(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 orthopedic infringement matter, finding there was lack of standing at the time suit was filed. CAFC initially confirms that de novo review of ownership here is proper as a question of law ("DePuy has consistently
taken the position that inventorship is a question of law,
but that the underlying facts in determining ownership
should be determined by a jury. De novo review of the issue
of ownership of the Asserted Patents is proper."). Turning to the merits, basically, the inventor tried to convey his rights to the plaintiff , but the agreement language only said "hereby assigns" and inventor has already executed an assignment to another entity ("Rasmussen alleged that it became a patentee by assignment from Dr. Rasmussen just before this suit was
filed. DePuy challenged that contention."). Though that receiving entity was unwound, the unwinding agreements made no recitation of an assignment back to the inventor. Inventor tries to argue that the original transfer to the entity was itself ineffective, but CAFC disagrees ("The 2006 Agreement’s language
recites that Dr. Rasmussen “hereby assigns to Wright all
of [his] right, title, and interest in the Know-How and Inventions, all documentation relating thereto and all patent,
trademark, trade secret, copyright, and other intellectual
property rights relating thereto,” which is self-executing at
the moment the language becomes effective; here, it went
into effect at the time the contract was signed."). In general, CAFC is adamant about the required formalities ("[O]ur caselaw does not support the proposition
that assignments of patent ownership can simply be revoked without a formal re-assignment of the patent back to
the original owner . . . There is no indication that the Asserted Patents were
ever assigned back to Dr. Rasmussen by Wright; thus,
Dr. Rasmussen had no rights in the Asserted Patents to
convey to Rasmussen in 2020."). Ergo, vacated for lack of standing.
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- CAFC vacates and remands this IPR, disagreeing with the Board's anticipation analysis of claims "for securing bones together across a joint
after a joint fusion surgery, including a bone plate with a
transfixation screw hole and a transfixation screw that can
be installed on the compression side of a joint while limiting opening of the joint on the tension side." The below decision "was predicated on the Board’s view that Slater does not disclose a
“vise configuration,” because Slater does not “disclose how
its lag screw threads interact with the first and second
bone,” and “does not state that the screw only engages in
the [terminal] bone.”" CAFC disagrees ("[N]o reasonable factfinder could
find that a skilled artisan would read “sliding” a screw
through a hole to suggest that the screw is threadably engaged with the hole that it slides through . . . The Board also took an overly narrow view of anticipation inconsistent with our caselaw to conclude that Slater’s
disclosures regarding its three-bone embodiment were inapplicable to its two-bone embodiment"). Regarding the latter point, the Board appears to have inconsistently relied on the two-bone disclosure in another patent's analysis in any event (" the Board indicated that “any discussion” regarding the plate shown in
Slater Figure 1 “should be read as part of the two-bone embodiment [that Stryker] relies on as well as the three-bone
embodiment,” J.A. 196, while for the other three challenged
patents the Board declined to consider Slater’s disclosures
made regarding its three-bone embodiment as applicable
to the two-bone embodiment."). In contrast, CAFC does agree with the Board that Slater doesn't anticipate the "Central Axis Limitations of claims 8 and 9 of the ’085 patent" ("The Board found
Slater’s disclosure of a transfixation screw hole through
which the transfixation screws may be positioned at different angles “lacks a central axis that defines a screw directory [sic, trajectory] as the claim requires.”"). Ergo, after briefly setting aside proposed claim constructions by Appellee as inconsistent "with the plain reading of the claim terms in view of the patent specification" CAFC affirms the Central Axis analysis above, and vacates remands the preceding anticipation analysis.
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- In this precedential decision, CAFC agrees with the DCT that a small inventors group lacks standing to challenge the Director's discretionary IPR institution authority:
"Advocacy organizations like appellants have associational standing if “(1) at least one of their members would
have standing to sue; (2) the interests they seek to protect
are germane to the organizations’ purposes; and (3) neither
the claim asserted nor the relief requested requires the
participation of individual members."
Basically, CAFC thinks (1) is missing ("[A]n extended chain of
events would have to occur before the PTO’s denial of appellants’ petition would harm a member by resulting in the
risk of cancellation . . . Because . . .one or more of the events in this chain
are speculative, appellants have failed to meet their burden to show they have standing to pursue the relief they
seek").
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- In this precedential patent damages decision involving "systems for stapling tissue during surgery," CAFC affirms the DCT's decisions to:
- Exclude plaintiff's "damages expert’s testimony and methods relying on the aforementioned license" (which was excluded for failure to apportion); and
- Reduce "the jury’s damages
award from $10 million to $1 nominal damages."
Regarding 1), the DCT "concluded that Mr. Kidder failed to adequately address the
extent to which the ’892 and other patents contributed to
the Covidien license lump sum payment." CAFC agrees ("Mr. Kidder’s opinion that nearly all the value of the Covidien license derives from either the ’892 patent or the ’650 patent
is untethered to the facts of this case . . . Mr. Kidder did not allocate the
Covidien lump sum payment “at all between the ’650 and
’892 patent[s]” . . . Mr. Kidder never “analyze[d] whether any of Rex Medical’s licensed foreign
patents cover the same stapling innovation as the ’650 or
’892 patents” or “whether any of Rex Medical’s licensed foreign patents cover any of Covidien’s products” . . . That the
’650 and ’892 patents were the only ones asserted against
Covidien and Intuitive proves little to nothing about the
relative value of foreign patents, which cannot be asserted
in the U.S. Mr. Kidder’s reliance on general observations
about other unrelated patent portfolios is equally unreliable and untethered to the facts of this case."). As for 2), CAFC agrees with the JMOL damages reduction as "the jury received insufficient evidence
from which it could apportion the lump sum payment in
the Covidien license or otherwise reasonably infer a reasonable royalty award for infringement of the ’650 patent
alone . . . Rex
presented no evidence that would allow the jury to overcome the deficiencies in Mr. Kidder’s excluded expert opinion . . . he jury heard no testimony on how to consider these five “factors” to apportion
the value of the ’650 patent—or whether all, some, or none
were applicable." Importantly, CAFC notes that "[t]he outcome here is fact-specific. Had Rex (or Intuitive) put forth other evidence from which a jury could reasonably determine damages for infringement of the
’650 patent without speculation, JMOL of no damages
would be inappropriate and a new trial might be appropriate. But the parties did not, and it was Rex’s burden to do
so." Ergo, after briefly addressing some cross-appealed issues of construction and validity, CAFC affirms.
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- In this IPR matter concerning social media post filtering, CAFC agrees that the substitute claims satisfy 112, but finds the Board's 103 reasoning inconsistent, for the Board's basis in rejecting Petitioner's opposition (Petitioner "did not “explain how Feldman would obtain the search radius if only the zoom level were sent in the request”") was inconsistent with the Board's previous finding that "search requests
including a zoom level or a radius can accomplish the same
result." Indeed, "both parties’ experts agree that
adjusting a ‘zoom perspective’ in Feldman’s system was one
such way of establishing the search perimeter." As "KSR held that a “simple
substitution of one known element for another or the mere
application of a known technique to a piece of prior art
ready for the improvement” almost certainly renders a patent obvious" CAFC "vacate[s] the Board’s finding that there is no motivation to modify Feldman’s request to include a “current
zoom level” based on any of Snap’s seven prior art references teaching requests relating to zoom levels." After briefly providing reasoning for affirming the 112 decision, CAFC therefore remands to reconsider obviousness.
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.
