(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially affirms this Gilbert Hyatt prosecution laches decision for applications from among the 400 he filed prior to the 1995 GATT agreement. Previously, CAFC held that the PTAB applied laches improperly ("We explained that . . . the party asserting a prosecution laches
defense in a § 145 action must show the delay was prejudicial."). Affirmed below on remand, it's here again on appeal, and Applicant first argues that there is no laches under 145, but CAFC ignores this since it was previously addressed ("The law-of-the-case doctrine posits
that when a court decides upon a rule of law, that decision
should continue to govern the same issues in subsequent
stages in the same case"). The only other challenge here is abuse of discretion ("Mr. Hyatt argues that in light of
the 1992 Board Decision, he had no reason to change the
manner in which he prosecuted his applications until 2002,
when this court announced in Symbol Technologies, Inc. v.
Lemelson Medical, Education & Research Foundation,
L.P., 277 F.3d 1361 (Fed. Cir. 2002), that prosecution
laches was an available defense in district court infringement actions"), but this was forfeited as unpresented below. Finally, CAFC affirms that there's no standing for the matters ruled in his favor below ("We assume, without deciding, that Mr. Hyatt’s bare allegation of
dissatisfaction with the Board’s decision is enough to establish Article III jurisdiction over the Board’s reversal of
the examiner’s rejections at the pleading stage. However,
this bare allegation is not enough to establish Article III
jurisdiction for the remainder of litigation . . . The party simply cannot allege
nonobvious harm, without more."). Ergo, affirmed.
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- CAFC reverses and affirms in part this matter involving location-based audio, with some irregular behavior at the DCT, which decided to postpone written description contentions until after the infringement trial. Construing the DCT's behavior as a 112 challenge, CAFC finds alternative support in the priority materials beyond the contested subsequent amendment ("Moreover, there is no question that Sonos had described and had possession of that invention at least as
early as 2007, as the cited disclosure appeared verbatim in
the nonprovisional application, filed that year, from which
the Zone Scene patents claim priority . . . For at least the foregoing reasons, we hold that the district court erred in entering judgment that the asserted
claims of the Zone Scene patents are invalid as lacking
written description of overlapping zone scenes."). CAFC then considers prosecution laches in view of a 13-year delta in seeking the current amendments, but doesn't find sufficient evidence of prejudice ("Google presents no evidence that it suffered
prejudice attributable to Sonos’s delay in claiming, but not disclosing, overlapping zone scenes"). However, CAFC agrees with the DCT's summary judgement findings on obviousness ("We further agree with the district court that there is
no genuine dispute of material fact that the combination of
YTR2 and the ’998 patent would have rendered obvious the
“device picker” limitation at the time of the alleged invention."). Ergo, reverse/remanded as to the first two issues, and affirmed as to the last.
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- CAFC vacates and remands this database structure IPR for reconsideration under the proper claim construction. "Google faults the
Board for “effectively constru[ing] ‘automatically classifying’ to exclude automatic retrieval of a word’s predetermined classification . . . . thus requir[ing] automatically creating a classification.”" CAFC agrees ("In light of the
other claims and the specification, Google explains that
“classifying” refers to identifying a word’s predetermined
categorizations (i.e., classifications). Mindbase
does not meaningfully dispute this argument . . . as Google correctly states, the “specification
describes the ‘dictionary routine’ as the act of looking up
words already in the database” . . . Mindbase does not point to anything in the prosecution
history detracting from our conclusion. Thus, the intrinsic
evidence establishes that Google’s proposed construction is
correct, and we adopt it."). CAFC also chastises the Board for not considering the Petitioner's reply ("By not considering the arguments made by Google in
its reply and the supplemental declaration provided by
Google’s expert, Dr. Jansen, the Board abused its discretion . . . greater detail is allowed on
reply, provided that the reply is responsive . . . and not new."). Following these reversals, CAFC affirms as to various of Owner's cross-appeals before remanding.
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- In this precedential decision on a trademark matter pending for nearly a decade now, the CAFC majority vacates and remands the PTAB's rejection of "FUCK" as a standard character mark for jewelry and other goods (commerce . . . keepin' it classy). Basically, the PTAB affirmed the refusal based upon the "failure to function" doctrine, despite contrary past registrations. Accordingly, here
Mr. Brunetti argues that the Board erred by allowing the registration of some all-purpose word marks while
inexplicably denying registration of others, including registrations for the word FUCK, without any explanation as
to the difference. For example, Mr. Brunetti argues that
the PTO has registered other marks consisting only of a
ubiquitous word that has a variety of meanings, such as
LOVE, and that “all of the 100 most common words in English are registered.”
The majority feels the PTAB must reconcile its analysis with these past cases ("[T]he Board must provide rational
guidance that is sufficiently explained . . . That guidance is missing here . . . The
Board consistently dismissed Mr. Brunetti’s reliance on
other registered marks by explaining that “the cited third party registrations for other single word marks, perceived
in a vacuum without any contextual information, are not
relevant” . . . But the Board did not explain what such
contextual information might be."). While the majority remands for that analysis, Judge Lourie dissents ("A trademark is not a trademark unless it . . . tells the
public who is responsible for a product . . . Substantial evidence supports a conclusion that the f-word cannot do so for the classes of goods in Brunetti’s
applications . . . The majority well points out shortcomings in the
Board’s analysis of the failure to function issue. But anyone living in today’s society of degraded language" - HERE HERE JUDGE LOURIE - "can readily tell that the f-word does not indicate the source of the proposed trademarked goods and distinguish them from
goods of another.").
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- In this precedential decision, CAFC clarifies (did it really need clarification?) that despite the AIA moving us to first to file, in derivation, first to invent can still serve as prima facie evidence of independent conception by the alleged deriver ("[W]hile it was error for the Board
to predicate its conclusions on Selner being the first-to conceive, this error does not affect the Board’s decision: in
finding Selner was the first-to-invent, the Board also
indirectly determined that he independently conceived and,
thus, did not derive his invention from Burnam."). Here, CAFC iterates through four arguments contesting the analysis reaching that conclusion:
- Lack of corroborating evidence ("The Board proceeded in a manner consistent with our
precedents");
- Misplaced burden of proof ("[A]t no point did the Board require GHS
to prove that Selner did not conceive the Invention");
- Failure to show actual reduction to practice ("[W]e have not held that actual reduction to practice is always
necessary for complete conception to occur in unpredictable
fields of invention. In fact, we have rejected this
contention . . . GHS cites no authority, and provides no persuasive
reason, for requiring Selner to have reduced the Invention
to practice in order to have fully conceived of it"); and
- The later filer should be considered as a joint inventor ("GHS’ request
to correct inventorship was not properly presented to the
Board and is forfeited . . . a contested request
for correction of inventorship in a patent application must be made in a separate motion under 37 C.F.R. § 42.22,
accompanied by the processing fee as well as an application
data sheet identifying each inventor")
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.
