(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- This is a PGR appeal finding obviousness on a draw-based lottery ticket patent. CAFC affirms ("We agree with InComm that the Board’s findings were supported by substantial evidence and that Szrek would have rendered claims 1–6 of the ’894 patent obvious."; "[B]ecause Szrek taught that from scanning a ticket, the lottery administration system could alone determine whether the ticket was eligible to win a prize, it logically followed that the lottery administration system “possessed the information necessary to establish payment and activation for the ticket . . . when it received the activation request.”").
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- CAFC again considers a mandamus transfer from WDTX ("The central dispute in this case is whether WDWA is relatively more convenient for the potential witnesses") and again chastises the lower court ("The district court found no difference in the comparative
convenience to the party witnesses, even though it recognized there to be at least 27 such witnesses in WDWA and
no such witness in WDTX . . . That was a clear abuse of discretion . . . After correcting for that clear abuse of discretion, consideration of the other relevant factors shows that WDWA
is a clearly more convenient forum . . . We therefore conclude that denial of transfer here was patently erroneous.").
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- In this precedential obviousness case on floor mat construction, CAFC reverses the PTAB's nonbviousness finding based on secondary considerations ("commercial success, long-felt but unsolved need, and industry praise") as to a first set of claims and affirms obviousness as to a second. For the first, CAFC finds that the Board's "finding of secondary considerations lacks substantial-evidence support under the proper legal standard" as the Board construed related case law and the nexus analysis improperly (basically, the analysis denies "force to a secondary consideration that is exclusively related to a single feature that is in the prior art" as is allegedly the case here). As for the second set of claims, CAFC instead affirms. Here, the petitioner raised arguments in a footnote (in a reply, not the original complaint) that the PTAB wouldn't consider ("Yita contends that the argument raised in a footnote of its reply brief before the Board—that “it would have been obvious to optimize the tray to fit as closely as desired,” . . . was not a new, untimely argument because “Yita raised the argument in its [p]etition”"). CAFC, however, agrees with the PTAB that the argument is newly raised ("Yita waited until its reply to present what in substance is an argument that it would have been obvious to a relevant artisan to modify Rabbe to arrive at the one-eighth limitation") and accordingly affirms.
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- In this precedential obviousness decision, CAFC affirms an IPR upholding various catheter patents ("Medtronic asserted the OneFrench Claims would have been obvious over Ressemann
in view of Takahashi . . . Medtronic argued a
skilled artisan would have been motivated to modify
Ressemann by removing its sealing balloons and replacing
its inflation lumen with a pushrod or wire so that it could be used as an extension catheter . . . Teleflex responded that Medtronic’s modifications
would not have been obvious because they would render
Ressemann inoperable as a catheter capable of providing
embolic protection"). Despite Ressemann disclosing applications that might not be adversely affected by the combination, CAFC doesn't think those alternatives suffice to obviate the interoperability argument ("Even if Ressemann contemplates use cases without sealing balloons, the Board’s reasoning does not constitute legal error . . . We read the Board as finding that Ressemann teaches against using its device without sealing balloons because doing so while advancing interventional cardiac devices like those contemplated for use with the challenged claims might produce safety concerns . . . In other words, the Board found that removing Ressemann’s sealing balloons would undermine a goal it shares with the challenged claims—safely advancing interventional devices to treat cardiac lesions"). Separately, regarding claims concerning a "double incline" Appellant argued that the "Board erred by
(1) concluding an alternative design choice to increase entry area negated its proposed motivation to combine, (2) reasoning the location of Kataishi’s tip vis-à-vis Ressmann’s side opening (i.e., distal vs. proximal) weighed against a motivation to combine, and (3) effectively requiring physical incorporation of Kataishi into Ressemann." CAFC denies (1) ("The Board’s reasoning does not rest upon the existence
of alternative designs to achieve the same ends. It rests on
the idea that the design feature Medtronic sought to incorporate—a double-inclined opening—does not achieve that
end."), finds substantial evidence for (2) ("[g]iven its finding that
the benefits of Kataishi’s distal tip were tied to its distal
location and the “lack of any teaching suggesting any interventional devices being passed through Kataishi’s suction
catheter,” the Board reasonably found Medtronic failed to
carry its burden to establish a motivation to combine"), and likewise rejects (3) ("the Board’s decisions make no reference
to Kataishi’s materials."). CAFC finally considers, and dismisses, arguments challenging support for various claim amendments ("[W]ritten description requires only that a skilled artisan would
reasonably conclude, based on the patent’s disclosures and
the knowledge of a person skilled in the art, that the applicant possessed catheters in which the side opening could be
located outside the rigid segment.").
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- CAFC affirms the ITC's "determinations on claim construction, infringement, and invalidity." Regarding claim construction, CAFC agrees "with the Commission that the specification’s
corresponding structure for the term “means for guiding”
does not include curved surfaces", e.g., as the corresponding "surfaces shown in Figures 40 and 41 are incontrovertibly flat
from top to bottom, without any curves." CAFC then affirms noninfringement as "substantial evidence supports the Commission’s finding that the Accused Products lack a “means for guiding” . . . The Accused Products showing a sloped surface
that is partially-curved and partially-flat is substantial evidence supporting the Commission’s finding that the Accused Products lack a “means for guiding.”" Finally, regarding obviousness and motivation to combine for a separate patent, CAFC finds "substantial evidence supports the Commission’s finding of a motivation to combine
two prior art systems that supported its obviousness determination: the i60 stapler and the da Vinci Si robot." For example, appellant argues that a recall would have argued against consideration of the stapler, but "the recall was
terminated in 2010, more than a year before the 2011 priority date of claim 24 of the ’969 patent."
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 (albeit while mindful of COVID protocols).
- 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.
