(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- The PTO refused the marks "FORMULARYHUB" and "FORMULARYHUB.com" as merely descriptive ("The Board
adopted Agadia’s definition of the term “formulary” to mean “[a] list of prescription drugs covered by a prescription drug plan or another insurance plan offering prescription drug benefits,” such as “a drug list.” Id. at *5–6. The Board determined that a “hub” is best defined as “the effective center of an activity, region, or network.” Id. at *6. Taking these two terms together, the Board ruled that FORMULARYHUB is descriptive of Agadia’s software services, which function “as a centralized location for a collection of formularies.”"). CAFC first addresses some administrative details including estoppel allegations based upon the Board's separate handling of appeals for each mark ("the PTO must decide each application on its own merits, and decisions regarding other registrations do not bind either the agency or this court . . . the Board correctly concluded that the PTO did not waive any right in this proceeding based on its actions in the separate FORMULARYHUB.com proceeding . . . we do not mean that separate trademark application proceedings may never impact one another. Indeed, we note that the PTO stayed proceedings for the FORMULARYHUB.com application pending Agadia’s appeal in the FORMULARYHUB matter, seemingly in recognition that the FORMULARYHUB proceedings may affect the separate FORMULARYHUB.com proceedings. We only hold that waiver, judicial estoppel, and equitable estoppel do not apply in the specific case before us today."). As for the merits, CAFC finds substantial evidence for the Board's descriptiveness analysis, since they considered both the proferred specimen and dictionary definitions, and CAFC also doesn't consider the Board's definition of "hub" too abstract ("the Board properly evaluated the term “hub” in relation to Agadia’s software services. Agadia appears to conflate its services, software customization, with computers generally, and thus hardware. The Board was not legally required to adopt a hardware or computerbased definition, but instead, needed to evaluate the meaning of the term “hub” in light of Agadia’s software customization services.").
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- CAFC briefly affirms this lack of enablement determination for an application "using ribavirin, amongst other medications, for the treatment of certain respiratory conditions." CAFC agrees that the claims are not enabled, but focuses upon undue experimentation, rather than utility, for that conclusion ("the Board correctly found that McLeay has failed to show that claim 20 meets the how-to-use aspect of the enablement requirement because, as explained above, the full scope of the claim is not “useful or operative” . . . However, we reject the Board’s overbroad contention that the claim is not enabled because the Application “lacked any evidence of ribavirin’s efficacy against COVID19” . . . a claim’s utility
alone should not end the enablement inquiry. In this case, claim 20’s fatal flaw is that there is substantial evidence for the Board’s fact findings underlying its conclusion that practicing the full scope of the claimed range would require
undue experimentation.").
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- CAFC affirms this summary judgment grant of noninfringement based upon the construction of "“reagent compartment” as a “region or section of the containment vessel" rather than a portion of the lid. Generally, CAFC agrees with the DCT that several elements, not dispositive in themselves, together warrant the construction, e.g.: 1) lid embodiments in the provisional were deleted from the nonprovisional (interestingly, CAFC considers this despite an incorporation by reference); 2) the summary of the invention and portions of the specification "expressly state that the reagent compartment (the second region) is located within the container"; and 3) statements made in a related IPR distinguishing another lid-based reference ("Genotek’s counsel explained that the two devices are “very different” because “O’Donovan is a pushed friction fit engagement with spikes in a vial and a reagent in a lid,” whereas the ’187 patent “is a rotated screw cap with a
ram in the cap and a reagent below a plastic cover in a container.”").
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- In this brief obviousness opinion, CAFC affirms the Board's invalidation and finds substantial evidence for the motivation to combine ("[T]he Board found that three references, including Sanborn, each independently disclose or render obvious this limitation. Although Sanborn does not expressly disclose the claimed switchgear configuration, the Board found that Sanborn
discloses multiple switchgear, and that a skilled artisan would have found it obvious to place one switchgear between the transmission line and the source of electricity and another switchgear between the transmission line and the electric motor"). Similarly, CAFC doesn't see sufficient evidence for nonobviousness indicia ("USWS has not produced the referenced licenses, nor has it shown that the ’882 patent is included in any of these licenses"). Ergo, affirmed.
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- In this precedential, and interesting, ITC 101 decision, CAFC reverses the ITC's finding that "polycrystalline diamond compact" claims were directed to "patent-ineligible natural phenomenon" ("The Commission erred when it concluded that the asserted claims are directed to the “abstract idea of PDCs that achieve . . . desired magnetic . . . results, which the specifications posit may be derived from enhanced diamond-to-diamond bonding.”"). Noting in passing that "it was not USS’s burden to prove that its patents are valid" CAFC reverses at Alice Step One ("Applying Alice step one . . . the claims are directed to a specific, non-abstract composition of matter—a PDC—that is defined by its constituent elements (i.e., diamond, cobalt catalyst, substrate), particular dimensional information (i.e., grain size, lateral dimension of the diamond table), and quantified material properties (i.e., coercivity, specific permeability, and specific magnetic saturation) . . . the ’502 patent demonstrates that the described correlations are concrete and meaningful, rather than something that is merely speculative"). Ultimately, CAFC feels "the properties further define the structural characteristics of the claimed product and do not merely represent some speculative goal of, for example, a stronger PDC." After reversing and finding validity as to 101, CAFC then briefly affirms the Commission's finding of enablement ("the Asserted Patents disclose ‘detailed manufacturing information’ and ‘working examples in Table I with a specific set of input conditions’ such that a [skilled artisan] ‘would know how the manufacturing information disclosed in the Asserted Patents can be used to achieve the claimed PDCs."), before remanding.
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.
