(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms not unpatentable findings for charging station claims, agreeing with the Board's claim construction ("[W]e agree with the Board that the Charging
Control Limitation is performed by a processor executing
instructions and not a person manually initiating the
charging"). Basically, the construction excludes "the user manually starting and stopping the charging" rather requiring the "charging system to execute computer instructions that automatically
manage the charging of the electric vehicle." The asserted reference instead states that a user "could" manually initiate charging, which wasn't sufficient to imply/disclose the claim limitation ("[W]hile a user can manually plug in their vehicle, this is not enough to increase the battery level upon
execution of computer instructions as required by the claim").
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- CAFC affirms 101 invalidity on claims directed to a "method for processing a natural language input provided by a user." Plaintiff "argues
that the claimed improvement over the prior art is the
novel application of case-based reasoning to the context of
natural language processing and that this improvement
renders the claims non-abstract at Alice step one." However, CAFC maintains that "claims that require nothing more than application of artificial intelligence to a new environment are directed to an abstract idea." Accordingly, absent further evidence that the database was non-conventional, CAFC affirms.
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- CAFC denies mandamus to revive four petitions. Though assignor estoppel doesn't apply in IPRs, the Director decided to set the IPRs aside on a discretionary basis in any event, and CAFC defers to that judgement based upon Thryv.
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- After reversing construction of a claim preamble ("We see no basis to deviate from the general rule that preamble language is not limiting"), CAFC affirms dismissal of breach-of-contract claims here for an NDA ("NimbeLink’s complaint fails to sufficiently plead the
nature of the alleged confidential information at issue.
NimbeLink characterizes that information as relating to
“financ[e] and marketing,” but that is too vague to pass
muster under Rule 8 . . . The complaint also fails to plausibly allege unauthorized use of confidential information.").
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- CAFC precedentially reverses the 101 ineligibility SJ finding (as a natural phenomenon) on claims directed to "molecules which utilize the novel AAV sequences of the invention, including
fragments thereof, for production of molecules useful in delivery of a [transgene comprising a] heterologous gene or
other nucleic acid sequences to a target cell." Below:
"The cultured host cells required by the claims are undisputedly human made. They do not exist in nature . . . however, the district court determined
that none of the individual naturally occurring components
in the claims had been changed and that “combin[ing] natural products and put[ting] them in a host cell does not
make the invention patentable under § 101."
Uhh. Someone is rather too fond of Funk Brothers. CAFC predictably walks through the case history and acknowledges that, rather than Funk Brothers, "Chakrabarty defines our inquiry" ("We
thus ask whether the claimed host cells have “markedly
different characteristics” and have “the potential for significant utility” from that which is naturally occurring."). Indeed:
"Like the man-made plasmid combining four naturally
occurring bacteria in Chakrabarty, the claimed nucleic acid
molecules here, although containing naturally occurring
segments of DNA, are “not nature’s handiwork” and
“not . . . a hitherto unknown natural phenomenon, but . . .
a nonnaturally occurring manufacture or composition of
matter” . . . Similarly, like
the cDNA claims in Myriad, “the lab technician unquestionably creates something new” when she splices together the claimed recombinant nucleic acid molecule that encodes an AAV vp1 capsid protein and a heterologous nonAAV sequence and inserts said molecule into a host cell . . .
[C]ontrary to the district court’s holding, the claims here are distinguishable from those in Funk
Brothers. In concluding that the asserted claims are like
those in Funk Brothers, the district court found that
“[t]aking ‘two sequences from two different organisms and
put[ting] them together’ is no different than taking two
strains of bacteria and mixing them together” . . . This analogy is flawed and inconsistent with the undisputed scientific evidence in the record . . . the claimed host cells here contain a recombinant nucleic acid molecule that, by definition, is
markedly different from anything occurring in nature."
Ergo, CAFC reverses as to 101 SJ invalidity.
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.
