(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this precedential costs/sanctions decision, CAFC vacates and affirms in part before remanding, agreeing that there shouldn't be Rule 11 sanctions, but that the DCT should consider if there are 35 USC 285 costs, since defendant, contrary to the DCT's analysis, was the "prevailing party." Basically, the parties entered into a license, then plaintiff voluntarily dismissed, defendant then moved to make the dismissal with prejudice, the DCT agreed, defendant then sought 285 costs, and the DCT wouldn't take a look. Here, CAFC says the DCT needs to at least take a look to see whether 285 costs are appropriate:
"“[A] favorable ruling on the merits is not a necessary predicate to find that a defendant has prevailed.” . . . Realtek argues that it became the prevailing party when
the district court sanctioned Future Link by converting its voluntary dismissal into a dismissal with prejudice. Future Link argues that Realtek is not the prevailing party
because (1) Future Link dismissed the case voluntarily
without prejudice, and (2) the licensing agreement that covers accused Realtek products altered the parties’ legal relationship, not the district court’s sanctions order. We
agree with Realtek . . . Perhaps the district
court did not intend to make Realtek a prevailing party
when it awarded sanctions and converted the voluntary
dismissal to a dismissal with prejudice. But our case law
is clear. Under the circumstances of this case, Realtek is a
prevailing party. We thus vacate the district court’s § 285
decision and remand for the district court to consider
whether this case is exceptional and whether fees are appropriate."
CAFC doesn't seem to discuss (2) directly, but I think that's because they cite cases with a very similar fact pattern, where a covenant before dismissal doesn't change the prevailing party status (E.g., Highway Equip. Co. v. FECO, Ltd., 469 F.3d
1027, 1032 (Fed. Cir. 2006): "“FECO’s prevailing party status . . . is sufficiently based on [Highway Equipment’s] having filed a covenant not to sue with the court to end the litigation, resulting in a dismissal with prejudice.”"). As in Highway Equipment, though, the DCT may ultimately find no costs - but they did at least consider it. CAFC then agrees that there aren't any Rule 11 sanctions here, since Future Link did do at least some pre-filing diligence ("[B]efore it filed its operative complaint in the 363 case, Future
Link obtained three of the accused products . . . Future Link’s
claim chart, which was filed with the 363 case’s original
complaint and incorporated into the 363 case’s amended
complaint, cites to specific materials . . ."). CAFC concludes by addressing, and affirming, some fee and discovery issues, before remanding to have the 285 costs considered.
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- In this precedential jury instruction decision, CAFC reverses/remands since it can't tell if a improper noninfringement theory raised just-before-trial infected the jury. Basically, plaintiff requested testing results, defendant said it was too dangerous to acquire those results and unnecessary to prove infringement in any event, it was later revealed that the results could be acquired and defendant moved to enter them (perhaps because they indicated noninfringement), but the DCT denied that supplementation as unduly prejudicial (again, pointing to defendant's acknowledgement that the testing was unnecessary). It was in this state of affairs that . . .
"Mischief ensued. Despite its earlier assurances to the
Magistrate Judge and to Magēmā that the Riazi Formula
was a sufficient substitute in the absence of actual testing
data, Phillips reneged and told the jury during opening
statements that ISO 8217 “requires the use of actual specified ISO test procedures to prove compliance with the ISO
8217 specifications” and that the jury would “not find anything” in ISO 8217 “stating, suggesting, or implying that
you can use an estimate to show compliance” and that “[i]f
there’s no compliance, there’s no infringement.”"
Here, CAFC is basically saying that last minute turnaround won't do ("Phillips sandbagged Magēmā right before trial with a baitand-switch, announcing that it intended to present evidence and argue to the jury that compliance with ISO 8217
requires actual testing data . . . we agree with the District Court that Phillips’ argument to the jury that Magēmā needed actual test
samples to prove infringement was both “improper and
prejudicial.” It should have never been argued to the jury.
But it was . . In short, we are not certain or even “reasonably certain” that the jury’s verdict was free from error affecting
Magēmā’s substantial rights."). CAFC concludes by reviewing and affirming the DCT's claim construction before remanding for a new trial.
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- This is a brief order reiterating the below sanctions award (the DCT "awarded
$213,765 in sanctions because the plaintiffs failed to timely
disclose the ownership and license documents during discovery and filed an amended complaint that “explicitly misrepresented to Defendants and to [the District] Court the
status of the patent"). "While the plaintiffs’ course of misconduct did not ultimately have the effect of depriving the defendants of the
right to summary judgment on the entire case based on
standing, it plainly affected the posture of the case with regard to Mr. Lowe’s standing, and it completely altered the
manner and timing of the resolution of the standing issue
before the district court."
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- In CAFC reverses / remands the 101 and 112 rejections for this application directed to "system and methods for controlling and optimizing information distribution between users in an information
exchange." Regarding 101: "the
Board erred by concluding that the claims at issue lack the
necessary structure to fall within one of the statutorily provided categories. Like many claims that focus on software
innovations, these claims are system and apparatus claims
that recite hardware as well as software." Applicant asserts that the terms warrant 112f interpretation (despite lacking "means"), and CAFC agrees ("[A]s the Board recognized, much
like the term “means,” the term “subsystem” is a term devoid of particular structure . . . Because
the specification discloses structure that corresponds to the
recited subsystem—i.e., a computer system running software—we conclude that, contrary to the Board’s holding,
the claims recite tangible structure and fall within one of
the statutorily provided categories."). Thus, "on remand, the Board should analyze whether
the claims are directed to an abstract idea." CAFC also reverses rejections that claims mix methods and apparatuses, finding the offending terms to describe functional character of the apparatus.
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- In this mixed IPR decision involving "interactive displays that can
determine the relative position of objects in front of them
and execute corresponding functions", CAFC reverses / affirms in part after
- Broadening the term “detector assembly” to require only "at least one detector element" (reversing the Board's not obvious analysis under its narrower construction);
- Clarifying that "“an edge” does not limit the detector assembly to being arranged entirely on “one edge”"; and
- Affirming the Board's analysis of various "propinquity" claims.
Basically, regarding 1), "the Board
reasoned that the specification and dependent claims were
consistent with a requirement that a detector assembly include “two or more detector elements”" but CAFC reads various of the dependent claims as supporting a broader construction ("Where Power2B wanted to specify that more than one detector element was required, it did so expressly using plural language . . . The doctrine of claim differentiation teaches that
a limitation in the dependent claims can give rise to a presumption that the limitation is not present in the independent claims . . . The fact that the specification repeatedly refers to preferred embodiments in which a detector assembly includes
multiple detector elements similarly does not justify importing such a limitation into the independent claims."). Regarding 2) "There is nothing in the claim language,
specification, or prosecution history that compels a departure from this convention" that "a" or "an" means "at least one." Finally, CAFC finds substantial evidence for 3).
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
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- 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.
