(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms anticipation invalidity SJ on this "self-propelled amphibious vehicle for use in amphibious excavation or dredging operations." Here, "Wilco argues that summary judgment of anticipation of the asserted claims was inappropriate because
there is a dispute of material fact as to whether the particular MudMaster machines demonstrated at the ConExpo
trade show in 1981 and sold in 1980 had the required “chassis.”" However, CAFC considers that challenge moot as a "1993 MudMaster sale meets the limitation . . . Wilco does not argue on appeal that the MudMaster
machine sold in 1993 lacked any other limitations of the
asserted claims." Thus, because the "1993 MudMaster possessed a chassis, and thus anticipates
the asserted claims", CAFC affirms.
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- CAFC affirms this obviousness invalidity IPR determination for "implantable glucose sensors used
to monitor a patient’s blood glucose levels." Below, the Board credited Petitioner's expert's testimony that "a skilled artisan would have understood Feldman’s Figure 4A as encompassing three electrode layers “located overtop each other in a stacked
fashion.” J.A. 43–44. Figure 2A further corroborated the
understanding of Figure 4A as using a stacked arrangement." Finding substantial evidence for that reasoning, CAFC affirms ("DexCom never explains how the
Board erred, but instead simply insists that the Board
should have interpreted Feldman differently"). CAFC also disagrees with Owner that "an obvious but undisclosed arrangement necessarily requires modification." Indeed, "[t]he Board’s
analysis does not address modification because it did not need to—the Board concluded that Feldman “encompass[ed]” the claimed arrangement without modification."
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- A quick opinion, in this hoverboard design patent matter, CAFC previously vacated the preliminary injunction telling the DCT that "where
a dominant feature of the patented design and the accused
products—here the hourglass shape—appears in the prior
art, the focus of the infringement substantial similarity
analysis in most cases will be on other features of the design" and basically affirms the DCT's analysis as consonant with that guidance.
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- CAFC precedentially reverses the denial of JMOL for noninfringement on this DNA sequencing target area enrichment action. Basically, "[i]t was error for the district court to turn a matter of claim construction over to the jury to decide as a factual dispute." Specifically, the jury shouldn't be deciding if "identical" sequences are one-to-one matches, or a sequence with a subsequent matching the counterpart ("As a matter of claim construction, “identical” cannot mean “identical to a portion” because “identical” means the same . . . Furthermore, the specification and claims differentiate the two terms according to their degree"). CAFC also considers the DCT's doctrine of equivalents analysis defective, on each of the function, way, and results prongs (e.g., "[the target] does not enrich the target sequence or provide specificity. Instead, it ensures that the DNA fragment is compatible with the sequencer so that it may be sequenced."). CAFC concludes by finding insufficient evidence for the DCT's findings as to a related patent, and so reverses as to the whole.
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- CAFC reverses and remands this SJ noninfringement for a tactile transducer. Below, the district court ignored the plaintiff's expert "because
his opinions contained a new theory in violation of local patent rules and improperly argued claim construction" and so concluded that "the asserted claims are limited to “transducers with highly
damped output” and do not include “un-damped linear resonant actuators” based on disclaimers." CAFC disagrees:
"The [DCT] explained Rule 3.1(c) includes an unwritten “how” requirement that Taction’s infringement
contentions failed to satisfy because Taction did not sufficiently explain how the accused products satisfy the
“highly damped output” requirement (i.e., via combination
of the Taptic Engine’s closed loop controller and ferrofluid) . . . The court’s interpretation of Rule
3.1(c) as including an unwritten “how” requirement was arbitrary and improperly reads in a requirement that has no
support in the plain language of the rule. The district court
also fails to show there is a common practice in the Southern District of California requiring plaintiffs to meet an unwritten “how” requirement such that Taction was on
notice."
CAFC then agrees with the DCT that the prosecution disclaimer informing their claim construction did in fact occur ("During prosecution of U.S. Patent Application No.
15/222,394, which is the parent to both the ’885 and ’117
patents, the patentee stated: “Applicant’s invention, in contrast, is directed to transducers with highly damped output.” J.A. 1050. This is a clear and unmistakable
disclaimer."), but then disagrees as to a number of the DCT's constructions as contrary to the record. Thus CAFC reverses and remands in view of the new constructions and expert testimony.
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.
