Contact - Sessions
James Skelley | Technology Lawyer
Sessions are online meetups for discussing recent legal news, general education, and sharing various of James' research. The next scheduled session is:

You can find a complete listing of upcoming sessions and request to join HERE.
(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
  • In Re PEN - 2024-06-12
    • CAFC affirms the Board's nonenablement finding for "metallole polymers with a polycyclic repeating unit backbone" as certain new arguments made upon appeal were forfeited below and as the "claimed polymer [had] no upper limit to the number of repeating units" ("The prior art cited only achieved a polymer with an “n” of 8. Given the disparity between the prior art’s “n” and the claimed “n,” finding this factor weighed against enablement is supported by substantial evidence . . . the Examiner found the information provided by the specification is not sufficient to enable a skilled artisan to make the claimed invention.")
    • In this DCT litigation involving "automated clinical instruments that measure certain characteristics of human blood samples", particularly "copyright infringement, patent infringement, and trade secret misappropriation" thereof, before various motions reduced the focus here to trade secrets involving "the conversion algorithm trade secret, which comprises “[p]ortions of computer program source code concerning the conversion of photometric measurements, including source code containing four specific conversion constants”" and "the alleged signal acquisition trade secret, which involves “the process by which Alifax’s devices gathered ESR related raw data through signal acquisition.”" CAFC agrees with excluding the latter from trial ("Alifax failed to meet its burden of proof to establish the existence and scope of the alleged signal acquisition trade secret . . . Alifax not only failed to describe the alleged signal acquisition trade secret with sufficient detail but also failed to identify its proper scope"). As to the former, however, CAFC agrees that the DCT abused its discretion "in finding that the jury verdict was against the clear weight of the evidence . . . because it did not consider whether the evidence could establish that the trade secret was acquired through improper means, which alone is sufficient to satisfy the definition of misappropriation under RIUTSA." CAFC considers several other issues, including damages (the DCT "abused its discretion in precluding Alifax from presenting any compensatory damages testimony or evidence at the new trial from previously disclosed witnesses who could address the damages issues") and attorneys' fees (the DCT "did not abuse its discretion because it correctly found that Alifax’s patent claims “were not exceptional” and properly considered arguments raised by Alcor"), before remanding.
    • A CAFC majority precedentially affirms 101 validity, infringement, and damages findings for systems "controlling the operational status of an HVAC system." CAFC briefly discusses and affirms the 101 ("Because trial on the merits of the § 101 issue was held, the court’s denial of summary judgment is not appealable.") and infringement ("We conclude that the jury’s infringement verdict is supported by substantial evidence") issues before focusing most of its effort upon the damages analysis, particularly affirming adequate application of the hypothetical negotiation model ("Far from plucking the $X royalty rate from nowhere, Mr. Kennedy based this rate on the following admissible evidence: three license agreements and the testimony of EcoFactor’s CEO, Mr. Habib . . . In light of the three license agreements, Mr. Habib’s testimony, and the EcoFactor-Johnson email chain, we determine that Mr. Kennedy’s damages opinion concerning the $X royalty rate was sufficiently tied to the facts of the case and thus admissible"). Judge Prost dissents, believing the majority "muddles . . . at worst contradicts" precedent regarding derivation of the "reasonable royalty from a lump-sum license and requiring the patentee to confine its damages to the value of the patented technology." Particularly, as the license used in this analysis explicitly recited that its lump-sum payment "is not based upon sales and does not reflect or constitute a royalty" Judge Prost believes that the payment should not have been used as part of the $X rate analysis.
    • CAFC affirms an ex parte obviousness determination for a WYSIWYG browser-based website generation tool based upon the factual record. Particularly, CAFC focuses on the term "substantially contemporaneously", agreeing with the Board's construction and application ("The ’397 patent repeatedly explains that any change made by the user is “immediately” displayed . . . The patent further teaches that immediateness is measured from a human’s perspective, not a computer’s . . . Thus, based on the intrinsic evidence, the correct construction of “substantially contemporaneously” in the ’397 patent is “happening at the same period of time from a human perspective.”"). Based upon this construction, CAFC finds the Board's reasoning supported by substantial evidence, and so affirms.
  • SPECK v. BATES - 2024-05-23
    • CAFC precedentially considers a legacy pre-AIA interference matter, particularly concerning the pre-AIA 135(b)(1) time bar ("A claim which is the same may not be made . . . unless such a claim is made prior to one year from the date on which the patent was granted"). CAFC begins by noting that "there has been a long-standing exception to section 135(b)(1) when the applicant files its claim after the critical period but “had already been claiming substantially the same invention as the patentee” during the critical period." CAFC here decides to use the "two-way" test for assessing interferences also for assessing such substantiveness ("An interference-in-fact exists when one party’s claims corresponding to the count anticipate or make obvious the other party’s claims, which correspond to the same count, and vice-versa (a so-called two-way test) . . . We also think applying a two-way test to analyze material differences makes sense given that a two-way test is used to determine if there is an interference in fact . . . Because precedent and policy favor application of a two-way test, we hold that the two-way test should be applied to determine if pre-critical date claims and post-critical date claims are materially different"). Applying the two-way test, CAFC finds the claims time-barred ("The prosecution histories and other proceedings before the PTO demonstrate the differences in these limitations are material to their respective inventions.").
More . . .
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.