(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially dismisses owner's IPR appeal for lack of standing (no injury in fact), after the IPR found all challenged claims for a "prediction method using an in-loop filter" invalid. Basically, it's another attack on Unified's business model, seeking to identify injury based upon failure to identify the relevant parties ("(1) the statutory right of a “dissatisfied” party under 35 U.S.C. § 319; (2) the violation of Dolby’s statutory right to information under 35 U.S.C. § 312(a)(2); and (3) various harms stemming from the Board’s refusal, which amount to injury in fact"). Regarding (1): "It is well
established that a statutory right to appeal under the
America Invents Act (AIA) does not obviate the requirement for Article III standing." Regarding (2), CAFC distinguishes this from FACA and related cases providing an information right ("Even if patent owners have a right under 35 U.S.C. § 312(a)(2) to have RPI disputes adjudicated, such a right
only arises in the context of IPR proceedings; there is no
freestanding right to that information"). Finally, regarding (3), the various harms include potential license breaches, judge conflicts of interests, etc., for which CAFC generally finds a lack of evidence in each instance. Ergo, dismissed.
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- CAFC affirms that the prior art isn't analogous in this IPR appeal for a "Camera Based Sensing in Handheld, Mobile, Gaming or Other Devices." Petitioner asserted that "Mann,
like the ’924 Patent, discloses a portable camera system
that may be controlled by human gesture input, Mann is in
the same field of endeavor as the ’924 Patent", but this was a different field of endeavor than Petitioner identified in the other two references ("The Board went on to describe how Apple provided no
analysis as to why it was appropriate to have different
fields of endeavor based on the same cited disclosures . . . "). CAFC applies the two analogous art tests and finds substantial evidence for the Board's conclusions ("Apple
proffered conflicting fields of endeavor . . . substantial evidence
supports the Board’s finding because Apple’s proffered field
for other prior art required optical sensing . . ."). Notably, CAFC says that "the field of invention that a patent is directed to generally should not vary based on the prior art reference it is being compared to for purposes of the analogous art inquiry . . . There may be some situations where a
patent might have more than one field of endeavor—for example, where the specification discloses various distinct
embodiments and the claims-at-issue are directed to one of
them. But that is not the case here . . . " Thus, "When a patent owner challenges whether an asserted prior art reference is analogous, the petitioner must devote care and effort to carefully defining the field
of the invention, addressing the reasonably pertinent problem test where necessary, and fully responding based on
the facts and law." Ergo, affirmed.
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- CAFC precedentially affirms noninfringement of Moderna’s COVID-19 vaccine, agreeing with the DCT that applicant acted as their own lexicographer for "“branched alkyl” and two related claim terms" based upon the specification passage:
"Unless otherwise specified, the term[] “branched
alkyl” . . . refer[s] to an alkyl . . . group in which one
carbon atom in the group (1) is bound to at least
three other carbon atoms and (2) is not a ring atom
of a cyclic group."
Below "Alnylam asked the court to apply what it asserted
was the ordinary meaning: “a saturated hydrocarbon moiety that is not a straight chain,” with the additional requirement that a “branched C10-C20 alkyl” contains 10 to 20 carbon atoms." CAFC instead agrees with the DCT, as:
- the phrase and above passage are recited under "definitions";
- the phrase is set off in quotation marks;
- the phrase is used with "refer[s] to";
- nonlimiting terms are used elsewhere rather than "refer to";
- "the inclusion of the phrase “[u]nless otherwise specified" suggests a rule or definition.
After concluding that lexicography has occurred, CAFC considers some potentially countervailing evidence, but finds nothing to disturb the conclusion (e.g., "Though the prosecution history comes closest to suggesting that Alnylam understood a branched alkyl to include a secondary carbon, we conclude that it is not
sufficiently decisive to override the definition set forth in
column 412"). Ergo, affirmed.
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- CAFC remands to consider its revised claim construction in this matter involving "devices used for leveling, aligning, and properly spacing tiles." Here, "Acufloor argues that the district court erred in construing the term “edge” to refer to a single line at which the surface of the tile terminates, as opposed to the region in the vicinity of the very edge of the tile." While CAFC agrees with the DCT's construction, they modify it "slightly to include not only the very edge of the tile, but some amount of the tile’s surface inward from the very edge of the tile . . . for there
to be contact between the edge and either the subfloor or mortar, the edge must have some surface area." Similarly, CAFC believes the prosecution history implies that the "“edge” must include the very edge of the tile, even though it also includes some surface area extending from the very edge of the tile toward the center of the tile" ("[T]he applicants argued that the grooves of the Hoffman prior art device do not provide tile edge-to-subfloor contact because the grooves do not “penetrate the base portion”—i.e., the grooves do not go all the way through the base portion"). CAFC next disagrees with the DCT that the "“majority of an area” limitation" "refers to a majority of the area of contact between the tile and the subfloor, or a majority of the
area of the base" finding that "[t]he plain language of the “majority of an area” limitation dictates its proper construction." Judge Stark dissents as to the majority's construction of "edge", disagreeing that it "must include the
very edge of the tile or, in the district court’s words, the line
at which the surface of the tile terminates”" since he relies more upon than specification than the prosecution history in his analysis.
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- CAFC considers this decorative lighting with reinforced wiring obviousness IPR, holding "that the Board
legally erred in its motivation to combine analysis, and that substantial evidence only supports the conclusion that a person of ordinary skill in the art would have been motivated to combine Kumada and Debladis ’120." Below, the Board felt there was a "lack of information comparing the amount of copper” between various systems" for POSITA to be motivated to reduce cost by their combination. CAFC disagrees, as there was both expert testimony and argument that the combination would be expected to reduce cost (indeed, at oral argument, "Willis’s counsel conceded at oral argument that the proposed combination of Debladis ’120 and Kumada would in fact reduce the amount of copper in Kumada alone.").
"In sum, substantial evidence only supports the conclusion that a POSA would have been motivated to combine
the teachings of Kumada and Debladis ’120. The factual
record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art."
Ergo, CAFC remands for the Board to conclude the analysis, albeit while acknowledging POSITA's motivation.
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.
