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)
    • CAFC affirms a jury's anticipation finding, as well as finding that judicial estoppel "precluded Sherwin from presenting evidence to contradict its admission that the prior art . . . discloses a BPA-free substance" (during reexamination of one of its parent patents, "Sherwin represented to the examiner and to the Board that the composition disclosed in the prior art Perez patent was BPA-free and that it therefore lacked the necessary flexibility to provide a reasonable expectation of success in creating a beverage can coating by combining Perez with Christenson."). "In New Hampshire v. Maine, the Supreme Court delineated three nonexclusive factors to guide the judicial estoppel inquiry: (1) whether the “party’s later position [is] ‘clearly inconsistent’ with its earlier position”; (2) “whether the party has succeeded in persuading a court to accept that party’s earlier position, so that judicial acceptance of an inconsistent position in a later proceeding would create ‘the perception that either the first or the second court was misled’”; and (3) “whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped." Iterating through these factors, CAFC confirms application of the estoppel ("Sherwin does not appear to dispute that in the reexamination proceeding it argued that Perez was BPA-free, but it now attempts to about-face and argue that Perez, in fact, contains BPA . . . We conclude that judicial estoppel applies.").
    • CAFC affirms an IPR not obviousness determination on patents concerning "protecting against network failures in virtual private networks (“VPN”), including virtual private local area network services (“VPLS”)." CAFC first disagrees with petitioner that the Board unduly sought the exact phrase "expectation of success" in the expert's testimony. The dueling experts provided contradictory testimony, and CAFC finds substantial evidence supporting the Board's crediting one expert over the other. While "[Owner's expert] did not testify that the combination was not possible or that making the claimed combination (although difficult) was beyond the skill of an ordinary artisan . . . [N]onetheless, it was Juniper’s burden to offer proof that the combination could be made with a reasonable expectation of success. In this case, [Owner's expert]’s testimony rebuts Juniper’s theory that a POSA would have a reasonable expectation of success because the required combination was simple." In general, CAFC agrees that the Petitioner's expert's testimony was too conclusory ("General and conclusory testimony . . . does not suffice as substantial evidence . . ."; "We conclude the Board’s decision to credit [Owner's expert]’s testimony and reject Juniper’s theory was supported by substantial evidence, and that it was not error to conclude that Juniper had not established a reasonable expectation of success.").
    • CAFC considers an IPR decision, and while agreeing that "substantial evidence supports the Board’s finding that the claim limitation requiring nanobubbles was not shown to be inherent in the prior art by Tennant’s testing of the prior art or by establishing that the prior art used the same spacing of the electrodes as the ’415 patent", CAFC still reverses and remands "because the Board failed to address Tennant’s argument that the prior art practiced all the claimed parameters of the ’415 patent and thus inherently anticipated the claimed nanobubbles limitation" (emphasis added; "The Board’s error is particularly significant given the prosecution history where OWT represented that microbubbles and nanobubbles were inherently produced when the claim parameters of the ’415 patent were followed . . . In other words, if the physical parameters of the claim were followed, it would automatically produce nanobubbles. OWT cannot make one argument when seeking issuance of its patent and the opposite argument in defending the patent in post-grant review and to this court.").
    • CAFC vacates and remands an IPR finding the claims not unpatentable, disagreeing with the Board's construction, and seeking further consideration of the obviousness arguments in view of CAFC's new construction ("On remand the Board should determine whether Masters, including its Decision Review Display and Path Display, renders the “collecting” and “correlating” limitations obvious in view of the Board’s new construction.")
    • CAFC considers an IPR obviousness decision for an OFDM patent involving "a method for constructing a frame structure with two sections, each of which is configured for a different communication system, where the second communication system is used to support high mobility users (i.e., faster moving users)." Below, the DCT found Claim 8 not obvious based upon lack of motivation to combine, despite the Claim differing from obvious Claim 1 only by the addition of a symbol density claim limitation. CAFC disagrees with the DCT's analysis, reiterating that "[a] prior art reference does not need to explicitly articulate or express why its teachings are beneficial so long as its teachings are beneficial and a POSA would recognize that their application was beneficial." Here, one of the references acknowledged the benefits of higher density ("Nystrom discloses that it is beneficial to use denser pilot symbol patterns for higher Doppler condition"; "There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way,’ using the ‘prior art elements according to their established functions"; "Dr. Vojcic does not state or opine that a POSA would not recognize the benefits of using higher pilot symbol densities for faster mobile users who experience high Doppler conditions."). Ergo, CAFC reverses (remanding for consideration of sundry issues around other of the claims).
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.