Contact - Sessions
James Skelley | Technology Lawyer
SESSIONS
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)
RECENT CASE HIGHLIGHTS
    • In this precedential 12b6 patent eligibility opinion, CAFC considers claims directed to a virtualized computing peer-based content sharing system. CAFC identifies at least two alleged inventive concepts ("The first is the required dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDNs . . . The second requires trace routes be used in content segmentation.") sufficient for avoiding the 12b6 dismissal ("Because Cooperative plausibly alleged that both of these concepts were inventive, we reverse the district court’s dismissal . . . we conclude that claim 1 recites a specific technical solution that is an inventive concept: it recites a particular arrangement of peer nodes for distributing content “outside controlled networks and/or [CDNs]").
    • In this precedential IPR decision, CAFC considers a variety of issues. Regarding a motion to exclude evidence presented in a reply, CAFC agrees that the evidence should be admitted ("The Board properly concluded that the reply evidence was both directly responsive to Provisur’s arguments and highly probative . . . By concluding that Weber’s reply evidence properly rebutted Provisur’s arguments, the Board necessarily also determined that Weber didn’t have to submit the evidence with its petition."). Regarding the Board's obviousness combination reasoning for various invalidated claims, however, CAFC agrees that the Board said too little and accordingly vacates / remands ("Under the APA, the Board must fully and particularly set out the bases upon which it reached its decision . . . The Board never explained how the Whitehouse/Antonissen/Hardy combination teaches or suggests the surface area limitations . . . The Board’s adoption of Weber’s argument and evidence, coupled with its mischaracterization of Provisur’s arguments, precludes us from engaging in meaningful appellate review and, therefore, violates the APA"). Finally, regarding claims the Board upheld, CAFC likewise vacates and remands, as the Board failed to properly consider the references in the context of one another and in view of its analysis of the other claims ("The Board’s analysis is faulty for two reasons . . . First, Weber’s IPR petition did not rely on Wyslotsky as teaching the claimed physical arrangement of a camera over a weighing conveyor, as the Board’s analysis suggests . . . Second, and more importantly, the Board’s findings for claims 11 and 12 are inconsistent with those it made for claims 2, 6, and 7.").
    • In this on-sale bar decision, the facts surrounding a barring bed sale ("the crux of the parties’ dispute before the district court, as relevant on appeal, was whether the assembly instructions that accompanied the Mersin bed sold to Mr. Lawrie, which on their face indicate that they were for the “Fusion” bed, also applied to the Mersin bed") are sufficiently in dispute that CAFC vacates the summary judgement. However, the court indicates that not much more of a factual record would be required for the motion to proceed ("In sum, while Cap Export presented strong evidence connecting the Fusion instructions to the Mersin bed, there are nonetheless genuine disputes of material fact that preclude summary judgment. On remand, however, we would “not foreclose the district court from entertaining a motion for summary judgment” on a slightly more developed factual record “that might obviate the need for a further trial.”")
    • In this precedential post-Arthrex reconsideration of two IPRs, the owner argues that a) the Board should have granted its motion to terminate; b) the Board misconstrued "memory chip"; and c) the Board misconstrued "resource tag buffer". Regarding (a), the mandatory right to terminate must be filed before the decision on the merits, otherwise it's at the Board's discretion ("Although the final written decisions had been vacated for a time period after our decision in Arthrex I, that vacatur itself was vacated by the Supreme Court. This explains why Chief Administrative Judge Boalick’s order noted that the decisions were not vacated at the time the Board was considering the motions to terminate. We thus affirm the Board’s decision not to terminate the proceedings under § 317(a) because the motions to terminate were untimely."). Regarding b) and c), CAFC again agrees with the Board based upon the plain meaning, specification, and prosecution history ("We see no error in the Board’s adoption of this construction, which is supported by and consistent with the specification.").
    • In this precedential (C) patent term adjustment decision, the PTO denied adjustment as "“the claim was not issued under a decision in the review reversing an adverse determination of patentability” because “the claim remain[ed] under rejection after the Board decision” and “the patent only issue[d] after further prosecution” and amendment." Here CAFC finds that reasoning consistent with their past statutory construction in Chudik v. Hirshfeld, 987 F.3d 1033 (basically, that for PTA to apply here, you have to prevail in the appeal AND the "application reviewed in that appeal issue as a patent as a result of that reversal."). Thus, CAFC finds "no ambiguity in the language of the statute and agree[s] with the conclusions reached by the District Court."
More . . .
ABOUT
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.

LEGAL PRACTICE AREAS
  • 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)
LICENSING
  • USPTO - #59458 - 10/16/2006
  • California - #257829 - 12/01/2008
  • District Columbia - #1014986 - 08/05/2013
CONTACT
  • 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.
TECHNICAL FIELDS
  • 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
SOFTWARE
LAWMUX BITES
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.

LAWMUX BITES
PAPERS / ARTICLES