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)
  • 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.").
    • CAFC precedentially sets aside a petition to cancel a trademark, agreeing that the petitioner lacked standing ("Appellees each moved to dismiss the petition, arguing that the family trusts were not entitled by statute to cancel the challenged marks because they were not the owners of the allegedly infringed PAUL HOBBS mark . . . [the Board] concluded that, because the family trusts were mere minority owners of Hobbs Winery who did not use or otherwise possess rights in the PAUL HOBBS mark that could be asserted without approval from Hobbs Winery, they lacked a statutory entitlement to bring the cancellation action"). CAFC reaches the same conclusion, but under a more rigorous Article III analysis, that does find standing (injury-in-fact, causation, and redressability are all present), but also that the appellants fall outside "the class of plaintiffs who Congress has authorized to seek cancellation of Appellees’ trademark registrations under 15 U.S.C. § 1064" per Lexmark ("It is undisputed here that Appellant neither uses nor possesses an individual ownership right in the allegedly infringed PAUL HOBBS mark . . . [when] Appellant’s only basis to challenge Appellees’ marks is its minority ownership interest in the owner of the allegedly infringed mark, and not its own commercial activity allegedly affected by Appellees’ marks, we conclude that it is not within the zone of interests entitled to seek cancellation of those marks under § 1064.")
    • CAFC affirms this obviousness finding basically because it agrees with the Board's motivation to combine analysis ("In Google [the Owner]'s view, motivations to combine must be articulated on a claim-by-claim basis . . . We disagree. ")
    • CAFC precedentially affirms the 103 invalidity of a patent for "(1) flagging the instance of a [virtual machine (VM)] for autonomic scaling including termination . . .and (2) “deploying . . . an additional instance of the VM." CAFC first agrees with the Board that arguments in prosecution history mooted the Owner's proposed construction ("The applicant was not, as Daedalus Blue contends, asserting that the “flagging” limitation requires that the specific contents of Yach’s flag indicate the VM is amenable to “autonomic scaling including termination.”"). CAFC then likewise considers the "deploying" term, before again agreeing with the Board ("In sum, we find the intrinsic evidence does not support Daedalus Blue’s proposed construction of the “deploying” limitation and do not believe the Board erred in its use of dictionary definitions"). Based upon these constructions, CAFC affirms.
    • In this patent standing matter, the CAFC majority precedentially vacates and remands the DCT's decision agreeing with defendant "that the 2011 assignment was ineffective because Dr. Core had already assigned the patent rights to TRW Inc., his employer at the time of invention" (who was also helping fund his PhD studies at the time) "through an August 1990 employment-associated agreement with TRW." Particularly, CAFC focuses on the agreement language (relatively typical - CAFC doesn't mention it except in alluding to another case, but the drafter probably put this in there because of Section 2870 of the Cal. Labor Code) that the assignment scope does not include inventions on the employee's "own time." Specifically, "Core Optical presented evidence that Dr. Core was careful not to work on his PhD research while “on the clock” at TRW and not to use TRW equipment, facilities, or supplies when working on his PhD research . . . There is also evidence that Northrop Grumman, for its part, despite knowledge of Core Optical’s assertion of the ’211 patent in unrelated litigation at least as of 2014 . . . did not assert an ownership interest . . . until, around March 2016." As a matter of contract interpretation (under California law) the majority concludes "that the entirely-own-time phrase does not unambiguously express a mutual intent to designate either all the time Dr. Core spent performing his PhD research as his own time (as Core Optical contends) or some of it as partly TRW’s time (as the district court, in agreement with Nokia, held)." CAFC therefore remands for more investigation. Judge Mayer dissents, believing, as a matter of law that the "prorated salary and a stipend from TRW, as well as full-time benefits and full-time pension accrual, while [the inventor] completed his Ph.D. program" and the fact that the inventor's "Ph.D. dissertation was “essentially identical” to the provisional patent application" demonstrated grounds for assignment to TRW.
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.