Contact Sessions
James Skelley | Technology Lawyer
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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 generally affirms the DCT, which found the claims not invalid, but also without contributory or direct infringement, in this matter directed to a method "for determining whether a parked car is parked in a parking space and whether such car is authorized to use that space." Specifically, Appellant here
      ". . . challenges the district court’s judgment upholding validity by arguing
      1. claim 1 of the ’956 patent is invalid for indefiniteness and lack of enablement because the claimed method is impossible to perform;
      2. claim 1 is also invalid because the “high resolution image” limitation is indefinite;
      3. the district court improperly allowed the jury to resolve claim construction disputes; and
      4. the district court abused its discretion by excluding evidence that Park Assist had offered to sell a parking system embodying the claimed invention more than a year before filing its patent application, thereby invalidating the patent under the onsale bar.
      CAFC affirms as to 1-3, but remands as to 4.

      Regarding #1, "Indect contends that claim 1 of the ’956 patent is impossible to perform in its entirety and, therefore, is invalid for indefiniteness and lack of enablement." CAFC disagrees ("An initial flaw with Indect’s position is that it rests on an unstated, and incorrect, assumption that the steps of claim 1 of must be undertaken in the order in which they are written . . . neither “as a matter of logic or grammar” must the steps of claim 1, and particular steps (h) and (i), “be performed in the or- der written.”"). Regarding #2 and #3, "Indect asserts that the court should have defined the resolution terms of steps (a) and (b), and also determined whether steps (i) and (j) are lim- ited to identifying cars prohibited from certain parking spaces (“blacklisting”) or also extend to identifying cars permitted to be in certain spaces (“whitelisting”)." But CAFC sees no error, as questions for the jury were appropriately allocated as such ("[T]he district court properly viewed this as a fact question requiring the jury to apply its construction of “infringement process” to the prior art, rather than a new claim construction dispute requiring judicial resolution as a matter of law"), and generally finds the arguments made on appeal as waived (e.g. "[A] party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below."). Regarding #3, however, in reviewing the evidence, the DCT erroneously concluded "that an offer to sell a product is inadmissible when the patent also covers a process" and so CAFC remands as to this issue ("The exclusion of the potentially invalidating Chinook Document, which could be reasonably found to constitute an offer for sale of a product sufficiently disclosing the pa- tented process more than a year prior to the filing of the patent application, was based on a clear error of law and, thus, an abuse of discretion."). CAFC similarly remands for a new trial under the Lanham Act because of excluded evidence ("The court should have allowed introduction of evidence about the Airport litigation to permit the jury to fully eval- uate whether Indect proved its claim."). CAFC also considers the cross-appeal and remands to reconsider the overbroad declaratory judgment under the Kessler doctrine ("Because this ex- tensive relief is not supported by sufficient findings, we vacate the district court’s declaratory judgment and remand for further proceedings.").
    • CAFC affirms this obviousness invalidity determination IPR for claims involving "methods and systems for error correction in data retrieved from flash memory." Here, Owner "contends that claim 13 of the ’347 patent requires that the “decoder” both “retrieve the encoded data” and “correct errors.”" However, whether as a matter of prior art fact finding or claim construction or, CAFC affirms the Board, believing the claimed functions admit of a shared structure.

      Regarding the fact finding:
      "In Diggs, Viasat argues, that function is performed not by the decoder (the ECC Detection and Correction module), but by the Controller. As the Board found, that distinction is inconsequential. Figure 1 of Diggs shows that the ECC Detection and Correction module (125) in Diggs is part of the Controller (114), and the text of the Diggs reference confirms that the “controller 114 further includes an ECC detection and correction module 125.” . . . The two functions that the ’347 patent assigns to the decoder are thus performed by the Controller in Diggs through the incorporated ECC Detection and Correction module."
      Regarding the claim construction:
      The specification teaches that the encoder, decoder, and controller “may, individually or collectively, be implemented with one or more Application Specific Integrated Circuits (ASICs) adapted to perform some or all of the applicable functions in hardware. Alternatively, the functions may be performed by one or more other processing units (or cores), on one or more integrated circuits” . . . That language indicates that the claim language, properly construed, provides that the functions of the decoder and the controller of claim 13 can be performed by varying sets of circuits, individually or collectively."
      Ergo affirmed.
    • CAFC affirms a 101 invalidity determination for a "computer-implemented method for decoding a transmission signal":
      1. A computer-implemented method for decoding a transmission signal, the method comprising:
      receiving, using a computer processor, the transmission signal, which is formed by repeating symbols including downlink frame prefix information, encoding repeated symbols to form encoding blocks, and interleaving the encoding blocks;
      deinterleaving, using a computer processor, the received transmission signal;
      combining, using a computer processor, symbols at the same positions of deinterleaved encoding blocks among the repeated symbols in the deinterleaved transmission signal; and
      decoding, using a computer processor, the combined symbols.
      CAFC agrees with the DCT that the claim is "directed to receiving, manipulating, and decoding data." Owner argues that the characterization is an over-generalization, going beyond the claim's focus upon DFP information (particularly, “improving reception performance for repeatedly transmitted [DFP] information,” such as providing improved bit error rates and signal-to-noise ratios), but CAFC feels that "[t]he claim language . . . does not limit the combining and decoding of information to DFP information."
      The specification discloses that all claimed steps aside from the “combining” step were used in prior art decoding methods . . . With respect to the “combining” step, as alluded to above, claim 1 discloses what symbols are combined together, but does not explain how they are combined . . . The additional details described in the specification . . . but not captured by the claims, cannot serve as the basis of an inventive concept.
      Indeed, as "the specification indicates that this “combining” step involves basic arithmetic which can be performed mentally or by hand or other conventional methods" CAFC affirms the finding of invalidity below.
    • CAFC considers claim construction and infringement involving "a method for making silicon cups, bowls, and tumblers" ultimately affirming summary judgment of noninfringement. Regarding construction, "ZT now contends that the district court erred when it imposed a negative limitation on the construction of the spout claim element . . . But the language of the ’890 patent does not support ZT’s preferred construction of the spout claim element for three reasons . . . "
      1. "First, “the clear implication of the claim language” is that the zipper members and spout are “‘distinct component[s]’ of the patented invention” because Claim 1 and Claim 9 list those elements separately . . . the language of the specification makes clear that the zipper members are separate from the spout . . . The specification consistently refers to the spout, male zipper member, and female zipper member as different features";
      2. "Second, ZT’s proposed claim construction is illogical . . . The zipper members cannot then be part of the spout. But ZT’s proposed construction gives rise to a contradiction in which the spout would be “proximate” itself or “terminate at” itself."; and
      3. "Third, ZT repeatedly looks to the preferred embodiments, rather than the claim language, to support its claim construction arguments."
      As regards noninfringement, "[t]here is no genuine dispute of material" as the images of the Accused Products used to support infringement "only undermine the conclusion that there is a feature of the Accused Products that facilitates pouring and is “distinguishable to the eye or mind as being discrete” or is “readily and unmistakably apprehended” . . . ZT provides no other evidence that shows the Accused Products have an identifiable spout." Ergo, affirmed.
    • CAFC precedentially affirms obviousness on the IPRs for three patents involving "an optimized fuel management system for internal combustion engines", e.g., one patent specifically "seeking to mitigate engine knock, proposes a fuel management system which injects an “anti-knock agent” directly into the engine cylinder." CAFC first addresses whether it has power to review the Board's reconsideration decision as an effective "stay", finding that it does not ("[O]ur precedent has not previously labeled the time taken by an agency to issue a reconsideration decision as a “stay,” and we see no reason to do so here . . . we cannot see [Owner's] argument as anything but a challenge to the propriety of the institution . . . That a party formally attacks an agency action other than the institution determination does not automatically remove its challenge from the ambit of § 314(d)’s bar on judicial review . . . EBS reads our § 314(d) precedent as barring judicial review only when a party alleges a violation of a statutory prerequisite for institution, leaving all other possible aspects of an institution decision still open to judicial review . . . [t]he Supreme Court, however, has identified only possible narrow exceptions to § 314(d) . . . Section 314(d) thus bars EBS’s challenge."). Turning to substance, CAFC agrees with the construction of "fuel" and finds some arguments forfeited for not being appealed ("EBS fails to explain any prejudice to itself or any unfair advantage to Ford . . . it never raised such an argument below . . . EBS has forfeited this argument. "). CAFC then finds substantial evidence for the Board's obviousness analysis, and ultimately affirms ("Ford came armed with several reasons for why a skilled artisan would modify Rubbert (including Yuushiro’s fuel map, which was not relied upon in the prior proceeding). And here, on this record, the Board found that Ford satisfied its burden.").
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
SHORT, INFORMAL NOTES
Similar to LawMux Bites, notes are (very) short writeups calling attention to various issues. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you to the relevant topic.

PAPERS / ARTICLES