(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC affirms the construction of "heat exchanger" begetting obviousness invalidity in this matter involving "cooling systems for electronic displays." As for the construction itself, CAFC sees nothing in the plain language / specification / prosecution history that would "limit the term “heat exchanger” to heat exchangers with enclosed channels or tubes" (indeed, "the specification suggests the invention can work with
“heat exchangers” of all forms, stating that “many types of
heat exchangers are known and can be used with any of the
embodiments herein.”"). Ergo, after very briefly reviewing the obviousness reasoning, CAFC affirms.
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- In this precedential PGR opinion (n.b., the claims were amended during the PGR), CAFC clarifies requirements for appellate standing. CAFC first announces the standard:
"To establish standing, an appellant must have “(1) suffered an injury in fact, (2) that is fairly traceable to the
challenged conduct of the [appellee], and (3) that is likely
to be redressed by a favorable judicial decision” . . . To establish an
injury in fact, an appellant must show it has “suffered ‘an
invasion of a legally protected interest’ that is ‘concrete and
particularized’ and ‘actual or imminent, not conjectural or
hypothetical.’”"
Here,
"ironSource argues it has met its burden to establish an
injury in fact, based on the potential infringement liability
suggested by DT’s “veiled threats” of infringement—
namely, that DT’s intellectual property covers certain
“Click to Install” (C2I) features of ironSource’s now-discontinued Aura product . . . Mr. London testified that, in early 2021, he learned from
ironSource’s actual and potential customers that DT alleged to have one or more patents covering the C2I features . . . Mr. London also testified that,
because of these allegations, ironSource was compelled to modify Aura’s C2I features and make business concessions, such as additional indemnifications to its customers, to
mitigate the risk of potential litigation by DT . . . The declaration shows that in August 2022, ironSource suspended the Aura product with modified C2I features."
Alas, such concerns are insufficient, particularly in view of the claim amendments ("Mr. London’s declaration is insufficient to establish an
injury in fact because, although it establishes that ironSource previously developed and released a product, it fails
to demonstrate concrete plans to reintroduce this product
with features that are implicated by the substitute claims
at issue" (emphasis in original)).
"Because ironSource does not show how the C2I features are implicated by the substitute claims, which introduce two narrowing limitations and issued after DT’s
alleged “veiled threats” of infringement, we conclude ironSource has failed to show injury in fact based on potential
infringement liability. "
Ergo, dismissed.
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- CAFC affirms anticipation and noninfringement findings by the ITC in connection with "an air conditioning device for nautical vehicles", particularly "the problem of providing
easily installable marine air conditioners in a confined and
tightly packed space." Appellant asserts an improper claim construction in both instances, and CAFC takes this as an opportunity to reiterate the "Becton" principle that "“[w]here a claim
lists elements separately, ‘the clear implication of the claim
language’ is that those elements are ‘distinct component[s]’
of the patented invention”" (though "[t]he context provided by the patent as a whole is . . . important in determining what to make of a separate listing of two differently named structures."). Here, it's disputed "whether the “assembly” must be physically disjoint from (except for attaching to) the claim-required
“main body.”" Appellant argues that, being separately listed, they must be distinct per the Becton assumption. Alas, CAFC agrees wtih the ITC that the presumption was overcome ("[N]o other claim language undermines a conclusion that a portion of the assembly can be part of the main body . . . Figure 1 of the specification includes a guiding
cover and a main body, where the main body consists of the
drain pan “and what is mounted above it.” . . . The figure shows that, in the patent, the guiding cover can thus be mounted above the drain pan via the evaporator, and in turn, can be included in the main body, as the main body is defined."). As regards noninfringement, here Becton DOES apply as to first and second axial limitations ("The
claim language and other intrinsic evidence strongly indicate that two independent rotation hubs—two types of rotation—are required."). Ergo, affirmed.
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- This is a very brief anticipation / obviousness affirmance, included here for its related clarification that the Cisco IronPort AsyncOS
IPUG 7.1 for Web User Guide ("IPUG") was an antedated publication because "an archived version of the
webpage housing IPUG dated before the ’526 patent’s priority date" was entered into the records. As the record "also includes an expert declaration explaining that a person of ordinary skill would
have looked for and located product manuals and technical
documentation from vendors in the field, including materials like IPUG" CAFC finds this sufficed.
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- This precedential decision is an important reminder to do your best to get assignments in order. Of the four inventors, two were unlisted and from an outside company. During litigation, one of the missing inventors was located, but the other (Huang) was never found. Ultimately, that proved fatal to the patent, which was invalidated ("A patent must accurately name those who invented its claimed subject matter . . . Inventors occupy the central role in the patent process. They are where it all begins, even if they eventually assign their interests to others, such as employers. Thus, their explicit references in the statutory framework cannot be taken lightly . . . Invalidity for incorrect listing of inventors has a clear basis in the statute . . . when an invention has multiple inventors, they must all be listed on the patent . . . Because it is undisputed that Huang is a coinventor . . . the patents suffer from the error of an omitted inventor. And because Fortress could not correct the patents under § 256 [because they couldn’t find Huang], the patents are therefore invalid due to an omitted inventor.").
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.
