(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- In this precedential divided infringement / vicarious liability decision, CAFC considers "whether to attribute a customer’s use of a claimed system to the manufacturer of only part of the system" in connection with "an online web-based point-of-sale-builder system that a non-expert business operator can use to assemble a point of sale (“POS”)system for managing their business operations." Below, plaintiff "asserted that NCR controls and benefits from each component recited in the claimed system and thus, under Centillion, uses the system" (Notably, plaintiff "abandoned all other infringement theories, including induced infringement, contributory infringement, and direct infringement by importing, making, or selling the claimed system."). The Centillion case involved the "use" of a system claim with elements in possession by more than one actor. In that case, the customers "used" the system as they chose when to put the back-end system into service. Since the defendant in that case didn't direct the customers' behavior, there was no vicarious liability for the defendant. Similarly, here, the defendant "asserts it could not directly infringe the claims . . . as a matter of law because NCR itself does not use the claimed system; rather, its merchants do." CAFC agrees, finding a similar topology at issue here as in Centillion ("NCR does not direct or control its merchants to subscribe to the NCR Silver system, download the NCR Silver app on their POS terminals, or put the NCR Silver system into use by initiating action at the POS terminals to cause the NCR Silver software to modify its POS terminals. NCR’s merchants take these actions of their own accord."), and thus reverses the DCT that found otherwise ("directing the merchants to perform one element of a system claim is not the proper test for analyzing vicarious liability for use of a system claim . . . the district court’s analysis conflates use of a method claim (which was at issue in Akamai) with use of a system claim (which was at issue in Centillion).").
-
- In this precedential obviousness decision, CAFC vacates and remands for a package management network device ("the packet correlation technique de-obfuscates the identity of an obfuscated host."). Ultimately, "the Board explained that “the argument that must be evaluated is whether Paxton as modified by Sutton would have taught the recited transmitting responsive to the correlation.”" Here, CAFC holds "that the
Board erred by not clearly explaining its holding or rationale regarding motivation to combine and whether the proposed combination teaches the final limitation of
claim 1: transmitting an indication of the first host responsive to the correlating." While CAFC also finds that the Board "failed to explain what it meant by “necessary bridge," in sum, CAFC opines that the Board did not properly address the very question identified above ("Paxton as modified by Sutton") as, rather than review the references as a combination as required by the obviousness analysis, the Board instead analyzed the references in isolation ("Specifically, the Board must consider whether the particular combination argued by the Petitioner— modifying Paxton by adding Sutton’s notification step after Paxton’s correlation step—would meet the claim limitations at issue").
-
- CAFC briefly affirms this not obviousness determination for "a multiprocessor system where different data processing components can be operated at reduced
clock frequencies (i.e., processor speed) to save power when
the battery level is low" finding that the Board adequately considered the references ("Substantial evidence supports the Board’s finding that neither Bhatia nor Nicol discloses the claim limitation") and the Board was justified in setting aside some arguments ("The Board found that while Intel had, in its petition, identified certain portions of the
ACPI with regard to certain grounds, the arguments it
made in reply differed from the arguments made in the petition. J.A. 57. Thus, the Board found them untimely. In
its petition, Intel did not even cite ACPI when discussing
claim 8.").
-
- In this brief claim construction opionion, CAFC finds the Owner's attempts to modify the term's construction to be unavailing ("Vivint’s
counsel conceded during oral argument before the Board
that its construction does not preclude a camera’s entire
field-of-view from being set up as the “predefined area.” Id.
at J.A. 21 (citing J.A. 1737, 1739). As a last resort, Vivint
attempted to modify its construction during oral argument
to require a user’s pre-interaction with a screen to
configure the “predefined area.” Id. at J.A. 21–22 (citing
J.A. 1737–38). The Board did not abuse its discretion by finding that this new argument was untimely and,
nevertheless, without merit given that neither the
independent claims nor Vivint’s proposed construction
mentions “user interaction with the camera screen to
define, set up, or configure a predefined area.”").
-
- CAFC precedentially reverses and remands this Pre-AIA 102b on-sale bar decision for a metal beverage can necking machine, finding invalidity. "[T]he parties do not dispute that the necking machine described in the letter to Complete was ready for patenting. They also do not dispute that the necking machine described in the alleged offer for sale embodies the claimed invention or that the alleged offer for sale was made by Crown more than one year prior to the asserted patents’ earliest priority date. The only issues for us to resolve are thus (1) whether the letter was a commercial offer for sale; and (2) if the letter was an offer for sale, whether the offer was made in this country." Here, CAFC basically finds that as acceptance would have precipitated a binding contract under the relevant law, then regardless of how one characterizes the letter (e.g., as merely a "quotation"), the letter served as an offer ("[T]he letter to Complete was sufficiently definite as to the terms of the offer for sale to constitute a commercial offer for sale"). Indeed, Owner treated similar letters as binding contracts ("Crown’s own treatment of orders in response to similar letters confirms that the letter was sufficient to create a binding contract through acceptance."). Finding that the offer was within the United States, CAFC reverses.
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.
