson has not so complied), dictate the impropriety of Ericsson’s pursuing SEP-based injunctive relief." Ericsson, in contrast, maintains that "the instant suit must necessarily result in a global cross-license between the parties" to be "dispositive" under Microsoft. CAFC agrees with Lenovo and disagrees with Ericsson, finding no "cross-licensing" requirement in the Ninth Circuit's analysis ("[T]here was no indication in
either Microsoft opinion that the conclusion on the “dispositive” requirement depended on the domestic suit resulting in a license"). CAFC then finds that the dispositive requirement is met on the facts here and accordingly remands.
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.
