(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 prosecution disclaimer decision involving "photo-catalytic cells used for
air purification." Basically, the Examiner kept rejecting the claims, asserting that "Bigelow disclosed the claimed “specular UV reflector”" specifically remarking "that Bigelow’s “polished aluminum reflector is a reflector that produces a mirror[-]like reflection” and therefore, “Bigelow discloses a specular UV reflector" (emphasis added). Ultimately, applicant "amended the claims to recite additional features, but it did not remove the “specular UV reflector”
limitation and said nothing more about it in its response . . . The applicant also stated that, with respect to the examiner’s statements that Bigelow discloses a specular UV reflector, the applicant “neither agrees nor
disagrees with such statements.”" Once in court:
"The court granted the [SJ] motion as to noninfringement, finding that “[t]he prosecution history contains a clear disclaimer of polished aluminum because it is not sufficiently
‘specular,’ or ‘mirror-like’” to meet the claimed specular UV reflector." (emphasis added)
CAFC agrees:
"Facing this rejection, the applicant
argued that “[n]owhere in Bigelow is anything regarding a
specular reflector disclosed—either expressly or inherently.” (emphasis added). The applicant’s position was clear: Bigelow does not explicitly describe its materials being specular UV reflectors (i.e., expressly), nor
do the materials themselves possess the properties necessary for them to be considered specular UV reflectors (i.e.,
inherently); thus “[n]owhere in Bigelow” is a specular UV reflector disclosed. "
What's more, "[t]o
achieve the performance enhancement sought, the patent emphasizes the importance of its “unique” specular UV reflectors exhibiting “mirror-like” reflection as opposed to “diffuse” reflection", e.g., the specification further clarifying:
"Specular
reflection is distinct from “diffuse” reflection where
an incoming light ray is reflected into a broad range
of directions. Diffuse reflection may diminish performance enhancement of the photo-catalytic cell
10."
After considering, and rejecting various arguments that the disagreement during prosecution mitigated estoppel, CAFC concludes that "applicant’s statements in distinguishing its specular UV reflectors from the
polished aluminum reflectors of Bigelow were deliberate
and definitive" and accordingly affirms.
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- CAFC affirms this IPR's invalid as obvious finding on claims for electronic display cooling systems. Basically, petitioner identified structures in its references allegedly corresponding with the "constricted convection plate" of the claims. CAFC basically agrees ("The Board properly found that each of Na and Kim discloses a constricted convection plate."). Ergo after affirming the construction and objective indicia analysis, CAFC affirms as to the whole.
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- This is a brief IPR obviousness opinion for "an electric charging system for intelligently charging battery-powered vehicles" affirming not invalid in part, but reversing / vacating / remanding in part, disagreeing with the claim construction of:
"[1h] operate a climate control mechanism of the
electric vehicle while the vehicle is in a parked
state and in accordance with the selected mode of
operation for a duration of time until the amount of charge residing in the battery reaches a predetermined level."
"The Board
concluded that “even if claim 1 does not recite a particular
event that occurs after the predetermined battery level is
reached, claim 1 at least requires that the instructions take
into consideration the battery level in some manner when
operating the climate control mechanism.”" CAFC disagrees based upon the plain language. Nor can CAFC find any "requirement in the specification that the operating of the climate control mechanism must take into account a “predetermined battery level” that may be reached" (e.g., consulting the embodiment of FIG. 6, "the specification
merely indicates that the driver may be notified when the
battery drops below a predetermined level."). Ergo, after agreeing with the Board on other issues, CAFC remands for consideration of the dependent claims and the new construction.
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- In this 12b6 Alice 101 case, CAFC considers claims to "a system for customizing or
personalizing content based on user social network information" where the DCT found the claims "directed to the abstract idea of targeted advertising, noting that the claim is “more generally directed to
a system for presenting personalized digital media content
to a user based on the user attributes from user social network information.”" CAFC agrees and its analysis is pretty straightforward:
"The claim itself “must identify ‘how’ that functional
result is achieved by limiting the claim scope to structures
specified at some level of concreteness, in the case of a prod-
uct claim, or to concrete action, in the case of a method
claim” . . . There is nothing in claim 1 directed to how to implement these steps for modifying digital media content based on a user’s social network information."
Ergo, affirmed.
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- In this precedential decision, CAFC considers "whether a respondent in an ITC proceeding may seek
a mandatory stay of its refiled declaratory judgment action
involving the same parties even though it had previously
filed a declaratory judgment action and missed the deadline for seeking a stay under § 1659(a)(2)" and holds that it may not. After first confirming that sufficient controversy exists for jurisdiction / the collateral order doctrine is satisfied, CAFC notes that while the DCT was wrong to consider a temporary stay as mooting a mandatory stay ("a discretionary stay that can be lifted should
circumstances change is not the same as—and thus does
not moot—a request for a mandatory stay that cannot be lifted"), the issue is moot, since CAFC agrees with the DCT that the mandatory stay should be denied in any event, in accordance with precedent wherein plaintiffs, e.g., refiled complaints to circumvent the rules / restart deadline clocks ("Ascendis voluntarily dismissed
the Original Complaint and filed a virtually identical Refiled Complaint in an attempt to restart the 30-day deadline under § 1659(a)(2) . . . These circumstances fit squarely within the common-law principle of
prohibiting the use of voluntary dismissal to accomplish indirectly what cannot be accomplished directly."). 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.
