(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- This is a pretty vanilla claim construction case, but worth noting for the drafting tip that repeated emphasis is not dispositive if accompanied by a generalizing qualifier:
"The specification does not expressly define “secure” as
requiring IPSec . . . [O]nce the inventor expressly stated that “[t]he invention is not restricted to the details of the figures and accompanying text, or any existing protocols, such as the
currently standardised IPSec” . . .
we cannot say that the sheer number of references to IPSec
in the specification allows us to ignore the inventor’s express language in column 9 and read an IPSec requirement
into the broad claim term “secure.”" (emphasis added)
Ergo, CAFC disagrees with the DCT that "secure" must be construed as limited to IPSec.
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- CAFC affirms IPR anticipation for uplink coding claims. Rather vanilla, but mentioned here because of Owner's APA contention that "the Board’s reasoning that “Figure 44 ‘may’ be a comb structure but is not necessarily
one,” [is an argument] raised
“for the first time by [Samsung] at the oral hearing.”"
It's not an entirely outrageous theory, there's precedent for new arguments violating the APA, e.g.:
"In Dell, the petitioner presented a new
argument for unpatentability at the oral hearing that was
premised on a previously unasserted portion of the prior
art . . .The patent owner “was given no prior
notice of that contention,” and “no opportunity . . . to supply evidence” at the oral hearing. Id. The court vacated
and remanded the Board’s finding on that claim, concluding that the Board relied on this new argument “alone for
an essential part of its anticipation ground of decision.”"
But CAFC considers this situation to be different from Dell:
"The notion that G+ had no notice of the “may” language
or the arguments surrounding it is one that we squarely
reject. The “comb structure” issue was initially raised by
G+ . . . And the “may”
language is found in Kwak itself . . . “if a TTI includes 2 symbols, a transmission method based on a base
sequence may be applied to the structure of FIG. 43 and a
different CS index may be applied for each slot” . . . Indeed, G+’s briefing before the Board referenced
the same portions of Kwak cited by the Board in its decision. "
Ergo, affirmed.
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- Another rather vanilla decision, reversing a DCT's finding of indefiniteness based upon distance terms in a firearm. Basically, the DCT was apparently distracted by the inability to make what was claimed:
"Here, the claims are definite because a skilled artisan
would be able, with reasonable certainty, to look at a firearm magazine housing, identify the claimed distances,
measure them, and determine if the housing falls within
the scope of the claim. That a skilled artisan might not be
able to make the design decisions to successfully build an
operable magazine housing based on the ’045 patent’s specification goes to the question of enablement, not definiteness. Because the court erred by conflating the standards
for these separate legal requirements, it incorrectly concluded the claims were indefinite."
So a reminder to keep each analysis distinct and on-target.
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- In this precedential decision regarding a drug-eluting coronary stent system, CAFC reverses, finding entitlement to noninfringement as a matter of law since the claims were anticipated.
"Three limitations of claim 1 are key to the anticipation
analysis: (a) a “biodegradable polymer fiber”; (b) composed
of two “phases,” of which (under constructions UT accepts)
one is “the polymer portion of the fiber” and the other is
“the discrete drug-containing regions dispersed throughout
the fiber”; with (c) those phases “being immiscible” . . . Song expressly discloses a biodegradable polymer fiber” . . . Its teachings broadly cover fibers and drugs
(not just flavorants) . . . As to the two “phases” limitations
of claim 1 . . . Song teaches a “polymer portion of the fiber” . . . As long as “discrete” includes “noncontiguous,” as it plainly does, that is enough for anticipation of
the ’296 patent’s “discrete” requirement by Song’s
“[non]contiguous” teaching . . . UT’s expert testimony regarding the “second
phase,” rather than addressing the claimed location of the
drug within the fiber, addresses a particular aspect of how
the drug is released from the fiber—an aspect not claimed. . . . Song expressly discloses that the “active agent”
and fibrous “wall material . . . must be immiscible with each
other” . . . We therefore conclude that BSC was entitled to judgment as a matter of law that claim 1 is invalid for anticipation by Song" (emphasis in original).
After reaching similar findings for other of the independent claims, and after briefly finding no infringement in any event ("The
portion relied on by UT is tubular in overall shape—the
outer coating of a ring—and has walls consisting of a zigzagging shape to match its metal frame. And UT has not
shown that the detached coating would be essentially one-dimensional, like a thread, rather than visibly two-dimensional like a ribbon. In at least these respects, UT’s accused “fiber” is not reasonably characterized as like a
thread, at least not in a way that would fit its role as a
construction of the term “fiber” in the ’296 patent, which
contemplates a fiber having a “diameter.”"), CAFC reverses.
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- An interesting mixed Alice 101 decisions this morning involving digital picture frames that I'm afraid I don't have time to write up extensively. One specifically interesting tidbit, though, is that while the DCT characterized a claim as "aspirational" without adequate implementation detail, CAFC disagrees:
"The district court’s decision below characterizes the
claim at an impermissibly high level of generality . . . the district court disregarded the
claimed advance over the prior art of an improved digital
picture frame with a physically separable user interface . . . The district court’s quote of the claim language leaves out the critical claim limitation that the user interface “is physically separable from said at least one digital picture
frame” . . . the district court’s
erroneous characterization of the claim all but ensured the incorrect conclusion that the claim was not directed to a technological improvement but instead impermissibly claimed only a result.
In sum, we conclude that claim 19 of the ’573 patent is not directed to an abstract idea under Alice step one and is therefore patent eligible under § 101."
Other claims, however, were affirmed as ineligible. So there's a nice set of true positives and true negatives here.
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.