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 denial of a preliminary injunction (potent doth remain that mighty specter of eBay!) for patent med device inducement, particularly a spinal nerve ablation tool, the claim reciting, in part:
      "inserting an introducer through a pedicle of the vertebral body such that an opening at a distal tip of the introducer reaches a cancellous portion of the vertebral body"
      BSC sought a PI on the theory . . .
      ". . . that the OptaBlate BVN’s “access cannula” corresponded to the claimed “introducer.” Stryker argued that it did not induce infringement of that limitation because Stryker did not instruct physicians to place the access cannula so that it “reaches” the cancellous portion of the bone . . . The district court concluded that the “reaches” limitation required that the distal tip of the introducer “touch[] or extend[] to” the cancellous portion of the vertebral body and that the evidence did not sufficiently demonstrate that Stryker instructed physicians using its device to extend the access cannula to reach the cancellous bone."
      Here, CAFC acknowledges that the "contested limitation is facially ambiguous as to whether the plain and ordinary meaning of “reaches” means touches or also includes arriving in the proximity of" and agrees with the DCT for now. As for the likelihood of infringemnet, CAFC agrees that hte curent evidence is too nebulous:
      "[A] slide show presented internally to sales personnel instructs “to enter just inside the vertebral body past posterior wall,” but it is again unclear whether this is referring to the access cannula or the tip of the stylet . . . The expert declarations supplied by the parties present conflicting views as to how to interpret these documents. The district court reasonably considered evidence that Stryker instructed that the “stylet tip should barely—if at all—enter the vertebral body,” i.e., the cancellous bone, J.A. 17 (emphasis omitted), and concluded that the slides’ reference to “[f]inal position should be just inside the vertebral body” could be referring to the final position of the stylet tip rather than the tip of the access cannula . . . Boston Scientific appears to contend that by instructing a physician to place the access cannula inside the wall of the vertebral body, Stryker instructs placing the tip of the access cannula through the wall and inside the vertebral body rather than literally inside the wall itself, which is made of cortical bone. As the district court reasonably concluded, this could be read as instructing physicians to place the access cannula such that it reaches the cortical wall rather than the cancellous portion . . . Boston Scientific relies on an internal Stryker document that describes the access cannula as being “placed within the cancellous bone of the spine” . . . While this may well support Boston Scientific’s position, it cannot carry Boston Scientific’s burden to show no substantial question of infringement exists, as it is an internal document, there is no contention that it was given to users of the OptaBlate BVN, and Boston Scientific has not proven what (if any) impact this or other internal materials have on what Stryker conveys to others."
      Ergo, affirmed.
    • CAFC affirms obviousness IPR invalidity for "an arrangement for mixing and discharging fluids."
      "Medmix presents two main arguments on appeal. The principal argument is that the Board improperly construed the term “at least two ramps” to not require an “inclined plane” . . . Separately, medmix asserts that the Board’s motivation-to-combine findings were not supported by substantial evidence."
      Regarding the construction, "the disputed limitation does not specify that the recited ramps must be a particular shape, let alone an inclined plane . . . The specification supports that understanding . . . No specific shape is mentioned for the “guide groove.”" Owner points to ramp variations in the spec, but CAFC doesn't see why they should be read in, and so, after likewise finding no limitation in the prosecution history, CAFC affirms.

      As for the motivation, "[t]he Board found that a skilled artisan would have been motivated to incorporate Yu’s coarse thread design into both Keller ’574 and Heusser because doing so provides “mechanical advantage[s]” . . . medmix argued that a skilled artisan would have been dissuaded from making the proposed combinations because each combination would have resulted in a design where the backpressure generated during dispensing would cause the coarse-thread connection between the mixer and cartridge to separate, leading to undesirable fluid leakage."

      CAFC is unmoved ("[H]ere, the Board explicitly found that a skilled artisan would have “easily” mitigated any back-pressure and leakage concerns by using “tangs” and “flanges,” small projections on each of the mixer and cartridge which attach to one another, to reinforce the connection between the mixer and cartridge").

      Ergo affirmed en toto.
    • CAFC affirms prejudicial dismissal of an infringement claim involving "systems and methods for user authentication in which user tokens are supplied through communication devices" based upon the claim construction. Basically, plaintiff challenges constructions on
      generating a new password for said first secure computer network based at least upon the token and a passcode, wherein the token is not known to the user and wherein the passcode is known to the user;

      setting a password associated with the user to be the new password
      Basically, CAFC agrees with the DCTs Philip's reliance on the plain claim language and specification, e.g.:
      "Dynapass argues the district court erred in construing “receiving the password” in claim 12 to preclude separate receipt of the “passcode” and “token” components of the password . . . While the written description discloses multiple embodiments for authenticating a user, the patentee’s chosen claim language unambiguously does not extend to the al- ternative embodiment where the passcode and token are received separately . . . Claim 1 recites (1) “generating a new password . . . based at least upon the token and a passcode;” (2) “setting a pass- word . . . to be the new password;” and then (3) “receiving the password from the user . . . .” This language requires generating a password from the passcode and token before receiving the password. Receiving the passcode and token separately would not constitute “receiving the password” since the individual passcode and token components are not the claimed “password.”

      ...

      The written description supports this construction. In the alternative embodiment, the written description never refers to separate reception of the passcode and token as receiving the password. ’658 patent at 4:59–61 (“In an al- ternative embodiment, the passcode 154 and the token 156 are submitted separately.”). The written description also repeatedly juxtaposes the password with the passcode and token components . . . We see no error in the district court’s construction of “receiving the password” to preclude separate reception of the passcode and token."
      Ergo, affirmed.
    • CAFC (very briefly) reverses and remands anticipation findings on claims where "[d]evices detect and process a speech command, compute a confidence score that the speech command is a hotword, and transmit the confidence score to other devices." Basically, CAFC doesn't agree with the Board's interpretation of the references for purposes of anticipation:
      "The Board’s finding “that one device in a ‘better position’ than the other devices [to handle a subsequent user query] then exits its low power mode and ‘wakes up’ so it can respond to any subsequent user query” is unsupported by substantial evidence because it assumes a causal relationship between two steps Rosenberger discloses as independent alternatives . . . Sonos argues we may nevertheless affirm under its alternative theory that Rosenberger anticipates the challenged claims because Rosenberger’s devices remain in a low power mode other than Rosenberger’s self-described, low power “listening” mode during coordination . . . It is undisputed, however, that the Board made no fact findings regarding this alternative “low power mode” theory in its FWDs . . . We decline to make fact findings regarding this alternative theory in the first instance and leave this issue for the Board to consider on remand."
      So, remanded to continue the attack.
    • A brief affirmance on a product-by-process obviousness, CAFC defers to the DCT's fact-finding on motivation to combine, expectation of success, and long-felt need:
      "Dr. Appel explained how ovens, fluid beds, and coating pans were capable of handling hundreds of kilograms of tablets at a time and were also common pieces of equipment found in drug manufacturing facilities. Dr. Appel further explained why a coating pan would have been an especially attractive piece of heating equipment, as it allowed large scale curing, followed by coating, and thus a person of ordinary skill in the art would have been especially motivated to use a coating pan to cure Bartholomäus’s PEO tablets at scale to maximize manufacturing efficiency."
      Ergo, affirmed.
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