(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- Precedential decision on the CRISPR drama, still focusing on the pre-AIA conception aspect, particularly remanding for factual determinations around what PHOSITA could do ("The key question here is “whether [Regents’ scientists] had formed the idea of [the invention’s] use for [its intended] purpose in sufficiently final form that only the exercise of ordinary skill remained to reduce it to practice” “without extensive research or experimentation” . . . The Board erred by refusing to consider whether a person
of ordinary skill could have achieved the function of editing
eukaryotic DNA . . . the Board legally erred in failing to consider evidence of purported experimental success by others presented on the record . . . the Board legally erred by failing to consider
whether Regents’ scientists described routine methods or
skill in their disclosures at asserted conception dates, and
whether they used routine methods or skill in subsequent,
purportedly successful experiments . . . In sum, the Board erred by failing to consider routine
methods or skill, focusing almost entirely on Regents’ scientists’ perceived experimental difficulties and related
statements of doubt"). However, while vacating/remanding as to the above, CAFC affirms as to the Board's written description analysis ("Given that the P1 applicants failed to disclose specific instructions or conditions necessary for CRISPR-Cas9 activity in a eukaryotic cell, or an
indication that no specific instructions or conditions were necessary, the Board ruled that a person of ordinary skill in the art would not understand P1 to show or establish possession . . . Both in form and in substance, the Board correctly assessed possession and thus
did not commit legal error."). Finally, CAFC sets aside challenges to the construction of "guide RNA" as moot, since the challenge was raised in a preliminary motions whose rulings were "based on independently sufficient grounds for denial, irrespective of the Board’s claim construction ruling."
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- CAFC precedentially reverses this preliminary injunction, since the injunction effects no change in the anticipated product launch timelines ("Because Incyte
cannot enjoin Sun from launching after its ’335 patent expires, Sun’s multi-year head start is inevitable regardless
of any injunction . . . It was clearly erroneous for the district court to find that Incyte would be first to market if its preliminary injunction were granted . . . Incyte fails to provide nonspeculative evidence that it will be irreparably harmed by
Sun’s launch under these circumstances where Sun’s
multi-year head start is inevitable").
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- CAFC precedentially affirms registration denial on the mark "Space Force" as fostering a false connection with the U.S. Space Force. This is precedential to clarify the timing for evidence ("Foster argues determining whether there is a false connection can only be based on facts prior to the application’s filing date . . . The government argues
the determination can be based on facts after the filing date"). Previous caselaw referred to the "time the mark was registered" as salient for the false connection analysis. Here, however, since the mark is being refused, i.e., it isn't yet registered, CAFC clarifies that the time of examination is what's pertinent ("we
hold § 2(a) bars registration of a pending application for a mark that falsely suggests a connection as of the time of examination. The false connection inquiry can therefore
include evidence that comes into existence during the examination process."). Based on those dates, CAFC finds adequate evidence of false connection and affirms.
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- CAFC precedentially finds lack of standing for this appeal ("To show standing, an appellant must have “(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision.”"). Here, CAFC finds insufficient evidence for potential infringement liability on the original record, finds the Appellant's delay in filing a Lee declaration unjustified, and even if justified, "the supplemental Lee declaration does not make standing patently obvious and inserts a new theory as to how Incyte’s product will satisfy the dosage limitation." Basically "Incyte’s development plans amount to an expression of intent to create a product that runs a substantial risk of infringement if it is able to clear all development hurdles, secure FDA-approval, and bring its product to market. This is too speculative to show concrete plans to develop a deuterated ruxolitinib product to treat hair loss at specific dosages." Ergo, dismissed.
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- CAFC precedentially affirms the DCT's invalidity decision for prior public use based upon references appearing in a preceding IPR. This is precedential because CAFC is clarifying that it's not the reference itself, but the basis for applying the reference, before the IPR that triggers estoppel under the statute ("Whether Ingenico should be estopped depends on the
proper interpretation of the term “ground” used in
35 U.S.C. § 315(e)(2) . . . prior art is evidence of a ground, not coextensive with a
ground . . . while patents and printed publications are evidence
that support a ground that the claimed invention was patented or described in a printed publication, they are not coextensive with a ground . . . we hold that IPR estoppel applies only to a petitioner’s assertions in district court that the claimed invention is invalid under 35 U.S.C. §§ 102 or 103 because it was patented or described in a printed publication (or would have been obvious only on the basis of prior art patents or printed publications). IPR estoppel does not
preclude a petitioner from asserting that a claimed invention was known or used by others, on sale, or in public use
in district court . . . Here, Ingenico challenged that the DiskOnKey System
was known or used by others, on sale, or in public use.").
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.
