(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 patent matter against the manufacturer of the Ingenuity Martian Helicopter who asserted immunity under 28 U.S.C. § 1498 ("AeroVironment argued it had developed
Ingenuity for the government pursuant to its subcontracts
with JPL and that the government had expressly authorized and consented to any activity that happened to infringe the ’763 patent. Therefore, any suit for patent
infringement had to be brought by the Arltons against the
government, not AeroVironment, in the U.S. Court of Federal Claims, not district court"). CAFC likewise affirms that televised demonstration of the earth-based counterpart helicopter “Terry” did not vitiate the defense (“We have previously indicated that, when a defendant “received no commercial profit” and used infringing devices “solely for purposes of display” when demonstrating work performed on behalf of the government, it has not engaged in commercial conduct that would vitiate a § 1498 defense . . . The record is devoid of any evidence that AeroVironment offered Terry for sale to anyone.”). However, on the other side, CAFC also affirms the denial of attorneys fees ("The district court found
this case was not “cut and dried” and that the Arltons did
not “ma[k]e frivolous arguments in opposing summary
judgment.”"). Ergo, affirmed en toto.
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- CAFC affirms 103 invalidity in this IPR involving "Aerial
Roof Estimation Systems and Methods." Here, Owner "argues that the Board erred by construing
“calculate a pitch” and “determining a pitch” as encompassing inaccurate or unreliable calculations." Assuming the arguments were preserved, CAFC disagrees on both counts. Regarding the latter:
"The specification confirms that the term “determining” allows for estimations . . (indicating that “determin[ing] the dimensions and slopes of the
roof sections” may be based on “closely estimat[ing] the dimensions and slopes of the roofs”). Moreover, embodiments
in the specification describe “accurately determin[ing] the
pitch,” indicating that accuracy is not built into the meaning of “determining” . . . Accordingly, Eagle View’s argument that the term “determine” excludes approximation, estimation, or “near calculation” lacks merit."
As for the former:
"[W]e find no evidence in the specification to suggest
that “calculate” requires a certain level of accuracy. Instead, the specification indicates that the term “calculate”
refers to obtaining a result via the performance of mathematical steps . . . (“The slope can
be easily calculated from such a representation using basic
trigonometry.”). "
Ergo, after briefly considering challenges to the petition and motivation to combine, CAFC affirms.
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- In this precedential design patent matter involving a massage device, while the design patent's figures and device look awfully similar, the DCT "concluded that “many,
but not all, of the design features in the D’155 patent—
which the Rolflex embodied—are driven by function . . . the overall . . . scope of the claim is accordingly narrow.”" Here, plaintiff consequently argues that "the district court erred in its claim
construction analysis by eliminating entire structural elements from the claimed design", but CAFC applies the Egyptian Goddess analysis and agrees with the DCT (e.g., "“[w]here a
design contains both functional and non-functional elements, the scope of the claim must be construed in order to
identify the non-functional aspects of the design as shown
in the patent.”"). CAFC reviews the DCT's analysis and agrees that "the “clamshell”
shape of the arms was functional, but that other features
“appear to be largely ornamental,” such as “the thick ridged
outline” of the design (which includes the arms)" (n.b., this result despite "the drawings in the D’155 patent depicting the claimed design in solid line."). An important note for drafters:
RoM’s position that these lines
show what aspects are functional and what aspects are ornamental suggests, however, that all design elements must
be either completely ornamental or completely functional. Our case law does not support this proposition. . . . as the district court correctly recognized,
RoM’s proposed approach of treating the D’155 patent’s disclaimer of elements as dispositive of the functionality inquiry would have courts blindly accept that “every feature depicted in solid lines in design patents [is] per se ornamental.”
Judge Moore dissents, however ("I think the district court erred
when it took this question away from the jury and granted
summary judgement of noninfringement"), generally considering Egyptian Goddess too far a departure from Gorham and its focus upon "the effect of the whole design" rather than individual features ("The former causes the fact finder to focus on the
similarity of the overall designs whereas the latter forces
the fact finder to focus on the difference").
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- In this precedential decision, CAFC affirms SJ noninfringement, finding that the first two steps of the claim must be performed in order ("[N]either party disputes that the accused
products do not perform the claim limitations in the order
required by the district court"). Basically, the subsequent step uses the past participle "requested" connoting the preexistence of the referenced object ("allocating a buffer at one of said plurality
of HSs to cache at least a portion of said
requested SM object" emphasis added). As CAFC summarizes:
"“[R]equested” is not only a grammatical
descriptor, but also is a status indicator reflecting a
completed action—the receiving of a request. Because the
second limitation expressly references “said requested SM
object,” it necessarily depends on the first limitation having
been performed. The buffer cannot be allocated to cache a
“requested” SM object if no request has been received."
Ergo, affirmed.
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CAFC affirms this SJ DTSA and 3PB decision. Basically, employees at McKinsey, while at McKinsey, researched APT's business then left to begin a competing enterprise.
Regarding the DTSA, CAFC agrees . . .
" . . . with the district court’s conclusion that APT
failed to sufficiently identify and define its alleged trade
secrets under the statutory definition. Specifically, APT’s response to Appellees’ interrogatories and APT’s opposition
to Appellees’ summary-judgment motion failed to identify
and define its alleged trade secrets “in a manner that allows the fact-finder to determine if a trade secret exists under the statute . . . Even under Utah law, plaintiffs must still sufficiently identify and define their trade secrets"
Regarding the 3PB, CAFC likewise finds insufficient evidence under Utah law ("Under Utah
law, “[a] third party may claim a contract benefit only if the parties to the contract clearly express an intention ‘to confer a separate and distinct benefit’ on the third party” . . . The contract here was an employee-employer agreement
between Mr. Stoddard and McKinsey.").
Ergo, affirmed.
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.
