(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
-
- In this precedential decision, CAFC dismisses for lack of jurisdiction a challenge to "a bond of $8 million pursuant to
the Idaho Bad Faith Assertions of Patent Infringement Act." Below, Owner asserted "that the Act is preempted under federal patent law", however, "[t]he district court first decided that federal law does not preempt the Act . . . and then
imposed a bond of $8 million on Appellants pursuant to the
Act’s bond provision." Here, appellants claim there's "interlocutory appellate
jurisdiction pursuant to 28 U.S.C. § 1292" but CAFC doesn't consider the bond an injunction ("[T]he
Bond Decision does not have the “practical effect” of an injunction . . . Appellants did not demonstrate that the bond
imposes any “serious, perhaps irreparable, consequence” . . . it cannot be said that the Bond Decision “can
be ‘effectually challenged’ only by immediate appeal.”"). Appellant also argued jurisdiction under the collateral order doctrine, but CAFC finds that similarly unavailing, finding its conditions unsatisfied ("In contrast to Cohen, the bond issue is “an ingredient of the cause of action” . . . Indeed, the bond issue is intertwined with the ultimate
merits question of Micron’s state-law bad faith claims because the same factors which can demonstrate bad faith in
the motion to dismiss analysis implicate whether to impose
a bond."). Thus, after briefly considering, and rejecting, Appellant's pendent jurisdiction arguments, CAFC dismisses.
-
- In this precedential decision, the CAFC majority reverses the DCT's DOE findings, permanent injunction, and denial of a new trial on willful infringement, affirming as to construction and other issues. Regarding the DOE, CAFC iterates through the required features, but finds at least one lacking ("There is no substantial
evidence the 4-in-1 seats include any such feature . . . We conclude there can be no equivalence as
a matter of law with Evenflo’s 4-in-1 seats, which do not
include any elements on the seat back for selectively detachably connecting the seat back to the seat assembly."). As for the permanent injunction, Owner either "expressly declined to request such relief" or the record didn't support the injunction ("[B]ased on the record before us and the reasoning provided by the district court, we
reverse the district court’s grant of a permanent injunction
as to the ’043 patent") and so CAFC reverses. As for the willful infringement, CAFC agrees that the DCT should not have excluded "an email chain in which an
employee of Evenflo’s affiliated corporation . . . notified Evenflo employees that one of the accused products might fall within
the scope of claim 1 of the ’043 patent and asked how to “avoid the claims of the patent”" ("The messages reproduced above are clearly probative
of willfulness, and they are not merely cumulative of Evenflo’s stipulation to awareness of the ’043 patent."). Judge Reyna dissents here as regards the emails because the third circuit employs a deferential evidentiary standard ("The Third Circuit applies “[p]articular deference” to
the district court’s new trial determination stemming from
a ruling under Fed. R. Evid. 403, which “itself [is] entrusted
to the [district] court’s discretion” . . . Rule 403 is a balancing test . . . Applying the Third Circuit’s deferential standard of review, I would affirm the district court’s decision to deny
Wonderland a new trial on willful infringement.").
-
- CAFC affirms denial of pre-suit damages here and attorney fees. Considering arguments regarding both upon appeal, CAFC first agrees regarding the fees, agreeing that evidence supported each of the DCT's four factors ("(1) “Ortiz’s position was
substantively weak given it knew, or should have known,
that its complaint stated no viable damages theory” . . . Ortiz was apprised of the need to plead compliance
with 35 U.S.C. § 287(a) to support its claim for pre-suit
damages” but did not do so; (2) Ortiz’s “litigation conduct
was unreasonable in that it failed to comply with the
Court’s discovery deadlines . . . ”; (3) Ortiz “made a settlement demand unrelated to the merits of [the]
litigation”; and (4) Ortiz had a “history of infringement actions involving the Asserted Patents that have been voluntarily dismissed or were dismissed for failure to state a
claim before any discovery commenced.”"). As for the marking and pre-suit damages ("For more than a century and a half, patent law has required that a patentee either mark patented articles or provide notice to an accused infringer as a prerequisite to
recovering damages for the sale of infringing articles"), CAFC agrees, for while there may have been available counterarguments, it doesn't seem any were raised ("Ortiz
could have responded to Vizio’s motion to dismiss by arguing that because Roku and Panasonic were not licensed to
make and sell infringing products in the future, the marking statute imposed no obligation on Ortiz to make an effort
to require Roku and Panasonic to mark the products Ortiz
had accused of infringing its patents. But Ortiz did not
make that argument in the district court and has not made
that argument in this court."). Ergo, affirmed.
-
- A (very) brief opinion granting a motion to dismiss for lack of infringement analysis. While "it is enough that a complaint places the alleged infringer on notice of what activity is being accused of infringement" this serves as a reminder that "[t]here
must be some factual allegations that, when taken as true,
articulate why it is plausible that the accused product infringes the patent claim." Basically, the claims include a "traceroute limitation" that neither the DCT nor CAFC can find as being adequately alleged ("The SAC’s only
non-conclusory allegation that Kollective’s Accused Product satisfied this trace route limitation was that it
“[u]tiliz[es] pings and traceroutes [to] gather key information about the surrounding network by monitoring the
location of other [mesh] agents and constantly gauging how
local area links are performing . . . SAC “fails to allege facts showing that the Accused
Product segments content based on a trace route, and instead includes facts that contradict its own infringement
theory.”"). Ergo CAFC affirms dismissal, and as the plaintiff has already filed three complaints (and is requesting leave to file a fourth), with prejudice.
-
- CAFC precedentially affirms this JMOL grant for invalidity based upon ineligible subject matter, indefiniteness, and anticipation. The patent claim had previously encountered printed matter issues, but CAFC agrees here that anticipation alone suffices for invalidity. Here, Owner challenges the following three findings of the JMOL:
-
"(1) the jury had no basis to find that the three prior art ports
lacked the claimed “identifiable feature[s]” and “radiographic marker[s]”;
-
"(2) the claimed “radiographic letters”
are printed matter not entitled to patentable weight; and"
-
"(3) the jury had no basis to find that the three prior art
ports are not power injectable."
Regarding (1) and (2), basically, CAFC agrees with the DCT that the alleged distinguishing features are excluded based on the printed matter doctrine: "the
claimed “identifiable feature[s]” and “radiographic marker” require nothing more than a radiographically discernible feature, and further that “radiographic letters” are printed matter not entitled to patentable weight, and therefore
cannot be used to distinguish the prior art . . . Bard improperly relies on testimony and documents relating to identification for
functionality, which is printed matter not entitled to patentable weight." Regarding (3), CAFC finds adequate evidence in the record to support the DCT's conclusion ("The district court determined that Bard’s expert admission that “at least some of [Bard’s ATP] ports were
structurally capable of the claimed flow conditions” left no
room for the jury to reject AngioDynamics’ contention that
ATP was power injectable, and that “objective, documentary evidence confirmed [that] doctors” had used the prior
art ports at the claimed flow rate of 1 milliliter per second."). 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.
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.
