(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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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.
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- In this precedential decision regarding blood testing contamination, CAFC affirms the DCT's claim construction and consequent noninfringement JMOL determinations. Plaintiff makes three arguments here:
- "First, Magnolia contends that the district
adopted an untimely claim construction by concluding that
the “vent” and “seal” limitations of the ’483 patent must be
met by separate structures."
- "Second,
Magnolia argues that even if the district court’s separate structure construction was not untimely, the construction
was incorrect."
-
"Third, Magnolia asserts
that JMOL was improper even when relying on the district
court’s separate-structure construction because the jury
had sufficient evidence to support its finding of infringement under that construction."
Regarding #1, while plaintiff is right to opine that the DCT shouldn't intervene following agreement between the parties, "it is permissible for a district court to “elaborat[e]” on its construction post-verdict when it “only clarifie[s] what was inherent
in the construction.”" That's what CAFC (precedentially) believes occurred here (unlike Becton, where the DCT impermissibly joined distinct limitations: "where a claim lists limitations separately,
“the clear implication of the claim language is that those
elements are distinct components in the patented invention.”").
Regarding #2, CAFC agrees that the "text and structure of claim 1 demonstrate the separateness of the “vent” and “seal” limitations" (notably, in the specification the "two limitations are described together only once, and as separate structures.")
Finally, regarding #3, plaintiff didn't present the argument to the jury.
Thus, after briefly affirming various other claim constructions, CAFC affirms as to the whole.
-
- In this precedential decision, CAFC reverses/vacates to reopen damages discovery. Below, the DCT granted a "Daubert motion to exclude all of
Mr. Blok’s opinions and Dr. Congdon’s opinions related to
damages under Federal Rule of Evidence 702." Plaintiff asserts that the "damages
theory based on VMs per hour (VM-hours) (i.e., Microsoft’s
VM pricing rate) reliably reflected how Microsoft valued
the Accused Features at the time of the hypothetical negotiation" and that exclusion based upon Enplas (which "improperly incorporated “activities
that do not constitute patent infringement” in the royalty
base by including “potentially infringing products”") was therefore inappropriate. CAFC agrees:
"Enplas . . . does not support the district court’s
overbroad exclusion of Mr. Blok’s damages testimony. In
Enplas, the unaccused, potentially infringing products the
plaintiff included in its royalty base had no causal connection to the accused infringing products such that the royalty base improperly “include[d] activities that do not
constitute patent infringement” . . . Here, however, Microsoft’s own
documents demonstrate that Mr. Blok’s VM-hour royalty
base was based on a causal connection between the Accused Features of the Azure Platform and VMs . . . The asserted patents are directed to improving efficiency and optimization of data flows within virtual networks . . . by increasing virtual machine density, Microsoft would be able
to sell more virtual machines without the need for additional network infrastructure” . . . Mr.
Blok’s VM-hour royalty base captured this incremental
benefit of being able to offer additional VMs due to operation of the Accused Features within the Azure Platform."
Ergo, reversed/vacated/remanded.
-
- CAFC affirms not anticipated (by Doo) and reverses/remands not obviousness (by Doo + Amira) Board determinations on an IPR involving "augmenting real-time views
of a patient with three-dimensional (“3D”) data . . . the ’271 patent describes methods
of automatically aligning or registering the 3D data “with
a real-time view of the actual patient” so that “images derived from the 3D data may be projected onto the real-time
view of the patient.”" CAFC agrees on the anticipation because, even under Petitioner's broader construction of the claim term "3D virtual shape", CAFC believes the Doo reference is still clear that it's NOT disclosing 3D shapes. CAFC likewise finds no improper limitation importing by the Board and agrees that Doo lacks "“projected inner layer of the patient from the 3D data being confined within a volume of a virtual 3D shape”" ("Figure 11 instead discloses that 2D
images may be “sequentially exhibited,” thereby producing
a “fly through 3D” modality."). CAFC disagrees as to obviousness, however, because the "Board erred by requiring Medivis to provide a specific reason for a POSA to look to Amira, using Doo as the
starting point" ("KSR explicitly eschews such a rigid approach to obviousness."). KSR lives on ~20 years later. Ergo, affirmed / reversed in part and remanded.
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- CAFC affirms not invalid as obvious determinations for claims addressing "a need . . . for wireless devices to have multiple transmitters and receivers in order to, among other things, improve signal fidelity and bandwidth" by adding multiple antennas, the claimed embodiments also joining a VPN. The Board found that petitioner "failed to establish a motivation to modify the combination of Byrne and WO748 to include a VPN" and "failed to prove any
of the Raleigh-Byrne grounds of obviousness because Apple had not shown a reasonable expectation of success in combining those references in a telephone" ("[T]he Board concluded that
Apple had failed to show “that a phone like Byrne’s [ ] could initiate or connect to a virtual network.”"). While petitioner asserts that the Board misconstrued its petition as begin a M2C argument, CAFC agrees with the Board and its construction that "the recited “communication” with a network switch
box “configured to . . . join a virtual network” as demanding
that the wireless device be capable of communicating in or
with the virtual network" and "that Apple has not shown that the Board unreasonably understood Apple’s petition." Similarly, CAFC agrees that the "petition did not clearly present, so the Board
was not required to address, any combination of Raleigh and Byrne other than one resulting in a telephone." 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.
