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James Skelley | Technology Lawyer
Sessions are online meetups for discussing recent legal news, general education, and sharing various of James' research. The next scheduled session is:
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(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- In this precedential decision on design and utility patents for an "illuminated school bus sign", CAFC reverses the infringement determinations, finding:
- That a new trial is necessary on the design patent as "the district court erred in its construction of the term “transparency”; and
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That the JMOL should have been granted on the utility patent ("JMOL should have been
granted because no reasonable jury could have found infringement under the doctrine of equivalents") and vacates the injunction.
Regarding 1), initially, CAFC opines that it'll likely extend the utility expert POSA standard to design patents:
"In the utility patent context, an
expert witness may testify as to the perspective of a person
of ordinary skill in the art (“POSA”) even if the expert possesses extraordinary skill . . . for such an
extraordinary expert’s testimony to be relevant, the expert must establish familiarity with the perspective of a POSA . . . It seems logical that these
same principles will apply in a design patent context—such
that expert witnesses may possess knowledge beyond that
of ordinary observers yet still testify as to the perspective
of an ordinary observer, provided the expert can establish
familiarity with that perspective."
However, the issue was forfeited below so CAFC doesn't actually address it here, rather reversing based upon the construction ("[T]he description then
expressly narrows, stating the D930 patent’s “oblique shading lines visible in the front and perspective views denote transparency.” J.A. 5557. The claims, here, are limited to surfaces that possess transparency. Transparency
is not synonymous with translucency and does not mean
both transparent and translucent.
In holding that “transparency” includes “translucent,” the district court erred").
Regarding 2), despite expert testimony, CAFC finds the equivalent function excluded from the intrinsic evidence, and could not therefore have been found by the jury ("The undisputed evidence shows that the accused device does not perform the required functions. The patent indicates that the claimed invention can “removably receive
the sign” so that the signs can be exchanged, customized,
or serviced without removing the entire installation . . . Smartrend’s expert witness,
Mr. York, conceded that the accused product is “not capable of doing that.”"). Ergo, reversed / remanded on the design patent and reversed / vacated on the utility.
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- In this precedential decision, CAFC considers claims on an oil-well releasable connection, appellee arguing lack of antecedent basis for a claim reciting "the connection profile of the second part" (emphasis added) where only a "first part" was introduced. "The district court ruled that “the error” identified by
Canatex “is not evident from the face of the patent and the
correction to the claim is not as simple as [Canatex] makes
it seem”" and therefore found the claim invalid for indefiniteness. CAFC reverses ("[T]here is only one correction
that is reasonable given the intrinsic evidence"). Judicial correction requires:
- that the error be evident from the face of the patent; and
- "“(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.’”"
Here, finding the error merely clerical, and the intended meaning obvious on its face ("[N]o “connection profile of the
second part” has previously been mentioned in the claim . . . Nothing in the figures or their descriptions shows a “connection profile” in the second part . . . A relevant
reader had to understand that the passage attributing the
connection profile 16 to the second part 14 was erroneous—
and so must be the other references to the connection profile of the “second” part . . . The only reasonable correction is the changing of
“second” to “first” in the claim language at issue."), CAFC reverses.
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- In this relatively brief opinion, the CAFC majority considers construction in an IPR obviousness appeal, and agrees with Appellant that the Board's analysis lacked substantial evidence ("[T]he Board did not meaningfully
grapple with the ’039 patent’s additional constraint that
the card information determines (i.e., establishes) the
memory location of the biometric data. See ’039 patent at
claim 1. And without any explanation or evidence underpinning the Board’s assumption—that associating the card
information with the biometric data means the former controls the decision of where to store the latter—its decisions
lack substantial evidence"). Judge Wallach dissents, however, finding that the Board did adequately support its reasoning based upon expert testimony ("Mr. Lipoff was an undisputed
POSITA and expert in the subject matter whose education,
historical knowledge, and background in databases was
provided to the Board") and that the majority improperly applies too strict a standard when assessing the Board ("The majority substitutes its own analysis for that of the
Board on “underlying factual findings” that this Court is
supposed to review “for substantial evidence” . . . This occurs twice . . . First . . . The majority’s reversal
of the Board only to circumscribe Hsu’s disclosure as literally just the words of Hsu is contrary to the statutory
standard “to a person having ordinary skill in the art” . . . Second, the majority fails to examine “the record as a
whole.”).
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- In this precedential opinion, CAFC denies mandamus relief to reinstitute after the Director deinstituted several IPRs "concluding such review
would not be an efficient use of resources given the ongoing
parallel district court proceedings between the parties involving the patents." CAFC disagrees that deinstitution is a violation of Petitioner's Due Process ("[W]hen a statute leaves a benefit to the discretion of a government official, no protected property interest in that benefit can
arise . . . The Supreme Court has long
held that “[p]rocess is not an end in itself” and “expectation
of receiving [certain] process is not, without more,” an “interest protected by the Due Process Clause” . . . Motorola did not experience anything close to
the kind of unfair surprise that might raise a due process
violation."). CAFC then considers, and likewise dismisses, APA challenges as bound by Mylan ("Mylan forecloses relief on this challenge.
Much like Motorola here, the petitioner in that case sought
our review of the Board’s denial of institution based on the
Fintiv factors . . . we dismissed the appeal and denied mandamus relief,
explaining in this respect, that the petitioner’s “ultra vires
argument cannot be a basis for granting the petition for mandamus.” "). N.b., this outcome results despite Motorola filing a "Sotera stipulation stating that should IPR be instituted
it would not pursue, in the parallel civil litigation, any
ground for unpatentability that it raised or reasonably
could have raised in the IPRs."
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- CAFC affirms anticipation and obviousness findings in this IPR for claims directed to "noise-suppressing earpieces and methods for using them." Here, Owner challenges two claim constructions: "background noise level" and "based on." Regarding the former, Owner wants background noise "level" to be construed only as the aggregate background noise signal rather than as including any particular subband component:
"Techiya has consistently maintained that background
noise “level” and “signal,” although the former is an attribute of the latter, are not meaningfully different for the purposes of its present claim-construction arguments about
those terms, so independent claim 1, which uses “level,” is
representative even though the other two independent
claims (14 and 18) use “signal.”"
The Board disagreed, construing "“background noise level” to include “any one frequency subband’s particular background noise level”" (emphasis added) permitting the Board to find the term in the art ("Applying that claim construction, the Board found that Alves discloses determining a background noise level as claimed by the ’400 patent . . . which was necessary to all of its determinations of unpatentability because such a limitation appears in all independent claims"). Owner argues that the Board's approach is contrary to principles of claim differentiation (the dependent claim references "“low,” “medium,” and “high background noise levels”"), but CAFC disagrees ("The language of “background noise level” is broad
enough on its face to cover both an overall level and a level of part of the signal" (emphasis added) ". . . the specification points against Techiya’s proposal. It states, twice, that the internal and ambient sound signals can be adjusted “by the spectral profile of the background noise measurement . . . Even under Techiya’s characterization of claim 5 as limited
to an overall background noise level, claim 5 would be narrower, not broader, than claim 1, which under the Board’s
view encompasses both overall and subband levels", emphasis in original). As for "based on", Owner next argues that the Board "erroneously expanded the scope of the term “based on” beyond its
ordinary meaning to include adjustments “made independent of the background noise”" because the art's "adaptive equalizer" doesn't encounter the noise. CAFC again disagrees, for the art's equalizer appears in its processor and the processor does encounter the noise ("Techiya’s position appears to be that, for the claimed processor to adjust an internal sound signal “based on” the background noise level, the same component of the processor (such as the adaptive equalizer) must both receive the background noise and perform the adjustment . . . We agree with the Board that Techiya advances a belated, and incorrect, narrowing construction"). 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 GitHub
- Various Other Tools
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.
- Online Comprehensive Writeups
- Law Review Articles
- Legacy Articles (taken from the old www.jstechlaw.com WordPress blog)
