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 affirms the Board's obviousness determination on aerodynamic trailer skirt patents, having previously objected to the Board's motivation to combine. Here focusing on a "resilient strut limitation" CAFC now agrees that the "Board sufficiently explained its reasons for finding a motivation to combine Layfield with Rinard’s resilient support elements . . . the Board concluded that “[WABCO] ha[d] shown that one of skill in the art would have had a reason with rational underpinning to look to other similar types of trailer components that are also flexible to make further improvements to Layfield’s design” . . . Substantial evidence supports the Board’s conclusion." Regarding reasonable expectation of success, "Transtex argues that the Board improperly shifted the burden by requiring that Transtex show no reasonable expectation of success." However, the CAFC majority disagrees, finding, e.g., that "because there are factual and rational underpinnings to support Mr. Tres’s opinions, the Board was within its discretion to rely on them to reach its conclusion." In dissent with regard to the reasonable expectation of success, Judge Schall notes that the claims "require that the resilient strut of the trailer skirt be “adapted to sustain an elastic deformation when a load is applied thereon when the skirt panel moves away from the aerodynamic configuration of the skirt both proximally toward a center of the trailer and distally away from the center of the trailer” and then “self-recover”" and believes the testimony does not provide "substantial evidence that one of skill in the art would have had a reasonable likelihood of success in combining Layfield and Rinard to achieve a strut that would be adapted to permit movement of a trailer skirt “distally away from the center of the trailer” and then “self-recover.”"
  • In Re WINGEN LLC - 2023-02-02
    • Though directed to a plant (with the claim limitation "a single half-dominant gene"), this is actually a utility patent case (rather than a plant patent) concerning a prior public disclosure at a Home Depot event ("The Board found that ‘Cherry Star’ had been accessible to the public—the attendees, not Proven Winners—at the Home Depot event and upheld the examiner’s rejections under § 102(b)."). "WinGen argues on appeal that the Board erred in finding prior public use when all of the claimed features (e.g., the plant genetics) were not made available to the public . . . WinGen argues that attendees would not have been aware of or able to readily ascertain that ‘Cherry Star’ resulted from a “single half-dominant gene,” and therefore the display at the Home Depot event was not an invalidating prior public use." In several past cases, visibility alone did not constitute a prior disclosure. For example, in on case, grapes were "viewable by the public", but the "grapes were “not labeled in any way” and there was no evidence that anyone recognized the grapes as the claimed varietal." Similarly, in a previous keyboard case the keyboard was on display, but its actual use wasn't demonstrated. CAFC distinguishes the present case from these past cases as this plant's purpose was to be ornamental. As regards the argument that the gene limitation requires that the public use involve more than ornament, CAFC finds the argument forfeited: "WinGen argues that the claimed genetics of ‘Cherry Star’ needed to have been publicly disclosed for there to have been an invalidating public use . . . WinGen did not meaningfully present such an argument to the Board."
  • In Re GOOGLE LLC - 2023-02-01
    • CAFC grants a mandamus request to transfer after disagreeing with the DCT's weighing of the relevant factors (e.g., "The district court held that the factor considering “all other practical problems that make trial of a case easy, expeditious, and inexpensive” weighs against transfer. This was clearly erroneous. The only reason the court gave for this determination was Jawbone’s co-pending case against Apple in the Western District of Texas."). Similarly "the events giving rise to this patent infringement suit clearly have a particularized connection with Northern California." In sum: "four factors favor transfer and four factors are neutral. No factor weighs against transfer."
    • CAFC affirms the DCT's claim construction of "observer data" finding that the same appearance of the phrase throughout the claim should have the same definition ("[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent."; "the “observer data” in step 1(a) is the same “observer data” in steps 1(c) and 1(d)."). As for infringement, CAFC finds that the construction then precipitates an incomplete infringement match ("Infernal’s infringement mapping with respect to step 1(d) improperly excludes data that is mapped to “a portion of said observer data” in step 1(c).")
    • In this design patent case for a car fender, CAFC affirms the Board's finding that "LKQ had not demonstrated by a preponderance of the evidence that the ’625 patent was anticipated or would have been obvious before the effective filing date." CAFC agrees that the "ordinary observer would include both retail consumers who purchase replacement fenders and commercial replacement part buyers who purchase replacement fenders was supported by substantial evidence" as this factual inquiry was "well-grounded in the record." Indeed, the Board noted a number of differences between the design and the proposed art: "(1) the wheel arch shape and terminus, (2) the door cut line, (3) the protrusion (4) the sculpting, (5) the first and second creases, (6) the inflection line (i.e., third crease), and (7) the concavity line." As for obviousness, while finding that the argument was preserved for appeal, CAFC declines to revisit KSR's potential overruling of Rosen etc., per the question: " in the more than fifteen years since KSR was decided, this court has decided over fifty design patent appeals. In these appeals, this court has continually applied Rosen and Durling just as it had in the decades preceding" (judges Lourie and Stark, in separate concurrences, more or less reiterate the point or defer consideration).
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 (albeit while mindful of COVID protocols).
  • 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