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 103 invalidity in this IPR involving "Aerial Roof Estimation Systems and Methods." Here, Owner "argues that the Board erred by construing “calculate a pitch” and “determining a pitch” as encompassing inaccurate or unreliable calculations." Assuming the arguments were preserved, CAFC disagrees on both counts. Regarding the latter:
      "The specification confirms that the term “determining” allows for estimations . . (indicating that “determin[ing] the dimensions and slopes of the roof sections” may be based on “closely estimat[ing] the dimensions and slopes of the roofs”). Moreover, embodiments in the specification describe “accurately determin[ing] the pitch,” indicating that accuracy is not built into the meaning of “determining” . . . Accordingly, Eagle View’s argument that the term “determine” excludes approximation, estimation, or “near calculation” lacks merit."
      As for the former:
      "[W]e find no evidence in the specification to suggest that “calculate” requires a certain level of accuracy. Instead, the specification indicates that the term “calculate” refers to obtaining a result via the performance of mathematical steps . . . (“The slope can be easily calculated from such a representation using basic trigonometry.”). "
      Ergo, after briefly considering challenges to the petition and motivation to combine, CAFC affirms.
    • In this precedential design patent matter involving a massage device, while the design patent's figures and device look awfully similar, the DCT "concluded that “many, but not all, of the design features in the D’155 patent— which the Rolflex embodied—are driven by function . . . the overall . . . scope of the claim is accordingly narrow.”" Here, plaintiff consequently argues that "the district court erred in its claim construction analysis by eliminating entire structural elements from the claimed design", but CAFC applies the Egyptian Goddess analysis and agrees with the DCT (e.g., "“[w]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”"). CAFC reviews the DCT's analysis and agrees that "the “clamshell” shape of the arms was functional, but that other features “appear to be largely ornamental,” such as “the thick ridged outline” of the design (which includes the arms)" (n.b., this result despite "the drawings in the D’155 patent depicting the claimed design in solid line."). An important note for drafters:
      RoM’s position that these lines show what aspects are functional and what aspects are ornamental suggests, however, that all design elements must be either completely ornamental or completely functional. Our case law does not support this proposition. . . . as the district court correctly recognized, RoM’s proposed approach of treating the D’155 patent’s disclaimer of elements as dispositive of the functionality inquiry would have courts blindly accept that “every feature depicted in solid lines in design patents [is] per se ornamental.”
      Judge Moore dissents, however ("I think the district court erred when it took this question away from the jury and granted summary judgement of noninfringement"), generally considering Egyptian Goddess too far a departure from Gorham and its focus upon "the effect of the whole design" rather than individual features ("The former causes the fact finder to focus on the similarity of the overall designs whereas the latter forces the fact finder to focus on the difference").
    • In this precedential decision, CAFC affirms SJ noninfringement, finding that the first two steps of the claim must be performed in order ("[N]either party disputes that the accused products do not perform the claim limitations in the order required by the district court"). Basically, the subsequent step uses the past participle "requested" connoting the preexistence of the referenced object ("allocating a buffer at one of said plurality of HSs to cache at least a portion of said requested SM object" emphasis added). As CAFC summarizes:
      "“[R]equested” is not only a grammatical descriptor, but also is a status indicator reflecting a completed action—the receiving of a request. Because the second limitation expressly references “said requested SM object,” it necessarily depends on the first limitation having been performed. The buffer cannot be allocated to cache a “requested” SM object if no request has been received."
      Ergo, affirmed.
    • CAFC affirms this SJ DTSA and 3PB decision. Basically, employees at McKinsey, while at McKinsey, researched APT's business then left to begin a competing enterprise.

      Regarding the DTSA, CAFC agrees . . .

      " . . . with the district court’s conclusion that APT failed to sufficiently identify and define its alleged trade secrets under the statutory definition. Specifically, APT’s response to Appellees’ interrogatories and APT’s opposition to Appellees’ summary-judgment motion failed to identify and define its alleged trade secrets “in a manner that allows the fact-finder to determine if a trade secret exists under the statute . . . Even under Utah law, plaintiffs must still sufficiently identify and define their trade secrets"

      Regarding the 3PB, CAFC likewise finds insufficient evidence under Utah law ("Under Utah law, “[a] third party may claim a contract benefit only if the parties to the contract clearly express an intention ‘to confer a separate and distinct benefit’ on the third party” . . . The contract here was an employee-employer agreement between Mr. Stoddard and McKinsey.").

      Ergo, affirmed.

    • CAFC reverses the finding of non-obviousness (and accordingly sets aside the other issues) for claims "directed to “an identification rewritable tire pressure detecting apparatus.”" Defendant . . .
      " . . . presented testimony that the Nihei/Nantz combination satisfies all the limitations of the asserted claims, that a person of skill in the art would be motivated to combine Nihei and Nantz, and that secondary considerations do not support a conclusion of nonobviousness. However, the district court denied Autel’s motion for JMOL as to obviousness because it found substantial evidence that “Nihei and Nantz fail to teach or suggest the Asserted Claims’ ‘portable setting apparatus’ limitations” and accordingly “[did] not reach the other obviousness-related issues raised by the [p]arties.”"
      CAFC agrees with defendant "that the record can only support the conclusion that the setting apparatus in the Nihei/Nantz combination constitutes both the setting device and the PC" and as "the claims only require that the setting apparatus be portable “relative to the vehicle,” not that it be handheld" that combination would read upon the claim limitation. Iterating through the record, CAFC doesn't find any evidence to disturb this broader reading of the limitation so as to encompass the prior art combination. As for secondary factors, CAFC finds little argument to that purpose ("In one sentence in its response brief to Autel’s cross-appeal, Orange suggests that secondary considerations support the district court’s denial of JMOL, but this argument is undeveloped."). Ergo, invalidated and reversed.
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