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.
    • After finding, in passing, that the petitioner had standing to appeal (as the patent-holder had refused to grant a covenant not to sue, made various public statements regarding scope of the patent coverage, suit appears imminent, etc.), CAFC then affirms the Board's denial of the petition, as the prior art did not disclose the claimed phospholipid range specifically, nor was taught by the ranges which were disclosed (petitioner instead arguing that POSITA would infer the range following certain arithmetic operations).
    • In contrast to the peer case, CAFC here finds that that the petitioner lacked standing to appeal at the time the appeal was filed (e.g., the patent-holder indicated that it had "never initiated a patent infringement action or directly accused Moderna of infringing its patents" and petitioner Moderna had consistently "taken the position that it was not using Protiva’s patented technology and did not intend to do so"; where petitioner had taken licenses "Moderna has provided no evidence as to how, if at all, its obligations under the Acuitas sublicenses would change if it is successful in its attempts to have the ’435 patent declared invalid while the remaining licensed patents continue to exist").
    • Obviousness discussion obviated in view of written description determination in peer Biogen case.
    • As the specification made only a single passing reference to the claimed dosage range for treating multiple sclerosis (MS) (among a wider range and not in reference to treating MS specifically), the CAFC majority affirms the district court's finding of lack of written description support. In dissent, however, judge O'Malley observes that written support for dosages demonstrating "therapeutic effect" (what the claim says) and "clinical efficacy" (what the district court analyzed based upon the usage of the term "therapeutic effect" in the specification and the procedural posture) are not the same, and so should be distinctly considered by the district court.
    • CAFC agrees with the Board that the prior disclosure was insufficient to support the claimed ranges in a continuation application, noting that while the disclosure need not be "in haec verba," "[n]o range of 'about 40 wt % to about 60 wt %' appears in the '571 application." Conversely, CAFC defers to the Board, finding that the limitation "about 48.2% of the polymer" was adequately disclosed.
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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 QED and semiconductor)
  • 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.