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
    • After reversing construction of a claim preamble ("We see no basis to deviate from the general rule that preamble language is not limiting"), CAFC affirms dismissal of breach-of-contract claims here for an NDA ("NimbeLink’s complaint fails to sufficiently plead the nature of the alleged confidential information at issue. NimbeLink characterizes that information as relating to “financ[e] and marketing,” but that is too vague to pass muster under Rule 8 . . . The complaint also fails to plausibly allege unauthorized use of confidential information.").
    • 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 a not invalid for obviousness determination:
      "Micron raises three issues on appeal. First, Micron argues that in the -744 IPR Proceeding, the Board implicitly misconstrued “data rate” within the term “specified data rate.” Second, Micron argues that in the -745 IPR Proceeding, the Board legally erred in its motivation-to-combine analysis. Finally, Micron argues that in the -745 IPR Proceeding, the Board misconstrued limitation 15.6."

      Regarding 1), CAFC agrees with the Board's analysis ("[I]n the context of claim 1, a “data rate” refers to a rate at which data is transmitted between components, i.e., data transmission between memory module and memory controller (preamble) and data transmission within data ranks (body of claim). This understanding of the claim necessarily excludes Micron’s proffered ratio, which is merely a ratio of two rates across different pairs of devices.").

      Regarding 2), CAFC considers the analysis mischaracterized here ("Micron never established, nor did the Board find, that there was a motivation to combine Figures 2 and 4 for claim limitations 15.4 and 15.5. Rather, the Board determined that Micron failed to show a motivation to combine Figures 2 and 4 to arrive at the “claimed invention,” which requires a memory module with ranks that are configured to receive active and non-active chip signals . . . the Board properly considered the differences between Figures 2 and 4 when assessing Micron’s motivation-to-combine argument.")

      Finally, regarding 3), CAFC finds the construction consistent with the M2C analysis and moooted("as the Board found, Halbert’s active chip select signals are not received by the ranks but rather by the multiplexer, a separate component in the memory module . . . Micron does not dispute this finding on appeal . . . As such, Micron’s alternative motivation to combine argument fails, regardless of whether claim limitation 15.6 requires non-active chip select signals to be sent only to the ranks.")

      Ergo, affirmed.
    • 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.").
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