(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially vacates and remands this inequitable conduct SJ. Basically, Applicant submitted a reference (Chitwood) that alluded to relevant carbon ranges and yield strength in the unsubmitted CYMAX document ("The parties agree that the tubing Chitwood is referring to is CYMAX 100 . . . the “low carbon 4100 series steel” it teaches undisputedly corresponds to a carbon range of at least 0.18 to 0.43 wt.%"). An inventor declaration to overcome obviousness, during preparation of which, he directed counsel to the CYMAX documents. Indeed, subsequent continuation counsel said the CYMAX document needed to be submitted, as evidenced by inadvertent production during discovery (Notably, marginalia on one document said: "I
am not sure it is a good idea to disclose this document . . . rare example of direct evidence of an intent to defraud."). Here, because SJ must be considered in light most favorable to the non-mover, CAFC says the DCT shouldn't have considered the marginalia dispositive of intent.
"[C]rucial at the summary
judgment stage, a reasonable factfinder, taking the evidence in the light most favorable to Tenaris, could instead
credit Dr. Valdez’s testimony. Dr. Valdez explained in his
deposition that he believed the CYMAX Documents disclosed a “lower carbon” steel tubing range of 0.10 to 0.17 wt.%. . . . By contrast, he continued, the ’256 patent “claimed coiled tubing included a chemistry with higher
carbon. So the chemistry with the lower carbon” disclosed in the CYMAX Documents “was outside of the carbon range of the claimed coiled tubing” . . . it may mean Dr. Valdez
was genuinely confused about what the CYMAX Documents show and whether they are relevant to proving that
others tried but failed to invent what the ’256 patent
claims."
Thus, "[a]s between competing reasonable inferences that may
be drawn from the same evidence, courts are bound at summary judgment to accept those inferences that are most favorable to the nonmoving party" CAFC reviews some more evidence, some fifth circuit particulars, likewise affirms that materiality is a factfinder question (indeed, "The record contains additional evidence that could support a finding that the claims of ’256 patent, as well as the
claims of the ’074 and ’075 patents, would have been
granted even had Tenaris disclosed the entirety of the
CYMAX Documents during prosecution"), and a cross-appeal, CAFC vacates / remands.
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- CAFC affirms 101 SJ invalidation on claims directed to "“identification of similarities and differences among
parts of” semiconductor chips." CAFC agrees at Step 1:
"We conclude that claim 14 is directed to an abstract
idea at step 1. Claim 14 is directed to a device for analyzing
data to identify similarities and differences between design
data for semiconductor chips"
Notably, Claim 14 recites "a parser", "normalizer logic", "a partitioning module", "a canonical forming module", "a digestor module", etc., etc. However, at Step 2, CAFC doesn't find any of their presence compelling:
"Claim 14
additionally cites components of a computer apart from the
abstract idea—e.g., a “parser,” “normalizer,” etc. But the
specification provides no specifics regarding the computer
components . . . (the devices
use “program code that, when combined with a processor
and memory, creates any of the devices described”). In addition, using generic computer components to standardize
and compare data is insufficient to provide an inventive
concept at step 2."
It'd be nice of they walked through the analysis a bit more (look to the DCT opinion if interested in that), but clocking in at only 5.5 pages, CAFC affirms.
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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.
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.
