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
    • CAFC affirms no infringement for claims directed to a "method of controlling hyperglycemia secondary to hypercortisolism in a patient with endogenous Cushing’s syndrome." Basically, finding no direct infringement, there's no basis for secondary infringement ("[T]he district court found that Corcept had provided no evidence that any physician had ever practiced the claimed methods . . . the district court found that future direct infringement was “highly unlikely” based on evidence that (1) physicians avoid the claimed methods due to the safety concerns and dosing problems associated with coadministration; (2) a noninfringing alternative, osilodrostat, is available and preferred as a treatment for hypercortisolism; and (3) a physician could follow the proposed label and not infringe the claims.").
    • CAFC precedentially affirms no infringement of this claim with a means-plus-function limitation ("“encoding means for synchronizing” two input data streams").
      "[T]he specification describes FIG. 4A’s logic block 34, a logic design circuit containing a multitude of elements, as the corresponding structure for performing the synchronizing function. Because GET and its expert failed to account for many of the elements in block 34 in their infringement analysis, we agree with the district court that GET presented a deficient infringement case as to this limitation and we thus affirm . . . Dr. Fernald offers no meaningful explanation of why the bit-rate clock is the only part of logic block 34 that matters. GET does not argue now, nor did it attempt to argue before the district court, that the other elements of logic block 34 are, e.g., devoted to only the encoding function and therefore may be ignored for the purposes of synchronization. Thus, the district court found that Dr. Fernald was deficient in his explanation of why he had considerably curbed his analysis of logic block 34 to just one of its elements . . . Like the expert in Traxcell Technologies, Dr. Fernald has “neglected to address a significant fraction” of logic block 34. "
      CAFC similar opines that the Plaintiff didn't consider the accused structure in adequate detail ("Driving this very broad infringement theory was GET’s failure to review schematics of the Accused Products’ Bluetooth module, causing the Accused Products to be left as something of a black box."). Ergo, affirmed.
    • Brief obviousness affirmance in this IPR for "systems for and methods of automatically adjusting audio levels in user-worn devices in order to improve the user’s situational awareness." "Neither grammar nor logic warrant reading ST1’s claim as requiring an order of steps such that the adjusting of the mixing gain occur only after the activating of the voice timer . . . Nothing in the specification compels the rigid order of steps ST1 advocates." Notably, CAFC considers the last antecedent rule in its analysis ("Even assuming, without deciding, that the Director is wrong about the application of the last antecedent rule here, the result is only that some adjusting must occur “during a voice timer.”").
    • CAFC precedentially affirms denial of this JMOL seeking obviousness of claims involving "pre-lit artificial trees with decorative lighting" and (more significantly post-EcoFactor) agreeing with the DCT's damages findings based upon a not invalid dependent claim. Regarding the latter, basically:
      "Polygroup argues that because the Board held claim 10 unpatentable, the added value of claim 15 is limited to the use of coaxial barrel connectors themselves . . . Polygroup maintains Willis should have apportioned to the incremental value of claim 15 by removing any damages attributable to the limitations claim 15 incorporated from claim 10. Under that theory, Willis’ recoverable damages were limited to the use of coaxial barrel connectors themselves, and no more. We do not agree. "
      CAFC distinguishes the invalidity of Claim 10, which occurred under the BRI as part of an IPR, with the anlaysis of Claim 15 here, which used constructions unique to the DCT ("In particular, the district court construed claim 10 to require forming a simultaneous mechanical and electrical connection regardless of rotational orientation (i.e., doing so in one step), whereas the construction applicable in the IPR did not require this one-step functionality . . . Thus, neither the Board nor the district court found claim 10 unpatentable under the district court’s construction. For at least this reason, the IPR determination does not preclude Willis from relying on the one-step functionality of claim 10 as part of the value attributable to the coaxial barrel connectors of claim 15 . . . What value is attributable to the coaxial barrel connectors is a question of fact for the jury."). CAFC thus takes this as an opportunity to reiterate that under FRCP 702, the court's job is to assess admissibility of expert testimony, but it's for the jury to then assess the substance, which can involve a selection from several viable determinations ("When undertaking the fiction of the hypothetical negotiation, the record may support a range of reasonable outcomes sufficiently provable by any one of multiple reliable methods rather than a single correct figure . . . That competing experts reached different royalty conclusions does not establish the unreliability of either analysis; disagreement alone, without a separate basis for finding unreliability, merely leaves the question of which analysis to credit to the jury."). Here, since the DCT satisfied its gatekeeping role, CAFC affirms the jury's subsequent findings.
    • CAFC affirms this jury verdict for indirect and willful infringement for claims on "direct-current–direct current (“DC-DC”) converters" ("The jury found that Vicor did not infringe claim 2 of the ’190 patent but indirectly and willfully infringed claims 55 and 67 of the ’702 patent, awarding $6.5 million in damages"). Defendant actually began the process by seeking a declaration of noninfringement, but plaintiff not only prevailed, but then sought attorneys fees:
      "SynQor argued that the case before the district court was exceptional because Vicor’s infringement merits defenses, infringement equitable defenses, and counterclaims were exceptionally weak. SynQor further argued that Vicor litigated the case in an exceptional manner by filing a series of ex parte reexamination petitions after its inter partes review petition had been denied and using its counterclaims to introduce inflammatory and prejudicial allegations (including SynQor’s so-called “Kill Vicor” campaign) . . . As to enhanced damages, SynQor argued that the case was exceptional because Vicor had no good-faith belief of noninfringement or invalidity and litigated the case in bad faith. The district court granted both motions"
      CAFC affirms as to infringement:
      "As to indirect infringement, Vicor’s arguments amount to no more than an invitation for us to reweigh the evidence before the jury and make various inferences in Vicor’s favor. This we decline to do. As to willful infringement, the district court correctly found that the jury’s verdict was supported by substantial evidence. While we agree with Vicor that the standards for willful infringement and willful blindness are different, we hold that the evidence in the record, taken in the light most favorable to the jury’s verdict, was sufficient to prove both indirect infringement and willfulness . . . The problem with Vicor’s argument at bottom is that it relies on drawing inferences from the evidence that the jury was simply not required to make . . . The jury heard extensive evidence that Vicor monitored and reverse engineered SynQor’s patent-marked products . . . was made aware of SynQor’s position that Vicor’s products were not a noninfringing alternative . . . and chose to indemnify Cisco rather than provide a legal opinion that its products did not infringe . . . On this record, the “requisite intent to induce infringement may be inferred from all the circumstances.”"
      After likewise affirming willfulness ("the jury was properly instructed that it could only find willful infringement") CAFC concludes by affirming the attorneys fees ("The district court walked through the Read factors and awarded enhanced damages well within the statutory treble damages permitted by statute.").
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.
  • 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