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)
    • In this precedential ANDA decision, CAFC affirms inducement and contributory noninfringement determinations, basically because the patented uses and FDA approval-sought uses were not the same. Specifically, "Defendants have submitted ANDAs seeking approval to market vortioxetine for only one indication, the treatment of MDD in adults, a method of use not covered by the ’096 and ’910 patents." Initially, "Plaintiffs argue that . . . section 271(e)(2)(A) creates a separate cause of action that does not require a showing of direct, induced, or contributory infringement by the ANDA filer" and that merely submitting the ANDA application suffices, but CAFC disagrees ("In Warner-Lambert and its progeny, we considered and rejected plaintiffs’ interpretation of section 271(e)(2)(A) . . . actions for infringement of method of use patents under section 271(e)(2)(A) are limited to patents that claim an indication of the drug for which indication the applicant is seeking approval."; Here, "the patented uses are not those for which ANDA approval is sought. Plaintiffs have failed to establish that section 271(e)(2)(A) provides an independent basis of infringement."). As regards inducement, "plaintiffs’ inducement case relied solely on defendants’ proposed ANDA labels as the inducing conduct", but the "plaintiffs did not identify any advertising or promotional materials that encouraged infringement." Thus, CAFC finds the "district court correctly determined that, under these circumstances and consistent with our cases,9 the proposed ANDA labels “will not encourage, recommend, or promote an infringing use.”" As regards contributory infringement, as "there is no liability for contributory infringement for selling an article that is “suitable for substantial noninfringing use.”" Here, CAFC finds "there will be substantial noninfringing uses including prescription for treating MDD, prescription to patients without cognitive impairment, and prescription for purposes unrelated to cognition." CAFC briefly reiterates that only the patent in question under the ANDA is germane to the contributory infringement analysis. CAFC finally considers, and dismisses, various claim construction arguments for other patents upon which infringement was found before affirming.
    • CAFC affirms the Board's dismissal of a trademark opposition for a graphical mark depicting "Verite du Terroir" in connection with "wines made from grapes from Côtes de Provence in accordance with adapted standards" based upon confusion with the standard character mark VERITE. As the graphical mark had many other design elements (a bell in the background, other formatted text, a seal, etc.), the Board found the DuPoint factors were mostly in its favor. CAFC basically agrees ("Opposer’s focus on the word “VÉRITÉ” ignores other, more prominent portions of applicant’s mark and does not consider applicant’s mark as a whole"; "There is nothing inherently improper about making a likelihood of confusion determination solely based on dissimilarity of the marks at the pleading stage").
    • Following jury findings of infringement and damages, CAFC reverses some infringement findings, reverses others, remands for a damages recalculation, and reverses a denial for motion to amend so as to add a license defense ("The motion was based on a recent change in ownership of Finjan, Inc., which had a license agreement with Intel."). For the affirmed infringement: "Intel’s argument turns entirely on its contention that the claims require that falling below the minimum operating voltage be the causal trigger for switching from one voltage source to a different one," but this is a claim construction issue, and CAFC defers to the jury ("When a claim phrase is not construed, we defer to the jury’s view of the claim element unless that view is contrary to the only reasonable view of the claim element."). For the reversed infringement claims, these relied on the doctrine of equivalents (i.e., there was no literal infringement), and CAFC finds that "VLSI’s proof of equivalence for the ʼ759 patent, though limitation specific, was insufficient under those principles" particularly as the proffered expert testimony contained no "meaningful explanation of why the way in which the request is made is substantially the same as what the claim prescribes." CAFC then remands for a better damages analysis before finally considering the licensing issue, reversing the DCT since Intel's delay was partially due to the requirements of the license itself ("Intel was required by the 2012 license agreement to follow certain procedures, J.A. 3694, and Intel acted with diligence in doing so"). N.b., that CAFC is simply asking that the defense be considered, not necessarily that it will succeed.
  • In Re COZY, INC. - 2023-12-04
    • CAFC denies a mandamus petition for various items in a privilege log as "Cozy has not shown that mandamus review is the only adequate means by which it can obtain meaningful relief . . . postjudgment appeals generally suffice to protect the rights of litigants and ensure the vitality of the attorney-client privilege" (citing Mohawk Indus., Inc. v. Carpenter, 558 U.S. 100, 109 (2009)). CAFC acknowledges, however, that the arguments may be considered on their merits in a later direct appeal.
    • CAFC considers an opposition to the standard character mark GET ORDAINED. The Board sustained the opposition, but the applicant contends that the Board "should have deemed waived" arguments that the mark was "descriptive of or fails to function as a mark for ULC Monastery’s online retail store services" ("ULC Monastery explained that AMM’s brief failed to raise any argument against the mark in connection with ULC Monastery’s online retail store services."). Unable to reconcile the Board's "practice of deeming unargued claims waived" with "the failure of AMM’s briefs to refer to its Class 35-specific claims" CAFC vacates the Board and remands either so that the Board can deem the arguments waived or so that the Board can "ensure that its analysis has a basis in the record."
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.