(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms this not invalid determination for "an antipsychotic used to treat schizophrenia" specifically a "dosing regimen for administering an injectable paliperidone palmitate depot to a patient" in connection with an ANDA submission. CAFC first considers whether "Mylan’s proposed ANDA labels will induce infringement of the asserted claims" and agrees with the DCT that they may. For example, there can still be intent to induce despite "discouraging patients from missing doses" ("the fact that Mylan’s proposed ANDA labels “discourage missed doses” does not mean that the labels “discourage or make optional the practice of the
[a]sserted [c]laims (or any claimed steps) in the inevitable
situation that doses are missed"). Similarly, arguments for divided infringement ("two actors—the patient and that patient’s
HCPs") fail as "a single entity (an HCP) performs the claimed reinitiation dosing regimen." As for the DCT finding nonobviousness, CAFC agrees that the prior art of record didn't suggest that PHOSITA "would have been motivated to ramp back up to PP3M with PP1M because a skilled artisan would have known that PP1M was “faster acting”" (indeed, Mylan's own expert's "flawed modeling
suggests identical PP1M and PP3M absorption . . . even
though his comparison was skewed to favor faster absorption of PP1M").
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- CAFC reverses and remands this IPR finding that claims directed to "methods and apparatus[es] for achieving renal neuromodulation via thermal heating and/or cooling mechanisms" (specifically "using a
catheter to perform renal neuromodulation by applying thermal energy to the target neural fibers") were not unpatentable for obviousness. Here, Petitioner argues that 1) the Board didn't consider all that the art taught; and 2) the Board declined to consider obvious-to-try arguments. CAFC agrees with Petitioner on 1) as "Acker teaches using a catheter with an ultrasonic transducer “to provide ultrasonic energy in a ring-like zone surrounding a blood vessel.”" (emphasis CAFC's; "While Acker includes specific embodiments where the catheter is placed into a pulmonary vein, Acker clearly contemplates a wider use for its catheter to ablate other tissues with ultrasonic energy"). CAFC similarly agrees as to 2), finding that the Board construed the art too narrowly ("By failing to consider Acker “for everything it teaches,” the Board disregarded the “expansive and flexible approach” to obviousness inquiries
expressed in KSR."). Ergo, reversed and remanded.
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- In this pretty intense percussion instrument patent infringement . . . 'pionion . . . issued . . . ba-dump-hiss . . . CAFC affirms: 1) the DCT's decision not to strike testimony; 2) the DCT's denial of JMOL; and 3) the DCT's denial of an equitable estoppel defense, but reverses as to: a) denial of a new trial on damages; and b) vacates the damages award. Regarding 1), defendant makes three arguments for rejecting the Expert's testimony, but in each instance CAFC finds that the DCT had adequate reason not to exclude ("none of inMusic’s arguments persuade us that
the district court abused its discretion in declining to exclude or strike the infringement testimony of Dr. Lehrman"). Regarding 2), CAFC believes the jury appropriately considered the factual issue ("inMusic points
to no opposing testimony of its own expert witness. This
dispute was a factual issue to be decided by the jury, which
reasonably found infringement of the striking sensor limitation."). Regarding 3), "inMusic’s theory of estoppel is that Roland knew about inMusic’s redesigned cymbals in 2011 but did not complain to inMusic about that design until 2015." While the factual record is murky, CAFC doesn't see anything in the record contradicting the DCT's finding of lack of preponderence ("Without “additional evidence to
corroborate either side’s description of events,” the competing testimony “essentially boil[ed] down to a ‘he said, [he]
said’ situation.”"). As for a) and b) CAFC wants a new analysis since the current analysis was too broad and encompassing (for the first patent group: "Because Ms. Heinemann offered a consolidated reasonable royalty opinion for infringement of both the asserted Drum Patents and Cymbal Patents, and the jury accordingly rendered a single reasonable royalty award, we
must vacate the jury’s entire award . . . "; for the second: "The only basis for the jury’s award was Ms. Heinemann’s original opinion calculating $1.9 million
of reasonable royalties, including non-infringing cymbal sales dating back to August 2010. As in Enplas, Roland cannot ensnare non-infringing sales into its damages
award.").
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- CAFC affirms the Board's invalid as obvious determination for claims involving "peer-to-peer location based services for mobile data processing systems (“MS”)." As is often the case, the analysis turns on the claim construction, here focusing upon "location based content" which the Owner interprets as requiring "that location based content must include information about the location of the sending system." CAFC disagrees, based on claim differentiation ("dependent claim 10 identifies several types of information
that can be a part of the location based content, none of which require disclosing the sending system’s location") and the spec ("the specification discusses proximity as an indication
of user location"). Turning to the obviousness analysis, CAFC very briefly affirms the Board's reasoning ("We have previously held that such increased energy efficiency may establish a sufficient motivation to combine") and likewise sets aside the objective indicia evidence ("The Board also found that BillJCo’s licensing
evidence failed to show the ’011 patent’s significance among over thirty licensed patents."). Ergo affirmed.
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- CAFC affirms this obviousness IPR determination for claims on "content-based message distribution" based upon the Board's claim construction, since opposing arguments were untimely raised ("Xerox contends we should review the Board’s claim construction notwithstanding the Board’s initial untimeliness
finding because the Board also addressed the merits . . . We decline to do so because Xerox forfeited any argument that the Board abused its discretion in finding Xerox’s argument regarding the “displaying” limitation to be untimely, and
because that finding of untimeliness is a sufficient basis to
affirm."). Moving to the merits, CAFC also finds absence of teaching arguments untimely for the "receiving" limitation. For the "adding" limitation CAFC basically agrees with the Board's analysis.
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.
