(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms no infringement for claims directed to a "method of controlling hyperglycemia secondary to hypercortisolism in a patient with endogenous Cushing’s syndrome." Basically, finding no direct infringement, there's no basis for secondary infringement ("[T]he district court found that Corcept had provided no evidence that any physician had ever
practiced the claimed methods . . . the district court found that future direct infringement was “highly unlikely” based on evidence that (1) physicians avoid the claimed methods due to
the safety concerns and dosing problems associated with
coadministration; (2) a noninfringing alternative, osilodrostat, is available and preferred as a treatment for hypercortisolism; and (3) a physician could follow the proposed label and not infringe the claims.").
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- CAFC precedentially affirms no infringement of this claim with a means-plus-function limitation ("“encoding means for synchronizing” two input data streams").
"[T]he specification describes FIG. 4A’s logic
block 34, a logic design circuit containing a multitude of elements, as the corresponding structure for performing the synchronizing function. Because GET and its expert
failed to account for many of the elements in block 34 in their infringement analysis, we agree with the district court that GET presented a deficient infringement case as to this limitation and we thus affirm . . . Dr. Fernald offers no
meaningful explanation of why the bit-rate clock is the only
part of logic block 34 that matters. GET does not argue
now, nor did it attempt to argue before the district court,
that the other elements of logic block 34 are, e.g., devoted
to only the encoding function and therefore may be ignored
for the purposes of synchronization. Thus, the district
court found that Dr. Fernald was deficient in his explanation of why he had considerably curbed his analysis of logic
block 34 to just one of its elements . . . Like the expert in Traxcell Technologies, Dr. Fernald has
“neglected to address a significant fraction” of logic block
34. "
CAFC similar opines that the Plaintiff didn't consider the accused structure in adequate detail ("Driving this very broad
infringement theory was GET’s failure to review schematics of the Accused Products’ Bluetooth module, causing the
Accused Products to be left as something of a black box."). Ergo, affirmed.
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- Brief obviousness affirmance in this IPR for "systems for and methods of automatically adjusting audio levels in user-worn devices in order to improve the
user’s situational awareness." "Neither grammar nor logic warrant reading ST1’s
claim as requiring an order of steps such that the adjusting
of the mixing gain occur only after the activating of the
voice timer . . . Nothing in the specification compels the rigid order of
steps ST1 advocates." Notably, CAFC considers the last antecedent rule in its analysis ("Even assuming, without deciding, that the Director is wrong about the
application of the last antecedent rule here, the result is
only that some adjusting must occur “during a voice timer.”").
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- CAFC precedentially affirms denial of this JMOL seeking obviousness of claims involving "pre-lit artificial trees with decorative lighting" and (more significantly post-EcoFactor) agreeing with the DCT's damages findings based upon a not invalid dependent claim. Regarding the latter, basically:
"Polygroup argues that because the Board held claim 10 unpatentable,
the added value of claim 15 is limited to the use of coaxial
barrel connectors themselves . . . Polygroup maintains
Willis should have apportioned to the incremental value of claim 15 by removing any damages attributable to the
limitations claim 15 incorporated from claim 10. Under
that theory, Willis’ recoverable damages were limited to
the use of coaxial barrel connectors themselves, and no
more. We do not agree. "
CAFC distinguishes the invalidity of Claim 10, which occurred under the BRI as part of an IPR, with the anlaysis of Claim 15 here, which used constructions unique to the DCT ("In particular, the district court construed claim 10 to require
forming a simultaneous mechanical and electrical connection regardless of rotational orientation (i.e., doing so in
one step), whereas the construction applicable in the IPR
did not require this one-step functionality . . . Thus,
neither the Board nor the district court found claim 10 unpatentable under the district court’s construction. For at
least this reason, the IPR determination does not preclude
Willis from relying on the one-step functionality of claim 10
as part of the value attributable to the coaxial barrel connectors of claim 15 . . . What value is attributable to the
coaxial barrel connectors is a question of fact for the jury."). CAFC thus takes this as an opportunity to reiterate that under FRCP 702, the court's job is to assess admissibility of expert testimony, but it's for the jury to then assess the substance, which can involve a selection from several viable determinations ("When undertaking the fiction of the hypothetical negotiation, the record may support a range of reasonable outcomes sufficiently provable by any one of multiple reliable methods rather than a single correct figure . . . That competing
experts reached different royalty conclusions does not establish the unreliability of either analysis; disagreement
alone, without a separate basis for finding unreliability,
merely leaves the question of which analysis to credit to the
jury."). Here, since the DCT satisfied its gatekeeping role, CAFC affirms the jury's subsequent findings.
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- CAFC affirms this jury verdict for indirect and willful infringement for claims on "direct-current–direct
current (“DC-DC”) converters" ("The
jury found that Vicor did not infringe claim 2 of the ’190 patent but indirectly and willfully infringed claims 55 and 67
of the ’702 patent, awarding $6.5 million in damages"). Defendant actually began the process by seeking a declaration of noninfringement, but plaintiff not only prevailed, but then sought attorneys fees:
"SynQor argued that the case before the district court
was exceptional because Vicor’s infringement merits defenses, infringement equitable defenses, and counterclaims
were exceptionally weak. SynQor further argued that Vicor litigated the case in an exceptional manner by filing a
series of ex parte reexamination petitions after its inter
partes review petition had been denied and using its counterclaims to introduce inflammatory and prejudicial allegations (including SynQor’s so-called “Kill Vicor”
campaign) . . . As to enhanced damages,
SynQor argued that the case was exceptional because Vicor
had no good-faith belief of noninfringement or invalidity
and litigated the case in bad faith. The district court
granted both motions"
CAFC affirms as to infringement:
"As to indirect infringement, Vicor’s arguments amount
to no more than an invitation for us to reweigh the evidence
before the jury and make various inferences in Vicor’s favor. This we decline to do. As to willful infringement, the
district court correctly found that the jury’s verdict was
supported by substantial evidence. While we agree with
Vicor that the standards for willful infringement and willful blindness are different, we hold that the evidence in the
record, taken in the light most favorable to the jury’s verdict, was sufficient to prove both indirect infringement and
willfulness . . . The problem with Vicor’s argument at bottom is that it
relies on drawing inferences from the evidence that the
jury was simply not required to make . . . The jury heard extensive evidence that Vicor monitored and reverse engineered SynQor’s patent-marked
products . . . was made aware of SynQor’s position
that Vicor’s products were not a noninfringing alternative . . . and chose
to indemnify Cisco rather than provide a legal opinion that
its products did not infringe . . . On this
record, the “requisite intent to induce infringement may be
inferred from all the circumstances.”"
After likewise affirming willfulness ("the jury was
properly instructed that it could only find willful infringement") CAFC concludes by affirming the attorneys fees ("The district court walked through the Read factors and
awarded enhanced damages well within the statutory treble damages permitted by statute.").
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.