(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC vacates and remands this summary judgment non-infringement determination for a semiconductor light source, disagreeing with the DCT's construction of "first reflective layer" as an epitaxial layer ("Neither the district court nor Feit Electric identifies any language in the claims, specification, or the prosecution history that demonstrates the inventors intended to limit the reflective layers to the VSCEL embodiment or that the reflective layers must be epitaxial layers. We conclude that the first reflective layer need not be epitaxial."). CAFC then briefly addresses various noninfringement arguments raised below that should either be set aside, or reconsidered, in view of the new claim construction ("Feit Electric argues that the patterned substrate cannot be the first reflective layer because it is not an epitaxial layer . . . this alternative theory . . . relies on the now rejected claim construction that the first reflective layer is an epitaxial layer . . . Second, Feit Electric argues that the patterned substrate cannot be a first reflective layer because the first reflective layer and substrate cannot be satisfied by the
same component . . . [the DCT's conclusion dismissing this argument] again relied on its erroneous understanding that the first reflective layer must be an epitaxial layer. Under these circumstances, we think a remand is necessary to give the parties an opportunity to address the issues without regard to the district court’s erroneous claim construction").
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- CAFC vacates and remands to consider a claim construction adjustment in a matter directed to a "system for providing a dynamically generated application having one or more functions and one or more user interface elements." Basically, the DCT found statements in the specification as disavowals, which CAFC and the plaintiff see merely as exemplary ("First, because claim 1 recites “automatically detecting changes” and claim 8 requires that the changes be detected by “one or more intelligent agents,”
claim differentiation provides a strong reason not to limit claim 1 to intelligent agents . . . Second, the specification does not disavow “automatically detecting” without “intelligent agents.” The portion of the specification that describes “the invention” as detecting changes using intelligent agents is exemplary and not
descriptive of the invention as a whole."). Basically, "[t]he repeated use
of intelligent agents in the description of the best mode merely indicates that intelligent agents may be the best way of implementing the invention, not that the invention cannot be implemented without intelligent agents." Thus, after briefly rejecting the DCT's invalidity findings for failure to consider the whole claim, expert findings, fees, etc., CAFC remands.
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- In this precedential decision concerning "a debit/credit card capable of performing a plurality of functions", CAFC reverses the DCT, which dismissed after finding the claims in question to be already licensed or not infringed ("We agree, instead, with AlexSam that the district court erred by resolving the Mastercard licensing issues “on the limited information provided” in the Second Amended Complaint, its attachments, and the motion to dismiss briefing."). Specifically, CAFC finds that "the license granted by the License Agreement extends only to transactions involving activation of, or adding value to, an account . . . The patent claims asserted by AlexSam in the Second Amended Complaint, claims 32 and 33, are not limited to transactions involving activation or adding value . . . the district court erred by finding that a license covered all of the alleged infringement involving the Mastercard Products.6 Because the district court misconstrued the scope of the license, we must vacate the portion of its judgment dismissing the claims that Aetna infringes with respect to the Mastercard Products." CAFC then considers the dismissal of the infringement itself, and again reverses, precedentially holding that its review of infringement contentions shall be de novo ("We hold today that our review of trial court determinations on these matters is de novo"). Here, "the district court erred by concluding that AlexSam failed to allege a plausible claim of direct infringement by Aetna’s making and using the VISA Products . . . AlexSam’s Second Amended Complaint meets these requirements, particularly given the simplicity of the technology involved . . . Considering the matter de novo, we disagree with the
district court that many of the allegations we have described just above are conclusory and thus need not be taken as true. Instead, in the context of the relevant technology and the overall detail provided as to AlexSam’s theory of infringement, including in claim charts and elaborated on by the incorporated expert report, these allegations are sufficiently specific and factual to constitute well-pled allegations . . . , we conclude that the district court erred by granting Aetna’s motion to dismiss the Second Amended Complaint’s claims that Aetna directly infringes AlexSam’s patent claims by making and using the VISA Products." CAFC then considers induced and contributory infringement arguments, likewise vacating and remanding for their consideration.
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- In this precedential decision, the defendant alleged false advertising under the Lanham Act, and CAFC agrees, holding "that a cause of action arises from Section 43(a)(1)(B) where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product." CAFC distinguishes the Dastar decision's holding that the Act doesn't focus on authorship ("A claim that a product is constructed of “patented” material is not solely an expression of innovation and, hence, authorship."). Accordingly, here "Dawgs argues it has stated a cause of action because the falsehood that Croslite is patented was used by Crocs to ascribe characteristics that go to the nature and qualities of Croslite . . . We agree with Dawgs that these allegations about Crocs’ advertisement statements are directed to the nature, characteristics, or qualities of Crocs’ shoes" (rather than original authorship). Ergo, reversed and remanded for consideration of the Lanham Act claim.
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- In this precedential food processing machinery JMOL infringement decision, CAFC denies the DCT's rejection of JMOL, since a device "does not infringe simply because it is possible to alter it in a way that would satisfy all the
limitations of a patent claim" ("Provisur’s infringement theory relied on establishing
Weber’s SmartLoader could be reprogrammed to operate as an advance-to-fill conveyor . . . Given these facts, Weber’s SmartLoader is not readily configurable to infringe claim 14 of the ’936 patent. The SmartLoader can only infringe if Weber modifies it to operate as an advance-to-fill conveyor."). However, CAFC affirms the jury's no willfulness finding as the admissible portion of the expert's testimony was "insufficient as a matter of law to establish willfulness" since it merely described defendant's patent matrix ranking system ("At most, the patent matrix demonstrates Weber’s
knowledge of the asserted patents and their relevance to Weber’s business in general. The patent matrix and corresponding testimony do not provide any level of specificity as to the relevance of the tracked patents for any of Weber’s
products. There is no dispute Weber knew of the asserted patents. J.A. 31387–88. The issue here is whether Weber
knew of its alleged infringement and had a specific intent to infringe. BASF Plant Sci, 28 F.4th at 1274. There is no
evidence Weber knew of its alleged infringement."). CAFC then concludes by reversing for a new trial on damages "because there is no evidence, apart from conclusory expert testimony, that supports invoking the entire
market value rule."
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.
