(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 the Board's obviousness finding in this IPR for some claims and reverses its nonobviousness finding for other of the claims, each directed to balloon angioplasty. CAFC again reiterates that while admitted prior art (AAPA) cannot, in itself, form the basis for a petition, it can be considered in the IPR analysis ("We have explained that
“[a]lthough the prior art that can be considered in [IPRs] is
limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when
determining whether it would have been obvious to modify
the prior art” . . . Our decisions in Qualcomm I and Qualcomm II accordingly require that only patents and printed publications
form the basis of an IPR . . .
However, AAPA can be important evidence of general background knowledge, and general knowledge can be used to
supply a missing claim limitation . . . This case is quite different from Qualcomm II, where
the petitioner expressly labeled AAPA as the “basis” for its
challenge"). As for the cross-appeal, CAFC first acknowledges standing ("Although a company’s representations about its intent to protect its intellectual property do not always give
rise to a substantial likelihood of litigation, Shockwave’s
President’s broad claims reflect the company’s expansive
view of claim 5 as reading broadly on IVL technology."), before finding the Board's analysis too limited ("The problem with the Board’s analysis is that it was
predicated on its finding that Uchiyama alone did not disclose that the electrodes were positioned “adjacent to and
outside of the guidewire lumen,” since the argument raised
by CSI before the Board was based on the combined teachings of Levy as modified by an over-the-wire catheter balloon and Uchiyama. The standard for obviousness requires
consideration of the prior art combination taken as a whole."). Ergo, reversed and remanded as to the cross-appeal.
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- Brief affirmance that "YUCATAN SHRIMP" is descriptive ("[T]he public understands “Yucatan Shrimp” to refer to a
dish that features shrimp prepared with a set of common
ingredients associated with Mexican cuisine, such as hot
peppers or sauce, citrus juice, and cilantro"). Further proof that you-ca-can't-yu-ca-tan. Proceed accordingly.
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- CAFC affirms IPR obviousness invalidity for claims directed "to heating, ventilation, and air conditioning (HVAC) systems." Owner makes three arguments based upon the Board's analysis, and a fourth asserting that the petition "did not disclose
a sufficient obviousness theory for “detecting a manual
change to the first automated setpoint” because Google relied on “general concepts” rather than a “particular example.”" CAFC resolves the first three with reference to the Board's factual findings, and the fourth in a similar manner, since the Board's analysis relied on the petition's assertion ("EcoFactor does not point out any particular deficiency in
the Board’s conclusion that Ehlers and Wruck render this
claim element obvious").
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- CAFC precedentially affirms nonobviousness on claims for "“dosing regimens of paliperidone palmitate” specifically to address patient noncompliance for ingesting the prior art compound ("the district court rejected Teva’s theories that a relevant artisan, in considering the prior art, would have had a motivation to combine or modify the references to arrive at the now claimed dosing regimens with a reasonable expectation of success."). CAFC's analysis here focuses on Teva's argument that "the representative claims “should be presumed obvious because they merely recite limitations from ranges disclosed in the prior art”" ("The cases that Teva invokes for this presumption, usually referred to as overlapping-range cases, are ones in
which a challenged claim requires a feature in a numerical
amount (specified as, e.g., a single figure or a range) and a
prior-art reference teaches that feature in amounts that
overlap with the claimed numerical amount. Such facts
have in many cases been held sufficient to establish prima
facie obviousness and, for the past two decades, to generate
a presumption of obviousness."). CAFC makes this precedential to take the opportunity to tweak the DCT's analysis ("the district court erred in reading Kumar to say that
the presumption is unavailable whenever there is more
than one difference from the prior art."). Here, "[t]he crucial choice made by Janssen, as
the district court properly framed the matter, was the
choice to start with a particular high first loading dose and
then follow it with a second, lower loading dose. That
choice for the combination of loading doses is addressed to
the relation between two dosage figures in a way that does
not clearly fit within the presumption’s focus on simply selecting a number or range overlapping a prior-art range of
a variable or, even, a plurality of variables that overlap
with prior-art ranges where the variables are properly considered separately from each other." On this factual foundation, CAFC agrees with the DCT that the ranges-based presumption doesn't apply.
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- CAFC precedentially affirms SJ noninfringement based upon the DCT's analysis of the evidence, rather than the claim construction, since the latter wasn't preserved for appeal ("[W]e need not resolve what to do in a case like this, where the parties present a motion for summary judgment to the district court as one involving issues of fact but it becomes clear on appeal that the motion actually turned on an unresolved issue of claim construction. This is because we will not address a claim construction issue for the first time when the appellant has failed to preserve that issue in the district court and has also failed to adequately present it to us for decision on appeal"). Ergo, CAFC considers various challenges to the jury instructions before affirming as to the whole.
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.
Similar to LawMux Bites, notes are (very) short writeups calling attention to various issues. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you to the relevant topic.
