(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- CAFC considers this obviousness appeal and reiterates (in accordance with the MPEP's library hypothetical) that prior art that's hard to find is still prior art ("[B]ecause it is undisputed
that RemoteCentral.com did not have subject matter or
keyword searching, a person of ordinary skill could not
have found RadioShack without a priori knowledge of its
contents. We disagree . . . Roku’s argument boils
down to the 329 manuals posted on that page (all of which
relate to the subject matter of the invention but are not further categorized or searchable by functionality) being
simply too many for any one of them to be publicly accessible."). CAFC also affirms the obviousness determinations below, but remands on the nonobviousness findings ("The problem here is that we are unable to
determine from the decision before us whether the Board
entirely overlooked UEI’s reinstallation argument,
whether the Board considered and rejected that argument
on the merits, or whether the Board deemed that argument
forfeited as untimely presented. The Board’s silence with
respect to that argument precludes judicial review"). Ergo, affirmed and remanded in part.
-
- CAFC reviews the Board's claim construction analysis on this "Browser Based Web Site Generation Tool and Run Time Engine" ("A full analysis of the intrinsic evidence reveals that the
Board’s construction of “style” was erroneous . . . The plain meaning of this language implies
that a style is able to be associated with a plurality of objects . . . our case law does not support a per se rule that the use of
the word “or” must always be treated as an alternative in
the context of claim construction . . . the plain reading of the specification implies that a style must be capable of being applied
to multiple objects to enable uniform formatting of objects
on one or more web pages through the application and alteration of a style . . . The claim language and the specification, taken together and in context, support that the claimed “style”
must be capable of being applied to both one and more than
one “object.”"). Ergo, remanded for consideration under the proper construction.
-
- CAFC reviews, and affirms, the Board's claim construction and obviousness analysis in this IPR appeal for "Systems and Methods for
Clustering User Sessions Using Multi-Modal Information
Including Proximal Cue Information" ("We hold that substantial evidence supports the Board’s
finding that it would have been obvious to modify Chen to
include Chi’s teaching of determining proximal information because “Chi and Chen have similar goals of recommending information based on similar techniques” and
“Chi suggests using proximal information on the user path
of Chen” to “provide better recommendations of information to satisfy a user’s needs.”").
-
- CAFC precedentially vacates and remands this obviousness case, disagreeing with nexus around licensing evidence offered as objective indicia. CAFC first affirms the Board's construction of the term "agent", then affirms prima facie obviousness based upon the cited references. However, CAFC finds that the "Board applied a more exacting nexus standard
than our case law requires for license evidence." CAFC reiterates that "[l]icenses to the challenged patent then, unlike products or other forms of objective evidence of nonobviousness, do
not require a nexus with respect to the specific claims at issue, nor does our nexus law require that a particular patent be the only patent being licensed or the sole motivation
for entering into a license." The Board distinguished between "a business decision based on
magnitude of the potential risk or an acquiescence to the
strength of the ’941 patent", but CAFC "fail[s] to see the difference." Indeed "the fact that
a license concerns rights to more than one patent does not detract from the fact that each patent is a subject of the license" for purposes of nexus. Thus, CAFC remands so that the Board can "evaluate the nexus issue regarding these licenses and then
weigh such evidence against what was in effect its prima
facie case of obviousness."
-
- In this precedential decision, CAFC considers SEP patents for the ETSI standard. First, CAFC finds that "the district court abused its discretion by asking a single infringement question covering five asserted patents" rather than treating each claim as an independent cause of cation. That naturally also obviates the resulting judgment award. As a matter of efficiency, CAFC also looks to 101 challenges to various claims and finds "that claims 6 and 7 of the ’332 patent are
directed to the abstract idea of a mathematical formula . . . the claims are directed to reciting an equation that outputs a value to be used as the specific start position for decoding information in a cellular network. This is an ineligible mathematical formula." Note, however, that this is only for Step 1, and on remand, CAFC directs the DCT to consider the claims under Step 2. CAFC also asks the court to reconsider the indefiniteness determination, since CAFC does find invocation of 112(6) language in the claim.
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.
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.
