Contact - Sessions
James Skelley | Technology Lawyer
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)
    • A short mandamus transfer denial for venue established via an office lease, basically because the petitioner can "seek to overturn the venue ruling on appeal after final judgment" in contrast to "the “extraordinary remedy” of a writ of mandamus."
    • CAFC considers this IPR appeal from an obviousness invalidation in a system "for reducing electronic alarms in a medical patient monitoring system." Appellant makes arguments based upon 1) claim construction; 2) the Board's consideration of an allegedly untimely argument in a responsive brief, and 3) analysis unsupported by substantial evidence. Regarding 1), CAFC agrees with the Board's unwillingness to adopt a narrower construction ("disclosure of an embodiment in the specification that does not include any additional thresholds or conditions for triggering an alarm does not support reading such a limitation into the claim"). Nor did the Board construe too broadly by considering outside sources ("Phillips does not proscribe the Board from consulting a dictionary definition to help explain its construction when the dictionary definition does not contradict the intrinsic evidence"; "There is nothing further in the claim language or specification to limit “threshold” to mean a value that directly triggers an alarm, so we instead construe the term broadly"). Regarding 2), Appellant "argues that the Board improperly heard Sotera’s argument for motivation to replace Bock’s alarm limit 316 as an “effective delay” with a pre-set delay from Woehrle, instead of adding the delay to Bock as Sotera originally argued", but CAFC does not think the argument was new ("The reference to the teachings of Bock as an “effective delay” by Sotera in its Reply is consistent with this language as one method of reducing false alarms, so was not a new argument in the Reply"). Finally, regarding 3), CAFC sets aside arguments based on the previously considered 1) and 2). For the additional argument "that replacing Bock’s alarm limit 316 with Woehrle’s time delay would render Bock non-functional" the "Board considered this argument and found it unpersuasive and unsupported by the record before it" including expert testimony (e.g., that a "preset time delay is a “simple substitution of one delay for another delay" and "would not materially increase the risk of the alarm system missing true alarm, or life threatening, situations").
    • CAFC affirms two indefiniteness determinations, one for alarms in a "mobile communication terminal" and the other for an "autofocus feature in a digital camera." Regarding the former, the DCT construed terms under 35 U.S.C. § 112 and found that the specification "failed to disclose sufficient structure for “alerting unit” for the same reasons that it failed to disclose sufficient structure for “means for issuing an alert.”" Regarding the latter, the DCT considered "the phrase “second part in between the first part and the second part” as indefinite because it was "nonsensical" ("the self-contradictory language of that term “does not allow a reader to differentiate between the first instance of ‘a second part’ from the second,” even in the context of the specification and prosecution history"). Regarding the first issue, CAFC generally concurs ("We agree with Google and the district court that the term “unit,” in a vacuum, is defined only by the function it performs, much like terms such as “element” or “means.”"; "we have “consistently required that the structure disclosed in the specification be more than simply a general[-]purpose computer or microprocessor.”"). Regarding the "second part" limitation, CAFC similarly basically agrees with the DCT ("[t]he self-contradictory language of the limitation renders the claims indefinite").
    • CAFC affirms a SJ based on a prior agreement between the parties, as well as a dismissal for lack of PJ. The DCT held that the relevant software "“is ‘combined with’ or ‘used with’ Microsoft technology, if not both,” bringing it within the Settlement Agreement’s § 1.5(b) coverage, id., and that the Settlement Agreement therefore protected Siemens Industry from this action through its license, release, and covenant-not-to-sue provisions." Plaintiff opines that the agreement was limited "to “only the portion” of a third-party product “that consists of or uses” a Microsoft product" but CAFC agrees that there doesn't appear to be adequate evidence for that assertion. As for PJ, "Siemens AG is a German company, organized and existing under German law, with principal places of business in Munich and Berlin, and it has had no U.S. offices, no U.S. places of business, and no U.S. employees since at least February 2020, before this suit commenced."
    • CAFC affirms this obviousness decision on a "device for treating a patient with ionizing radiation for certain types of radiosurgery and radiation therapy" in a two and three-way combination. While the Owner argued that "a skilled artisan would not have been motivated to combine Grady and Ruchala because the weight of the linac would render the device essentially inoperable and thereby fail to provide a viable solution for focusing therapeutic radiation on the target" the Board felt robotic arms could be used to address the weight. CAFC agrees, finding the Board "supported by substantial evidence, including the prosecution history of the ’648 patent, the teachings of the asserted prior art references, and the expert testimony of record." Owner also argued that the Board said nothing on reasonable expectation of success, but CAFC notes that "[u]nlike a motivation to combine determination, which requires an explicit analysis, KSR, 550 U.S. at 418, a finding of reasonable expectation of success can be implicit" (similarly, here, CAFC asserts that "the arguments and evidence of reasonable expectation of success are the same for motivation to combine"). N.b., the decision is precedential.
More . . .
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.

  • 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)
  • USPTO - #59458 - 10/16/2006
  • California - #257829 - 12/01/2008
  • District Columbia - #1014986 - 08/05/2013
  • 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.
  • 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
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.