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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
  • CROCS, INC. v. ITC - 2026-01-08
    • In this precedential ITC decision, CAFC affirms in part (as appeal of the no violation finding is untimely) and dismisses in part (because "the Commission did not abuse its discretion in entering a limited exclusion order under 19 U.S.C. § 1337(g)(1)" rather than a GEO) appeal from an ITC's import assessment in connection with trademarks covering "certain features of Crocs’s Classic Clog shoe." Regarding the untimely appeal, the "“Commission issued its one and only final determination in the Investigation below on September 14, 2023,” which “triggered a 60-day Presidential review period, rendering the determination non-final . . . until November 14, 2023” . . . [thus] . . . Crocs argues, the 60-day appeal window set in Section 337(c) did not start to run until November 14, 2023, rendering its December 22, 2023 notice of appeal timely as to the Active Respondents." However, reviewing the caselaw, CAFC concludes that:
      "[I]n investigations that have a mixed result of a violation finding (subject to a presidential review period prior to the 60-day appeal window starting) and a no-violation finding (not subject to a presidential review period and so final for the purposes of starting the 60-day appeal window at the time it issues), the notices of appeal for the different findings have distinct appeal windows. Here, as to the Active Respondents, when the Commission’s determination of no violation was entered there was no presidential review period and no other administrative proceedings for that finding (unlike for the entry of an exclusion order against the Defaulting Respondents). Thus, the no violation finding was a final decision of the Commission on the day it issued and the 60- day period in Section 337(c) to file a notice of appeal began to run. That 60-day period ended on November 13, 2023, but Crocs did not file its notice of appeal until December 22, 2023. (emphasis added)
      Appellant tries to argue that the exclusion and no violation orders should be lumped together, but "Crocs does not point to any case law from this court that supports this argument." As for Appellant's desire for a GEO, CAFC first acknowledges that it "must affirm the Commission’s choice of remedy unless the action is ‘arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law." Here, the defendants defaulted, and because the Commission consequently "described that it was only issuing an exclusion order against the Defaulting Respondents based on Section 337(g)(1)" and that section recites that
      " . . . the Commission shall presume the facts alleged in the complaint to be true and shall, upon request, issue an exclusion from entry or a cease and desist order, or both, limited to that person unless, after considering the effect of such exclusion or order upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, the Commission finds that such exclusion or order should not be issued." (emphasis added)
      CAFC thus finds the ITC's conclusion that it "could only issue an exclusion order “limited” to those respondents it had found in default—i.e., an LEO" warranted. Accordingly, CAFC sets aside the GEO request.
    • 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, 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 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 #4, 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 extensive relief is not supported by sufficient findings, we vacate the district court’s declaratory judgment and remand for further proceedings.").
    • 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.
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