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 precedentially reverses the 101 ineligibility SJ finding (as a natural phenomenon) on claims directed to "molecules which utilize the novel AAV sequences of the invention, including fragments thereof, for production of molecules useful in delivery of a [transgene comprising a] heterologous gene or other nucleic acid sequences to a target cell." Below:
      "The cultured host cells required by the claims are undisputedly human made. They do not exist in nature . . . however, the district court determined that none of the individual naturally occurring components in the claims had been changed and that “combin[ing] natural products and put[ting] them in a host cell does not make the invention patentable under § 101."
      Uhh. Someone is rather too fond of Funk Brothers. CAFC predictably walks through the case history and acknowledges that, rather than Funk Brothers, "Chakrabarty defines our inquiry" ("We thus ask whether the claimed host cells have “markedly different characteristics” and have “the potential for significant utility” from that which is naturally occurring."). Indeed:
      "Like the man-made plasmid combining four naturally occurring bacteria in Chakrabarty, the claimed nucleic acid molecules here, although containing naturally occurring segments of DNA, are “not nature’s handiwork” and “not . . . a hitherto unknown natural phenomenon, but . . . a nonnaturally occurring manufacture or composition of matter” . . . Similarly, like the cDNA claims in Myriad, “the lab technician unquestionably creates something new” when she splices together the claimed recombinant nucleic acid molecule that encodes an AAV vp1 capsid protein and a heterologous nonAAV sequence and inserts said molecule into a host cell . . . [C]ontrary to the district court’s holding, the claims here are distinguishable from those in Funk Brothers. In concluding that the asserted claims are like those in Funk Brothers, the district court found that “[t]aking ‘two sequences from two different organisms and put[ting] them together’ is no different than taking two strains of bacteria and mixing them together” . . . This analogy is flawed and inconsistent with the undisputed scientific evidence in the record . . . the claimed host cells here contain a recombinant nucleic acid molecule that, by definition, is markedly different from anything occurring in nature."
      Ergo, CAFC reverses as to 101 SJ invalidity.
    • CAFC briefly affirms construction for "content-related first data segments" and "content-related second data segments." After dismissing a newly-raised construction, CAFC addresses the arguments:
      "VideoLabs does not meaningfully dispute the Board’s construction, but argues the Board erred by (1) considering Unified’s argument, raised for the first time in its Reply, that Sonohara discloses the “syntactical meaning” portion of the construction for “content-related . . . data segments,” and (2) determining that Sonohara disclosed “content-related . . . data segments” as construed."

      Regarding 1), CAFC acknowledges that petitioner had an opportunity to respond under Axionics ("Unified was entitled to an opportunity to respond").

      Regarding 2), CAFC finds adequate support in the record ("The Board reasonably relied upon this testimony from Unified’s expert to support its finding that a skilled artisan would infer “syntactical meaning” in the originating files after reviewing the file production process and header and track information in the composite file.").

    • 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.”").
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