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)
  • ETHICON LLC v. ITC - 2023-05-26
    • CAFC affirms the ITC's "determinations on claim construction, infringement, and invalidity." Regarding claim construction, CAFC agrees "with the Commission that the specification’s corresponding structure for the term “means for guiding” does not include curved surfaces", e.g., as the corresponding "surfaces shown in Figures 40 and 41 are incontrovertibly flat from top to bottom, without any curves." CAFC then affirms noninfringement as "substantial evidence supports the Commission’s finding that the Accused Products lack a “means for guiding” . . . The Accused Products showing a sloped surface that is partially-curved and partially-flat is substantial evidence supporting the Commission’s finding that the Accused Products lack a “means for guiding.”" Finally, regarding obviousness and motivation to combine for a separate patent, CAFC finds "substantial evidence supports the Commission’s finding of a motivation to combine two prior art systems that supported its obviousness determination: the i60 stapler and the da Vinci Si robot." For example, appellant argues that a recall would have argued against consideration of the stapler, but "the recall was terminated in 2010, more than a year before the 2011 priority date of claim 24 of the ’969 patent."
    • In this prior art, pre-AIA case, CAFC precedential affirms 13 IPR petitions finding the patents sharing a common parent not invalid based on the DCT's finding that the "claimed inventions were (1) conceived prior to Itou’s filing date of September 23, 2005 (i.e., the critical date), and (2) were (a) actually reduced to practice before the critical date or (b) diligently pursued until their constructive reduction to practice through their effective filing in May 2006." CAFC disagrees with each of the following assertions on appeal: "First, Medtronic argues that the Board erred in identifying the intended purpose of the claimed inventions. Second, Medtronic argues that, even if the Board’s finding of the intended purpose was correct, the Board erred in not requiring comparative testing to demonstrate that the invention worked for that purpose. Third, Medtronic argues that the Board erred in relying solely on uncorroborated inventor testimony as evidence of actual reduction to practice." For the first item, CAFC finds support for the intended purpose in the spec (including the title) and expert testimony. For the second item, CAFC similarly agrees with the Board's reliance upon inventor testimony. For the third item, (a), CAFC finds "the inventors’ testimony of actual reduction to practice, including that the invention worked for its intended purpose, sufficiently corroborated", e.g., based on some corresponding CAD drawings. For the third item, (b), CAFC affirms the Board's diligence as reasonably continuous based upon the preceding analysis.
    • I admire offshore oil technology a great deal. This appeal concerns a motion for attorney fees in connection with Christmas tree (the subsea connection system) patent infringement. Despite initial evidence of noninfringement, the plaintiff's expert provided additional analysis, which ultimately was found to apply an improper definition of "Christmas tree" ("misapplication of the established claim constructions in this case render his opinions excludable under Rule 702 and Daubert as irrelevant and not likely to assist the trier of fact"). Despite this, the DCT denied the motion for attorney's fees under Octane Fitness. Here, on appeal, CAFC affirms, first declining "FMC’s invitation to abandon the abuse-of discretion standard of review for this case" for lack of authority and then agreeing with the DCT as to substance (among other things, "FMC argued below, and again here, that the ultimate failure to produce admissible evidence to support OSS’s infringement theory alone makes this case exceptional. The district court disagreed, as do we . . . The district court properly applied Octane Fitness in denying FMC’s § 285 motion"). N.b., the ruling is precedential and this is in the S.D. Tex.
    • CAFC considers the DCT's analysis whether "search receiver logic" is a 112b6 term, and if so, if it's indefinite. Despite the rebuttable presumption against 112b6 status, since the phrase excludes the word "means," CAFC agrees that "the term does not recite sufficient structure for performing that function" and so receives 112b6 status. The DCT, after findings 112b6 status, concluded that the term was therefore indefinite as "the specification fails to disclose adequate structure corresponding to the claimed function of updating said routing information." CAFC considers the DCT's analysis of the spec and figures and agrees ("We find the district court’s analysis on this second step well supported and are unpersuaded to disturb its ultimate conclusion i.e., that the specification’s failure to disclose adequate corresponding structure renders the claims at issue indefinite under § 112 ¶ 2.")
    • A (very) brief claim construction affirmance ("Regents argues that a “molding” does not necessarily require a structure with uniform shape and that it should be construed to mean a “formed component.” . . . based upon the intrinsic evidence and the nature of this invention, we disagree. Nothing in the claims support Regents’s construction of the term “molding.” The specification likewise teaches a “molding” with more specific physical characteristics than simply a “formed component,” because the “molding” must be designed in a particular manner to effectively extract light from the LED").
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 (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 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.