(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this precedential decision, CAFC affirms the ITC's 337 importation finding on "wearable blood
oxygen measurement devices", taking this as an opportunity to clarify the scope of evidentiary obligations under the domestic industry requirement. E.g., regarding the technical prong, CAFC finds three flawed premises in Appellant's argument critiquing "the Commission for purportedly relying on a “hypothetical”
Masimo Watch, rather than an actual article when evaluating the technical prong, emphasizing that a hypothetical
device cannot satisfy the domestic industry requirement" :
- "Apple asserts that, in the course of a § 337 proceeding, the Commission must find the technical prong satisfied only by the exact article identified in the complaint. The law is not so rigid . . . 19 C.F.R. § 210.12(a)(9)(ix) . . . requires that “[t]he complainant shall make such showing . . . when
practicable, by a chart that applies an exemplary claim of
each involved U.S. patent to a representative involved domestic article” (emphasis added). This regulation does not
require a complainant to identify, in its complaint, the exact physical article upon which it may ultimately rely
throughout a § 337 investigation. It is sufficient for the
complaint to identify “a representative” article."
Ergo, the Commission wasn't limited to the charted article but could "make findings regarding the existence of a domestic industry article based on the totality of the evidence introduced
during the five-day evidentiary hearing."
- "Apple next argues that the Commission was required
to confine its technical prong analysis to the specific RevA,
RevD, and RevE models Masimo produced during discovery . . . Nothing in the Tariff
Act, the APA, or the Commission’s rules supports Apple’s
contention that the technical prong analysis must be confined to only those individual devices a complainant physically produces in discovery, as opposed to treating such
devices as representative embodiments of the broader domestic industry article they are found to reflect."
- "Apple next suggests that a complainant may not rely
on circumstantial evidence to meet its burden to prove that
a patent-practicing article existed at the time it filed its
complaint . . . To the extent
this is a restatement of Apple’s contention that the Commission is limited to analyzing only the specific, physical
models produced in discovery, we have already rejected
that view. If, alternatively, Apple more broadly means that
circumstantial evidence is an unacceptable basis on which
the Commission may find the domestic industry technical
prong satisfied, Apple identifies no statutory, regulatory,
or caselaw support for its position . . . We therefore reject Apple’s contention that reliance on circumstantial evidence in § 337 proceedings is in any way improper."
". . . Thus,
the Commission did not rely on a “hypothetical” article as
Apple wrongly asserts; instead the Commission identified
as the pertinent patent-practicing article the Masimo
Watch, as representatively described in Masimo’s complaint, and supported by the prototypes Masimo produced
in discovery, and as further proven by the testimony of
multiple witnesses, product testing data, and other circumstantial evidence the ALJ credited. The ALJ and the Commission were permitted to credit all of this evidence."
CAFC likewise affirms (post-Lashify) on the economic prong ("Apple argues the
Commission erred in two respects: by crediting investments in non-patent practicing articles that were not, in Apple’s view, made “with respect to the articles protected by the patent,” and by relying on purportedly improper investment accountings . . . The ALJ’s conclusion was entirely consistent with § 337(a)(3), which allows for significant investments in aspects of production other than the patent practicing article itself to count toward meeting the economic prong. ")
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- CAFC affirms lack of standing in this patent infringement matter, as a prior joint venture removed any rights that might have been transferred to plaintiff ("The district court determined that the 2006 Agreement had unambiguously transferred all the patent rights to Nelson, so
that, pursuant to the 2012 Assignment, ASI had no rights
remaining to transfer to AIT."). Here, plaintiff "argues that the
2006 Agreement was not a present patent assignment to Nelson" but rather "the agreement itself was sold, not the assets referred to in the agreement." Applying California contract interpretation doctrine, CAFC disagrees.
Basically, while it's true that the 2006 agreement said:
"[T]he . . . 2002 Agreement is hereby sold to Nelson
by the Parties (exclusive of Nelson) without reservation of any provision of the . . . 2002 Agreement.
The waiver of reservation of any provision shall be
irrevocable, complete and total; all right, title, interest, and liability (including financial liability)
set forth in the . . . 2002 Agreement shall transfer in
whole to Nelson. Further, Nelson shall have the
sole and exclusive right to modify, terminate or otherwise discard Sections A, B and C of the . . . 2002
Agreement." (emphasis added)
the 2002 agreement previously said:
"As soon as practicable following the date of signing
of this Agreement, ASI will transfer certain assets
of ASI (the “ASI Assets”) to HMB . . . .
. . .
The ASI Assets are . . . all . . . intellectual property
rights (including without limitation patent, trademark, copyright and other rights) . . . ."
Thus, the DCT and CAFC conclude that "[b]ecause the 2006 Agreement
transferred “all right, title, interest, and liability . . . set
forth in the . . . 2002 Agreement” to Nelson, it therefore included the “intellectual property rights” set forth in the 2002 Agreement."
CAFC addresses various arguments before affirming. Notably, plaintiff raised FRCP 17(a)(3) and mutual mistake under California contract law, but appears to have done so too late ("The district court denied both forms of relief, explaining that AIT’s arguments based on Rule 17(a)(3) and contract reformation “could have been raised in connection
with [AIT’s] opposition to the motion to dismiss,” and the
court was under no obligation to consider such newly raised arguments.").
Ergo, affirmed.
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CAFC precedentially reverses and remands the indefiniteness determination here involving "an apparatus for maintaining the header of a
crop harvester a desired height above the ground as the
harvester traverses a field" focusing upon the term "control means." Below, everyone agreed that "a skilled artisan would have
known there were three commercially available head controllers used in Deere combines—Dial-A-Matic Versions #1, #2, and #3." Defendant argues that 1) the spec allegedly referred to by the term references lateral movement; 2) only #2 and #3 move laterally; 3) #2 and #3 only have general purpose microcontrollers; and therefore 3) the means-plus structure is inadequate. The DCT agreed. CAFC does not.
Basically, the DCT correctly identified the functional scope from the means term ("raising and lowering"), but then imposed a different scope ("lateral movement") when searching the specification, thereby improperly excluding Dialer #1:
"Here, the district court erred by discounting structure
that performs the claimed function in claim 12. As we
noted above, the district court analyzed the first step
properly, identifying the claimed function as “raising and
lowering the header . . . a designated height above the soil” . . . But when turning to the specification for the second step, the district court discounted corresponding structure that performs the claimed function because it did not
perform the unclaimed function of controlling “lateral position” of the header . . . The district court excluded Deere’s
Dial-A-Matic Version #1 from its identification of corresponding structure because that version lacked the capability to control lateral position of the header. And because
the district court was persuaded that both the Dial-A-Matic
Versions #2 and #3 use microprocessors to control header
height, it found that the ’395 patent specification must disclose an algorithm to satisfy the definiteness requirement.
Finding the specification lacked such an algorithm, the district court held claim 12 indefinite . . . corresponding structure, we hold the district court erred
by determining that “control means” is indefinite."
Ergo, CAFC reverses / remands as to those claims.
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- CAFC precedentially vacates remands for step 2 consideration, finding the claims directed to an abstract idea at step 1:
"Norton argued that the asserted claims were drawn to the abstract
idea of “identifying a deviation in data based on a comparison” in connection with virus scanning . . . In response, Columbia argued that the claims “recite specific steps and a technique for improving computer security that departs from earlier approaches.”"
The DCT
"held that the asserted claims “improve
computer functionality by improving computer virus scanning” by “(1) the creation of unique models and (2) improvements in efficiency” . . . and therefore are patent
eligible. The only claim language relied on by the district
court was the limitation requiring that “the model is a combined model created from at least two models created using different computers."
CAFC finds this insufficient ("Columbia concedes that emulators were conventional technology and that a divide-and-conquer approach where
multiple computers collaborate on a single task is an abstract idea . . . The claimed invention’s efficiency gain from
the use of multiple computers is no more than this concededly abstract idea.").
Ergo, after briefly addressing some claim construction, willfulness, and foreign sales arguments, CAFC vacates / remands for the DCT to consider factual determinations relevant to step 2 ("We therefore vacate the district
court’s denial of judgment on the pleadings as to patent eligibility, hold that the claims are directed to an abstract
idea, and remand for the district court to solely consider, at
step two, the question whether the claimed model of function calls feature was conventional.")
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- CAFC precedentially affirms an IPR invalidation based upon prior art Janeski by Mr. Carpenter. Owner "argued that Janevski did not constitute prior art because the work of Mr. Carpenter inured to the
inventors’ benefit and the subject matter of the claims was
conceived and actually reduced to practice prior to Janevski’s filing date . . . [and] . . . On December 17, 2021, Implicit requested that the
United States Patent and Trademark Office correct the inventorship of the ’791 and ’252 patents to add Mr. Carpenter as an inventor" (n.b., the Board's invalidation determination was in 2019). Alas, the Board held that while 35 USC 256 is usually retroactive, here, estoppel and waiver applied, and so the "Board concluded that Implicit
was precluded from relying on the certificates of correction
of inventorship in the IPR proceedings as a basis to revisit
the final written decisions." Here, CAFC affirms based upon forfeiture alone ("Because forfeiture is an independent ground for affirmance, we need not and do not reach
Implicit’s arguments regarding judicial estoppel and waiver."), holding that:
"[F]orfeiture can apply notwithstanding the retroactive effect
of 35 U.S.C. § 256 and that the Board did not abuse its discretion in applying forfeiture to the circumstances of this
case . . . We hold that forfeiture can apply to Implicit’s antedating argument despite the 35 U.S.C. § 256 correction of inventorship . . . "
While Owner responds that
"[C]orrection of inventorship was timely because it sought correction
of inventorship for its patents while proceedings were ongoing, before Director Review finalized the proceedings . . . Sonos and the PTO argue that Implicit’s failure to raise its new antedating argument until
years after the final written decisions and without sufficient justification for the delay constituted forfeiture and
that the Board did not abuse its discretion in determining that Implicit forfeited this new antedating argument."
Ergo, agreeing with the PTO, CAFC affirms.
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.
