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 considers a preliminary injunction denial for "heart valve durability testing devices." Noting that at the PI stage, the "defendant may raise a substantial question of validity “on evidence that would not suffice to support a judgment of invalidity at trial”" and thus the analysis here “requires less proof than the clear and convincing showing necessary to establish invalidity itself" CAFC affirms (finding that the DCT "did not abuse its discretion in finding that BDC failed to demonstrate that ViVitro’s anticipation defense lacked substantial merit" and similarly noting that "the district court found a substantial question of obviousness with respect to Dynatek and Xi").
    • CAFC precedentially considers patents for "improved graphical user interfaces for commodity trading and methods for placing trade orders using those interfaces." In contrast to its 2017 opinion affirming not invalid determinations under 101 for the ’304 and ’132 patents, CAFC here affirms 101 invalidity determinations for the (broader claimed) ’411 and ’996 patents ("the combination of receipt and display of information, even of a particular type, and use of the information to engage in the fundamental economic practice of placing an order, are abstract ideas . . . Nothing in the claims, understood in light of the specification, calls for anything but preexisting computers and displays, programmed using techniques known to skilled artisans, to present the new arrangement of information . . . Given the absence of an improvement in computer functionality, we conclude that the specific claim elements, “individually and as an ordered combination,” id., even if they make particular choices among abstract ideas involving information and ordering, do not add an inventive concept needed for eligibility."). CAFC then considers and affirms the damages analysis, including extraterritorial application, noting that "[h]ere, and in future cases, analysis of the issue should simply proceed under the WesternGeco framework" before providing a detailed application of that framework (notably: "The WesternGeco extraterritoriality framework for damages under § 284 therefore applies to the infringement under § 271(a) here.").
    • CAFC precedentially considers patents on "containers (having features that make them resistant to tampering and make tampering evident) as well as methods of making such containers using thermoformed plastic." CAFC considers arguments that an "error in the jury instructions requires a new trial on invalidity" and "denial of attorney fees and the judgment’s dismissal “without prejudice” of certain patent claims." Regarding the former, CAFC rejects the argument itself, but agrees "that the jury instruction on the objective indicia of nonobviousness constituted prejudicial legal error, so the invalidity judgment must be set aside." Regarding the argument: "Inline cites no authority that precludes a successful obviousness challenge that rests on PTO-considered references" nor does CAFC agree that the evidence was insufficient, nor that the opposing party "must present its own testimony on objective indicia." However, as the jury instruction mentioned "only the objective indicia of commercial success and long-felt need, not other objective indicia for which there was evidence" CAFC remands. CAFC finally considers and agrees with the DCT's infringement analysis, and vacates the claims dismissal finding further consideration warranted as well as the denial of attorney fees (since the previous vacation renders the "no longer the (almost fully) prevailing party.").
    • CAFC precedentially considers a patent disclosing a "method for aligning a laser projector with respect to a work surface" with mixed obviousness determinations on its claims in an IPR. On various claims found to obvious, CAC finds that the "Board erred as a matter of law with regard to the motivation to combine" as "it does not suffice to meet the motivation to combine requirement to recognize that two alternative arrangements such as an angular direction system using a single camera and a 3D coordinate system using two cameras were both known in the art." (stating, notably: "KSR did not do away with the requirement that there must exist a motivation to combine"). As for the not invalid claims, CAFC likewise agrees that inadequate motivation was provided. Thus, reversed as to the former and affirmed as to the latter.
    • CAFC affirms a 101 invalidity dismissal on claims for "scanning a physical item, such as a gemstone, determining its unique pattern of imperfections . . . then recording that signature to a blockchain if the physical object has not previously been registered." Below, defendant asserted that "asserted that “the claims of the ’250 patent are directed to the patent-ineligible abstract idea of collecting, processing, and storing data to track physical items” and they “do not improve anything about computer technology itself.”" Observing that "identifying items by their unique physical features is a long-standing and well-established practice" CAFC opines that the claim steps are "generic steps and results—as opposed to a specific solution to a technological problem." Thus, after walking through the two-step Alice analysis, CAFC affirms.
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