(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- The printed matter doctrine rears its head once more in this precedential decision reversing for misapplication thereof. In claims to a Tunneling Client Access Point (TCAP) the Board gave no patentable weight "to certain claim limitations that recite “encrypted communications” and “program code.”" CAFC disagrees, basically by reiterating that: "[P]rinted matter is matter that is claimed for its communicative content—i.e., the content specifically being communicated", emphasis in the original. "The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself." Thus, since the "encrypted communications here are not being claimed for any content that they are communicating" CAFC reverses.
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- CAFC affirms the invalidation of a shingles patent based principally upon "construction of the “extrusion lamination” term." Applying a relatively conventional Philips analysis, CAFC agrees with substantial evidence supports the Board's reasoning that the "prior art reference Lou anticipates the challenged claims of the ’482 patent."
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- CAFC precedentially reverses a finding for lack of personal jurisdiction for a declaratory judgement action as the target "directed extra-judicial patent enforcement activities at SnapPower in Utah." "The district court found that while there may have been foreseeable effects in Utah, there was no evidence that LDG reached out to Utah except in response to SnapPower’s communications." CAFC, however, applies the three factor test, and after a lengthy discussion of each factor, reverses / remands for further consideration ("Here, LDG did more than send a cease and desist letter. LDG initiated a process that, if SnapPower took no action, would result in SnapPower’s listings being removed from Amazon.com, necessarily affecting sales activities in Utah.").
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- In this parallel proceeding / res judicata timing case, CAFC precedentially vacates "enhanced damages for willful infringement and in setting the rate and effective date for an ongoing royalty" as the patent was found invalid in a parallel proceeding. Here, "NetScout contends that if, in the co-pending appeals from the Board, we affirm the Board’s findings that the claims asserted in this litigation are unpatentable, such affirmance would have “an immediate issue-preclusive effect,” leaving Packet unable to “collect on an outstanding monetary damages award for patent infringement.”" CAFC essentially agrees as "Packet’s infringement judgment was not final before the Board’s unpatentability determinations were affirmed." After discussing Fresenius and related res judicata precedent, CAFC reiterates that "remanded patent cases remain vulnerable to post-mandate developments concerning patentability, even if liability – including patent validity – has already been conclusively resolved by appellate review." Similarly: "[W]e apply a “yes/no” analysis: is there, post-mandate, anything left to do other than execute the judgment? If the answer is “yes,” then the case as a whole is not “final” and is not, therefore, immune to the impact of subsequent developments with respect to the validity of the patents on which its infringement and invalidity claims are based. Only if the answer is “no” has the Fresenius II finality requirement been met, rendering the judgment immune to subsequent developments." Thus, CAFC concludes that "the Board’s unpatentability determinations must be given effect, which
requires that we remand this case for dismissal."
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- In this precedential decision, CAFC takes up the nuanced issue of exclusionary right retention sufficient to file suit. To summarize the complicated rights situation: in 2013, OnAsset defaulted on a loan to which the patent was held in security, but the lender did not then move under its rights under the agreement as a consequence of the default. During this situation, in 2017 plaintiff (IT), a subsidiary of OnAsset, received the patent by assignment and entered into a mirrored agreement with Main Street, before itself defaulting. Here, the defendant argued that "OnAsset’s initial default in 2013 triggered an immediate transfer of exclusionary rights to Main Street such that OnAsset had no exclusionary rights to assign IT as of the 2017 assignment agreements," but the DCT instead agreed to dismiss because "the fact that “Zebra could obtain a license on the [’247] patent from Main Street” deprived IT of all its exclusionary rights" (n.b., the DCT inferred this right, it doesn't appear to be stated explicitly). CAFC disagrees, basically saying that the default only created an option to these rights. The power to do a thing is not the doing of the thing (I have the power to eat a quesadilla, but sadly, that doesn't mean I'm eating one right now). More rigorously, CAFC explains that "IT retained exclusionary rights even though Main Street had the non-exclusive ability to license the ’247 patent." CAFC takes care to note that it is only deciding "whether IT demonstrated the irreducible constitutional minimum of an injury in fact" (which requires retention of a single exclusionary right) and not "whether IT’s legal interest in the ’247 patent was sufficient to meet the “patentee” requirement of 35 U.S.C. § 281, an issue the district court did not reach" (issues often conflated in past cases; this is relevant I imagine as to the potential need to join Main Street for IT to proceed). In short, CAFC reverses, concluding "that Main Street and IT’s shared ability to license while a default existed did not divest IT, the patent owner, of all exclusionary rights." Again, the important takeaway is "that the § 281 inquiry (sometimes called statutory standing in our cases, particularly before Lexmark)" - which is curable by joinder - "and the injury-in-fact inquiry (for constitutional standing)" - which is not curable by joinder - "are distinct."
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.
