(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially reverses the PTAB for dismissing Sunkist's opposition to the standard and stylized marks for "kist." "Sunkist opposed the registration arguing likelihood of confusion between the KIST marks when used on or in connection with the goods described in the trademark applications and its SUNKIST registered marks." Below, despite finding that all the DuPont factors favor likelihood of confusion save for the 1) similarity and 2) actual confusion factors, the Board "ultimately concluded that the similarity of the marks and actual confusion factors outweigh the other four factors . . . The Board rested its decision regarding similarity of the marks on its finding of different commercial impressions—IDI markets KIST to reference a kiss but Sunkist markets SUNKIST to reference a sun." Here, CAFC finds "no substantial evidence support for that finding." Specifically, regarding similarity, CAFC walks through the evidence of record citing instance after instance of the KIST mark without any lips. "The Board overly focused on the lips image shown in some" (emphasis added) "of the marketing materials. Its finding that IDI markets KIST to reference a kiss is not supported by substantial evidence." After finding that the similarity DuPont factor favors confusion, CAFC reveres as a whole, since the actual confusion factor certainly isn't enough to affect the balance (indeed "failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove"). Ergo, reversed.
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- CAFC considers the mandamus petition in connection with a discovery dispute around whether "trade secrets related to the composition, structure, or manufacture of [wax] films" must be disclosed for discovery. Specifically, seller is suing ex-customer for patent infringement, ex-customer counters that it needs access to seller's materials (previously sold to it) to assess the infringement, and seller is saying those materials are trade secret. While the DCT acknowledged that "the documents in question contained information that, if publicly
disclosed, could result in commercial harm" CAFC agrees with the DCT that "trade-secret information is not immune from
discovery" and that the protective order should suffice. A reminder to be wary - rarely does litigation go exactly in the direction one expects.
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- In this precedential decision, CAFC assures us that "there were no shenanigans here." Whew. Basically, petitioner previously challenged a pre-AIA patent in an interference moving that the claims were 103 invalid, but the Board dismissed the motion as moot since the interference triggering claims lacked written support. Petitioner later filed an IPR, the Board granted the petition, declined to apply interference estoppel, and this time found the claims 103 invalid. CAFC doesn't consider the petition grant or lack of estoppel "shenanigans." The Board had two reasons for considering the matter to be shenaniganless: "First, the
Board stated that because it had terminated the interference based on the “threshold issue” of lack of adequate written-description support in the Zynga Application, Zynga was deprived of standing and the Board “did not need to, and in fact did not, analyze or decide any issues of unpatentability based on prior art” in the interference proceeding . . . Second, the Board reasoned that “it would be unfair to impose the consequences of interference estoppel on Zynga” given
that Zynga provoked the interference “two years prior to
promulgation” of the post-AIA regulations for IPR and
other trial proceedings, codified in 37 C.F.R. pt. 42." As regards institution, CAFC agrees that the AIA excludes their review of the decision ("[t]he determination by the Director whether to institute an inter partes review under [§ 314] shall be final and nonappealable . . . We conclude that
IGT’s contention that interference estoppel bars review of
Zynga’s IPR petition is within the general unreviewability
principle, as IGT’s challenge in this case “ha[s] institution
as [its] direct, immediate, express subject.”"). CAFC next affirms the lack of estoppel, in part, based upon the "familiar idea that claim-splitting often does not apply in a second suit to what could not actually have been decided in a first suit." CAFC thus finds "no shenanigans in the interference-estoppel determination that the PTO made in deciding to institute the IPR and no basis for finding an
exception to applying the general bar on reviewability of
such an institution determination." CAFC concludes by affirming the substance of the 103 invalidation. And so, CAFC somberly lays this patent to rest . . . never to shenanigan.
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- CAFC (very) briefly affirms obviousness invalidity on this IPR involving "a compact optical image capturing lens
assembly applicable to electronic products . . . On appeal, Largan challenges the Board’s finding that
a POSA would have been motivated to modify KR872 with
a lower f-number with a reasonable expectation of success." Basically, CAFC agrees with the DCT's findings that both expert testimony and the prior art suggested that PHOSITA knew "that lower f-numbers were desirable for high-action photography and to improve performance in low-light conditions."
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- This precedential inducement, DOE, and estoppel decision (whew!) considers a method for "trying to implant an artificial heart valve to replace a defective valve, that
furnishes a do-over opportunity to the installer to get the
positioning right." Basically, infringement by inducement was found below, based on direct infringement by DOE, despite evidence of estoppel in the prosecution history. Defendant here argues "that
Colibri’s cancelling during prosecution of then-claim 39—
while retaining then-claim 34 (which issued as claim 1)—
“precludes Colibri from asserting that, under the [doctrine
of equivalents], partial deployment and recovery of the
valve is performed by retracting the sheath.”" CAFC agrees, and so here reverses. Below, the DCT believed "that the
asserted equivalent (i.e., the implantation method of Medtronic’s Evolut system) differs distinctly from what was recited in cancelled claim 39" as "claim 39
did not require pushing the inner member—only retracting the moveable sheath." Alas, plaintiff also repeatedly asserted that PHOSITA "would understand that pushing necessarily accompanies retracting." Similarly, "Colibri’s cancelling of claim 39 in favor of pursuing limitations that already appeared in retained claim 34 (issued claim 1) was a narrowing amendment giving rise to prosecution history estoppel." Relevant to this opinion's precedential status, CAFC is clarifying that the narrowing required for estoppel can occur in this indirect manner ("[T]he required narrowing is not a purely formal matter of altering a single claim’s terms; it can exist, and we conclude
here does exist, as a substantive matter based on cancelling
a closely related claim involving such intertwined terminology that cancelling one claim necessarily communicated
that the scope of the other claim had narrowed . . . Governing law precludes making formalities determinative, to the exclusion of substantive relationships that
would be understood by relevant readers . . . we do
not address each claim in isolation", emphasis added).
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.
